Ex Parte Morgan

Patent Trial and Appeal Board

Jul 25, 2013

11334232 (P.T.A.B. Jul. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FABIAN F. MORGAN
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Appeal 2011-002050
Application 11/334,232
Technology Center 2400
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Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-002050
Application 11/334,232

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claim
1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
The invention is directed to management of an instant messaging
contact list (Spec. ¶ [0001]). Claim 1 is reproduced below:
1. A method of managing an instant messaging
contact list, the method comprising:

determining if at least one group member of the instant
messaging contact list is active wherein the instant messaging
contact list comprises instant messaging contact information of
the group member;

assigning a timestamp to the group member based on the
determination of activity wherein the timestamp is assigned
when the group member either instant messages another group
member or initiates an active online connection;

determining whether the group member is inactive for a
predetermined period of time, wherein the predetermined period
of time is at least two days and less than 31 days;

prompting an owner of an instant messaging contact list
for removal of a group member that is inactive by displaying a
last active time and by displaying a prompt to a screen; and

updating the instant messaging contact list based on the
timestamp and the determination of the inactivity and further
based on an owner response to the prompting, wherein updating
the instant messaging contact list comprises sending a prompt
to the group member, deleting the group member from the
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Application 11/334,232

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instant messaging contact list, and archiving instant messaging
(IM) contact information for the group member.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fujimoto

Malik

Apfel
US 2004/0003037 A1

US 2006/0227803 A1

US 7,139,555 B2
Jan. 1, 2004

Oct. 12, 2006
(cont. of app.
10/217,390, filed Aug.
13, 2002)

Nov. 21, 2006
(filed Aug. 30, 2005)

REJECTION
Claim 1 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fujimoto, Malik, and Apfel.

ANALYSIS
Appellant contends Fujimoto fails to disclose “determining whether
the group member is inactive for a predetermined period of time, wherein
the predetermined period of time is at least two days and less than 31 days”,
as recited in claim 1 (See App. Br. 8-16). In response, the Examiner finds
Fujimoto discloses a user agent can be deleted from a watcher list if the
agent is disconnected from the server in an instant messaging system for a
“long time” or a “long period” (Ans. 9).
Appellant replies that Fujimoto’s “long time” should be limited to a
few hours, and thus does not include the claimed range (Reply Br. 5).
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Application 11/334,232

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Fujimoto describes the following:
When a user agent A did not connect with the presence
administration device for a long time, the user agent A is
deleted from the destination watcher list.

. . .

When the user agent A does not connect with the server 1
from any of the clients 2a1, 2a2, and 2a3 for a long period, there
are cases where the user agent A is deleted from the watcher
table 12. This is because the presence notification to a user
agent A who does not use the system for a long time is a waste
of the network resource.

(Fujimoto, ¶¶ [0026], [0133]) (emphases added).
Absent any specific reason why the claimed range of two days or
more and less than 31 days is a critical feature of the present invention, we
see no error in the Examiner’s conclusion (see Ans. 6, 9) that it would have
been well within the ordinary skill in the art to modify Fujimoto’s “long
time” or “long period” to optimize the system to implement the claimed
range. See In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation.”).
Appellant’s Specification does not describe why this particular range is
critical to the invention, and in fact, the Specification does not even mention
the claimed range. Rather, the Specification merely describes “a
predetermined period of time (e.g., number of days, weeks, months, and the
like)” (Spec. ¶ [00024]).
Appellant’s Reply Brief asserts Fujimoto’s “long period” designed to
prevent “waste of the network resource” (Fujimoto, ¶ [0133]) must be
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shorter than two days, and relies on several general examples to demonstrate
that waste of resources occurs much sooner than two days (Reply Br. 3-5).
However, if waste of resources begins sooner than two days, then Fujimoto’s
design imperative of avoiding waste of network resources still applies after
two days. That is, Fujimoto’s system would still be conserving resources if
a user agent was deleted from the watcher list after two days. In other
words, Fujimoto does not teach away from the claimed range.
We are therefore not persuaded the Examiner erred in rejecting claim
1.

CONCLUSION
The Examiner did not err in rejecting claim 1 under 35 U.S.C.
§ 103(a).

DECISION
The Examiner’s decision rejecting claim 1 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). See 37
C.F.R. § 41.50(f).

AFFIRMED

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