Ex Parte Dickerson et al

Patent Trial and Appeal Board

Nov 26, 2013

11842486 (P.T.A.B. Nov. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/842,486 08/21/2007 Scott Stephen Dickerson AUS920070112US1 3481
46129 7590 11/27/2013
IBM CORPORATION
C/O DARCELL WALKER, ATTORNEY AT LAW
P. O. Box 25048
HOUSTON, TX 77265
EXAMINER
LIN, SHERMAN L
ART UNIT PAPER NUMBER
2447
MAIL DATE DELIVERY MODE
11/27/2013 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 SCOTT STEPHEN DICKERSON, JAMES NICHOLS
KLAZYNSKI, and TOLGA ORAL
____________

Appeal 2011-007252
Application 11/842,486
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007252
Application 11/842,486

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3, 5-17, 19 and 20. (App. Br. 2). Claims 4 and 18 were cancelled
during prosecution. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
Appellants’ claimed invention:
relates to a method and system for increasing the
efficiency of a response to a transmitted instant message and in
particular to an instant messaging method and system that
determines the current capacity of a primary instant message
recipient and automatically redirects a transmitted instant
message to an alternate recipient when the a primary instant
message recipient has reached its current message capacity.
(Spec. 1).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
1. A method for automatically delegating an instant
message received at a primary resource device to an alternate
instant message resource device comprising the steps of:

generating a set of rules that governs the delegating of
instant messages to said alternate instant message resource
device;

storing said generated rules in a primary instant
messaging resource device, the generated rules will govern
instant messages received at that particular instant messaging
resource device where the rules reside;

detecting an incoming instant message at a primary
instant message resource device;

Appeal 2011-007252
Application 11/842,486

3
determining whether the primary instant message
resource device is available to service an incoming instant
message request by determining whether the number of instant
messages currently being served by the primary instant message
resource device has reached an established threshold number of
instant messages for that primary instant message resource
device; and

transferring the detected incoming instant message to an
alternate instant message resource device by inviting the
alternate instant message resource device to connect to the
received incoming message when there is a determination that
the primary instant message resource device is not available.
(Disputed limitations emphasized; see App. Br. 6).
REJECTIONS
A. The Examiner rejects claims 1, 2, 5, 11-16, and 19 under 35 U.S.C.
§ 103(a) as being unpatentable over the combined teachings and
suggestions of Brennan (US 2005/0125370 A1; published Jun. 9, 2005)
and Eaton (US Patent No. 6,044,260; issued Mar. 28, 2000).
B. The Examiner rejects claims 3 and 17 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings and suggestions of Brennan,
Eaton, and Sherwood (US 2004/0236837 A1; published Nov. 25, 2004).
C. The Examiner rejects claims 6-10 and 20 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings and suggestions of Brennan,
Eaton, and Goedken (US Patent No. 6,393,423 B1; issued May 21, 2002).
Appeal 2011-007252
Application 11/842,486

4
GROUPING OF CLAIMS
Based on Appellants’ arguments, we decide the appeal of the first-
stated obviousness rejection (A) of claims 1, 2, 5, 11-16, and 19 on the basis
of claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2004).1
CONTENTIONS
Appellants acknowledge that Brennan teaches a system for
conditional answering of requests and that Brennan’s system addresses
where to send the response. (App. Br. 5). Appellants contend that in
Appellants’ invention the destination to forward the instant message request
is based on the capacity of the primary instant message receiving device to
handle incoming instant messages. In contrast, Brennan bases designations
on response content and the confidence factor. (Id.).
Appellants additionally contend that there is a basic distinction
between Eaton and the present invention. Eaton provides an alternate route
to a PMU when the number of incoming messages exceeds a threshold
number, in which case the excess messages are transmitted over an alternate
route to the same destination (PMU) as the non-excess messages. Thus, in
Eaton, all messages eventually arrive at the same destination. In contrast, in
Appellants’ present invention, when the incoming messages exceed a

1 Appellants filed a Notice of Appeal on Oct. 12, 2010. The date of filing
the Notice of Appeal determines which set of rules applies to an Ex parte
appeal. If a notice of appeal is filed prior to January 23, 2012, then the 2004
version of the Board Rules last published in the 2011 edition of Title 37 of
the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the
appeal. See also Manual of Patent Examining Procedure (MPEP) Rev. 8,
July 2010.
Appeal 2011-007252
Application 11/842,486

5
determined threshold, the excess message are routed to an alternate instant
message resource in a different location from the primary message device,
i.e., a different destination for the originally routed destination of the
message. (App. Br. 5-6). However, Appellants “acknowledge that both the
present invention and Eaton account for an excess of messages coming into a
single destination.” (App. Br. 6).
The Examiner disagrees:
The examiner reasons that the delegation of messages to
alternate receivers may serve purposes such as, for example,
load balancing or criteria-based routing. According to Brennan,
section 46 discloses a confidence factor used to conditionally
forward a query to a service desk. More specifically,
Brennan recites:

“[0039] ... Examples of a message distributor 221 include
routers, load balancers, filters, chat rooms, etc ... ”

“[0040] ... It is also the intent of the present invention to
support multiple instances of each structure. For example, the
message distributor 221 in FIG. 2.2 could support hundreds of
service desks 320, all supported by the one or more Bot
processors 142 attached to the message distributor 221 ... ”

The examiner reasons that Brennan may also suggest the
message distributor as a routing mechanism for either load
balancing or message routing.

(Ans. 20-21, “Response to Arguments”).

Appeal 2011-007252
Application 11/842,486

6
ISSUE
Under § 103, did the Examiner err in finding the cited combination of
references would have taught or suggested “transferring the detected
incoming instant message to an alternate instant message resource device,”
within the meaning of representative claim 1?
ANALYSIS
Claim Construction
At the outset, we note the contested step of “transferring” in claim 1
depends on the recited conditional temporal limitation being satisfied (i.e.,
“transferring the detected incoming instant message . . . when there is a
determination that the primary instant message resource device is not
available.” (emphasis added). Thus, as an initial matter of claim
construction, we conclude a question arises as to the scope of claim 1 in the
case the condition is not satisfied.2
We conclude representative claim 1 does not positively recite whether
the condition (“when there is a determination that the primary instant
message resource device is not available”) is ever actually reached.
(emphasis added). Moreover, the “transferring” limitation of claim 1 is

2 In the event of further prosecution, we leave to the Examiner to consider a
rejection under § 112, second paragraph, regarding the conditional language
of claim 1, where both sides of the condition (TRUE and FALSE) are not
positively recited. “[I]f a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim . . . indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI
2008) (precedential).

Appeal 2011-007252
Application 11/842,486

7
merely intended to be performed “by inviting the alternate instant message
resource device to connect to the received incoming message . . . .”
(emphasis added).
Claim 1 does not positively recite that the “invitation” to connect is
ever accepted.3 (See n.2 supra.). Therefore, a question arises as to how
much patentable weight, if any, should be accorded to the contested
“transferring” step which we conclude is not positively recited as actually
occurring. We also accord the content of the claimed instant messages no
patentable weight, because such messages are non-functional descriptive
material intended for human viewing.4
Given these significant claim construction issues, on this record, we
are not persuaded the Examiner’s claim interpretation is overly broad,
unreasonable, or inconsistent with Appellants’ Specification.
As pointed to by the Examiner in the statement of rejection (Ans. 5),
we observe Brennan teaches transferring a message (data) to a particular
recipient according to a condition: “As used herein a confidence factor

3 “An intended use or purpose usually will not limit the scope of the claim
because such statements usually do no more than define a context in which
the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch
statements often . . . appear in the claim’s preamble,” In re Stencel, 828 F.2d
751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear
elsewhere in a claim. Id.
4 See MPEP § 2111.05(III) (“[W]here the claim as a whole is directed [to]
conveying a message or meaning to a human reader independent of the
intended computer system, and/or the computer-readable medium merely
serves as a support for information or data, no functional relationship
exists.”).
Appeal 2011-007252
Application 11/842,486

8
means any metric that can be used to determine whether a response is best
sent to the service desk 320 or sent to the front end section 120.” (Brennan,
¶[0046]).
We observe Eaton expressly teaches the use of a threshold number as
a condition which is used to direct the message in a particular manner to
different hardware destinations (i.e., primary and alternate message resource
devices): “If the threshold number is likely to be exceeded, the messaging
service is instructed to send messages to the subscriber via an alternate route
(e.g., using computer 28 or to fax receiver 30).” (Eaton, col. 2:50-53; see
also Ans. 21). (emphasis added).
In particular, we note the Examiner’s rejection is based on the
combined teachings and suggestions of Brennan and Eaton. Our reviewing
court guides that under § 103 the “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). Moreover, “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR, 550 U.S. at 416. “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
This reasoning is applicable here given that the combination of
Brennan and Eaton clearly evidence that conditional transfer of data based
on threshold conditions was known in the art. Appellants’ arguments
notwithstanding, we find the weight of the evidence supports the Examiner’s
underlying factual findings and ultimate legal conclusion of obviousness.
Appeal 2011-007252
Application 11/842,486

9
Therefore, for essentially the same reasons articulated by the
Examiner in the Answer (4-8, 19-24), as discussed above, we sustain the
§ 103 rejection of representative independent claim 1. Claims 2, 5, 11-16,
and 19 (not argued separately) fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2004). See n.1 supra.

Remaining § 103 Rejections B and C
Regarding the remaining rejections B and C, Appellants contend the
tertiary references cited in rejections B and C (Sherwood and Goedken,
respectively) do not cure the deficiencies of Brennan and Eaton. (App. Br.
7-8).
However, we find no deficiencies with the base combination of
Brennan and Eaton, for the reasons discuss above regarding claim 1.
Therefore, we sustain the Examiner’s obviousness rejections B and C for the
same reasons discussed above regarding rejection A and claim 1.

CONCLUSION
The Examiner did not err in rejecting claims 1-3, 5-17, 19, and 20
under 35 U.S.C. § 103.

Appeal 2011-007252
Application 11/842,486

10
DECISION
We affirm the Examiner’s decision rejecting claims 1-3, 5-17, 19, and
20 under 35 U.S.C. § 103.
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). See
37 C.F.R. § 41.50(f).
AFFIRMED

rwk