Ex Parte Bank et al

Patent Trial and Appeal Board

Apr 25, 2018

14097594 (P.T.A.B. Apr. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/097,594 12/05/2013
135835 7590 04/25/2018
IBM Corp. (POU)
c/o The Law Office of James Baudino, PLLC
2313 Roosevelt Drive
Suite A
Arlington, TX 76016
FIRST NAMED INVENTOR
Judith H. Bank
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.
AUS920130247US 1 3276
EXAMINER
PATEL,DHAIRYAA
ART UNIT PAPER NUMBER
2453
MAILDATE DELIVERY MODE
04/25/2018 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 JUDITH H. BANK, LIAM HARPUR, LIN SUN,
RUTHIE D. LYLE, and PATRICKJ. O'SULLIVAN
Appeal 2017-011461
Application 14/097 ,594
Technology Center 2400
Before JOHNNY A. KUMAR, TERRENCE W. McMILLIN, and
SCOTT E. BAIN, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of method claims 8-27. 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 The real party in interest is International Business Machines Corporation.
App. Br. 2.
2 Corresponding method claims are under separate appeal 2017-011427, for
copending application 14/497,124.
Appeal 2017-011461
Application 14/097 ,594
STATEMENT OF THE CASE
Invention
The invention on appeal relates to "automatically launching an audio
and/or video conference." (Spec. i-f 2).
Representative Claim 8
Exemplary claim 8 under appeal reads as follows (bracketed matter
added):
8. A system, comprising:
a first client having a processor unit and a memory, the first client
having a launch module executable by the processor unit to:
[L 1] register a first user with a server to enable an activity being
performed by the first user to be communicated to the server;
[L2] receive and store, from the first user, an activity criterion, [L3]
the activity criterion defining an activity that the first user desires to
have a communication established associated therewith with a second
user;
[L4] responsive to detecting the activity of the first user meeting the
activity criterion, communicate the activity to the server to [L5]
initiate a search for the second user that is performing an activity
meeting the activity criterion; and
[L6] responsive to receiving a notification from the server of the
second user that is performing an activity meeting the activity
criterion, automatically initiate an electronic communication session
between the first client and a second client of the second user.
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Application 14/097 ,594
Rejections3
Claims 8-27 are rejected on the grounds of nonstatutory obviousness-
type double patenting as being unpatentable over co-pending application
14/497, 124.
Claims 8-20 are rejected under 35 U.S.C. § 103(a) over Brown (US
2009/0144369 Al, published June 4. 2009) in view ofKorbecki (US
2015/0149179 Al, published May 28, 2015), further in view ofDeLuca et
al. (US 2011/0066949 Al, published Mar. 17, 2011) (hereinafter "DeLuca").
Claims 21-26 are rejected under 35 U.S.C. § 103(a) over Thompson
et al. (US 2015/0127737 Al, published May 7, 2015) (hereinafter
"Thompson") in view of Korbecki further in view of DeLuca.
Claim 27 is rejected under 35 U.S.C. § 103(a) over Brown in view of
Korbecki in view of DeLuca further in view of Insley (US 2006/013 6498
Al, published June 22, 2006).
Appellants ' Contentions
1. Appellants contend that the Examiner erred in rejecting claim 8
under 35 U.S.C. § 103(a) because:
The cited references fail to disclose the receipt by a first client
of a first user of a notification from a server that a second user
is performing an activity meeting the activity criterion that
automatically initiates an electronic communication session
between the first client of the first user and a second client used
by the second user.
App. Br. 5-9; Reply Br. 2---6 (Appellants' emphasis omitted).
Appellants also contend:
3 We proforma affirm the double patenting rejection, which was not
contested by Appellants.
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Application 14/097 ,594
The cited references fail to disclose a first user's device that
stores an activity criterion that defines an activity that the first
user desires to have a communication established associated
therewith with a second user.
App. Br. 9--11; Reply Br. 7-9 (Appellants' emphasis omitted).
2. Appellants also contend that the Examiner erred in rejecting
claims 8 and 15 under 35 U.S.C. § 103(a) because "[t]here is no rational
basis for combining the purported teaching of Korbecki with Brown." App.
Br. 11-12; Reply Br. 9-10.
Issue on Appeal
Did the Examiner err in rejecting claims 8-27 as being obvious
because the references fail to teach or suggest the claim limitations at issue?
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We disagree with Appellants' arguments, and we adopt as our
own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Answer in response to Appellants' arguments. However, we highlight
and address specific findings and arguments for emphasis in our analysis
below.
The Examiner finds, and we agree, Brown teaches claimed element
[L 1], [L2], and [L4], Korbecki teaches claimed element [L6], whereas
whereas the remaining claimed elements [L3] and [L5] are taught by
DeLuca. Final Act. 11-13.
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Appeal 2017-011461
Application 14/097 ,594
As to Appellants' above contention 1, we are not persuaded the
Examiner erred. We are not persuaded because essentially Appellants'
argument is premised on a "physical" or "bodily" incorporation of
limitations of one reference into the other. This is not the standard of
obviousness. See 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") (citations omitted); In re
Keller, 642 F.2d 413, 425 (CCPA 1981) ("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 the references would have suggested to those of
ordinary skill in the art"). Moreover, "[a] reference must be considered for
everything it teaches by way of technology and is not limited to the
particular invention it is describing and attempting to protect." EWP Corp.
v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphasis
omitted).
Furthermore, an ordinarily skilled artisan is not compelled to blindly
follow the teaching of one prior art reference over the other without the
exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp.,
733 F.2d 881, 889 (Fed. Cir. 1984). "[T]he analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007).
In particular, the Examiner finds, and we agree:
Paragraph 20, 23-24, Brown teaches a system, comprising: a
first client having a processor unit and a memory; and a launch
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Application 14/097 ,594
module (Fig. 1 element 150)(i.e. pedometer or GPS) executable
by the processor unit to: register a first user (i.e. user Z which is
registered users) with a server (i.e. application server) to enable
an activity being performed by the first user (i.e. user Z) on the
first client to be communicated to the server (i.e. activity
monitor of the user Z transmits the activity signal to the
application server which allows the activity to be published in
near real-time) (Paragraph 17, 18); receive and store from the
first user, an activity criterion (Paragraph 20: an activity
monitor is operated by a user of the social network and
measures an activity signal due to the activity of the user;
[0023]: application server receives and stores this signal via
activity monitor);
In Paragraph 20, 23, Brown teaches receive and store,
from a first user, an activity criterion (Paragraph 20, 23: an
activity monitor is operated by a user of the social network and
measures an activity signal due to the activity of the user;
[0023]: application server receives and stores this signal via
activity monitor).
In Paragraph 19, 24, Brown teaches responsive to
detecting an activity of the first user meeting the activity
criterion (Paragraph 24) communicate the activity to the server
(Paragraph 19) (i.e. by comparing or matching (i.e., responding)
with stored calibrated signal, user's new activity signal is
identified which is running)
Ans. 3--4.
The Examiner also finds, and we agree:
Korbecki teaches receive and store, from a first user (i.e.
first user accessing football on first user equipment) an activity
criterion (i.e. accessing football game )(Paragraph 111 ),
responsive to detecting an activity of the first user meeting the
activity criterion communicate the activity to the server (i.e.
while accessing the game, the second user post a comment
about the game, remote server associated with the social
network may identify that the first and the second users)
(Paragraph 111 ); responsive to receiving a notification from the
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Application 14/097 ,594
server that a second user is performing an activity on the second
client meeting the activity criterion (Paragraph 111 ),
automatically initiate an electronic communication session
between the first client and the second client (i.e. remote server
may transmit the comment generated by the second user to the
first user in form of text only, audio, video) (Paragraph 111 ).
Ans. 5.
Furthermore, the Examiner finds, and we agree:
Deluca teaches the activity criterion defining an activity
that the first user desires to have a communication established
associated with the second user (Paragraph 79-80); and to
initiate a search for the second user that is performing a activity
meeting the activity criterion (Paragraph 74, 75, 80); responsive
to receiving a notification from the server of the second user is
performing an activity meeting the activity criterion (Paragraph
80). It would have been obvious to one of ordinary skill in the
art before the effective filing date of claimed invention to
implement Deluca's teaching in Brown and Korbecki's
teaching to come up with having initiating a search for the
second user that is performing an activity meeting the activity
criterion. The motivation for doing so would be so users which
[sic] similar interest and activity can communicate in real-time
with each other.
Ans. 6-7.
As to Appellants' above contention 2, we are not persuaded the
Examiner erred. The Examiner has set forth why an ordinary skilled artisan
would have been motivated to combine the teachings of Brown, Korbecki,
and DeLuca to arrive at the claimed invention. Final Act. 12-13; see Ans.
8-9. Appellants have not presented any persuasive evidence or argument
why the ordinary artisan would not have possessed the knowledge and skills
to know how to combine the prior art references. As such, we find that one
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Application 14/097 ,594
of ordinary skill in the art would have recognized how to adjust Brown to
accommodate the teachings from Korbecki and DeLuca.
Regarding claims 9, 12, 16, 19, and 21-27 although Appellants raise
additional arguments for patentability (App. Br. 13-22; Reply Br. 11-21 ),
we find that the Examiner has established the references teach or suggest
their claim limitations by a preponderance of the evidence and sufficiently
rebutted in the Answer each of the arguments. Ans. 9-16; Final Act. 13-20.
We adopt the Examiner's findings and underlying reasoning, which are
incorporated herein by reference. Consequently, Appellants have failed to
show error in the Examiner's rejections of claims 9-27.
DECISION
We proforma affirm the Examiner's rejection of claims 8-27 on the
grounds of nonstatutory obviousness-type double patenting as being
unpatentable over co-pending application 14/497,124.
We affirm the Examiner's decision rejecting claims 8-27 under
35 U.S.C. § 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(f).
AFFIRMED
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