Ex Parte Matsa et al

Board of Patent Appeals and Interferences

Aug 24, 2009

09866410 (B.P.A.I. Aug. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MOSHE M. MATSA, JULIUS Q. QUIAOT, and
CHRISTOPHER R. VINCENT
____________________

Appeal 2008-003101
Application 09/866,4101
Technology Center 2400
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Decided: August 24, 2009
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Before JOHN C. MARTIN, JAY P. LUCAS, and CAROLYN D. THOMAS,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed May 25, 2001. The real party in interest is International
Business Machines Corporation.
Appeal 2008-003101
Application 09/866,410

STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1-11, 16-26, 31, 33-
43 and 48-51 under authority of 35 U.S.C. § 134. All of the remaining
claims are canceled. The Board of Patent Appeals and Interferences (BPAI)
has jurisdiction under 35 U.S.C. § 6(b).
Appellants’ invention relates to a method and system for routing
Instant Messages (IMs) using various protocols and devices as the situation
may require. In the words of Appellants:
[0003] Although instant messaging is a common practice,
frequently there are situations in which the message does
not reach the intended recipient. For example, the
messaging protocol is down or the intended recipient does
not have access to the protocol sending the message (e.g.,
no computer access).

[0005] The shortcomings of the prior art are overcome
and additional advantages are provided through the provision of
a method of routing instant messages. The method includes,
for instance, defining, at runtime by a pluggable delivery
manager, a delivery policy to be used to route an instant
message to an intended recipient of the instant message,
wherein the delivery policy is based upon a configuration of
the pluggable delivery manager, a user configuration of the
intended recipient, and one or more available delivery
mechanisms; and routing the instant message to the intended
recipient using the delivery policy.

[0009] In an aspect of the present invention, an instant
message delivery environment is provided, which integrates
multiple protocols and notification services to provide a more
robust, intelligent technique of synchronous communication.

(Spec. ¶¶ [0003], [0005], and [0009]).

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Application 09/866,410

Claim 1 is exemplary:
1. A method of routing instant messages, said method
comprising:

defining, at runtime by a pluggable delivery manager, a
delivery policy to be used to route an instant message to an
intended recipient of the instant message, wherein the delivery
policy is based upon a configuration of the pluggable delivery
manager, a user configuration of the intended recipient, and one
or more available delivery mechanisms;
and

routing said instant message to the intended recipient
using said delivery policy.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Thro US 6,147,977 Nov. 14, 2000
Somashekar US 2002/0116477 Aug. 22, 2002

REJECTION
The Examiner rejects the claims as follows:

R1: Claims 1-11, 16-26, 31, 33-43 and 482-51 stand rejected under 35
U.S.C. § 103(a) for being obvious over Thro in view of Somashekar.

Groups of Claims:
Claims will be addressed in the order of the arguments, with claim 1
representative. See 37 C.F.R. § 41.37 (c) (vii).

2 Claim 49 is indicated to be dependent on claim 1. We assume from the
content and context that the claim was intended to be dependent on claim 16.
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Application 09/866,410

Appellants contend that the claimed subject matter is not rendered
obvious by Thro in combination with Somashekar for failure of the
references to teach claimed limitations. The Examiner contends that each of
the claims is properly rejected.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Brief and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
this opinion. Arguments that Appellants could have made but chose not to
make in the Brief have not been considered and are deemed to be waived.

We affirm the rejection.
ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a). The issue turns on whether
Thro and Somashekar teach a pluggable delivery manager and delivery
policy to route instant messages to the recipient in a manner specified by the
configurations of the senders and recipients.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants have invented a method and system for routing IMs through
disparate systems that have various protocols and different delivery
mechanisms. (Spec. 6, ¶ [0021]). The method uses a delivery manager,
which is a software program that is configured and added to the logic in
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the sender’s computer at runtime. (Spec. 7, ¶¶ [0023], [0024]). For each
message, the delivery manager is configured to conform to the
constraints of the sending computing unit and also the intended receiver’s
preferred configuration. (Spec. 9-10, ¶¶ [0030]-[0032]). The delivery
solution for a particular message that conforms to both the sender’s and
receiver’s acceptable configurations is called the delivery policy. (Spec.
12, ¶ [0041]).
2. Thro teaches sending wireless messages with the originating and
receiving parties have independent protocols, content and equipment.
(Col 2, ll. 48-58). The system takes into account the originating party’s
priorities and rules and merges them with the receiving party’s priorities
and rules, so that a jointly acceptable mode of communications is
achieved. (Col. 3, l. 64 to col. 4, l. 13). Different equipment is factored
into the solution. (Col. 3, l. 55).
3. Somashekar teaches distribution of programs and services between
equipment on large networks, using embedded pluggable components
placed in the equipment at both ends. (¶¶ [0007] and [0011]). These
pluggable components manage the distribution of the information across
the network and are activated and configured at runtime. (¶¶ [0015],
[0016]).

PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
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(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).

ANALYSIS
From our review of the administrative record, we find that the
Examiner has stated the reasons in support of the prima facie case for the
rejections of Appellants’ claims under 35 U.S.C. § 103(a) on pages 4 to 11
of the Examiner’s Answer. In opposition, Appellants present a number of
arguments.
Arguments with respect to the rejection
of claims 1 to 11, 16 to 26, 31, 33 to 43 and 48 to 51
under 35 U.S.C. § 103(a) [R1]

Appellants first contend that the Examiner erred in this rejection
because both Thro and Somashekar fail to “describe, teach or suggest using
a pluggable delivery manager in routing instant messages.” (Brief 7,
middle). Thro teaches the delivery manager creating a delivery policy based
on the configurations of the manager itself in the originating device and the
configuration of the recipient device. (See FF#2 above). Somashekar
teaches that a pluggable module can be placed in both the originating and
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recipient devices to manage the distribution of information across a network.
(See FF#3 above.) We find that the combination of these references clearly
teaches and suggests the pluggable delivery manager as claimed. (Ans. 11,
middle).
Appellants next contend that the references do not teach a delivery
policy to be used to route an IM to an intended recipient. (Brief 7, bottom).
In this context, the delivery policy is the solution that comes from satisfying
the constraints of the sending and receiving equipment’s configurations,
protocols and requirements. (Spec. 11, ¶ [0039]). Thro clearly teaches that
messages are transmitted across the wireless system based on the priorities
of both the originating and receiving party. (Col. 4, ll. 9-12). We thus do
not find error in the rejection in this regard.
Appellants next argue that Somashekar fails to teach “defining, at
runtime by a pluggable delivery manager, a delivery policy to be used to
route an instant message to an intended recipient.” (Brief 8, top). We find
that Somashekar, in combination with Thro, teach the runtime created
delivery manager as claimed. Note in Thro the different types of messages
that are sent across the network, including data messages. (Col. 1. ll. 35-40).
Note in Somashekar the pluggable modules managing the data. (FF#3).
Appellants have not shown error in the rejection in this argument.
With regard to claims 8, 23, and 40, Appellants argue that there is no
“description, teaching or suggestion in Thro or Somashekar of, for instance,
configuring the pluggable delivery manager by selecting the configuration
from a set of one or more configurations, wherein the selecting uses content
of the instant message to make the selection.” (Brief 10, middle). We
disagree, and find the needed teachings in the references as particularly
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pointed out by the Examiner in the Answer, page 14, section (e). We only
add that the reference also clearly states that the message itself contains
configuration information upon which the user can base the decision. (See
Thro, col. 2, ll. 53-60.) In view of these teachings, we decline to find error
in the Examiner’s rejection.
Appellants’ arguments concerning claims 9, 24, 41, and 48-51 are
similar to the ones discussed above and are not found to be indicative of
Examiner error. (Brief 11-12).
CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have not shown that the Examiner erred in rejecting claims 1-11,
16-26, 31, 33-43, and 48-51 under 35 U.S.C. § 103(a).
DECISION
The Examiner’s rejection of claims 1-11, 16-26, 31, 33-43, and 48-51
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

peb

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