Ex Parte Kaminsky et al

Board of Patent Appeals and Interferences

Jun 28, 2012

10235324 (B.P.A.I. Jun. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVID L. KAMINSKY
and DAVID M. OGLE
____________________

Appeal 2010-003323
Application 10/235,324
Technology Center 2100
____________________

Before ROBERT E. NAPPI, DAVID M KOHUT, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003323
Application 10/235,324

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from final rejection of
claims 1-2, 4-5, 9-11, 13-15, 21, and 25-29. Claims 3, 6 - 8, 12, 16, 17-20,1
and 22-24 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

Introduction
The invention is directed to a method of communicating using instant
messaging (IM). With at least two participants in an IM session, one
participant creates a message to be sent to another participant designating a
portion of that message that is to be sent to a designated non-participant of
the IM session. A request is sent to the other participant(s) for approval to
send the designated portion of the message to the non-participant. If
approved, a second message is generated which includes the approved
portion of the first message to be sent to the non-participant and the message
is sent to the non-participant using a routing method different from the IM
session used for sending the first message. Spec. 4-6.

Exemplary Claim(s)
Exemplary claim 1 under appeal reads as follows:
1. A method of communicating during an instant messaging
(“IM”) session, comprising:

1 Although appearing in the Claims Appendix, the Examiner confirmed that
claims 17-20 had been canceled in accordance with Appellants’ submission
on Apr. 21, 2008. Ans. 3.
Appeal 2010-003323
Application 10/235,324

3
creating, by a message author participating in the IM
session, a first message to be sent to each of at least one other
participants in the IM session;
designating in the first message, by the message author,
at least one portion of the first message for sending to a non-
participant in the IM session;
annotating the first message, by the message author, with
at least one messaging identifier associated with the non-
participant and, for each of the at least one messaging
identifiers, a corresponding routing method;
sending a query to each of the at least one other
participants to determine if they approve sending the at least
one designated portion to the non-participant, and if a response
to each sent query indicates that the at least one other
participants approve the sending, then:
programmatically generating a second message
that comprises each of the at least one designated portions of
the first message and excludes other portions of the first
message; and
sending the second message to the non-participant
using at least one of the messaging identifiers with which the
first message is annotated and the corresponding routing
method; and
sending the first message to each of the at least one other
participants in the IM session using the IM session, wherein at
least one of the corresponding routing methods used for sending
the second message to the non-participant is different from the
IM session used for sending the first message to each of the at
least one other participants.

References
US 6,247,045 B1 Shaw 06/12/2001
US 2005/0203990 A1 Weksel 09/15/2005
US 6,563,913 B1 Kaghazian 05/13/2003
US 6,212,548 B1 DeSimone 04/3/2001
Appeal 2010-003323
Application 10/235,324

4
US 7,127,741 B2 Bandini 10/24/2006

Rejections at Issue 2
The Examiner rejected claims 1-2, 4-5, 9-11, 13-15, 21 and 25-27 as
unpatentable under 35 U.S.C. § 103(a) as being obvious over the
combination of Shaw in view of Weksel and in view of Kaghazian and in
further view of DeSimone. Ans. 4-30. Claims 1, 21 and 26 are independent.
The Examiner rejected dependent claims 28-29 as unpatentable under
35 U.S.C. § 103(a) as being obvious over the combination of Shaw in view
of Weksel, Kaghazian, DeSimone, and in further view of Bandini. Ans. 30-
36.
Issue
Did the Examiner err in finding that the combination of Shaw,
Weksel, Kaghazian, and DeSimone teaches or suggests the step of “sending
a query to … the … other [participant(s)] to determine if they approve
sending the … designated portion [of a first message] to the non-participant,
and [generating and sending to the non-participant a message including the
designation portion] if a response to each sent query indicates that the at
least one other participants approve the sending?”3 (App. Br. 15-23; Ans. 9).

2 Separate patentability is not argued for claims 2, 4-5, 9-11, and 13-14.
App. Br. 23.
3 Appellants make additional arguments with respect to independent claims
1, 21, and 26. App. Br. 10-33; Reply Br. 2-12. We do not reach these
additional issues since this issue is dispositive of the case.
Appeal 2010-003323
Application 10/235,324

5
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
concur with Appellants’ conclusions that the Examiner erred in finding that
DeSimone in combination with Shaw and/or Kaghazian teaches or suggests
querying “whether the at least one participant of the currently ongoing chat
session ‘approves’ or is ‘in favor’ of sending the at least one designated
portion of the first message (e.g., ‘annotated’ message) to a non-participant
of the public or private chat session (e.g., ‘available’ user).” (Ans. 41).
The Examiner provides a hypothetical example of how the prior art
systems could be used to allow participants in two different conversations to
coordinate adding new participants into one of the conversations (Ans. 40-
44). However, the Examiner cited to no evidence to support this
hypothetical operation. As such, we agree with Appellants that the
combination still fails to teach or suggest approving the sending of a
designated portion of a first message to a non-participant.
Accordingly, we will not sustain the Examiner’s rejection of claim 1
under 35 U.S.C. § 103(a). Independent clams 21 and 26 each recite a
limitation directed to sending a query to another participant to determine if
they approved sending the designated portion to the non-participant. Since
the rejections of independent claims 21 and 26 are also based on the
improper reliance on DeSimone (Ans. 22 and 25) for the reasons given
supra, those rejections are also in error. Likewise we do not sustain the
Examiner’s rejections of dependent claims 2, 4-5, 9-11, 13-15, 25, and 27.
In connection with dependent claims 28 and 29, the Examiner relies
on Bandini for disclosing an email firewall for screening email messages
Appeal 2010-003323
Application 10/235,324

6
originating in or entering into a computer network. (Ans. 33-34). However,
Bandini does not cure the deficiency noted above with respect to parent
claim 1. Therefore, neither do we sustain the rejections of dependent claims
28 and 29 under 35 U.S.C. § 103(a) as being obvious over the combination
of Shaw, Weksel, Kaghazian, DeSimone and Bandini.

CONCLUSIONS
The Examiner has erred both in rejecting claims 1-2, 4-5, 9-11, 13-15,
21, and 25-27as unpatentable under 35 U.S.C. § 103(a) as being obvious
over the combination of Shaw, Weksel, Kaghazian and DeSimone and in
rejecting claims 28 and 29 under 35 U.S.C. § 103(a) as being obvious over
the combination of Shaw, Weksel, Kaghazian, DeSimone and Bandini.

DECISION
The rejections of claims 1-2, 4-5, 9-11, 13-15, 21, and 25-29 are
reversed.

REVERSED

msc