Ex Parte Kao et al

Patent Trials and Appeals Board

Dec 14, 2018

14634016 - (D) (P.T.A.B. Dec. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/634,016 02/27/2015 Titus Kao
52021 7590 12/18/2018
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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.
CAM920070079US2_8150-0539 6073
EXAMINER
DESROSIERS, EV ANS
ART UNIT PAPER NUMBER
2491
NOTIFICATION DATE DELIVERY MODE
12/18/2018 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TITUS KAO, ERIC S. PORTNER, and ROBERT C. WEIR
Appeal2017---004799
Application 14/634,016
Technology Center 2400
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
MICHAEL C. ASTORINO, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Titus Kao, Eric S. Portner, and Robert C. Weir (Appellants) seek review
under 35 U.S.C. § 134 of a final rejection of claims 21-39, the only claims
pending in the application on appeal. This is a continuation of Application
11/941,474, now U.S. Patent No. 8,972,504, which Appellants also
appealed. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed September 12, 2016) andReplyBrief("ReplyBr.," filed January
19, 2017), and the Examiner's Answer ("Ans.," mailed November 28, 2016),
and Final Action ("Final Act.," mailed April 11, 2016).
Appeal2017-004799
Application 14/634,016
The Appellants invented a way of forwarding an instant message to
electronic mail. (Specification para. 0003).
An understanding of the invention can be derived from a reading of
exemplary claim 21, which is reproduced below (some paragraphing added).
21. A computer-implemented method of forwarding an
instant message in an electronic mail message, comprising:
sending the instant message to an instant messaging client of a
intended recipient of the instant message;
not receiving a reply, from the instant messaging client, to the
instant message within a pre-defined period of time;
and
sending to the intended recipient, upon the pre-defined period
of time being reached, the electronic mail message that includes
the instant message.
The Examiner relies upon the following prior art:
Beyda US 2003/0229722 Al
Hodge US 2006/0245559 Al
Kao US 8,972,504 B2
Dec. 11, 2003
Nov. 02, 2006
Mar. 03, 2015
Claims 21-39 stand rejected under the judicially created doctrine of
obviousness type double patenting as claiming the patentably
indistinguishable subject matter as another US Patent.
Claims 21-39 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over Beyda and Hodge.
ISSUES
The issues of obviousness tum primarily on whether the art shows it was
predictable to practice the invention as recited.
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Application 14/634,016
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of
"salutation message."
02. The ordinary meaning of salutation in the context of a
salutation message is a word or phrase of greeting used to begin a
letter or message. 2 The word "salutation" in the phrase "salutation
message" is a noun adjective modifying the noun "message" and
as such imparts no functional or structural limitation on the
message.
Facts Related to the Prior Art
Beyda
03. Beyda is directed to processing an instant message and, more
particularly, conducting one or more actions after an instant
message is received. Beyda para. 1.
04. Beyda describes informing a sender or originator of an instant
message regarding one or more actions involving the instant
message after the sender or originator sends the instant message.
Beyda para. 5.
2 https://education.yahoo.com/reference/dictionary/entry/salutation
(Houghton Mifflin)
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Appeal2017-004799
Application 14/634,016
05. Beyda describes informing of a sender or originator of an
instant message regarding one or more actions involving the
instant message after the sender or originator sends the instant
message. In addition, in some embodiments, the instant message
may be saved, forwarded, deleted, returned to the sender, etc.
after receipt of the instant message by a device. In addition, the
sender or originator of the instant message may be informed that
the instant message has been so saved, forwarded, deleted, etc. In
some embodiments, one or more rules may be established or
designated by a receiver of an instant message governing
processing of the instant message. Alternatively, in some
embodiments one or more rules may be established or designated
by a sender of an instant message governing processing of the
instant message. In some still further embodiments, one or more
rules may be established by a receiver of an instant message and
one or more rules may be established by the sender of the instant
message. Beyda para. 24.
06. Beyda describes a rule that may be established by a receiver of
an instant message via a user device, the receiver may want
nothing to happen regarding the instant message for a designated
period of time after the instant message is received. If the receiver
has not read or opened the instant message during the designated
period of time, software operating on the user device may
automatically open or otherwise display the instant message,
forward the instant message to another device associated with the
receiver, change the format of the instant message and send the
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Appeal2017-004799
Application 14/634,016
changed message via a new delivery or communication channel,
display a message on the screen of the user device, store the
instant message for later viewing or retrieval by the receiver,
delete the instant message, etc. For example, the receiver may
want to have the instant message converted into an email message
and sent to an email address, specific person, Web site, etc.
designated in the rule. As another example, the receiver may want
the instant message changed via a text-to-speech converter and
sent to a telephone number ( which may be associated with a
telephone or voice mail box) designated or included in the rule.
Thus, in some embodiments, a rule may designate what is to
happen to a received instant message, what action is to be taken
regarding a received instant message and when, etc. Beyda para.
36.
Hodge
07. Hodge is directed to an electronic message exchange system
with the capacity to monitor, control access, and bill for usage of
such a system. Hodge para. 1.
08. If an inmate chooses to write an IM instead of an email, the
inmate writes an IM and attempts to send it. The instant message
is subjected to the same security measures as an email. If the
message fails to pass, the session is terminated and the
administrator is notified. Next, the system checks to see if the
user was logged in and if any messages were sent. If yes, the
messages are archived and stored and the system exits. When an
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Appeal2017-004799
Application 14/634,016
IM passes the security constraints, a message is sent to the
external recipient. Hodge para. 72.
09. After the message is sent, the contacted external party is
notified of the attempted contact by the inmate. For example, the
external party can be notified of the attempted contact by the
inmate, through an email, or via a third-party instant messaging
platform. The response can result in three different scenarios.
The first is that there is no reply from the external party after a set
interval of time. When this occurs, the user is prompted to log out
or continue and attempt another electronic message exchange.
Additionally, the user has the option of sending another message
to the external party to set up a time and date when he or she
wishes to hold a future IM conversation. If the user logs out,
messages are archived and stored as previously discussed. If
instead the inmate decides to attempt another message, the user is
prompted to choose if he or she wants to write an email or IM.
Hodge para. 73.
ANALYSIS
Claims 21-3 9 rejected under the judicially created doctrine of obviousness
type double patenting as claiming the patentably indistinguishable subject
matter as another US. Patent
Appellants filed a proper terminal disclaimer January 18, 2017,
overcoming this rejection.
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Appeal2017-004799
Application 14/634,016
Claims 21-39 rejected under 35 US.C. § 103(a) as unpatentable over Beyda
and Hodge
As to claims 21, 22, 24--33, 35-37, and 39, we adopt the Examiner's
findings and analysis from Final Action at pages 6-13 and Answer at pages
3-12 and reach similar legal conclusions. We now tum to the Reply Brief.
We are not persuaded by Appellants' argument that the Examiner has not
responded to the arguments found on page 8, line 20 through page 9, line 9
of the Appeal Brief. Reply Br. 3. The Examiner responded at Answer 9-12.
We are not persuaded by Appellants' argument that
The alleged field of endeavor (i.e., "message processing" or
"Client-Server") is overly-broad for the reasons set forth in the
Appeal Brief The Examiner cannot properly abstract the
invention to such a high level so that the alleged field of
endeavor involves thousands or even hundreds of thousands of
references. In so doing, the Examiner creates a loophole by
which no reference could be considered nonanalogous prior art.
Additionally, the Examiner's comments in the both the Second
Office Action and the Examiner's Answer only addressed the
nonanalogous prior art portion of Appellants' arguments.
Specifically, Appellants also included arguments (see page 10,
line 20 through page 21 [ sic, 11 ]3, line 8) within the Appeal
Brief ( and also the First Response) that have yet to be addressed
by the Examiner in either the Second Office Action or the
Examiner's Answer.
Reply Br. 4. First as to the arguments Appellants allege have yet to be
addressed:
The Examiner alleges that the combination of Beyda and
Hodges "would allow sending an instant message as taught by
3 The Appeal Brief is only 15 pages long, so the reference to page 21 is an
obvious typographic error. The arguments beginning at Appeal Brief 10:20
end at 11:8.
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Appeal2017-004799
Application 14/634,016
Hodge." However, Beyda already teaches sending an instant
message. Thus, the Examiner's alleged benefit from the
combination of Beyda and Hodge can be obtained by Beyda
alone. Hence, there is no reason to modify Beyda to obtain a
feature that Beyda already possesses. Additionally, the
Examiner alleges a "motivation" of "an electronic message
exchange system with the capacity to monitor and control
access of such a system." However, this alleged "motivation"
has nothing to do with the limitations at issue. Therefore, the
Examiner has failed to articulate a reasoning, within some
rational underpinning, to modify Beyda in view of Hodge.
Additionally, the Examiner's analysis fails to appreciate that the
"pre-defined period of time" described in Beyda is not the same
"pre-defined period of time" described in Hodge. Moreover, the
Examiner's analysis does not present an explanation as to why
one having ordinary skill in the art would consider these
limitations comparable so as to apply the teachings of one to the
teachings of another.
App. Br. 10:20-11:8. The Examiner is not determining that Hodge provides
a redundant function, but rather that Hodges augments Beyda. The phrase
"as taught by Hodge" means as improved by Hodge. As to motivation, the
reason for motivation is found in the art, not the claims. "In determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls." KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398,417 (2007). The Examiner has done so. As to
the contention regarding "pre-defined period of time," Appellants do not
describe how this differs in the references and why it matters. In any event,
the Examiner applies Hodges because of the pre-defined period limitation as
an implementation for calibrating the broader use of time generically in
Beyda. Final Act. 6.
As to claims 23, 34, and 38, each reciting the criterion is that the instant
message is not a salutation message, we find this issue is unchanged from
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the predecessor Application's appeal, in which we determined "the
Examiner is conflating capacity with motivation. Just because something
can be done does not mean it was predictable to do so. The Examiner
presents no facts supporting the predictability of using some salutation
message as a rule triggering criterion."
Here the Examiner finds that in Beyda, different rules may apply to
instant messages received from different senders. This in itself does not
describe a specific rule such as where the criterion is that the instant message
is not a salutation message. Examiner goes on to find that the message of
Beyda is not a salutation massage. But this is the post hoc, ergo propter hoc
fallacy. Just because something follows does not necessarily imply
causation. Just because Beyda forwarded a message that is not a salutation
message does not necessarily imply it was forwarded because of a rule using
that fact as a criterion.
CONCLUSIONS OF LAW
The rejection of claims 21-39 under the judicially created doctrine of
obviousness type double patenting as claiming the patentably
indistinguishable subject matter as another US Patent is improper.
The rejection of claims 21, 22, 24--33, 35-37, and 39 under 35 U.S.C.
§ 103(a) as unpatentable over Beyda and Hodge is proper.
The rejection of claims 23, 34, and 38 under 35 U.S.C. § 103(a) as
unpatentable over Beyda and Hodge is improper.
DECISION
The rejection of claims 21, 22, 24--33, 35-37, and 39 is affirmed.
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The rejection of claims 23, 34, and 38 is reversed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED-IN-PART
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