Ex Parte Weaver et al

Patent Trial and Appeal Board

Jun 23, 2017

12729797 (P.T.A.B. Jun. 23, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/729,797 03/23/2010 Andrew Weaver 14917.2357USD1/337287.10 7877
27488 7590 06/27/2017
MERCHANT & GOULD (MICROSOFT)
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
KEATON, SHERROD L
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
06/27/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
US PT027488 @ merchantgould .com
u sdocket @ micro soft .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW WEAVER,
KRISTINE AMBER KRANTZ, ERIC JEFFREY WOLF,
JULIE MCCOOL, JULIE MILLS, and BRIAN D. HEIKES
Appeal 2017-004639
Application 12/729,7971
Technology Center 2100
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
JESSICA C. KAISER, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellants appeal under 35 U.S.C. § 134, the Final Rejection of
claims 1, 3, 6—18, and 20-22. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 2, 4, 5, and 19 have been cancelled.
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION UNDER 37 C.F.R. § 41.50(b).
1 According to Appellants, the real party in interest is Microsoft Technology
Licensing, LLC (App. Br. 2).
Appeal 2017-004639
Application 12/729,797
CLAIMED SUBJECT MATTER
According to Appellants, the claims are directed to chat room
personalities that are customized based on the chat room being visited
(Abstract). Claim 1, reproduced below, is exemplary of the claimed subject
matter:
1. A system comprising at least one processor; a memory,
operatively connected to the at least one processor and storing
instructions that, when executed by the at least one processor,
perform a method, the method comprising:
receiving, for a chat user, an association of a first
personalization item with a first category of chat room, wherein
the association of the first personalization item does not associate
the first personalization item with any particular chat room;
receiving, for the chat user, an association of a second
personalization item with a second category of chat room,
wherein the association of the second personalization item does
not associate the second personalization item with any particular
chat room;
rendering a first chat application user interface for a first
chat room;
automatically detecting that the first chat room is
associated with the first category;
automatically selecting a first personalization item based
upon the received association for the chat user of the first
personalization item with the first category;
rendering the first selected personalization item;
rendering a second chat application user interface for a
second chat room;
detecting entry by the chat user into the second chat room;
detecting that the second chat room is associated with the
second category;
automatically selecting, upon detecting entry by the chat
user into the second chat room, a second personalization item
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based upon: (a) the received association for the chat user of the
second personalization item with the second category; and (b) the
detection that the second chat room is associated with the second
category; and
rendering the second selected personalization item.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Liles US 5,880,731 Mar. 9, 1999
Haimberg US 2003/0210265 A1 Nov. 13, 2003
Blattner US 2004/0179039 A1 Sept. 16, 2004
Kim US 6,910,186 B2 June 21, 2005
Chemtob US 7,124,164 B1 Oct. 17, 2006
REJECTIONS2
Claims 1, 6—12, 15—18, and 20—22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Blattner, Liles, and Chemtob (Final Act.
4—10).
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Blattner, Liles, Chemtob, and Kim (id. at. 10-11).
Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Blattner, Liles, Chemtob, and Haimberg (id. at 11—12).
2 The Examiner has withdrawn the 35 U.S.C. § 112, first paragraph rejection
of claims 1,21, and 22 for lack of written description (Ans. 3; see Final Act.
3).
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Application 12/729,797
ISSUE 1
35 U.S.C. § 103(a): Claims 1, 6—12, 15—18, and20—22
Appellants contend their invention, as recited in claims 1, 6—12, 15—
18, and 20-22, would not have been obvious over Blattner, Liles, and
Chemtob (App. Br. 14—22; Reply Br. 2-4).3 The issues presented by the
arguments are:
Issue la: Has the Examiner shown the combination of Blattner, Liles,
and Chemtob teaches or suggests
receiving, for a chat user, an association of a first personalization
item with a first category of chat room, wherein the association
of the first personalization item does not associate the first
personalization item with any particular chat room . . . [and]
automatically selecting a first personalization item based upon
the received association for the chat user of the first
personalization item with the first category,
as recited in claim 1 and similarly recited in claims 21 and 22?
Issue lb: Has the Examiner shown the combination of Blattner, Liles,
and Chemtob teaches or suggests “the association of the first personalization
item does not associate the first personalization item with . . . any particular
other user,” as recited in claim 21?
3 Rather than repeat the arguments here, we refer to the Appeal Brief and
Reply Brief for the positions of Appellants and the Final Office Action and
Answer for the positions of the Examiner. Only those arguments actually
made by Appellants have been considered in this decision. Arguments that
Appellants did not make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv).
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ANALYSIS
Issue la
Appellants contend the Examiner erred in finding the combination of
Blattner, Liles, and Chemtob teaches or suggests
receiving, for a chat user, an association of a first personalization
item with a first category of chat room, wherein the association
of the first personalization item does not associate the first
personalization item with any particular chat room . . . [and]
automatically selecting a first personalization item based upon
the received association for the chat user of the first
personalization item with the first category,
as recited in claim 1 and similarly recited in claims 21 and 22 (App. Br. 14—
22; Reply Br. 2-4). Specifically, Appellants argue the “present claims
require that the category of chat room determines in part the persona to be
displayed,” but “Blattner forces a persona based on a relationship between a
user and participant [in the chat room], rather than the category of a chat
room” (App. Br. 16; see Reply Br. 2) and “Blattner specifically associates
personalization items for particular” chat rooms (App. Br. 16—17; Reply Br.
2—3). Appellants further argue “in Liles, the user is still forced to make a
manual selection for a particular chat room,” teaching away from the
claimed invention (App. Br. 18; Reply Br. 3—4).
We are not persuaded. The Examiner finds (final Act. 4—5; Ans. 3),
and we agree, Blattner teaches “[u]sers may assign personalities,” i.e.,
personalization items, “to be projected when conversing with other users” in
a chat room (Blattner 1117; see Blattner figs. 1—2). The Examiner further
finds (Final Act. 4—5; Ans. 3), and we agree, Blattner “automatically
display[s] an appropriate/selected personality during communications” based
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on certain criteria (Blattner 1117; see Blattner 1119). Additionally, the
Examiner finds (Final Act. 5; Ans. 4), and we agree, Liles teaches
“[depending upon the subject matter of the chat session, a number of
different, but appropriate, [user] avatars will be provided” for display in the
chat room (Liles 6:20-49). The Examiner incorporates Liles’ teachings into
the system of Blattner, to display an appropriate personality for a chat room
based on an “analysis of the chat subject matter,” i.e., the chat room category
(Ans. 4; Final Act. 13).
Appellants’ arguments are not persuasive because those arguments
attack Blattner and Liles individually when the rejection is based on the
combination of Blattner and Liles. In re Keller, 642 F.2d 413, 426 (CCPA
1981) (citation omitted). Specifically, Appellants’ argument that the chat
room personality of Blattner is associated “with people in a chat room” or
“other criteria,” rather than “a category of chat room” (Reply Br. 2—3; App.
Br. 15—17), does not address the Examiner’s combination of Blattner and
Liles. More specifically, the Examiner’s combination relies on Liles to
teach certain chat room personalities are associated with certain chat room
categories (Ans. 4; Final Act. 5, 13). The Examiner modifies Blattner, such
that Blattner’s “automatic[] display [of] an appropriate/selected personality
during [chat room] communications” (Blattner 1117) is based on the chat
room category as taught by Liles (Ans. 4; Final Act. 13).
Further, Appellants’ argument that “Liles requires the association of
the personalization item with a particular chat room” (Reply Br. 3 4)
because “Liles teaches the manual selection of an avatar for that chat room
when the user enters the chat room” (App. Br. 17—18; Reply Br. 3 4)
inappropriately requires the bodily incorporation of features in Liles on
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which the Examiner does not rely. The Examiner’s combination does not
incorporate Liles’ ultimate user selection; rather the Examiner’s combination
incorporates Liles teaching that certain chat room categories are associated
with certain personalities (Ans. 4; Final Act. 5, 13). As discussed supra, the
Examiner’s combination modifies Blattner’s personality selection to select a
personality based on the chat room’s category as taught by Liles (Ans. 4;
Final Act. 13).
Moreover, Appellants’ argument that “Liles teaches away” from the
claimed invention because “Liles teaches the manual selection of pre­
determined avatars for a particular chat room,” is not persuasive because to
teach away, a reference must “criticize, discredit, or otherwise discourage”
investigation into the claimed solution. In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Appellants’ discussion of an embodiment in Liles in which
a user selects an avatar does not sufficiently persuade us that Lilies actually
criticizes, discredits, or otherwise discourages the use of automatic avatar
selection based on chat room category.
Additionally, Appellants’ arguments that “Chemtob does not discuss
determining personas, let alone determining personas based on a category of
chat room” (App. Br. 18—20) are not persuasive because, as discussed supra,
the Examiner relies on the combination of Blattner and Liles to teach
determining personas based on a category of chat room (Ans. 4; Final Act. 5,
13).
Accordingly, we are not persuaded the combination of Blattner, Liles,
and Chemtob fails to teach or suggest
receiving, for a chat user, an association of a first personalization
item with a first category of chat room, wherein the association
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of the first personalization item does not associate the first
personalization item with any particular chat room; [and]
automatically selecting a first personalization item based upon
the received association for the chat user of the first
personalization item with the first category,
as recited in claim 1 and similarly recited in claims 21 and 22.
Issue lb
With respect to claim 21, Appellants further contend the Examiner
erred in finding the combination of Blattner and Liles teaches, suggests, or
otherwise renders obvious “the association of the first personalization item
does not associate the first personalization item with any particular chat
room or any particular other user,” as recited in claim 21 (App. Br. 20-21;
Reply Br. 4). Specifically, Appellants argue claim 21 “requires that the
association does not associate the personalization item with any particular
other user” (App. Br. 21; Reply Br. 4) but that Blattner teaches “that online
personas [are] tied to particular instant message recipients,” teaching away
from the claimed invention (App. Br. 21).
We agree with Appellants that the claim requires the first
personalization is not associated with any particular other user. The
negative limitation recited by the claim, “the association of the first
personalization item does not associate the first personalization item,”
applies to both of the claim’s following limitations, “with any particular chat
room or any particular other user”; accordingly, both limitations are
required. Because the Examiner considers not associating the first
personalization item with any particular other user optional, and the
Examiner does not show where Blattner teaches that limitation or explain
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why that limitation would have been obvious (see Ans. 5; see also Final Act.
7), we cannot sustain the Examiner’s rejection of claim 21.
However, in a new ground of rejection, we determine that the subject
matter recited in claim 21 would have been obvious over Blattner, Liles, and
Chemtob. As discussed supra, we agree with the Examiner that the
combination of Blattner, Liles, and Chemtob teaches limitations in claim 21
which are similarly recited in claims 1 and 22. Regarding the additional
limitation present in claim 21, but not present in claims 1 and 22, “the
association of the first personalization item does not associate the first
personalization item with . . . any particular other user,” Blattner teaches an
embodiment in which “instant message sender [IMSender] projects a sender
avatar 135 in an instant messaging communications session with an instant
message recipient SuperBuddyFanl, who projects a recipient avatar 115”
(Blattner 131, Fig. 1). IMSender’s avatar 135, i.e., “the first personalization
item,” is not associated with SuperBuddyFanl, i.e., “any other particular
user” — that is, IMSender’s avatar 135 is only used by IMSender in the chat
session and not by SuperBuddyFanl (id.). Furthermore, we do not find any
description or example in Appellants’ Specification discussing
personalization items not associated with “any particular other users” that
distinguishes it from Blattner’s avatar which is not associated with “any
particular other users” (see App. Br. 21; see also Reply Br. 4; see also Resp.
to Notification of Non-Compliant App. Br. 8). For the remaining limitations
of claim 21 not discussed above and not disputed by Appellants, we agree
with the Examiner’s findings and adopt them as our own for purposes of this
new ground of rejection (Final Act. 4—7 (citing Blattner || 117, 190, Figs.
1-2; Liles 6:20-49; Chemtob 21:65-22:10, Fig. 18)).
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As such, we enter a new ground of rejection of claim 21 under 35
U.S.C. § 103(a) as obvious over Blattner, Liles, and Chemtob.
Dependent claims 6—12, 15—18, and 20 are not separately argued (see
App. Br. 22—23). Therefore, we sustain the rejection of claims 1, 6—12, 15—
18, 20, and 22 under 35 U.S.C. § 103(a) for obviousness over Blattner, Liles,
and Chemtob.
ISSUE 2
35 U.S.C. § 103(a): Claim 3
Appellants contend their invention as recited in claim 3, is not obvious
over Blattner, Liles, Chemtob, and Kim (App. Br. 23—24). The issue
presented by the arguments is:
Issue 2: Did the Examiner improperly combine Blattner, Liles,
Chemtob, and Kim?
ANALYSIS
Appellants contend the Examiner improperly combined Blattner,
Liles, Chemtob, and Kim in rejecting dependent claim 3 (App. Br. 23—24).
Specifically, Appellants argue “Kim teaches away from the current
technology” because “Kim teaches always presenting an avatar associated
with an organization” (id. ).
We are not persuaded. Appellants’ argument that “Kim teaches
away” from the claimed invention is not persuasive because the cited
passage in Kim of organization-associated avatars (Kim 9:7—19 (cited at
App. Br. 23—24)) does not actually criticize, discredit, or otherwise
discourage the use of organization-associated avatar selection based on chat
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room category. In particular, Kim does not criticize, discredit, or otherwise
discourage using a particular organization-associated avatar for a first
category of chat room and using a different organization-associated avatar
for a second category of chat room, e.g., a sport-customized Colonel Sanders
for sports chat rooms and a gardening-customized Colonel Sanders for
gardening chat rooms.
Accordingly, we are not persuaded the Examiner improperly
combined Blattner, Liles, Chemtob, and Kim in rejecting claim 3.
Therefore, we sustain the rejection of claim 3 under 35 U.S.C. § 103(a) for
obviousness over Blattner, Liles, Chemtob, and Kim.
Remaining Claims 13 and 14
Regarding the Examiner’s § 103 rejection of dependent claims 13 and
14, Appellants argue Haimberg does not cure the deficiencies of Blattner,
Liles, and Chemtob that Appellants argue for claim 1 (App. Br. 24—25). Lor
the reasons discussed above, we do not find the combination of Blattner,
Liles, and Chemtob deficient. Accordingly, we are not persuaded the
Examiner erred in rejecting these claims, and we sustain the Examiner’s
decision to reject claims 13 and 14.
DECISION
The Examiner’s rejection of claims 1, 6—12, 15—18, 20, and 22 under
35 U.S.C. § 103(a) as being unpatentable over Blattner, Liles, and Chemtob
is affirmed.
The Examiner’s rejection of claim 21 under 35 U.S.C. § 103(a) as
being unpatentable over Blattner, Liles, and Chemtob is reversed.
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The Examiner’s rejection of claim 3 under 35 U.S.C. § 103(a) as
being unpatentable over Blattner, Liles, Chemtob, and Kim is affirmed.
The Examiner’s rejection of 13 and 14 under 35 U.S.C. § 103(a) as
being unpatentable over Blattner, Liles, Chemtob, and Haimberg is affirmed.
In a new ground of rejection, we reject claim 21 under 35 U.S.C.
§ 103(a) as being unpatentable over Blattner, Liles, and Chemtob.
This decision contains a new ground of rejection pursuant to 37
C.L.R. § 41.50(b) (2010). 37 C.L.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.L.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS LROM THE DATE OE THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b)
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