Ex Parte Weaver et alDownload PDFPatent Trial and Appeal BoardJun 23, 201712729797 (P.T.A.B. Jun. 23, 2017) Copy Citation 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 2 Appeal 2017-004639 Application 12/729,797 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). 3 Appeal 2017-004639 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). 4 Appeal 2017-004639 Application 12/729,797 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 5 Appeal 2017-004639 Application 12/729,797 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 6 Appeal 2017-004639 Application 12/729,797 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 7 Appeal 2017-004639 Application 12/729,797 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 8 Appeal 2017-004639 Application 12/729,797 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)). 9 Appeal 2017-004639 Application 12/729,797 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 10 Appeal 2017-004639 Application 12/729,797 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. 11 Appeal 2017-004639 Application 12/729,797 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) 12 Copy with citationCopy as parenthetical citation