Ex Parte Prado et al

Patent Trial and Appeal Board

Jul 19, 2016

13558916 (P.T.A.B. Jul. 19, 2016)

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.
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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).
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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
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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
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