Ex Parte Feeney et al

Board of Patent Appeals and Interferences

Apr 12, 2010

11539180 (B.P.A.I. Apr. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERT J. FEENEY, BRENT W. BARKLEY, JEFF E. HAAS,
and GREGORY J. PINTER
____________________

Appeal 2009-007465
Application 11/539,180
Technology Center 3700
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Decided: April 12, 2010
____________________

Before: WILLIAM F. PATE III, JENNIFER D. BAHR, and MICHAEL W.
O'NEILL, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-007465
Application 11/539,180

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 (2006) from a final rejection
of claims 1-12 and 15-27. We have jurisdiction under 35 U.S.C. § 6(b)
(2006).
The claims are directed to a system for substantially simultaneous
alerts. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system for generating substantially simultaneous
alerts, comprising:
(a) a plurality of user devices accessible via at least one
publicly available network, each said user device having
installed on it an alert-based client; and
(b) a server configured to download identical alert
information, including a message that has been encrypted, to
the plurality of user devices, wherein the alert-based clients are
configured to receive the alert information and, in response: (i)
to store the message in encrypted form until just prior to a
specified delivery time; (ii) to provide a warning signal
indicating that the message is about to be delivered; and (iii) to
decrypt and deliver the message substantially at the specified
delivery time, thereby providing substantially simultaneous
delivery of the message to the user devices.

(Emphasis Added).

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Faris
Horvitz
Briscoe
2002/0069076 A1
2002/0087649 A1
2003/0044017 A1
Jun. 6, 2002
Jul. 4, 2002
Mar. 6, 2003
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REJECTIONS
Claims 1-12, 15-18, and 20-27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Faris and Horvitz. Ans. 3.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Faris and Briscoe. Ans. 14.

OPINION
The Examiner contends that Faris discloses the subject matter of
independent claims 1 and 12 except for the features related to “a warning
signal indicating that a message is about to be delivered.” Ans. 4-5.
Appellants do not dispute the Examiner’s findings regarding Faris. The
Examiner cites Horvitz to account for this deficiency of Faris in order to
conclude that the subject matter of claims 1 and 12 would have been obvious
to one having ordinary skill in the art. Ans. 5. Appellants contend that the
Examiner erred in rejecting independent claim 1 because the combination of
Faris and Horvitz fails to teach or suggest alert-based clients configured “to
provide a warning signal indicating that the message is about to be
delivered.” App. Br. 7-11. Similarly, regarding claim 12, Appellants
contend that the combination of Faris and Horvitz fails to teach or suggest or
a memory/storage device storing executable process steps to perform that
same function. App. Br. 11-15. More specifically, Appellants contend that
the Examiner’s interpretation of Horvitz’s “notification” or “alert” message
as the claimed “warning signal that a message is about to be delivered” is
unreasonable because the message itself in Horvitz is already accessible to
the user when the notification or alert is delivered. App. Br.8-9, 11-14;
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Horvitz p. 7 para. [0115], p. 16 para. [0282]. Appellants also contend that
the primary purpose of Faris, like the claimed invention, is to ensure
simultaneous delivery of messages to multiple users. App. Br. 10.
Implementing Horvitz’s notification or alert system which enables users to
delay delivery of received messages would essentially render Faris
inoperable for this purpose. Thus, Appellants conclude, one of ordinary skill
in the art would have no reason to modify Faris in the manner proposed by
the Examiner. App. Br. 10-11, 14-15. Both of Appellants’ arguments are
persuasive.
“[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in applicant’s specification.”
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
The examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) noted that the analysis supporting a rejection under 35 U.S.C.
§ 103 should be made explicit. The Federal Circuit has stated that
“rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) cited with approval in KSR, 550
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U.S. at 418. If a proposed modification would render the prior art invention
being modified unsatisfactory for its intended purpose, it is unlikely that
there is a rational basis to make the proposed modification. See In re
Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).
The Specification indicates that the purpose of the claimed invention
is to enable substantially simultaneous delivery of alerts to a plurality of user
devices. Spec. p. 1, para. [03]. To that end, whether already downloaded to
the devices or not, a message is not delivered to a user until a specified
delivery time. Spec. p. 12-13, paras. [57], [62], claims 1 and 12 clauses (i)
and (iii). The goal of the warning signal is to capture the user’s attention
prior to that delivery. Spec. p. 11, para. [54]. Reading the claims as a
whole, in light of the Specification, one of ordinary skill in the art would not
understand the “warning signal indicating that a message is about to be
delivered” (emphasis added) as including Horvitz’s notification or alert that
a message is already accessible to the user.
Additionally, modifying Faris to include Horvitz’s notification or
alert, which allows users to elect to view the message immediately upon
receipt, would render Faris inoperable for its intended purpose of providing
simultaneous delivery to users. See Faris Abstract. Thus, the Examiner has
failed to articulate reasoning with a rational underpinning to support the
legal conclusion of obviousness.
Claim 19 has been rejected over the combination of Faris and Briscoe.
Claim 19 depends from, and therefore includes all the limitations of, claim
12. The Examiner does not indicate that Briscoe is relied upon in place of
Horvitz to teach the limitation missing from Faris—the warning signal.
Although separate remarks are not presented, it is clear that Appellants seek
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reversal of the rejection of claim 19 for the same reasons as claim 12. App.
Br. 21. As applied by the Examiner Briscoe does not remedy the deficiency
of Faris discussed above and the Examiner has not addressed all limitations
of claim 19. The Examiner has failed to make a prima facie case of
obviousness regarding claim 19.
For these reasons, the rejection of claims 1 and 12 along with the
rejections of dependent claims 2-11 and 15-27 must be reversed.

DECISION
The Examiner’s rejections of claims 1-12 and 15-27 are reversed.

REVERSED

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