Ex Parte Jean et al

Patent Trial and Appeal Board

May 20, 2014

10862726 (P.T.A.B. May. 20, 2014)

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.)
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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.
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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).
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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).
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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,
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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.)
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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
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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.
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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
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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
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