Motorola Mobility LLC

Patent Trials and Appeals Board

Jun 28, 2021

2020002756 (P.T.A.B. Jun. 28, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/611,409 06/01/2017 Amit Kumar Agrawal MM920170087-US-NP 9473
138602 7590 06/28/2021
FIG. 1 Patents
116 W. Pacific Avenue
Suite 200
Spokane, WA 99201
EXAMINER
MCBETH, WILLIAM C
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
06/28/2021 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):
Fig1Docket@fig1patents.com
docketing.mobility@motorola.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AMIT KUMAR AGRAWAL and SOUMYA RANJAN MUND
____________

Appeal 2020-002756
Application 15/611,409
Technology Center 2400
____________

Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2020-002756
Application 15/611,409
2
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–3, 5–14, and 16–22, which constitute all the
claims pending in this application. Appeal Br. 3. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellant’s claimed invention is directed to “a chat management
system that provides chat conversation functionality” that “monitors a group
chat conversation and automatically places the group chat conversation in
mute mode or snooze mode” based “upon various contextual conditions.”
Abstract.
Claims 1, 12, and 16 are independent; independent claim 1,
reproduced below, is representative of the subject matter on appeal:
1. A method, comprising:

monitoring, using a chat management system, a group
chat conversation;

detecting, using the chat management system, one or
more contextual conditions associated with the group chat
conversation, wherein one contextual condition pertains to a
user manually dismissing a notification associated with the
group chat conversation; and

responsive to one or more detected contextual conditions,
automatically snoozing, using the chat management system, the
group chat conversation, wherein said snoozing turns off

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Motorola Mobility LLC as the real
party in interest (Appeal Br. 3).
Appeal 2020-002756
Application 15/611,409
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audible notifications and visual notifications for the group chat
conversation.
Appeal Br. 14.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is the following:
Name Reference Date
Winston US 2015/0334069 A1 Nov. 19, 2015
Bhagwat US 2015/0332168 A1 Nov. 19, 2015
Ghafourifar US 2016/0112358 A1 Apr. 21, 2016
Busch US 2018/0217429 A1 Aug. 2, 2018
Dunne US 2018/0255013 A1 Sept. 6, 2018
Anonymous, “A mechanism to dynamically turn off/on the notification
on user behaviors in group chat” (Jan. 22, 2017)

REJECTIONS
The Examiner made the following rejections:
Claims 1–3, 5, 8, 10, 12, 14, 16–18, and 20 stand rejected under 35
U.S.C. § 103 as being unpatentable over Dunne and Winston. Final Act. 4.
Claims 6 and 7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Dunne, Winston, and Anonymous. Final Act. 16.
Claims 9, 13, and 19 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Dunne, Winston, and Busch. Final Act. 19.
Claim 11 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Dunne, Winston, and Bhagwat. Final Act. 22.
Claims 21 and 22 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Dunne, Winston, and Ghafourifar. Final Act. 24.

Appeal 2020-002756
Application 15/611,409
4
ISSUE
The pivotal issue is whether the Examiner erred in finding that Dunne
is combinable with Winston.

ANALYSIS
We adopt the Examiner’s findings in the Answer and Final Office
Action, and we add the following primarily for emphasis. We note that if
Appellant failed to present arguments on a particular rejection, we will not
unilaterally review those uncontested aspects of the rejection. See Ex parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential); Hyatt v. Dudas,
551 F.3d 1307, 1313–14 (Fed. Cir. 2008) (The Board may treat arguments
Appellant failed to make for a given ground of rejection as waived.).
Appellant argues that “the intended purpose in Dunne is that, in a
group chat session, messages with certain topics can be suppressed, while at
the same time, messages pertaining to other topics can be received by the
user” (Appeal Br. 9, citing Dunne ¶¶ 10, 16). Appellant contends that the
“proposed modification to Dunne cited in the Office Action is to modify
Dunne ‘to automatically suppress both audible and visual message
notifications for the group chat as taught by Winston’” (Appeal Br. 10,
quoting Final Act. 6, 11, 14). In sum, Appellant argues that
[i]f Dunne were to be modified to turn off audible notifications
and visual notifications for the group chat conversation as
suggested in the Office Action, the intended purpose of Dunne
of suppressing messages with certain topics while at the same
time allowing messages pertaining to other topics to be received
by the user would be frustrated. Thus, modifying Dunne as
described in the Office Action would render Dunne
unsatisfactory for its intended purpose, so there is no suggestion
or motivation to make the proposed modification

Appeal 2020-002756
Application 15/611,409
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(Appeal Br. 10). Appellant similarly argues that “modifying Dunne as
described in the Office Action would change a principle of operation of
Dunne” (Appeal Br. 13).
We are not persuaded by Appellant’s arguments, as Appellant
incorrectly assumes that the rejection implies the “group chat as taught by
Winston” is part of the modification of Dunne. It is not. The Examiner
finds, and we agree, that
modifying the method of Dunne to explicitly suppress both
audible and visual notifications, as suggested by Winston,
enhances the intended purpose of Dunne by clarifying the types
of notifications that are suppressed

(Final Act. 3 (emphasis in original deleted, current emphasis added)).
Additionally, both the Final Rejection and the Answer make clear that the
sole teaching from Winston taken by one skilled in the art in the
modification of Dunne is the explicit suppression of both audible and visual
notifications, as the Examiner finds, and we agree, that
applying a known technique (suspension of both audio and
visual types of notifications) to known devices and/or methods
(a method for managing message notifications) ready for
improvement to yield predictable and desirable results
(automatic suspension of both audible and visual message
notifications for the group chat based on the actions of the user)

(Final Act. 6, citing KSR International Co. v. Teleflex Inc., 550 U.S. 398
(2007) (emphases in original deleted, current emphasis added); see also Ans.
6).
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference . . . . Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.” In re
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Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Sneed, 710 F.2d
1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review.”); and In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining
the teachings of references does not involve an ability to combine their
specific structures.”). Rather, “if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007).
When the combined teachings of Dunne and Winston are viewed
properly, Winston’s teaching of suppression of both audio and visual
notifications is an enhancement to Dunne as it “clarifi[es] the types of
notifications that are suppressed” (Final Act. 3), and Dunne is not rendered
unsatisfactory for its intended purpose; similarly the combination does not
change the principle of operation of Dunne.
Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 1, as well as independent claims 12 and 16 not separately
argued, and all dependent claims not separately argued.
CONCLUSION
The Examiner did not err in finding that Dunne is combinable with
Winston.

DECISION
In summary:
Appeal 2020-002756
Application 15/611,409
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Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Ba
sis
Affirmed Reversed
1–3, 5, 8, 10,
12, 14, 16–
18, 20
103 Dunne, Winston 1–3, 5, 8,
10, 12,
14, 16–
18, 20

6, 7 103 Dunne, Winston,
Anonymous
6, 7
9, 13, 19 103 Dunne, Winston,
Busch
9, 13, 19
11 103 Dunne, Winston,
Bhagwat
11
21, 22 103 Dunne, Winston,
Ghafourifar
21, 22
OVERALL
OUTCOME
1–3, 5–
14, 16–22

TIME PERIOD FOR RESPONSE
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).

AFFIRMED