Ex Parte Jean et alDownload PDFPatent Trial and Appeal BoardMay 20, 201410862726 (P.T.A.B. May. 20, 2014) 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. 10/862,726 06/07/2004 Yves D. Jean 3655/0304PUS1 3761 47827 7590 05/21/2014 Avaya by MUNCY, GEISSLER, OLDS & LOWE, P.C. 4000 LEGATO ROAD, SUITE 310 FAIRFAX, VA 22033 EXAMINER BELOUSOV, ANDREY ART UNIT PAPER NUMBER 2141 MAIL DATE DELIVERY MODE 05/21/2014 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 YVES D. JEAN and DOREE DUNCAN SELIGMANN __________ Appeal 2012-000664 Application 10/862,726 Technology Center 2100 __________ Before TONI R. SCHEINER, MELANIE L. McCOLLUM, and JEFFREY N. FREDMAN, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims to a method for enabling a user logged in to an Instant Message (IM) network to utilize the IM infrastructure to access network resources. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify the Real Party in Interest as Avaya Inc. (See App. Br. 1.) Appeal 2012-000664 Application 10/862,726 2 Statement of the Case Background “The present invention is a system for accessing applications from even the most basic Instant Message (IM) enabled mobile device. The system utilizes the IM infrastructure of a mobile device to deliver application interfaces and manage the user experience” (Spec. 1, ll. 6-9). The Claims Claims 1-27 and 29-31 are on appeal.2 Claim 1 is representative and reads as follows: 1. A method for enabling a user logged in to an Instant Message (IM) network to utilize the IM infrastructure to access network resources, said IM infrastructure comprising a buddy list displayed to the user and an instant messaging server; said method comprising the steps of: mapping at least one menu element of a graphical user interface (GUI) of at least one of the network resources to an IM identity; displaying the IM identity as an entry on the buddy list; and, permitting the user access to said at least one network resource via said at least one menu element of the GUI by IM communication with the displayed IM identity through the IM infrastructure. The issue The Examiner rejected claims 1-27 and 29-31 under 35 U.S.C. § 103(a) as obvious over Hough,3 Zimmerman,4 and Zunk5 (Ans. 4-10). 2 Claim 28 is subject to a claim objection (App. Br. 2). 3 Hough et al., US 2003/0079024 A1, published Apr. 24, 2003. 4 Zimmermann et al., US 7,356,565 B2, issued Apr. 8, 2008. Appeal 2012-000664 Application 10/862,726 3 The Examiner finds that Hough discloses a method for enabling a user (Fig. 4: 116, JOHN DOE) logged in to an Instant Message (IM) network (Fig. 5) to utilize the IM infrastructure to access network resources (Fig. 4: 120, software resource such as a database, search engine, or other software program), said IM infrastructure comprising a buddy list (Fig. 4) displayed to the user and an instant messaging server (Fig. 5: 180); said method comprising the steps of: a. mapping at least one element (par. 006-8, e.g. text dialog box provided on the search engine web page, a database of a search engine, or plain language parser of a software program resource) of at least one of the network resources to an IM identity (Fig. 4: 120); b. displaying the IM identity as an entry on the buddy list (Fig. 4: 120) and, c. permitting the user access to said at least one network resource via said at least one element (par. 006, 007) by IM communication with the displayed IM identity through the IM infrastructure (Fig. 3.). (Ans. 4-5.) The Examiner finds that “Hough does not explicitly disclose wherein the element is a menu element of a graphical user interface” (Ans. 5). The Examiner finds that “ Zimmermann and Zunk disclose a similar method for a instant messaging control and communication with remote devices such as a webcam . . . wherein at least one element is a menu element of a graphical user interface (Zunk, page 5 of 7: e.g. pan arrows, zoom, etc.)” (Ans. 5). The Examiner finds it obvious “to combine the teachings of Hough with 5 Zunk, A., Logitech QuickCam Pro 4000 1-7 (Apr. 30, 2003). Appeal 2012-000664 Application 10/862,726 4 Zimmermann and Zunk so to enable a user to interact with a GUI menu element (Zunk, page 5 of 7: e.g. pan arrows, zoom, etc.)” (Ans. 5). The issue with respect to this rejection is: Does the evidence of record support the Examiner’s conclusion that Hough, Zimmermann, and Zunk render claim 1 obvious? Findings of Fact 1. Figure 4 of Hough is reproduced below: “FIG. 4 is an exemplary instant messaging service dialog window showing a plurality of participants, including the software personnel data application, participating in a messaging session with the user” (Hough 2 ¶ 0021). Appeal 2012-000664 Application 10/862,726 5 2. Hough teaches a “mechanism for an efficient interaction with a software resource such as a database, search engine, or other software program, from within a messaging service session” (Hough 1-2 ¶ 0008). 3. Hough teaches that [T]he user can initiate an online chat session with either Joe and/or Frieda and while discussing a document or other matter with either or both, can selectively add Personnel Data Application 120 to the messaging service chat session as a participant. A query posed by any of the participants to the online chat session might be answered by any of the other participants, including the Personnel Data Application, if participating. (Hough 5 ¶ 0040.) 4. Hough teaches that “for each user who has added the software program as a contact, the software program will appear online and available to participate in a messaging service session” (Hough 5 ¶ 0044). 5. Hough teaches an example where [A] message 158 indicates that the user (John) has transmitted a message to the Personnel Data Application. The message is a query asking, “How many employees in my division are enrolled in a health plan?” To create this message, the user simply enters the message text in a message window 160 by typing on a keyboard or using another kind of input device. The message is transmitted to a recipient by selecting a send button 164 or simply by actuating the return key on a keyboard (if that option has been selected when setting up the messaging service program). A line 162 indicates that the Personnel Data Application (the software resource to which the query was transmitted) is “typing a message” (i.e., composing a response) that will shortly be transmitted back to the user and appear within chat history window 156. For example, Appeal 2012-000664 Application 10/862,726 6 the response might be simply a number, indicating the number of employees in the user’s division that are enrolled in a health plan. Instead, a more complete response such as, “25 employees are enrolled in a health plan in your division,” might be supplied to the user as a response. (Hough 4 ¶ 0037.) 6. Zimmermann teaches that a “device 140 may also be connected to the computer system 110. . . . Examples of devices which can function as IM users include, amongst others, webcams, digital cameras, home appliances” (Zimmermann, col. 4, ll. 25-43). 7. Zimmermann teaches “the device 150 compares the text of the instant message received to a list of commands/instructions. If matching text is found, the corresponding command is executed by the device 150. . . . Some sample commands are: Zoom In 3x” (Zimmermann, col. 8, ll. 51-58). 8. Zunk teaches that The other fun thing to use was the IM Video Companion. This allowed me to talk to my friends and coworkers via AOL instant messaging, and they could see me. This works with MSN as well, and it is built into Yahoo’s instant messenger. For use with AIM the Video Companion uses AIM’s Buddy List. You “invite” your AIM buddy to view your Web cam; it sends an URL in the AIM window to your friend; your friend clicks on the link; the Logitech viewing software downloads, and there you go. Your friends can see you. It’s all very simple to activate and use--just point-and- click. That seems to be what Logitech strived for and succeeded with. (Zunk 5.) Appeal 2012-000664 Application 10/862,726 7 9. Zunk teaches a Logitech camera control, reproduced below: Zunk’s camera control shows a graphical user interface which allows the user to zoom images. Principles of Law “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. Analysis Claim Interpretation We begin with claim interpretation, since before a claim is properly interpreted, its scope cannot be compared to the prior art. The limitation in dispute is the step of “displaying the IM identity as an entry on the buddy Appeal 2012-000664 Application 10/862,726 8 list” in claim 1. Appellants contend that the “Hough and Zimmermann still do not map an IM identity to a menu element. For example, there is no ‘buddy’ named ‘zoom’ on the buddy list. Instead, the ‘buddy’ is the webcam, and Zimmermann provides software for converting text received via IM into commands for the webcam” (App. Br. 8). During prosecution, claim terms are given their broadest reasonable interpretation as they would be understood by persons of ordinary skill in the art in the light of the Specification. The Specification teaches that the “list of IM buddies is actually a list of the menu items for an application or a group of applications” (Spec. 4, ll. 7-8). The Specification teaches an example where in “an application with a buddy group per top-level menu the user may send the message ‘open “filename”’ to the File buddy” (Spec. 7, ll. 22-23). While the Specification does not provide a specific definition of “mapping” a menu element of a GUI of a network resource to an IM identity and then “displaying the IM identity as an entry on the buddy list,” the Specification reasonably distinguishes between simply “mapping” and the claimed combination of “mapping” and “displaying.” Simple “mapping” reasonably can be interpreted, as the Examiner did, to broadly encompass sending an IM message to a GUI based network resource using an IM identity associated with the resource. However, the combined “mapping” and “displaying” steps clearly require that the IM identity in the buddy list is a “menu element” on the GUI of the network resource, not the network resource itself. Appeal 2012-000664 Application 10/862,726 9 We therefore interpret the phrase “displaying the IM identity as an entry on the buddy list” to require that the buddy list actually comprise an IM identity which is a menu element of a GUI of a network resource. Prior Art Hough teaches “mapping” an internet resource to an IM identity (FF 4), and displaying that IM identity on a buddy list (FF 1). Hough teaches user access to the network resource by IM communication with the IM identity, teaching that a “query posed by any of the participants to the online chat session might be answered by any of the other participants, including the Personnel Data Application, if participating” (Hough 5 ¶ 0040; FF 3, 5). Zimmermann teaches that an IM system may be used to control a variety of devices including webcams (FF 6). Zunk teaches a graphical user interface including a zoom function which may be accessed using an IM video companion (FF 8-9). However, none of these references teach the step of “displaying the IM identity as an entry on the buddy list” as interpreted above. That is, the IM identity displayed by Hough is the network resource itself, not an IM identity which is a menu element of the network resource. Similarly, while Zimmermann teaches that an IM may be used to command a camera to “zoom” (FF 7), and Zunk shows the “zoom” command on a GUI (FF 9), neither Zimmermann nor Zunk suggest placement of the “zoom” command onto the buddy list. The Examiner has not provided a teaching or reason why a menu element of a GUI of a network resource, as opposed to the network resource Appeal 2012-000664 Application 10/862,726 10 itself, would have been displayed as an entry on the buddy list of an instant messaging system. The Examiner finds that “Claim 1 does not narrow down that such a ‘mapping’ would necessarily make the IM identity to be named in a fashion as suggested by the Appellant, nor does it indicate that an IM identity has to be a ‘function’ IM identity as opposed to a ‘device’ IM identity” (Ans. 10). While we agree that the “mapping” step alone might reasonably be broadly interpreted to read on the situation where the network resource, such as a search engine with a GUI, responds to an IM message as in Hough (FF 5), we interpret the further “displaying” step, as discussed above, to require that a “menu element of a GUI” be placed as an entry on the buddy list. This excludes the situation where the network resource itself is the IM identity displayed on the buddy list. Therefore, while “Zunk discloses that the webcam control program include GUI menu elements” (Ans. 11), the Examiner has failed to establish any reason for “displaying the IM identity as an entry on the buddy list” as required by claim 1. Conclusion of Law The evidence of record does not support the Examiner’s conclusion that Hough, Zimmermann, and Zunk render claim 1 obvious. SUMMARY In summary, we reverse the rejection of claims 1-27 and 29-31 under 35 U.S.C. § 103(a) as obvious over Hough, Zimmerman, and Zunk. REVERSED Appeal 2012-000664 Application 10/862,726 11 cdc Copy with citationCopy as parenthetical citation