Ex Parte Prado et alDownload PDFPatent Trial and Appeal BoardJul 19, 201613558916 (P.T.A.B. Jul. 19, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 13/558,916 101838 7590 IP Spring - LE Ajay Gambhir 180 N. LaSalle St. Suite 3700 Chicago, IL 60601 FILING DATE FIRST NAMED INVENTOR 07/26/2012 Jason PRADO 07/21/2016 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. LE-0568-01-US-NP 8268 EXAMINER KEEHN, RICHARD G ART UNIT PAPER NUMBER 2456 NOTIFICATION DATE DELIVERY MODE 07/21/2016 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): paralegalteam@ipspring.com docket@ipspring.com ajay.gambhir@ipspring.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JASON PRADO, BENJAMIN DAVID EIDELSON, PETER MICHAL PAWLOWSKI, and DOUG SHERRETS Appeal2015-003673 Application 13/558,916 Technology Center 2400 Before THU A. DANG, JOHN D. HAMANN, and JOYCE CRAIG, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-17. Claims 18-20 been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. A. THE INVENTION According to Appellants, the claimed invention relates to "off-the- record communication including expiring messages" (Abst.). B. ILLUSTRATIVE CLAIM Claim 1 is exemplary: Appeal2015-003673 Application 13/558,916 1. A method of off-the-record communication including expiring messages, the method comprising: receiving, at a server, an electronic communication from a source device, the electronic communication including at least one expirmg message; temporarily storing, at the server, content of the expiring message in a non-durable memory for a predetermined amount of time; durably storing, at the server, envelope information associated with the expiring message in a durable memory apart from the content of the expiring message that is stored in the non- durable memory; determining whether a recipient device for the expiring message is available to accept transmission of the expiring message and determining whether an expiration event has occurred; and transmitting information to the recipient device, wherein the transmitted information is contingent upon the determination of whether an expiration event has occurred and includes one of the group consisting of: the content of the exp1nng message when the recipient device is available to accept transmission of the expiring message before the expiration event has occurred, and the envelope information of the expiring message when the recipient device is not available to accept transmission of the expiring message until after the expiration event has occurred. 2 Appeal2015-003673 Application 13/558,916 C. REJECTIONS The prior art relied upon by the Examiner in rejecting the claims on appeal is: Hui Wilson Begley Daniels US 2007/0174404 Al US 2008/0109518 Al US 2008/0320417 Al US 7,640,307 B2 July 26, 2007 May 8, 2008 Dec. 25, 2008 Dec. 29, 2009 Claims 1-12 and 14--17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Begley, Hui, and Wilson. Claim 13 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Begley, Hui, Wilson, and Daniels. II. ISSUES The issue before us is whether the Examiner erred in finding the combination of Begley, Hui, and \X/ilson teaches or \x1ould have suggested "determining whether a recipient device for the expiring message is available to accept transmission of the expiring message ... ,"wherein the transmitted information includes one of "the content of the expiring message when the recipient device is available to accept transmission of the expiring message before the expiration event has occurred," and "the envelope information of the expiring message when the recipient device is not available to accept transmission of the expiring message until after the expiration event has occurred" (claim 1, emphasis added). 3 Appeal2015-003673 Application 13/558,916 III. ANALYSIS Appellants contend "Begley describes transmitting a URL link to the recipient regardless of whether or not the recipient device is available" whereas claim 1 recites "transmitting ... the content of the expiring message when the recipient device is available to accept transmission of the expiring message before the expiration event occurs" (App. Br. 8, citing claim 1 ). According to Appellants, in Begley, "the transmitted information never includes the content of the expiration message" but rather "Begley transmits only a URL link to direct the recipient to a secure website" (id.). Accordingly, Appellants contend "the combination of the cited references, to the extent such references can be properly combined, fails to teach or suggest each and every limitation of claims 1 and 8" (App. Br. 9). After reviewing the record on appeal, we find the preponderance of evidence supports Appellants' position. Even though the Examiner finds that "Hui discloses determining whether a recipient of an event can participate within a given time window" (Ans. 2) and that Hui's "transmission is contingent upon expiration of the recipient's time window expiration" (Ans. 3), the Examiner has not sufficiently identified where in the cited portions of Begley, Hui, and/or Wilson there is a teaching or even suggestion of "determining whether a recipient device for the expiring message is available to accept transmission of the expiring message," as required by claim 1. Thus, we also find no support for the Examiner's finding that the transmitted information includes one of "the content of the expiring message when the recipient device is available to accept transmission of the expiring message before the expiration event has occurred," and "the envelope information of the expiring message when the 4 Appeal2015-003673 Application 13/558,916 recipient device is not available to accept transmission of the expiring message until after the expiration event has occurred," as required by claim 1 (emphasis added). That is, although the Examiner finds Hui discloses determining whether a user can participate in an event (Ans. 2), and that transmission is contingent on a time window (Ans. 3), we are unconvinced that the cited portions of Hui teach or at least suggest generating determining whether the user/recipient is available to accept transmission of an expiring message, as required in independent claim 1. Therefore, on this record, we reverse the Examiner's§ 103 rejection of independent claim 1, independent claim 8 (similarly reciting the contested limitations and standing therewith), and claims 2-7, 9-12, and 14--17 depending respectively therefrom, over Begley, Hui and Wilson. The Examiner makes no finding as to whether Daniels makes up for the above-discussed deficiencies of Begley, Hui, and Wilson. Thus, we also reverse the rejections of claim 13 over Begley, Hui, and Wilson, in further view of Daniels. IV. CONCLUSION AND DECISION We reverse the Examiner's rejection of claims 1-17 under 35 U.S.C. § 103(a). REVERSED 5 Copy with citationCopy as parenthetical citation