Ex Parte Miller et al

Patent Trial and Appeal Board

Jun 18, 2018

12327496 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/327,496 12/03/2008
46321 7590 06/20/2018
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Steven M. Miller
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
RSW920080015US1 (232) 5306
EXAMINER
LIN, SHERMAN L
ART UNIT PAPER NUMBER
2447
NOTIFICATION DATE DELIVERY MODE
06/20/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN M. MILLER, LAWRENCE S. RICH, and
RITCHARD L. SCHACHER
Appeal2018-000023
Application 12/327 ,496
Technology Center 2400
Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J.
HUME, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-17. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
A. INVENTION
According to Appellants, the invention relates to "the field [ of] file
sharing in an instant messaging session." Spec. ,r 1.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 2.
2 In a prior Decision (Appeal Number 2012-012177, decided March 27,
2015), we affirmed the Examiner's rejection of claims 1-17 under 35 U.S.C.
§ 103(a) over the teachings of Fulmer, Rudd, and Vuong (in view of
Ferguson, Hu, Kindig, or NightFalcon).
Appeal2018-000023
Application 12/327,496
B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A method for clipboard object sharing in an instant
messaging session, the method comprising:
establishing an instant messaging session between a
source instant messaging client and a target instant messaging
client;
exchanging a list of supported clipboard object formats
between the source and target instant messaging clients;
requesting transfer of a clipboard object resulting from
having been placed in a clipboard area of memory of a computer
from a cut-copy-paste type operation from the source instant
messaging client for pasting into the target instant messaging
client during the instant messaging session;
determining whether or not the target instant messaging
client supports a format of the clipboard object based upon the
exchanged list and displaying in a user interface of the target
instant messaging client a clipboard indicator indicating whether
or not the clipboard holds a clipboard object able to be pasted
into the target instant messaging client; and,
transferring the clipboard object to the target instant
messaging client as a paste only if the target instant messaging
client supports the format of the clipboard object.
C. REJECTIONS
1) Claims 1, 9, and 10 stand rejected under 35 U.S.C. § I03(a) over
Aoki et al. (US 2005/0004986 Al; published Jan. 6, 2005) and Farber et al.
(US 2005/0232232 Al; published Oct. 20, 2005).
2) Claims 2, 3 11, and 12 stand rejected under 35 U.S.C. § I03(a) over
Aoki, Farber, and Rudd et al. (US 2002/0120693 Al; published Aug. 29,
2002).
3) Claims 4 and 13 stand rejected under 35 U.S.C. § I03(a) over Aoki,
Farber, Fulmer et al. (US 2006/0036703 Al; published Feb. 16, 2006), and
Ferguson (US 2002/0178232 Al; published Nov. 28, 2002).
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Application 12/327,496
4) Claims 5 and 14 stand rejected under 35 U.S.C. § I03(a) over Aoki,
Farber, and Ferguson.
5) Claims 6 and 15 stand rejected under 35 U.S.C. § I03(a) over Aoki,
Farber, and Hu et al. (US 2007 /0078938 Al; published Apr. 5, 2007).
6) Claims 7 and 16 stand rejected under 35 U.S.C. § I03(a) over Aoki,
Farber, and Kindig et al. (US 2005/0197906 Al; published Sept. 8, 2005).
7) Claims 8 and 17 stand rejected under 35 U.S.C. § I03(a) over Aoki,
Farber, and NightFalcon (Disable 'Other users logged-on' warning on
shutdown, ANANDTECH.COM (Apr. 26, 2005),
http://forums.anandtech.com/showthread.php?t=1585566 (last visited Sept.
29, 2010)).
II. ISSUES
The dispositive issue before us is whether the Examiner erred in
finding the combination of Aoki and Farber teaches or suggests a method
comprising "determining whether or not the target instant messaging client
supports a format of the clipboard object." Claim 1 (emphasis added).
III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Aoki
1. Aoki discloses a process for transferring a segment of document from
a sending computer's clipboard to a receiving computer's clipboard via an
instant messaging system. ,r 36; Fig. 2A. The transfer can be invoked by a
copy and paste operation. ,r,r 37, 42; Fig. 2B. The messaging client can
"retrieve the entirety of the clipboard," from the sending computer, transmit
all the data across the IM channel, whether messaging client can understand
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Application 12/327,496
it or not (i-f 43), and "[i]t is then up to the receiving computer's application to
determine which of the multiple formats it is able to consume." Id.
Farber
2. Farber discloses a process for bypassing transcoding operations
between communication terminals, including transmitting information about
encoding capabilities of a distant side to a local side, and information about
encoding capabilities of the local side to the distant side. Abst. The
information about the encoding capabilities can be used on the other side to
look up a subset list of supported "encoding formats," such as a "supported
codec list." ,r 22. The method can be used to set up a TFO between the
communication terminals, where at least one codec encodes speech signals,
and, if it is determined that the terminals have at least one codec in common,
a data connection can be established without having to insert transcoding
functions between the two terminals. ,r,r 25-26.
IV. ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments presented in this appeal. Arguments which Appellants could
have made, but did not make in the Brief are deemed to be waived. See 37
C.F.R. § 4I.37(c)(l)(iv). On the record before us, we are unpersuaded the
Examiner has erred. We adopt as our own the findings and reasons set forth
in the rejections from which the appeal is taken and in the Examiner's
Answer, and provide the following for highlighting and emphasis.
Claim 1
Appellants concede that "[i]n review of Aoki, Appellants recognize
the teaching of object transfer in an IM session." App. Br. 6. Although
Appellants further recognize that the Examiner relies on Farber to disclose
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Application 12/327,496
and suggest "exchanging a list of supported clipboard object formats" and
"determining whether or not the target instant messaging client supports a
format of the clipboard object" as claimed, Appellants contend "Farber has
nothing to do with IM sessions." Id. In particular, Appellants contend
Farber is absent of "any suggestion of the claimed 'clipboard object formats
between the source and target instant messaging clients."' Id. at 8. Further,
according to Appellants, the Examiner "has not even attempted to account in
either Aoki or Farber for the claimed 'only if the target instant messaging
client supports the format of the clipboard object."' Id. at 8.
Additionally, although Appellants acknowledge that Farber discloses
a determining if the communication systems have a "codec type in common"
(App. Br. 8, citing Spec ,r 26), Appellants contend that a "codec-decoder is
not a 'format."' App. Br. 9.
We have considered all of Appellants' arguments and evidence
presented. However, we agree with the Examiner's findings, and find no
error with the Examiner's conclusion that claim 1 would have been obvious
over the teachings and suggestions of Aoki in combination with Farber.
Although Appellants contend that "Farber has nothing to do with IM
sessions," (App. Br. 6), we note that the Examiner rejects the claim as
obvious over the combination of Aoki and Farber, wherein the Examiner
relies on Aoki for teaching and suggesting communications in IM sessions.
Ans. 15. The test for obviousness is what the combination of Aoki and
Farber teaches or would have suggested to one of ordinary skill in the art.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Here, the Examiner relies on Aoki to teach and suggest "retrieving
data from a clipboard and transmitting the data across IM session into a
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receiving computer's clipboard." Ans. 15; FF 1. Further the Examiner
relies on Farber to teach and suggest that "if the terminal has the appropriate
codec, [it] would negate the need to include transcoding functions which
Farber seems to discourage." Ans. 16; FF 2. According to the Examiner, to
a skilled artisan, "Farber suggests the ideal situation of both terminals
supporting the format via the appropriate codec." Ans. 16.
Farber, Appellants concede, suggests a communication system for
exchanging and changing "encoding formats" between terminals for speech
messages. App. Br. 7-8; FF 2. Although, Appellants contend Farber only
determines a "codec type" in common, and that the codec is not a format
(App. Br. 9), we agree with Examiner's conclusion that a skilled artisan
would have understood determining the codec in common in Farber
comprises determining a format in common-that is, "a terminal supports a
format if the terminal has the appropriate codec." Ans. 16. In other words,
Farber's exchanging and changing encoding formats between terminals
comprises determining whether the terminals have a codec type in common
(FF 2), wherein the skilled artisan would have found it obvious that
generally determining whether terminals have the appropriate encoding
format comprises determining whether the terminal supports the format.
Thus, we agree with the Examiner's conclusion that it would have
been obvious to a skilled artisan to apply Farber's teaching and suggestion
of encoding format matching, in the IM system of Aoki, and thus arrive at
"determining whether or not the target instant messaging client supports a
format of the clipboard object" in claim 1. As the Examiner explains, such
determination would thereby "improve[] cost of overhead in
communications when terminals must cooperatively process between
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differing data formats" (Ans. 17) in a system, including the IM system of
Aoki. Therefore, on this record, we find the Examiner provided sufficient
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness. In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006).
As to Appellants' argument concerning the limitation "only if the
target IM client supports the format of the clipboard object" (App. Br. 8), we
find no error with the Examiner's finding that the combination of Aoki (FF
1) and Farber (FF 2) teaches and suggests the limitation. Ans. 14--15.
Further, we note that "only if' is a condition, wherein conditional steps
employed in a method claim need not be found in the prior art if, under the
broadest reasonable interpretation, the method need not invoke those steps.
See Ex parte Schulhauser, No. 2013-007847, 2016 WL 6277792 at *4
(PTAB April 28, 2016) (precedential) (holding "[t]he Examiner did not need
to present evidence of the obviousness of the remaining method steps of
claim 1 that are not required to be performed under a broadest reasonable
interpretation of the claim .... "); see also Ex parte Katz, No. 2010-006083,
2011 WL 514314, at *4--5 (BPAI Jan. 27, 2011). 3
Applying this reasoning here, we conclude the broadest reasonable
interpretation of method claim 1 includes situations that fail to satisfy the
situational ("only if the target IM supports") conditional precedents, and in
3 See also Applera Corp. v. Illumina, Inc., 375 F. App'x 12, 21 (Fed. Cir.
2010) (unpublished) (affirming a district court's interpretation of a method
claim as including a step that need not be practiced if the condition for
practicing the step is not met); Cybersettle, Inc. v. Nat'! Arbitration Forum,
Inc., 243 F. App'x 603, 607 (Fed. Cir. 2007) (unpublished) ("It is of course
true that method steps may be contingent. If the condition for performing a
contingent step is not satisfied, the performance recited by the step need not
be carried out in order for the claimed method to be performed.").
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these situations, the contested language following the condition precedent is
not required to be performed. Therefore, such arguments are not
commensurate with the broadest reasonable interpretation of claim 1. See
Schulhauser, at *4--5 (precedential).
For the aforementioned reasons, and on this record, we find a
preponderance of the evidence supports the Examiner's underlying factual
findings and legal conclusion of obviousness regarding the rejection of
independent claim 1 over Aoki and Farber. Appellants do not provide
substantive arguments for claims 2-17 separate from those of claim 1 (App.
Br. 9-11), and thus, we also sustain the rejections of: 1) claims 9 and 10
over Aoki and Farber; 2) claims 2, 3, 11, and 12 over Aoki, Farber, and
Rudd; 3) claims 4 and 13 over Aoki, Farber, Fulmer, and Ferguson; 4)
claims 5 and 14 over Aoki, Farber, and Ferguson; 5) claims 6 and 15 over
Aoki, Farber, and Hu; 6) claims 7 and 16 over Aoki, Farber, and Kindig; and
7) claims 8 and 17 over Aoki, Farber, and NightFalcon. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
V. CONCLUSION AND DECISION
We affirm the Examiner's rejections of claims 1-17 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See 37
C.F.R. § 4I.50(f).
AFFIRMED
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