Ex Parte Wu et al

Patent Trial and Appeal Board

May 30, 2014

11204698 (P.T.A.B. May. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FUMING WU and MIHIR VAIDYA

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Appeal 2012-000995
Application 11/204,698
Technology Center 2100
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Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD JR., and
ERIC B. CHEN, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-000995
Application 11/204,698

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This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-21, all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to a presence-enhanced smart name tag
implemented on a local application of a device. (Abstract.) The local
application identifies, as a smart name tag, a string of characters representing
an identity of a presentity. (Id.) The presentity identity is used to retrieve
presence information indicating the availability of the presentity. (Id.)
Claim 1 is exemplary, with disputed limitations in italics:
1. A device for providing a presence-enhanced smart name
tag, comprising:
a local application capable of identifying a string of characters
as a smart name tag, said string of characters representing an identity
of a presentity, said local application being operable to generate a
request for presence information of said presentity, said presence
information indicating availability of said presentity; and
a communication manager operable to detect launch of said
local application, retrieve said presence information of said presentity
from a presence system and provide said presence information to said
local application to enhance said smart name tag with said presence
information.

Claims 1-21 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Langfeld (LYNN LANGFELD ET AL., MICROSOFT® SHAREPOINT™ 2003
UNLEASHED chs. 1, 9, 11 (Sams Publishing 2004)).1

1 The Examiner has provided print-outs from an online version published by
Safari Books Online. We refer to the page numbers of the individual
chapters of these print-outs.
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ANALYSIS
We are unpersuaded by Appellants’ arguments (App. Br. 10-12, 14-
15) that Langfeld does not describe the limitation “a communication
manager operable to . . . provide said presence information to said local
application to enhance said smart name tag with said presence information,”
as recited in independent claim 1.
The Examiner found that the Live Communications Server of
Langfeld corresponds to the limitation “a communication manager operable
to . . . provide said presence information to said local application to enhance
said smart name tag with said presence information.” (Ans. 4-5; Langfeld,
ch. 9, p. 1, “Benefits of Using Live Communications Server.”) In particular,
the Examiner found that “since a smart name tag is described as a string of
characters, a name as used in an instant messaging system may qualify as a
smart name tag” and “when the status or location of the instant messaging
user changes, this may qualify as enhancement of presence information.”
(Ans. 14-15.) We agree with the Examiner’s findings.
Langfeld relates to the Microsoft Windows SharePoint Services, in
which Microsoft Office 2003 application (e.g., Word, Excel, PowerPoint,
Visio) workspaces can be shared among various users of the same network.
(Ch. 1, p. 1, “Creating a Shared Workspace from Microsoft Word.”)
Langfeld explains that “[t]he user can . . . add members to the [SharePoint]
site by entering the domain and username, or email address, to define who is
included in the workspace, and set the level of participation they can have on
that site (Reader, Contributor, Web Designer, Administrator).” (Id.)
Langfeld also explains that “[o]nline presence can be enabled on a virtual
server basis, when Office 2003 and appropriate Windows Messenger
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software are installed” and “Person Name Smart Tags become active when
the mouse pointer is hovering over a site member’s name.” (Ch. 1, p. 2,
“TIP.”) SharePoint further includes a “Live Communications Server [that]
provides instant messaging (IM) and presence technology capabilities to the
organization or enterprise . . . .” (Ch. 9, p. 1, “Benefits of Using Live
Communications Server.”) Because Langfeld explains that the SharePoint
user adds members with “Person Name Smart Tags” for access to the
workspace (ch. 1, p. 2, “TIP”) and the ability to IM such members with
“presence technology capabilities” (ch. 9, p. 1, “Benefits of Using Live
Communications Server”) Langfeld describes the claim 1 limitation “a
communication manager operable to . . . provide said presence information
to said local application to enhance said smart name tag with said presence
information.”
Appellants argue that “Langfeld actually does not teach the ‘smart
name tags’ themselves” and “[a]lthough Langfeld uses the term ‘Person
Name Smart Tag’, it is not clear from the surrounding text that the ‘Person
Name Smart Tag’ in Langfeld is the same as Appellant’s claimed ‘smart
name tag’ as recited and defined in Appellant’s invention.” (App. Br. 11.)
Appellants further argue that “it appears that the term ‘Person Name Smart
Tag’ in Langfeld apparently is referring to the ability to integrate presence
information with IM applications, and not to a ‘smart name tag,’ as defined
in the present application.” (App. Br. 11-12.) However, Langfeld uses the
term “Person Name Smart Tag,” which would refer to a “Smart Tag” for a
person’s name (see ch. 1, p. 2, “TIP”) that has been previously added by the
user to access the SharePoint workspace (see ch. 1, p. 1, “Creating a Shared
Workspace from Microsoft Word”). Accordingly, when the user enters the
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person’s name into the IM service, the IM service recognizes that person’s
name as authorized by the user for accessing the SharePoint workspace.
Appellants further argue that:
[E]ven if the ‘Person Name Smart Tag’ could be said to read on
Appellant’s claimed ‘smart name tag,’ Langfeld simply
mentions the ‘Person Name Smart Tag’ and does not provide
any teaching that the ‘Person Name Smart Tag’ would be used
to generate a request for presence information nor that the
‘Person Name Smart Tag’ would be enhanced with retrieved
presence information, as is claimed in the present application.
(App. Br. 14.) Contrary to Appellants’ arguments and as found by the
Examiner (Ans. 14-15), Langfeld expressly discloses that “Live
Communications Server provides instant messaging (IM) and presence
technology capabilities to the organization or enterprise . . .” (ch. 9, p. 1,
“Benefits of Using Live Communications Server”) that includes “Person
Name Smart Tags” corresponding to the member’s name (ch. 1, p. 2, “TIP”).
Therefore, we agree with the Examiner that Langfeld describes the
claim 1 limitation “a communication manager operable to . . . provide said
presence information to said local application to enhance said smart name
tag with said presence information.”
We are further unpersuaded by Appellants’ arguments (App. Br. 12-
13) that Langfeld does not describe the limitation “a local application
capable of identifying a string of characters as a smart name tag, said string
of characters representing an identity of a presentity,” as recited in
independent claim 1.
The Examiner found that the Person Name Smart Tag and Presence
Settings option of Langfeld corresponds to the limitation “a local application
capable of identifying a string of characters as a smart name tag, said string
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of characters representing an identity of a presentity, said local application
being operable to generate a request for presence information of said
presentity, said presence information.” (Ans. 4, 20; Langfeld, ch. 11, p. 3
“Working with Virtual Servers.”) We agree with the Examiner’s findings.
As discussed previously, Langfeld explains that “[t]he user can . . .
add members to the [SharePoint] site by entering the domain and username,
or email address, to define who is included in the workspace, and set the
level of participation they can have on that site (Reader, Contributor, Web
Designer, Administrator).” (Ch. 1, p. 1, “Creating a Shared Workspace from
Microsoft Word.”) Langfeld further explains that one available option is
“Person Name Smart Tag and Presence Settings—Enables online presence
information to be displayed; useful for integration with instant messenger
applications.” (Ch. 11, p. 4 “Working with Virtual Servers.”) Because
Langfeld explains that the SharePoint user adds members for access to the
workspace (ch. 1, p. 1, “Creating a Shared Workspace from Microsoft
Word”) with the “Person Name Smart Tag and Presence Settings” option
(ch. 11, p. 4 “Working with Virtual Servers”), Langfeld describes the
claim 1 limitation “a local application capable of identifying a string of
characters as a smart name tag, said string of characters representing an
identity of a presentity.”
Appellants argue that “a ‘smart name tag’, as claimed in Appellant’s
invention, refers to an indicator embedded in a document that identifies a
particular name string within that document” and “Langfeld does not appear
to teach or suggest such an embedded indicator.” (App. Br. 12.) However,
Appellants’ arguments are not commensurate in scope with claim 1, because
the claim does not expressly require the claimed “smart name tag” to have
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an indicator embedded in a document that identifies a particular name string
within that document. Although Appellants’ Specification generally
discloses that “[t]he smart name tags themselves are indicators embedded in
the documents that can be used to generate an e-mail, establish a real-time
communication session using certain media types (e.g., IM or voice) or start
a web discussion with the author/co-worker” (Spec. 1:24 to 2:3), such a
disclose does not expressly define the term “smart name tag.” The
importation of a narrow embodiment into the broader independent claim 1 is
improper. See SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870,
875 (Fed. Cir. 2004) (“For example, a particular embodiment appearing in
the written description may not be read into a claim when the claim language
is broader than the embodiment.”)
Appellants further argue “Langfeld teaches that the user that creates
the workspace actually enters the domain and username or e-mail address of
each member into the workspace or imports this information into the
workspace” and “[b]y contrast, the present invention is related to ‘local
applications,’ where such contact information (e-mail addresses, domain
names or usernames) is not available, and the ‘local application’ must
identify a ‘smart name tag’ and then generate the request for presence
information from this.” (App. Br. 13.) Again, Langfeld uses the term
“Person Name Smart Tag,” which would refer to a “Smart Tag” for a
person’s name (see ch. 1, p. 2, “TIP”) that has been previously added by the
user to access the SharePoint workspace (see ch. 1, p. 1, “Creating a Shared
Workspace from Microsoft Word”). Accordingly, when the user enters the
person’s name into the IM service, the IM service recognizes that person’s
name as authorized by the user for accessing the SharePoint workspace.
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Therefore, we agree with the Examiner that Langfeld describes the
claim 1 limitation “a local application capable of identifying a string of
characters as a smart name tag, said string of characters representing an
identity of a presentity.”
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 102(b). Claims 2-10 depend from independent claim 1, and
Appellants have not presented any substantive arguments with respect to
these claims. Therefore, we sustain the rejection of claims 2-10 under 35
U.S.C. § 102(b) for the same reasons discussed with respect to independent
claim 1.
Independent claims 11 and 18 recite limitations commensurate in
scope to those discussed with respect to independent claim 1, and Appellants
have not presented any substantive arguments with respect to these claims.
We sustain the rejection of claims 11 and 18, as well as dependent claims
12-17 and 19-21, for the same reasons discussed with respect to claim 1.

DECISION
The Examiner’s decision to reject claims 1-21 is affirmed.
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

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