Ex Parte Narang et alDownload PDFPatent Trial and Appeal BoardMar 11, 201611906028 (P.T.A.B. Mar. 11, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111906,028 0912712007 88087 7590 03/15/2016 Fritzsche Patent c/o Buchanan Ingersoll & Rooney PC (SEN) P. 0. Box 1404 Alexandria, VA 22313-1404 FIRST NAMED INVENTOR Nidhi Narang 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. 2007Pl5967US 5532 EXAMINER FAN, HUA ART UNIT PAPER NUMBER 2449 NOTIFICATION DATE DELIVERY MODE 03/15/2016 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): ADIPDOC 1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NIDHI NARANG and SUNEETHA TIRUMALAI Appeal2014-003217 Application 11/906,028 Technology Center 2400 Before JEAN R. HOMERE, ERIC S. FRAHM, and JASON J. CHUNG, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Introduction This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b ). An oral hearing was conducted on March 8, 2016. 1 We reverse. Appeal2014-03217 Application 11/906,028 Disclosed and Claimed Invention Claims 1 and 10, the only independent claims on appeal, contain similarly recited features and are directed to a method (claim 1) and non- transitory medium having instructions (claim 10) for managing instant messaging (IM) sessions. The claimed invention is directed to conducting first and second IM sessions (Fig. 3, IM sessions 305 and 310; Fig. 2, steps 205 and 210) within a callable workgroup (Fig. 1, 105) and monitoring communications of the first IM session via the second IM session (Fig. 2, step 215). See Claims 1 and 10. Appellants' disclosed and claimed invention manages callable workgroup instant messages by providing (i) an IM session (Fig. 3, IM session 305) between a first member (e.g., members 1-3 shown as 110, 115, and/or 120 in Fig. 1) of a callable workgroup 105; and (ii) an external user participant (Fig. 1, 125, 130, 135, and/or 140) that calls the callable workgroup (105), and a consultation IM session (i.e., the claimed second IM session 310 shown in Fig. 3). See Figs. 1- 3; Abs.; Spec. iTiT 1-5. Claim 1 is illustrative of the invention and is reproduced below with emphases and bracketed lettering added: 1. A method comprising: conducting a first instant message (IM) session between a first member of a callable workgroup, the callable workgroup comprising a plurality of members having the first member and a second member, the first IM session being between the first member of the callable workgroup and an external user 1 Appellants were represented at oral hearing by Ralph G. Fischer, USPTO Registration No. 55, 179. According to Appellants, the real party in interest is Siemens Enterprise Communications GmbH & Co. (App. Br. 1 ). 2 Appeal2014-03217 Application 11/906,028 participant not a member of the callable workgroup that calls the callable workgroup to initiate the first IM session, [A J wherein the call to initiate the first IM session is directed to all the members of the workgroup; initiating, by the first member of the callable workgroup, a second IM session between the first member and the second member of the callable workgroup; [BJ conducting the second IM session between the first member and the second member of the callable workgroup, the second member of the callable workgroup participating in the second IM session and not participating in the first IM session for at least a first period of time, the second IM session being separate from the first IM session; and [CJ the second member of the callable work group monitoring communications of the first IM session between the first member and the external user via the second IM session. Examiner's Rejections (1) The Examiner rejected claims 1---6, 8-15, 17, and 18 under 35 U.S.C. § 103(a) as being unpatentable over the combination ofLo\v (US 2002/0055973 Al; published May 9, 2002) and Roskind (US 2003/0065721 Al; published Apr. 3, 2003). Final Act. 4--11; Ans. 2-10. (2) The Examiner also rejected dependent claims 7 and 16 under 35 U.S.C. § 103(a) as being unpatentable over Low, Roskind, and Moore (US 2004/0003041 Al; published Jan. 1, 2004). Final Act. 12-13; Ans. 10- 11. Appellants' Contentions (1) With regard to claims 1---6, 8-15, 17, and 18, Appellants contend that the Examiner erred in finding that Low and Roskind teach or suggest 3 Appeal2014-03217 Application 11/906,028 step [BJ recited in independent claim 1,2 and as similarly recited in remaining independent claim 10 (see App. Br. 8-17; Reply Br. 1-2 and 4-- 7).3 (2) With regard to claims 7 and 16, Appellants contend that the Examiner erred in rejecting these claims for the same reasons as argued for claims 1 and 10 from which each of claims 7 and 16 respectively depend (App. Br. 19-21; Reply Br. 2-3).4 ISSUES Based on Appellants' arguments in the Appeal Brief, Reply Brief, and at Oral Hearing, the following issues are presented on appeal: 2 Step [BJ of claim 1 recites, "conducting the second IM session between the first member and the second member of the callable workgroup, the second member of the callable workgroup participating in the second IM session and not participating in the first IM session for at least a first period of time; the second IM session being separate from the first IM session." 3 We recognize that Appellants' arguments present additional issues as to steps [AJ and [CJ. Because we are persuaded of error by the issue raised by Appellants as to step [BJ concerning conducting a second IM session as set forth in claim 1 and similarly recited in claim 10, we do not reach the additional issues as the issue concerning step [BJ is dispositive of the appeal. 4 Claims 7 and 16 each recite "automatically" initiating/invoking the second IM session "in response to the first member [of the callable workgroup J participating in the first IM session with the external user." Again, we recognize that Appellants' arguments present additional issues as to claims 7 and 16. Because we are persuaded of error by the issue as to step [BJ found in parent claims 1 and 10, we do not reach the additional issues regarding claims 7 and 16, as the issue concerning the presence of a second IM session is dispositive of the appeal. 4 Appeal2014-03217 Application 11/906,028 (1) Did the Examiner err in rejecting claims 1---6, 8-15, 17, and 18 under 35 U.S.C. § 103(a) as being unpatentable over Low and Roskind because neither Low nor Roskind teaches or suggests step [BJ, as set forth in independent claim 1, and as similarly recited in remaining independent claim 10? (2) Did the Examiner err in rejecting claims 7 and 16 under 35 U.S.C. § 103(a) as being unpatentable over Low and Roskind because Roskind fails to teach or suggest step [BJ as set forth in independent claim 1, and similarly recited in independent claim 10, from which claims 7 and 16 respectively depend? ANALYSIS We have reviewed Appellants' arguments in the Appeal Brief (App. Br. 6-21 ), Reply Brief (Reply Br. 1-8), and at Oral Hearing on March 8, 2016, and we concur with Appellants' conclusion that the Examiner erred in finding that the combination of Low and Roskind, or either reference individually, teaches or suggests step [BJ recited in claims 1 and 10. We also concur with Appellants' conclusion that the Examiner erred in finding that the combination of references, or even any individual reference, teaches or suggests initiating/invoking the second IM session as recited in claims 7 and 16, which depend from respective ones of claims 1 and 10. Low's paragraphs 4, 305, and/or 355 do not teach or suggest the second IM session as set forth in claims 1 and 10. We agree with the Examiner that Low fails to disclose such a second IM session (see Final Act. 6; Ans. 4 and 12), and we agree with Appellants' arguments (App. Br. 8-11; Reply Br. 1-2 and 4--7) that neither Low, nor the knowledge commonly 5 Appeal2014-03217 Application 11/906,028 known by a person having ordinary skill in the art, discloses monitoring a first IM session via a second IM session as recited in claims 1 and 10. As a result, the Examiner's rejection of claims 1 and 10 is based ultimately on Roskind' s paragraphs 59, 111, and 114 for a disclosure of the recited second IM session (see Final Act. 6-7 and Ans. 4--5 citing paragraphs 59, 111, and 114 as disclosing the recited second IM session. Appellants contend (App. Br. 10; Reply Br. 6) that none of the portions of Roskind cited by the Examiner (i-fi-f 59, 111, and 114) teaches or suggests monitoring the first IM session using a second IM session as set forth in claims 1 and 10. We agree with Appellants' contentions, particularly as to paragraph 111 (i-f 111 is, in our view, the most relevant portion of Roskind cited by the Examiner). Paragraph 111 of Roskind discloses initiating an IM session between a subscriber and members of a recent contact group 814 (analogous to the recited first IM session), which is analogous to the recitation in claims 1 and 10 of "conducting the second IM session between the first member and the second member of the callable workgroup." However, Roskind's disclosure in paragraph 111 of establishing an IM session amongst group members does not meet this requirement of claims 1 and 10 that the first IM session include an external user. And, Roskind' s disclosure in paragraph 111 does not meet the requirement in claims 1 and 10 that the second member of the callable workgroup participate in the second IM session and not participate in the first IM session for at least a first period of time, the second IM session being separate from the first IM session. In other words, Roskind only discloses one IM session, not two IM sessions, and definitely not a second IM session which is used to monitor a first IM session. Notably, the 6 Appeal2014-03217 Application 11/906,028 Examiner does not respond in the Answer (see generally Ans. 12-14), or otherwise rebut Appellants' contention regarding the failure of Roskind's paragraph 111 to teach or suggest the recited second IM session. Neither of Roskind's paragraphs 59 or 114 cures the deficiencies of paragraph 111. Paragraph 59 of Roskind discloses an IM server 5902 for supporting IM services, including the exchange of instant messages between particular subscribers and in group chat rooms. Paragraph 114 of Roskind discloses identifying particular members of specific groups that are online for the purposes of sending an invitation to enter a chat room by accessing a list of screen names of the group members. Roskind is silent as to the inclusion of external users, and is also silent as to the second member of the callable workgroup participating in a second IM session and not participating in the first IM session for at least a first period of time. Therefore, we conclude that the cited portions of relied upon by the Examiner in Roskind fail to disclose a second IM session being conducted in accordance with the limitations of step [BJ recited in claim 1, and the commensurate limitations recited in claim 10. As a result, (i) the Examiner's positions in the Answer (id.) are flawed, and (ii) Appellants' arguments in the Appeal Brief that step [BJ concerning conducting the second IM session is not met by either Low or Roskind (App. Br. 8-1 O; Reply Br. 6), are persuasive. CONCLUSIONS Appellants have established that the Examiner erred in rejecting the claims on appeal, because the combination of Low and Roskind fails to teach or suggest step [BJ as required by independent claim 1, and as recited 7 Appeal2014-03217 Application 11/906,028 similarly in remaining independent claim 10 on appeal. Accordingly, we do not sustain the Examiner's rejections of (i) claims 1-6, 8-15, 17, and 18 over Low and Roskind; and (ii) claims 7 and 16 over Low, Roskind, and Moore. ORDER We reverse the Examiner's rejection of claims 1-18. REVERSED 8 Copy with citationCopy as parenthetical citation