Ex Parte Bailey et al

Patent Trial and Appeal Board

Apr 25, 2013

11168650 (P.T.A.B. Apr. 25, 2013)

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.
11/168,650 06/28/2005 Thomas Jack Geraint Bailey GB920040009US1 9665
46320 7590 04/25/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
CHANG, TOM Y
ART UNIT PAPER NUMBER
2456
MAIL DATE DELIVERY MODE
04/25/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS JACK GERAINT BAILEY,
CHRISTOPHER DAVID PAUL JENKINS,
JONATHAN MARK ROBERTS, and KIERAN PAUL SCOTT
____________

Appeal 2010-010310
Application 11/168,650
Technology Center 2400
____________

Before SCOTT R. BOALICK, BARBARA A. BENOIT,
and DAVID C. McKONE, Administrative Patent Judges.

McKONE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 15, and 20-32, which constitute all the claims pending in this
application. See App. Br. 2. Claims 2-14 and 16-19 are cancelled. See id.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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Application 11/168,650

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THE INVENTION
Appellants’ invention relates to a user interface for an instant
messaging system. See Spec. 2:27-30. Claim 1, which is illustrative of the
invention, reads as follows:
1. A method in an instant messaging system,
said instant messaging system having a graphical user
interface, said method comprising:
receiving a selection of two or more instant
messaging entities in the instant messaging system;
creating, on an instruction from the GUI, a direct
relationship between the selected instant messaging
entities;
displaying, using the GUI, the direct relationship
between the instant messaging entities.

THE REJECTIONS
Claims 1, 15, 24, and 27 stand provisionally rejected for nonstatutory
obviousness-type double patenting over claims 1, 10, and 20 of Application
Number 11/169,094. See Ans. 4-7.
Claims 1, 15, and 20-32 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Smith (US 6,792,448 B1; issued Sept.14, 2004; filed Jan. 14,
2000). See Ans. 7-9.

ANALYSIS
NONSTATUTORY OBVIOUSNESS-TYPE DOUBLE PATENTING
REJECTION OF CLAIMS 1, 15, 24, AND 27
The Examiner provisionally rejects claims 1, 15, 24, and 27 for
nonstatutory obviousness-type double patenting rejection over Application
Number 11/169,094.
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As a provisional rejection, the rejection is not ripe for our review.
Moreover, since Application Number 11/169,094 was abandoned, the
rejection is moot. Therefore, we do not reach the nonstatutory obviousness-
type double patenting rejection.

REJECTION OF CLAIMS 1, 15, AND 20-32 UNDER 35 U.S.C. § 102(e)
Appellants state that claims 15 and 20-32 stand or fall together with
claim 1. See App. Br. 9. Therefore, we select claim 1 as representative.
The Examiner finds that Smith discloses each limitation of claim 1. See
Ans. 7-8.
Appellants contend that Smith does not disclose an “instant messaging
system” as recited in claim 1. See App. Br. 10-11. Instead, Appellants
argue, Smith refers to a “chat system.” Id. “During examination, claims are
to be given their broadest reasonable interpretation consistent with the
specification . . . .” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (internal quotation marks omitted) (citations omitted). The
issue is whether, under a broadest reasonable interpretation, “instant
messaging system,” as recited in claim 1, includes a “chat system.”
Appellants cite Wikipedia1 for the proposition that “distinct
differences” exist between chat systems and instant messaging systems.
App. Br. 11-12. The Examiner, in turn, cites a published patent application
in support of his finding that instant messaging and chat systems are

1 Wikipedia has limited probative value in view of its dubious reliability.
Among other things, Wikipedia is not peer reviewed, the authors are
unknown, and apparently anyone can contribute to the source definition.
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“interchangeable,” Ans. 11, to which Appellants respond with citations of
their own to patents that say otherwise, see Reply Br. 7-8.
Appellants’ own Specification, however, makes clear that “instant
messaging system” is broad enough to encompass chat systems. For
example, the Specification states that
An instant messaging system allows text based real time
conversation over a network between user computers. Such a
system comprises a server application running on a server
computer with client applications running on user computers.
The client applications allow connected users to participate in a
conversation or chat with each other using graphical user
interfaces (GUI).
Spec. 1:10-14 (emphasis added). See also id. at 1:16-20 (“In a known
instant messaging system, a user computer activates a client application
(client) . . . . The client . . . is able to instigate a chat with one or more
selected clients.” (emphasis added)); 2:32-37 (each instant message is
represented by a “ChatMessage” object); 6:19-25 (describing the examples
of Figs. 19, 21, and 22 as “chat[s]”); 6:40–7:26 (preferred embodiment
includes “chat objects” and “Chat 14”). Appellants point to nothing in the
Specification that would limit the term “instant message system” to exclude
a “chat system.” Thus, we agree with the Examiner that the claimed “instant
message system” can include a “chat system.”
Appellants next contend that Smith does not teach “receiving a
selection of two or more instant messaging entities,” as recited in claim 1,
arguing that Smith only teaches selecting the message to be moved to a new
location. See App. Br. 12-13 (citing Smith, col. 10, ll. 15-23). The
Examiner finds this limitation disclosed at Smith, column 4, lines 57-62,
which describes listing messages in a threaded or tree structure. See Ans. 7.
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At column 10, lines 17-20, Smith explains that “the user could use a
graphical user input device like a mouse to ‘click and drag’ the new message
as rendered in message pane 72 to a correct thread location.” The issue is
whether the user’s selection of a location to “drop” the message constitutes
the selection of another message. We find that it does.
Smith describes a “threaded text discussion” in which an answer
message is displayed in a thread under the question message to which it
corresponds. See Smith, Abstract; Fig. 3. According to Smith, “[t]he
messages are threaded in that messages that reference or reply to a prior
message are nested or positioned directly under the prior message. The
threading of related messages or turns may be performed manually by the
user or automatically by the discussion system based upon a messaging
heuristic.” Smith, col. 2, ll. 26-32; accord id. at col. 4, ll. 57-62. Thus,
Smith’s description of dragging a new message to a correct thread location
(col. 10, ll. 17-20) is best read as dragging an answer to the question that it
answers, i.e., the second instant messaging entity. Indeed, Smith explains
that “[t]he user may manually indicate a previous turn from which the new
turn is to be threaded by graphically selecting or indicating the previous
turn in message pane 72, such as with a graphical input device like a
mouse.” Smith, col. 9, ll. 27-31 (emphasis added). We find that this
describes the selection of a first instant messaging entity (“new turn”) and a
second instant messaging entity (“previous turn”).
Finally, Appellants contend that Smith does not disclose “creating . . .
a direct relationship between the selected instant messaging entities.” See
App. Br. 13. Instead, Appellants argue, Smith discloses a direct relationship
only between a message and its thread, and that any relationship between
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messages in a thread is indirect. See App. Br. 13-14 (citing Smith, Fig. 5;
col. 9, l. 48–col. 10, l. 23). However, as Smith explains, Figure 5 shows a
process that “automatically associates a responsive new message or turn
with an existing turn and its thread . . . .” Smith, col. 9, ll. 59-61. Here, the
first instant messaging entity (“new message or turn”) has a direct
relationship with the second instant messaging entity (“existing turn”) itself,
and not just the thread. Thus, we are not persuaded that the Examiner erred
in finding that Smith discloses “creating . . . a direct relationship between the
selected instant messaging entities.”
Accordingly, we sustain the rejection of representative claim 1 and
claims 15 and 20-32 not argued with particularity.

ORDER
The decision of the Examiner to reject claims 1, 15, and 20-32 under
§ 102(e) is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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