Ex Parte Viamonte Sole

Patent Trial and Appeal BoardMar 10, 2015

12144201 (P.T.A.B. Mar. 10, 2015)

Appeal 2013-000492 Application 12/144,201 1 UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DAVID VIAMONTE SOLE Appeal 2013-000492 1 Application 12/144,201 Technology Center 2400 ____________________ Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and STANLEY M. WEINBERG, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 20 and 22–36. Claims 1–19 and 21 have been canceled. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part. 1 Appellant identifies the real party in interest as ESI Mobile Solutions SLL. App. Br. 1. Appeal 2013-000492 Application 12/144,201 2 Appellant’s Invention Appellant invented a method for automatically notifying a watcher/subscriber (W) in an active state of the presence information (N) regarding associated presentities (E). In particular, upon detecting that the watcher/subscriber (W) is in active status, a presence server (PS) automatically delivers the presence information (N) to the watcher. However, upon detecting that the watcher/subscriber (W) is in an idle, on- hold, or suspended state, the presence server (PS) temporarily withholds the presence information for delivery until the watcher (W) resumes its active state. Spec. 4:6–21, Fig. 1. Representative Claim Independent claim 20 is representative. It reads as follows: 20. A method for providing a presence service comprising: receiving a subscription, from at least one subscriber, or watcher, to said presence service to which a plurality of presentities are associated; acquiring information about the status of said watcher; receiving information regarding at least presence from at least part of said plurality of presentities; and acquiring information about an idle, on-hold or suspended state of the presence subscription of said at least one watcher, and only if said at least one watcher is not in said idle, on-hold or suspended state: automatically delivering said information regarding at least presence from at least part of said plurality of presentities to said at least one watcher which is subscribed to said presence service to permit him to observe it. Appeal 2013-000492 Application 12/144,201 3 Prior Art Relied Upon Wang US 2002/0131395 A1 Sept. 19, 2002 McKinnon US 2004/0133641 A1 July 8, 2004 Karunamurthy US 2005/0228895 A1 Oct. 13, 2005 Rejections on Appeal The Examiner rejects the claims on appeal as follows: Claims 20, 22–25, and 35 stand rejected under 35 U.S.C. § 102(b) as being anticipated by McKinnon. Claims 26–34 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of McKinnon and Wang. Claim 36 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of McKinnon and Karunamurthy. ANALYSIS We consider Appellant’s arguments seriatim as they are presented in the Appeal Brief, pages 4–30. 2 Anticipation Rejection Dispositive Issue: Under 35 U.S.C. § 102, did the Examiner err in finding McKinnon describes automatically delivering presence information regarding associated presenties to a watcher only if the acquired state of the watcher is not idle, on-hold or suspended, as recited in claim 20? 2 Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (filed February 1, 2012), and the Answer (mailed July 3, 2012) for the respective details. We have considered in this decision only those arguments Appellant actually raised in the Brief. Any other arguments Appellant could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2013-000492 Application 12/144,201 4 Appellant argues McKinnon’s disclosure of a conventional presence platform for allowing presentities to inform each other about their individual states does not describe the disputed limitations. App. Br. 6–7. In response, the Examiner finds McKinnon’s disclosure of agents/presentities sharing with one another their individual presence information describes the disputed limitations. Ans. 5–6. We agree with the Examiner. Call flow diagram for providing distributed services Appeal 2013-000492 Application 12/144,201 5 As depicted in Figure 7A above, McKinnon discloses, upon being notified by subscriber Agent 3 (504) that it has “0 queued calls” (i.e., notifying Agent 1 that subscriber/Agent 3 is not currently idle) (502), Agent 1 notifies Agent 3 of its presentity (506). ¶¶40–41. That is, subscribing Agent 3’s notification to Agent 1 indicates to Agent 1that the subscribing Agent is not in an idle state. After having acquired the state information that subscriber Agent 3 is not in an idle state, Agent 1 can notify Agent 3 of its presentity. Appellant mischaracterized the Examiner’s finding by alleging that the Examiner relied upon McKinnon’s disclosure of voice data communicated among the telephony service to describe the claimed presence information. App. Br. 7. This argument is directed to portions of McKinnon (¶¶28, 36), the Examiner did not rely upon in the rejection. Rather, the Examiner relied upon ¶¶40–41 of McKinnon for the cited description. Ans. 5–6. Likewise, we find unavailing Appellant’s argument that the term “idle” as described in McKinnon has a different meaning from that of the claim. App. Br. 7–8. Absent an express definition for the cited term in Appellant’s Specification, we construe the term “idle” according to its broadest ordinary meaning as being “not employed,” “not engaged” or “not busy.” 3 We nonetheless find McKinnon’s discussion of an idle agent/presentity comports with that definition, as well as with the newly minted definition provided in Appellant’s Brief. McKinnon ¶41, App. Br. 8. That is, “idle” describes the state of the Agent as not currently being “busy” or “used in an active way.” 3 Yahoo dictionary.com Appeal 2013-000492 Application 12/144,201 6 Further, we find equally unpersuasive Appellant’s argument that McKinnon’s discussion of idle describes the current state of presentities as opposed to the presence subscription state of the watcher thereby causing a temporary interruption of notification sendings thereto. App. Br. 8–10. We agree with the Examiner that the argument regarding the temporary interruption notification is not commensurate with the scope of the claim, which merely recites a negative limitation that does not specify a particular course of action if the acquired state information indicates that the watcher is in an idle state. Ans. 13–14. Additionally, as discussed above, because the disclosed idle state describes the current state of the subscribed Agent, McKinnon describes the disputed limitations. On the record before us, Appellant has not shown error in the Examiner’s anticipation of claim 20 by McKinnon. Regarding the rejection of claim 22, in addition to the argument presented for patentability of claim 20, Appellant further argues McKinnon does not describe the acquisition of the subscriber idle state information is carried out by receiving a corresponding message from the watcher indicating that the subscription should be placed the specified state. App. Br. 11–13. We agree with Appellant. As discussed above, although Agent 1 acquires the state information about Agent 3 by receiving a notification therefrom (Fig. 7A (502)), the notification does not indicate to place the subscription in the specified state. We will not sustain this rejection. Regarding the rejection of claim 23, in addition to the argument presented for patentability of claim 20, Appellant further argues McKinnon does not describe the idle, on-hold or suspended is defined beyond states Appeal 2013-000492 Application 12/144,201 7 already defined in the SIP/SIMPLE protocol. App. Br. 13–14. We agree with Appellant that McKinnon’s disclosure is limited to states defined in the SIP/SIMPLE protocol (¶29), but not to states beyond those protocols. Id. We will not sustain the rejection of claim 23, and claim 24 depending therefrom. Regarding the rejection of claim 25, in addition to the argument presented for patentability of claim 20, Appellant further argues McKinnon does not describe the idle, on-hold or suspended state refers to a state where the watcher’s equipment/terminal is off. App. Br. 16–17. This argument is persuasive. The Examiner incorrectly asserts the claim does not recite “equipment or terminal is off.” Ans. 20. Because the Examiner has not shown where in McKinnon’s disclosure the disputed limitation is described, we will not sustain this rejection. Regarding the rejection of claim 35, in addition to the argument presented for patentability of claim 20, Appellant further argues McKinnon does not describe the acquisition of the subscriber idle state information is carried out by presence service according to known information about the watcher. App. Br. 17–18. This argument is not persuasive. As discussed above, Agent 1 acquires the state information about Agent 3 by receiving a notification therefrom (Fig. 7A (502)). Therefore, the notification of the Agent’s state is performed based upon known condition of the Agent. We will sustain this rejection. Obviousness Rejections Regarding the rejection of claim 26, in addition to the argument presented for patentability of claim 20, Appellant further argues the combination of McKinnon and Wang does not teach or suggest the idle, on- Appeal 2013-000492 Application 12/144,201 8 hold or suspended state refers to a state where the watcher’s equipment is closed, but not switched off. App. Br. 19–22. We agree with Appellant for the reasons set forth in the cited pages of the Appeal Brief. Although the Examiner asserts the Answer’s Response has addressed claim 26, we have not found such a Response. Therefore, we will not sustain this rejection. Likewise, we agree with Appellant’s similar arguments at pages 22–27 of the Appeal Brief, and therefore will not sustain the rejection of claims 27– 34. 4 The Examiner refers only to pages 22 to 24 of the Appeal Brief (Ans. 22) without considering Appellant’s arguments regarding these claims on pages 25 to 27 of the Appeal Brief. Regarding the rejection of claim 36, in addition to the argument presented for patentability of claim 20, Appellant further argues the combination of McKinnon and Karunamurthy does not teach or suggest acquiring the idle, on-hold or suspended subscriber state from a specific body created according to the SIP PUBLISH method. App. Br. 27–30. This argument is not persuasive. As discussed above, McKinnon teaches Agent 1 acquires the state information about Agent 3 by receiving a notification therefrom (Fig. 7A (502)). Further, Karunamurthy’s disclosure of using the SIP PUBLISH method to publish presence information about a subscriber’s terminal (¶41) complements McKinnon to predictably result in an Agent notifying another about its state according to the SIP PUBLISH method. We 4 In the event of further prosecution, the Examiner should consider whether such characterizations of an idle state would have been obvious based on the known and inherent characteristics of a device not being used for a specified period of time. Appeal 2013-000492 Application 12/144,201 9 are therefore satisfied the proffered combination of McKinnon and Karunamurthy teaches the disputed limitations. Therefore, we will sustain this rejection. DECISION We affirm the Examiner’s rejections of claims 20, 35, and 36. However, we reverse the rejections of claims 22–34 as set forth above. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART tj