Ex Parte Christie et al

Patent Trial and Appeal Board

Jul 21, 2017

13908998 (P.T.A.B. Jul. 21, 2017)

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.
13/908,998 06/03/2013 Gregory N. Christie 106842074802(P2985USC2) 4700
APPLE c/o MORRISON & FOERSTER LLP PALO ALTO
755 PAGE MILL ROAD
PALO ALTO, CA 94304-1018
EXAMINER
SHEPPERD, ERIC W
ART UNIT PAPER NUMBER
2492
NOTIFICATION DATE DELIVERY MODE
07/25/2017 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):
EOfficePA @ mofo.com
PatentDocket @ mofo. com
pair_mofo @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY N. CHRISTIE, PETER T. WESTEN,
STEPHEN O. LEMAY, and JENS ALFKE
Appeal 2017-001703
Application 13/908,998
Technology Center 2400
Before MARC S. HOFF, WILLIAM M. FINK, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 2-4, 6—11, 13—18, and 20—22. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Apple Inc. App. Br. 2.
Appeal 2017-001703
Application 13/908,998
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention “relates generally to a
user interface for displaying an exchange of messages during an instant
messaging session, and, more particularly, to a method and apparatus for
displaying instant message exchanges in a manner that graphically
differentiates the participants in a conversation.” Spec. 12.2
Exemplary Claim
Independent claim 2 exemplifies the subject matter of the claims
under consideration and reads as follows:
2. A method, comprising:
at a computing device with a display:
displaying a communication session window on the
display, the communication session window being configured
to display instant messages from a first participant and instant
messages from a second participant during an instant messaging
session between the first participant and the second participant,
the communication session window being partitioned into a
right region and a left region, the right region being associated
with the first participant and the left region being associated
with the second participant, wherein:
the right region includes:
an overlapping portion that partially overlaps with
the left region such that an instant message from the first
2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed June 3, 2013; “Final Act.” for the Final Office Action,
mailed August 17, 2015; “Adv. Act.” for the Advisory Action, mailed
November 10, 2015; “App. Br.” for the Appeal Brief, filed April 18, 2016;
“Ans.” for the Examiner’s Answer, mailed September 6, 2016; and
“Reply Br.” for the Reply Brief, filed November 7, 2016.
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Application 13/908,998
participant extends from the right region partially into the
left region; and
a non-overlapping portion that does not overlap
with the left region and extends to the right of the
overlapping portion of the right region; and
the left region includes:
an overlapping portion that partially overlaps with
the right region such that an instant message from the
second participant extends from the left region partially
into the right region; and
a non-overlapping portion that does not overlap
with the right region and extends to the left of the
overlapping portion of the left region;
receiving instant messages from the first participant and
instant messages from the second participant during the instant
messaging session between the first participant and the second
participant;
for each respective instant message in the instant
messaging session between the first participant and the second
participant:
determining whether the respective instant
message is from the first participant or the second
participant;
based on a determination that the respective instant
message is from the first participant, displaying the
respective instant message in the right region of the
communication session window that is associated with
the first participant, and
based on a determination that the respective instant
message is from the second participant, displaying the
respective instant message in the left region of the
communication session window that is associated with
the second participant; and
wherein a plurality of instant messages from the first
participant are concurrently displayed in the right region of the
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communication session window that is associated with the first
participant and a plurality of instant messages from the second
participant are concurrently displayed in the left region of the
communication session window that is associated with the
second participant.
App. Br. 14—15 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability, the Examiner relies on the following
prior art:
Allard et al. US 5,815,142
(“Allard”)
Harvey et al. US 6,784,901 B1
(“Harvey”)
Tarumi JP 2002082893
The Rejections on Appeal
Claims 2^4 and 6—8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tarumi and Harvey. Final Act. 3—9.
Claims 9—11, 13—18, and 20—22 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Tarumi, Harvey, and Allard. Final Act. 9-20.
ANAFYSIS
We have reviewed the rejections of claims 2-4, 6—11, 13—18, and
20—22 in light of Appellants’ arguments that the Examiner erred. For the
reasons explained below, we disagree with Appellants’ assertions regarding
error by the Examiner. We adopt the Examiner’s findings in the Final
Office Action (Final Act. 2—20), the Advisory Action (Adv. Act. 2), and the
Answer (Ans. 3—5). We add the following to address and emphasize
specific findings and arguments.
Sept. 29, 1998
Aug. 31,2004
(filed Aug. 31 2000)
Mar. 22, 2002
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The § 103(a) Rejection of Claims 2—4 and 6—8
Tarumi Does Not Teach Away from Concurrently
Displaying Multiple Messages for Each User
Appellants argue that the Examiner erred in rejecting claim 2 because
Tarumi teaches away from concurrently displaying multiple messages for
each user. App. Br. 7—9; Reply Br. 3^4. Appellants note that Tarumi
discloses (1) a first embodiment, e.g., as shown in Figure 8, that
concurrently displays multiple messages for each user, i.e., as left-justified
lines of text arranged chronologically, and (2) a second embodiment, e.g., as
shown in Figure 12, that displays a single speech balloon for each user and
one message at a time in each speech balloon. App. Br. 7—8; see Reply
Br. 3—5; Ans. 4; see also Tarumi Figs. 8, 12. Appellants assert that “Tarumi
criticizes the multiple-message embodiment in Fig. 8 for making the chat
user ‘aware that the chat conversation partner is another user at a remote
location.’” App. Br. 8 (quoting Tarumi | 66); see Reply Br. 3. Appellants
additionally assert that “Tarumi teaches away from displaying multiple
messages from chat users in the embodiment of Fig. 12 because displaying
multiple messages would make the chat experience feel like a conversation
with a remote partner, rather than providing a real sense of a conversation
with a local partner.” App. Br. 8; see Reply Br. 3^4.
Appellants’ assertions do not persuade us of Examiner error.
“A reference may be said to teach away when a person of ordinary skill,
upon reading the reference, would be discouraged from following the path
set out in the reference, or would be led in a direction divergent from the
path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). “A reference does not teach away, however, if it merely
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expresses a general preference for an alternative invention but does not
‘criticize, discredit, or otherwise discourage’ investigation into the invention
claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004)).
Here, the Examiner finds that Tarumi does not mention the
“preference of a single message/chat balloon over multiple messages/chat
balloons from a participant.” Ans. 3; see Adv. Act. 2. More specifically,
Tarumi describes several embodiments for facilitating chats among users in
different geographical locations. See, e.g., Tarumi H 10—13, 15—17, 23—69,
Abstract, Figs. 7—8, 11—12. Tarumi calls the first embodiment “the most
basic embodiment for a certain user to satisfy the request of wishing to have
a chat with an unspecified user in a specific location.” Id. 123. Figure 8
relates to the first embodiment. Id. H 40-43. Tarumi calls the second
embodiment an “improvement[] or minor modification[] to the first
embodiment.” Id. Figure 12 relates to the second embodiment. Id.
11 64—66. The Examiner finds that the improvement concerns adding a
character (avatar) and speech balloons “to increase [the] personalization of
the chat session.” Ans. 3; see Tarumi H 20, 23, 66. In particular, Tarumi
explains that the second embodiment “improves the rate of establishing a
chat using characters for the user interface.” Tarumi 123. Accordingly,
while Tarumi expresses a general preference for the second embodiment, it
does not otherwise discourage the first embodiment. Instead of discouraging
the first embodiment, Tarumi includes claims directed to it. Id. 1126,91.
Thus, we agree with the Examiner’s finding that Tarumi does not teach away
from concurrently displaying multiple messages for each user.
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The Proposed Modification Does Not
Change Tarumi’s Principle of Operation
Appellants argue that the Examiner erred in rejecting claim 2 because
“[mjodifying Tarumi’s speech balloons to include the multiple chat message
wads 1106 of Harvey” changes Tarumi’s principle of operation. App.
Br. 11 ; see Reply Br. 6. Appellants also argue that the principle of operation
for Tarumi’s second embodiment, e.g., as shown in Figure 12, is providing
“a single character 73 with all messages of a user typed and displayed inside
a respective single speech balloon 71 to provide the user with a ‘real sense
of a chat partner not as another user in a remote site, but rather as the
character 73 itself.’” App. Br. 11 (quoting Tarumi | 66).
Appellants’ arguments do not persuade us of Examiner error because
they rest on a mischaracterization of the proposed modification. Tarumi
explains that (1) the first embodiment employs different displays for inviting
a chat (Figure 7) and during a chat (Figure 8) and (2) the second
embodiment uses similar displays for inviting a chat (Figure 11) and during
a chat (Figure 12). Tarumi || 40-43, 64—66, Figs. 7—8, 11—12. For inviting
a chat, the second embodiment displays a character 73 with a speech balloon
71 along with a “yes” button 72a and a “no” button 72b. Id. 1 65, Fig. 11.
After establishing a chat, the second embodiment displays the character 73
with the speech balloon 71 along with a speech balloon 74 for the mobile
terminal user who agreed to chat. Id. 1 66, Fig. 12.
In the second embodiment, Tarumi uses the character 73 with the
speech balloon 71 to “increase the probability of establishing a chat”
compared to the first embodiment. Tarumi || 20, 23, 66. Tarumi notes that
“it is not that interesting” to display only a “simple character string such as,
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‘Let’s chat’” and that presenting a character “having the external appearance
of an animal or the like” with the character appearing to talk to the mobile
terminal user “increases the possibility of establishing a chat.” Id. 120.
Tarumi explains that the character and speech balloon give the mobile
terminal user “a real sense of the chat partner not as another user in a remote
site, but rather as the character 73 itself.” Id. 1 66.
Accordingly, Tarumi seeks to increase the likelihood of establishing a
chat by using a character and speech balloon to give the mobile terminal user
the impression of chatting with the character itself. As the Examiner finds,
“it is the presentation of an avatar [character], and the fact that the speech
balloon is connected to the avatar [character], that provide the ‘real sense of
a chat partner’.” Ans. 4. Displaying multiple speech balloons for earlier
messages arranged chronologically after establishing a chat does not
undermine Tarumi’s goal of increasing the likelihood of establishing a chat.
Moreover, the multiple speech balloons do not impair the impression of
chatting with the character itself. See Ans. 4—5.
Appellants assert that “the Examiner proposes to change how Tarumi
operates by adding additional message wads of Harvey that are disconnected
from the avatar of Tarumi such that numerous messages are concurrently
presented in various message wads.” Reply Br. 6. But that assertion
mischaracterizes Harvey and the proposed modification. See Final Act. 6—7;
Adv. Act. 2; Ans. 3^4. Harvey explains that a message wad “is made up of
multiple objects, including: the actual chat (i.e., text) message, texture, some
drawing parameters about the texture, the author’s name of the message,
etc.” Harvey 8:24—27, 11:17—22, Fig. 5. For each message wad, Harvey
inserts the chat text into a box and aligns the box horizontally on the display
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screen under the avatar that sent the message. Id. at 7:50-55, 8:12—13,
Fig. 11. The Examiner proposes modifying Tarumi’s display in Figure 12
by “providing multiple speech balloons” comparable to Harvey’s multiple
text boxes, i.e., “boxes attached to an avatar in Harvey Fig. 11.” Ans. 4—5.
Because the proposed modification does not contemplate adding additional
text boxes/speech balloons disconnected from an associated avatar/character,
we do not agree that the proposed modification changes Tarumi’s principle
of operation.
The Proposed Modification Does Not Render Tarumi
Inoperable and Unsatisfactory for Its Intended Purpose
Appellants argue that the Examiner erred in rejecting claim 2 because
“[mjodifying Tarumi’s speech balloons to include the functionality of the
chat message wads 1106 of Harvey renders Tarumi inoperable and
unsatisfactory for its intended purpose.” App. Br. 9; see Reply Br. 4—5.
More specifically, Appellants assert that “Tarumi describes a technique
whereby a user inputs and views their messages in a single speech
balloon 71.” App. Br. 9; Reply Br. 5. Appellants also assert that “a user
cannot enter messages into the message wads 1106” in Harvey’s display but
instead must use “a separate chat entry area 1108 that includes a chat text
entry area 1112 for a user to type in messages.” App. Br. 10; Reply Br. 5.
Based on those assertions, Appellants contend that “[mjodifying Tarumi’s
speech balloons to include the functionality of Harvey’s message wads 1106
would prevent a user of Tarumi from entering text during a conversation.”
App. Br. 10.
Appellants’ arguments do not persuade us of Examiner error. “The
test for obviousness is not whether the features of a secondary reference may
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be bodily incorporated into the structure of the primary reference . . .
In re Keller, 642 F.2d 413, 425 (CCPA 1981). Instead, the relevant issue is
“what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” Id. Here, as the Examiner finds, the
combined teachings of the references would have suggested concurrently
displaying multiple messages for different users in overlapping left and right
regions according to claim 2. Final Act. 4—7; Adv. Act. 2; Ans. 3^4; see
TarumiFig. 12; Harvey Fig. 11.
Moreover, Appellants’ arguments confuse message display in Tarumi
with message entry in Tarumi. Tarumi discloses that the mobile terminal in
Figure 1 includes user interface means 14 with “input and output devices”
permitting the mobile terminal user “to perform input and output,” for
example, “a combination of a liquid crystal display as the output device and
a keyboard as the input device.” Tarumi || 25, 27, 33. While Tarumi
Figure 12 shows the mobile terminal’s output device, i.e., liquid crystal
display 30, Figure 12 does not show the mobile terminal’s input device, e.g.,
a keyboard. Id. 65—66, Fig. 12. To enter text during a conversation, the
user employs the mobile terminal’s input device. Displaying multiple
speech balloons for earlier messages arranged chronologically via the mobile
terminal’s output device—as Harvey teaches or suggests—does not prevent
the user from entering text via the mobile terminal’s input device.
Summary for Independent Claim 2
For the reasons discussed above, Appellants’ arguments have not
persuaded us that the Examiner erred in rejecting claim 2 for obviousness
based on Tarumi and Harvey. Hence, we sustain the rejection of claim 2.
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Dependent Claims 3,4, and 6-8
Claims 3, 4, and 6—8 depend from claim 2. App. Br. 15—16 (Claims
App.). Appellants argue that these dependent claims are allowable “for at
least the reason that they depend from an allowable claim.” App. Br. 11;
Reply Br. 6. Because Appellants do not make separate substantive
patentability arguments for these dependent claims, we sustain the
obviousness rejection of claims 3, 4, and 6—8 for the same reasons as
claim 2. See 37 C.F.R. § 41.37(c)(l)(iv).
The § 103(a) Rejection of Claims 9—11, 13—18, and 20—22
Appellants argue that claims 9—11, 13—18, and 20-22 are allowable
“for at least similar reasons as discussed above with respect to claim 2” and
“Allard fails to remedy the deficiencies of Tarumi and Harvey.” App.
Br. 12; Reply Br. 6. Because Appellants do not make separate substantive
patentability arguments for these independent and dependent claims, we
sustain the obviousness rejection of claims 9—11, 13—18, and 20-22 for the
same reasons as claim 2. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We affirm the Examiner’s decision to reject claims 2—4, 6—11, 13—18,
and 20—22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED
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