Ex Parte Narang et al

Patent Trial and Appeal Board

Mar 11, 2016

11906028 (P.T.A.B. Mar. 11, 2016)

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.
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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 ).
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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
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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.
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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
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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
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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
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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
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