Ex Parte Forlenza et al

Patent Trial and Appeal Board

Jul 31, 2013

11133421 (P.T.A.B. Jul. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte RANDOLPH MICHAEL FORLENZA and
JOHN PAUL KAEMMERER
____________________

Appeal 2011-000684
Application 11/133,421
Technology Center 2400
____________________

Before TREVOR M. JEFFERSON, MICHAEL J. STRAUSS, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

JEFFERSON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
1

Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
23-37.
2
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Introduction
The claims are directed to instant message methods and techniques to
broadcast messages. Spec., Abstract. Claim 23, reproduced below, is
illustrative of the claimed subject matter:
23. A method in a data processing system for improved
functionality within an instant messaging system, the method
comprising:
displaying a user interface adapted for selection of a
plurality of instant messaging users from a list of a plurality of
instant messaging users, wherein the user interface is further
adapted to receive an instant messaging message from a
message field to be sent to the selected plurality of instant
messaging users, and wherein the user interface is further
adapted to receive a command to broadcast the instant
messaging message to the selected plurality of instant
messaging users;
responsive to receiving the command to broadcast the
instant messaging message to the selected plurality of instant
messaging users, sending the instant messaging message to
each of the selected plurality of instant messaging users,
wherein the command to broadcast the instant messaging
message to the selected plurality of instant messaging users
further adapts the user interface to display a separate instant
messaging chat window for each of the selected plurality of
instant messaging users, and wherein each instant messaging

1
Throughout the decision, we refer to the Appellants’ Appeal Brief (“Br.,”
filed Mar. 26, 2010) and the Examiner’s Answer (“Ans.,” mailed Jul. 9,
2010).
2
The Real Party in Interest is International Business Machines Corporation.
Br. 2.
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message sent between the user interface and the selected
plurality of instant messaging users is displayed in the separate
instant messaging chat window of each of the selected plurality
of instant messaging users.

Rejections
The Examiner made the following rejections:
Claims 28-32 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. Ans. 3.
Claims 23-37 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Becker (US 2002/0130904 A1, Sep. 19, 2002) and
Appelman (US 6,539,421 B1, Mar. 25, 2003). Ans. 3-6.

OPINION
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions as to all rejections. 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 set forth by the Examiner in the Examiner’s
Answer in response to Appellants’ Appeal Brief. We concur with the
conclusions reached by the Examiner. For emphasis we highlight
Appellants’ arguments as they are presented in the Appeal Brief, pages 16-
29.
35 U.S.C § 101
The Appellants have not argued the rejection of Claim 28-32 under 35
U.S.C. § 101 in the Brief. Appellants have waived arguments as to this
rejection and as such we summarily sustain the Examiner’s rejection. See Ex
parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010) (precedential) (citing,
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inter alia, Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (stating
that the Board may treat arguments appellant failed to make for a given
ground of rejection as waived)); 37 C.F.R. § 41.37(c)(1)(vii) (2010)
(arguments which the Appellants could have made but chose not to make in
the Briefs have not been considered and are deemed to be waived).

35 U.S.C. § 103(a)

Independent Claim 23
Appellants contend that neither Becker nor Appelman teach or
suggest:
receiving a command to broadcast an instant messaging
message to a selected plurality of instant messaging users,
sending the instant messaging message to each of the selected
plurality of instant messaging users by “display[ing] a separate
instant messaging chat window for each of the selected plurality
of instant messaging users” as recited by claim 23.
Br. 20. Specifically, while Appelman teaches using a separate window for
each message recipient (Br. 19), Appellants argue that it fails to “teach or
suggest creating multiple window panes in response to a command to
broadcast a message.” Br. 20 (emphasis added). Instead, Appellants assert
that Appelman’s teaching for one-to-many instant messaging teaches to use
a single window. Br. 19-20 (citing Appelman col. 4, l. 65 – col. 5, l. 14 and
Fig. 6).
The Examiner responds that “Becker teaches broadcast messaging to a
plurality of selected recipients” (Becker ¶ [0067]) and “Appelman teaches
that conventional instant messaging software creates a separate window for
each recipient of a message.” (Appelman, col 2. ll. 33-36). Ans. 7. The
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Examiner found that “a person of ordinary skill in the art . . . would realize,
in view of Appelman’s teachings, that when broadcasting a message the
software should open a separate window for each recipient.” Ans. 7.
We are not persuaded by Appellants’ arguments that the Examiner
erred. We find that the Examiner has set forth a prima facie case of
obviousness that has not been adequately rebutted by Appellants. The
Examiner has provided a rational basis for combining the cited references
The Court instructs us that “[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton.” KSR v. Teleflex, 550 U.S. 398, 421
(2007) (emphasis added). We agree with the Examiner that Becker teaches
broadcast messaging (Becker ¶¶ [0067], [0076]) and Appelman teaches or
suggests that conventional messaging would create one window for each
message recipient (Appelman, col 2. ll. 33-36; Fig. 5).
Contrary to Appellants’ argument that Appelman’s teachings are
limited to teaching one window for one-to-many instant messaging (Br. 19-
20), a person of ordinary skill in the art also would apply a conventional
approach to instant messaging as described in Appelman to the broadcast
messages of Becker. See KSR, 550 U.S. at 416 (stating that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”). We find that
the combination of Becker and Appelman is a “predictable use of prior art
elements according to their established functions” (KSR, 550 U.S. at 417)
and can find no reason that one of ordinary skill in the art would find the
teaching of the combination limited to the embodiment Appellants identify.
See Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir.
1985) (stating that a person of ordinary skill in the art “is presumed to be
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aware of all the pertinent prior art”). We find that the Examiner has set forth
a prima facie case of obviousness that has not been adequately rebutted by
Appellants. Accordingly, the Examiner did not err in finding that Appelman
and Becker teach or suggest:
the user interface is further adapted to receive a command to
broadcast the instant messaging message to the selected
plurality of instant messaging users; . . . wherein the command
to broadcast the instant messaging message to the selected
plurality of instant messaging users further adapts the user
interface to display a separate instant messaging chat window
for each of the selected plurality of instant messaging users, and
wherein each instant messaging message sent between the user
interface and the selected plurality of instant messaging users is
displayed in the separate instant messaging chat window of
each of the selected plurality of instant messaging users
as recited in claim 23. Appellants argue claim 23 as representative of claims
28 and 33; 25, 30 and 35. Br. 17 and 24. Thus, we sustain the Examiner’s
rejection of claims 23, 25, 28 30, 33 and 35 under 35 U.S.C §103(a).

Dependent Claim 24
Appellants contend that Becker and Appelman fail to teach or suggest
that the command to broadcast the instant messaging message to a selected
plurality of users is adapted to have a “close” option such that
to close the message field window, the user interface does not
display the separate instant messaging chat window for each of
the selected plurality of instant messaging users and each
instant messaging message sent between the user interface, and
the selected plurality of instant messaging users is not displayed
on the user interface

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as recited in claim 24. Appellants contend that Becker teaches using two
commands to broadcast and close a broadcast instant messaging session
which does not teach Appellants’ “Broadcast and Close” command. Br. 24.
We are not persuaded that the Examiner erred. We agree with the
Examiner that Appelman teaches sending messages to multiple instant
messaging users through a single window while Becker teaches broadcasting
a message to multiple recipients using a one-to-many single window. Ans. 8
(citing Becker ¶ [0037] and Appelman, col. 2, ll. 48-52). We also agree with
the Examiner that a person of ordinary skill in the art, employing ordinary
creativity, would “realize that it would be advantageous to not open new
windows for each recipient when broadcasting a message” (Ans. 8), “for
one-to-many communications [by using] obvious variants of the user display
interface” (Ans. 5 (citing Becker¶¶[0037], [0067])).
Moreover, Appellants’ argument regarding the single command
“Broadcast and Close” not being taught by Becker and Appelman is not
commensurate in scope with the claims. See In re Self, 671 F.2d 1344, 1348
(CCPA 1982). We find that Appellants’ claim is not limited to a single
command variation, but merely requires that the command be adapted to
have a close option. Appellants’ arguments also show that Becker teaches
that users can “initiate or end messaging sessions.” See Br. 21 (quoting
Becker ¶ [0037])). Finally, Appellants note that Becker expressly teaches
“SendMessage and EndSession commands.” Br. 23 (citing Becker ¶ [0056],
Fig. 7). We find that the combination of the teachings of Becker and
Appelman is a “predictable use of prior art elements according to their
established functions” (KSR, 550 U.S. at 417) that include a close option
such that “the user interface does not display the separate instant messaging
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chat window for each of the selected plurality of instant messaging users” as
recited in claim 24.
Based on the foregoing, the Examiner did not err in finding that the
combination of Becker and Appelman teaches or suggests the “command . . .
. adapted to have a close option” limitation of claim 24. Because Appellants
argue claim 24 as representative of claims 29 and 34, we sustain the
Examiner’s rejection of claims 24, 29, and 34 under 35 U.S.C. § 103(a).

Dependent Claim 26
Appellants contend that the Examiner erred because neither Becker
nor Appelman teach or suggest:
wherein the command to broadcast the instant messaging
message to an instant messaging user is queued waiting for the
user to log into the instant messaging system, “wherein the
instant messaging message is further adapted to indicate the
time the user interface received the command to broadcast the
instant messaging message to the selected plurality of instant
messaging users” as recited by claim 26.
Br. 25. Appellants argue that Becker “teaches a message queuing option,
but does not teach storing the time in the message that the message was
queued, and then including that time in the message . . . .” Br. 26.
Similarly, Appellants assert, Appelman only teaches “displaying the time the
sender sent the message or the time the message was received.” Id.
We are not persuaded that the Examiner erred with respect to claim
26. Indeed, we agree with the Examiner that “Becker teaches queuing
messages when [an instant message recipient] is not online” and that
“Appelman teaches displaying the time a message was sent or received in
the message window.” See Ans. 9 (citing Becker ¶[0048] and Appelman,
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col. 8, ll. 64-65). We find that Becker suggests an offline notification
procedure that discusses multiple approaches to delayed delivery. Becker
¶[0048]. We agree with the Examiner that a person of ordinary skill in the
art, utilizing normal creativity, would understand that Becker’s delayed
delivery in combination with Appelman’s suggested time stamp of the time
the message was sent is a time stamp indicating when the message was sent
for broadcast by the user. Ans. 9; see Appelman, col. 8, ll. 64-65 (stating
that the time the message 616 was sent or received is shown in the time
stamp).
Based on the foregoing, we find the Examiner did not err in finding
that the combination of Becker and Appelman teaches or suggests the
queuing and time limitations of claim 26. Appellants argue claim 26 as
representative of claims 31 and 36. Br. 25. Accordingly, we sustain the
Examiner’s rejection of claims 26, 31 and 36 under 35 U.S.C. § 103(a).

Dependent Claim 27
Appellants contend that the Examiner erred because neither Becker
nor Appelman teach or suggest:
the queue option is configured to have a time limit, “wherein
responsive to determining that the time limit has passed since
receiving the command to broadcast the instant messaging
message to the selected plurality of instant messaging users, the
instant messaging message is not sent to the set of off-line
users” as recited by [claim 27].
Br. 27. Appellants argue that although Becker teaches that an “approach to .
. . . a user being offline is not sending the message” it is silent as to
determining to not send the message after a delay. Br. 28. Appellants argue
claim 27 as representative of claims 32 and 37. Br. 27.
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Appellants’ arguments are unavailing. We find, and agree with the
Examiner (Ans. 10-11), that Becker teaches queuing messages when a
recipient is not available such that the system can delay delivery for a
particular time and also not deliver the message at all. Becker ¶ [0048]).
We agree with the Examiner that one of ordinary skill in the art would
understand that the delay and non-delivery options in Becker indicate that a
message not delivered after a period of time may not be sent at all.
Based on the foregoing, we find that the Examiner did not err in
finding that the combination of Becker and Appelman teaches or suggests
the queuing and delaying a time period before not sending a message
limitation of claim 27. Thus, we sustain the Examiner’s rejection of claims
27, 32, and 37 under 35 U.S.C. §103(a).
DECISION
For the above reasons, the Examiner’s rejections of claims 23-37
under 35 U.S.C. §103(a) and claims 28-32 under 35 U.S.C. § 101are
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)(iv).

AFFIRMED

ELD