Ex Parte Appelman et al

Patent Trial and Appeal Board

Aug 27, 2013

11015476 (P.T.A.B. Aug. 27, 2013)

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.
11/015,476 12/20/2004 Barry Appelman 00008-0031-01000 7353
114629 7590 08/27/2013
BOOKOFF McAndrews, PLLC
2401 Pennsylvania Avenue, NW, Suite 450
Washington, DC 20037
EXAMINER
PAPPAS, PETER
ART UNIT PAPER NUMBER
2444
MAIL DATE DELIVERY MODE
08/27/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BARRY APPELMAN and EDMUND J. FISH
____________

Appeal 2011-002559
Application 11/015,476
Technology Center 2400
____________

Before KRISTEN L. DROESCH, JOHN A. EVANS, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2011-002559
Application 11/015,476

2
STATEMENT OF THE CASE
The Appellants seek review under 35 U.S.C. § 134(a) of a final
rejection of claims 1-26, and 31.1 We have jurisdiction under 35 U.S.C.
§ 6(b). We REVERSE.
BACKGROUND
The Appellants’ disclosed invention relates to method for announcing
new users of an electronic communications system. The method includes
receiving an indication of a new user of an electronic communications
system. The new user has an identifier for the electronic communications
system. Existing users of the electronic communications system that are
known to the new user are identified. The identified existing users are sent a
message notifying the identified existing users of the identifier of the new
user. The identified existing users may be enabled to add the identifier of the
new user to participant lists used by the identified existing users. The new
user may be enabled to add identifiers of the identified existing users to a
participant list of the electronic communications system used by the new
user. Abs.; see also Spec. 2-4.
Claim 1 is illustrative and reproduced below (disputed limitations in
italics):
1. A computer-implemented method for announcing new
users of an electronic communications system, the method
comprising:
receiving an indication of a new user of an electronic
communications system;
accessing, from a computer memory storage system,
contact information that is maintained on behalf of the new user
and that includes contact information for other users;

1 Claims 27-30 have been cancelled.
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Application 11/015,476

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based on the accessed contact information, identifying
multiple users who are known by the new user;
as a consequence of identifying the users who are known
by the new user, comparing the users identified as being known
by the new user to data maintained on behalf of the electronic
communications system that includes information about
existing users of the electronic communications system who
previously registered with the electronic communications
system;
based on results of comparing the users identified as
being known by the new user to the data maintained on behalf
of the electronic communications system that includes
information about existing users of the electronic
communications system who previously registered with the
electronic communications system, determining that at least
some of the users identified as being known by the new user are
existing users of the electronic communications system who
previously registered with the electronic communications
system; and
as a consequence of determining that at least some of the
users identified as being known by the new user are existing
users of the electronic communications system, sending, to at
least one of the users who was identified as being known by the
new user and who was determined to be an existing user of the
electronic communications system, a message notifying the at
least one user who was identified as being known by the new
user and who was determined to be an existing user of the
electronic communications system that the new user also is a
user of the electronic communications system.

Rejections
Claims 1-6, 17-26 and 31 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lake (US 2005/0080859 A1, Apr. 14, 2005) and
Daniell (US 2004/0054736 A1, Mar. 18, 2004). Ans. 3.
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Application 11/015,476

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Claims 7-16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lake, Danielle and Brezin (US 2002/0178161 A1, Nov.
28, 2002). Ans. 6.
ISSUE
Did the Examiner err in finding that the combination of Daniell and
Lake teaches or suggests “comparing the users identified as being known by
the new user to data maintained on behalf of the electronic communications
system that includes information about existing users of the electronic
communications system who previously registered with the electronic
communications system; based on the results of comparing . . . , determining
that at least some of the users identified as being known by the new user are
existing users of the electronic communications system who previously
registered with the electronic communications system; and as a consequence
of determining . . . ,” as recited in independent claims 1, 25 and 26?
ANALYSIS
We have reviewed the Examiner’s rejections in light of the
Appellants’ arguments in the Appeal Brief presented in response to the Final
Office Action and the Reply Brief presented in response to the Answer. We
agree with the Appellants’ arguments and highlight and address specific
findings and arguments as follows.
We agree with the Appellants’ arguments that, contrary to the
Examiner’s findings (Ans. 3-4 (citing Lake ¶¶ 0006, 0010-0012)), Lake does
not teach or suggest comparing the users identified as being known by the
new user to data maintained on behalf of the electronic communications
system that includes information about existing users of the electronic
communications system who previously registered with the electronic
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Application 11/015,476

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communications system. App. Br. 13-14. We agree with the Appellants that
Lake instead describes a system that populates a user’s instant messaging list
with contact information for co-users who are listed as meeting attendees in
a calendar entry in the user’s electronic calendar, and teaches that the contact
information for co-users that is included in the calendar entries is the same
contact information included in the instant messaging lists. App. Br. 13-14
(citing Lake ¶¶ 0010, 0038-0043).
We also agree with the Appellants’ arguments that, contrary to the
Examiner’s findings (Ans. 4 (citing Daniell ¶ 0135); see also Ans. 13 (citing
Daniell ¶¶ 0009, 0074)), Daniell does not teach or suggest based on the
results of the comparing, determining that at least some of the users
identified as being known by the new user are existing users of the electronic
communication system who previously registered with the electronic
communications system. App. Br. 14-15, Reply Br. 2. We agree with the
Appellants that Daniell instead describes a system including an address book
database that correlates different types of contact information for an
individual - for example, one or more e-mail addresses, one or more IM
addresses, one or more telephone numbers, and/or one or more fax numbers
for the individual - with a single contact identifier for the individual,
allowing a user to look up one type of contact information for the individual
based on another type of contact information for the individual. App. Br. 14-
15; Reply Br. 2 (citing Daniell ¶¶ 0101-0107, 0135).
For these reasons, we are constrained to reverse the rejection of claims
1-6, 17-26 and 31 as obvious over Lake and Daniell. Since claims 7-16
depend from claim 1, and as applied by the Examiner Brezin does not
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remedy the deficiencies of Lake and Daniell, we also reverse the rejection of
claims 7-16 as obvious over Lake, Daniell and Brezin.
DECISION
We REVERSE the rejections of claims 1-26 and 31 under 35 U.S.C.
§ 103(a) as being unpatentable over the prior art.
REVERSED

msc