Ex Parte Kao et al

Patent Trial and Appeal Board

Jul 21, 2014

11941474 (P.T.A.B. Jul. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
___________

Ex parte TITUS KAO,
ERIC S. PORTNER,
and ROBERT C. WEIR
___________

Appeal 2011-013628
Application 11/941,474
Technology Center 2400
___________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
MICHAEL C. ASTORINO, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
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STATEMENT OF THE CASE1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed March 18, 2011) and Reply Brief (“Reply Br.,” filed August 18,
2011), and the Examiner’s Answer (“Ans.,” mailed June 22, 2011).
Titus Kao, Eric S. Portner, and Robert C. Weir (Appellants) seek review
under 35 U.S.C. § 134 of a final rejection of claims 1, 4-13, and 15-20, the
only claims pending in the application on appeal. We have jurisdiction over
the appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way of forwarding an instant message to
electronic mail. (Specification para 3).
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added].
1. A computer-implemented method of forwarding an instant
message to electronic mail, the method comprising:
[1] determining availability
of an instant messaging client
for a recipient;
[2] sending the instant message
to the instant messaging client
for the recipient;
[3] not receiving a reply
to the instant message
within a pre-defined period of time;
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[4] upon reaching the pre-defined period of time,
determining that
the instant message is not a salutation message
and
thus satisfies a criterion
for forwarding the instant message
in an electronic mail message;
and
[5] sending the electronic mail message
comprising the instant message
to the recipient.
The Examiner relies upon the following prior art:
Schiavone US 2002/0120600 A1 Aug. 29, 2002
Beyda US 2003/0229722 A1 Dec. 11, 2003
Daniell US 2004/0158611 A1 Aug. 12, 2004
Claim 20 stands rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1, 4, 6-13 and 15-20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Daniell and Beyda.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Daniell, Beyda and Schiavone.
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ISSUES
The issues of non-statutory subject matter turn primarily on whether
transient signals are within the scope of claim 20. The issues of obviousness
turn primarily on whether the art describes some message character used as a
criterion for deciding whether to forward an instance message in an email.
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 Appellants’ Disclosure
03. Any suitable computer-usable or computer-readable medium
may be utilized. For example, the medium can include, but is not

2 https://education.yahoo.com/reference/dictionary/entry/salutation
(Houghton Mifflin)
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limited to, an electronic, magnetic, optical, electromagnetic,
infrared, or semiconductor system (or apparatus or device), or a
propagation medium. Spec. para 11.
04. A computer-usable or computer-readable medium further can
include a transmission media such as those supporting the Internet
or an intranet. Further, the computer-usable medium may include
a propagated data signal with the computer-usable program code
embodied therewith, either in baseband or as part of a carrier
wave. The computer-usable program code may be transmitted
using any appropriate medium, including but not limited to the
Internet, wireline, optical fiber, cable, RF, etc. Spec. para 12.
Facts Related to the Prior Art
Daniell
05. Daniell is directed to communications and, more particularly, to
real-time and near real-time communications. Daniell para 1.
06. The preferred embodiments are for a client proxying instant
messaging system. Daniell para 4.
07. Daniell describes forwarding an E-mail message to a user when
instant messages from a sender cannot be forwarded to a
secondary IM processing device. This uses a primary IM
processing device configured to send and receive E-mail messages
and a router configured to route E-mail messages between the
primary IM processing device and a sender's processing device.
An E-mail user agent is coupled to the router and configured to
provide access to E-mail information including an address of the
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sender such that an E-mail message can be sent to the sender's
processing device. The router is further configured to receive
notification at the primary IM processing device of a reply from
the sender's processing device, configured to receive notification
at the primary IM processing device of a reply from the sender's
processing device. Daniell para 5.
08. Daniell can also be viewed as providing methods for deploying
a system for handling E-mail messages. In this regard, one
embodiment can be broadly summarized by the following steps:
generating an E-mail message from a primary IM processing
device configured to process E-mail and IM messages; sending the
E-mail message to a recipient's processing device; and awaiting a
response to the E-mail message from the recipient's processing
device. Daniell para 6.
09. Generally, in an IM system, each time a user logs onto the
system, a server, such as an IM server receives an initial set of
presence indicators from a client processing device, such as
online-available. Presence can change by user input or lack of
activity at a client processing device. For example, a user may
change presence from online-available to online-away, online-
extended away, online-do not disturb or the user may logoff,
among other presence types. The IM server periodically queries
the client processing device for presence information. The IM
server notes the change in presence and an event change
indication will be sent from the IM server to any associated client
processing devices. Other client processing devices connected to
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the system may also receive the event change notification.
Presence can also change when no activity such as keystroke or
mouse movement from the client processing device occurs over a
designated time period. For example, if a user does not utilize the
keyboard for 30 minute duration, the status of the client
processing device may change from online-present to online-
extended away state. When a user's presence is online-away, on-
line-extended away, online-do not disturb or offline, in a typical
setting, the IM server considers that user unavailable for a chat
session at that processing device. However, with the forwarding
aspect of this invention, a user who is unavailable at a primary IM
processing device can elect to have IM messages forwarded to a
secondary IM processing device. Daniell para 36.
10. Primary IM processing device will try to forward the IM
message to User2's secondary IM processing device. The IM
message is sent to the communications network and respective IM
server to determine if processing device is available. Availability
is based upon the IM server having presence information for the
processing device that the device is online-present. If processing
device #2 is unavailable, an attempt is made to send the message
from the primary IM processing device to User2's IM processing
device #3. If processing device #3 is similarly unavailable,
processing device attempts to send the message to User2's IM
processing device #4. Processing device #4 is available and the
IM message is forwarded to processing device #4. A second chat
session is established between the primary IM processing device
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and processing device #4 such that User1's IM processing device
can have a chat session with processing device #4. Thus, the
primary IM processing device serves as a bridge from one chat
session to forwarded chat session. Daniell para 40.
11. In an example, User2's primary IM processing device sends a
request to User1's IM processing device to determine if User1
wishes to send an E-mail message to User 2. In an alternative
embodiment, User2's primary IM processing device sends a
message to User1 and waits for a response. User2's client checks
for E-mail addresses in an address book database for an address of
User1. If an E-mail address exists, the client selects the first E-
mail address for User1 and sends User1 a message. In a preferred
embodiment, User2's E-mail processing device automatically
creates an email message that is sent from the primary IM
processing device to User1's processing device. The client of the
forwarding processing device will check for E-mail addresses in
order to send User1 an E-mail message. In an alternative
preferred embodiment, User2's client waits a designated period of
time for a responsive E-mail reply message. In a preferred
embodiment, User2's client waits two minutes for a reply
message. In an embodiment, User1 accesses an E-mail
application, composes a message and sends the message via the
path, or other path, over the communications network to User2's
primary IM processing device. In another preferred embodiment,
the E-mail message is automatically sent from User1's E-mail
application to User2's primary IM processing device. If no reply
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message is received during the waiting period, the client assumes
User1 is unavailable. If the client receives a reply message, User1
is assumed to be available and an E-mail session can occur. For
users utilizing an IM and E-mail network provided by the same
service provider, for example BellSouth.net, among others, an E-
mail message is sent from User2's primary IM processing device
to User1's processing device requesting or prompting as to
whether the user wishes to send an E-mail message when the an
IM message is undeliverable in a forwarded mode. If User1
affirmatively replies, an E-mail message is sent from User1 's
processing device to User2's primary IM processing device. If the
user does not wish to receive an E-mail message, the session
terminates. Daniell para 43.
Beyda
12. Beyda is directed to processing an instant message and, more
particularly, embodiments of Beyda relate to conducting one or
more actions after an instant message is received. Beyda para 1.
13. 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.
14. Beyda describes facilitating processing of an instant message
by determining at least one rule governing processing of an instant
message; and processing an instant message in accordance with
the at least one rule. This may include determining a time period
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and a rule governing processing of an instant message; and
processing an instant message in accordance with the rule after the
time period has expired after receiving of the instant message.
This may also include determining at least one rule governing
processing of an instant message; sending an instant message; and
receiving a notification indicative of a processing of the instant
message in accordance with the at least one rule. Beyda para 7.
15. A rule governing processing of an instant message may provide
many different types of procedures. For example, a user may
want all instant messages received by the user via a user device to
be stored, forwarded, deleted, or returned to the sender. In some
embodiments, different rules may apply to instant messages
received from different senders, received during different periods
of time, different days of the week, etc. For example, a user may
want any instant message received from friends to be stored for
later retrieval or reading. On the other hand, the user may want
any instant message received from the user's boss to be forwarded
to another user device being used by or otherwise associated with
the user (e.g., the user device 106). Beyda para 35.
16. 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
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message and send the 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. 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.
17. As another example of a rule, a receiver of an instant message
may want to notify the sender of the instant message that the
receiver has not read or opened the instant message. The
notification to the sender also might indicate what further action is
being taken with respect to the instant message. If and when the
receiver does open the instant message, the sender also may be
notified of such action. A notification to a sender might be sent
via an instant message, or some other communication channel
designated in the rule. For example, if the sender is still online or
if the sender's presence is otherwise detected by the instant
message server, the receiving user device might send a
notification to the sender via an instant message that the receiver
has not yet read the instant message. If the sender is no longer
online or if the sender's presence is no longer detected by the
instant message server, the receiving user device might send a
notification via email, facsimile transmission, voice mail, etc. as
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designated in the rule. Thus, in some embodiments, a rule may
designate when the sender of an instant message is to be notified,
how the sender is to be notified, and what the sender is to be
notified about regarding the sender's instant message. For
example, a notification to a sender may indicate that an instant
message was received by a user device on a specific time and date,
that the instant message has not been read, and that the instant
message has been stored or forwarded. As an alternative, in some
embodiments, a rule may designate when a party other than the
sender or receiver of an instant message is to be notified, how the
party is to be notified, and what the party is to be notified about
regarding the sender's instant message. For example, a potential
recipient of an instant message might want the instant messages to
be forwarded to his or her secretary if the recipient does not read
the instant message within thirty minutes of receiving it. In
addition, the recipient may want a notification to be sent to the
sender of the instant message to indicate that the instant message
has been forwarded to the secretary. Beyda para 37.

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ANALYSIS
Claim 20 rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter
Transitory propagating signals are unpatentable under 35 U.S.C. § 101.
In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007). According to U.S.
Patent & Trademark Office (USPTO) guidelines:
A claim that covers both statutory and non-statutory
embodiments . . . embraces subject matter that is not eligible for
patent protection and therefore is directed to non-statutory
subject matter. . . . For example, a claim to a computer readable
medium that can be a compact disc or a carrier wave covers a
non-statutory embodiment and therefore should be rejected
under § 101 as being directed to non-statutory subject matter.
U.S. Patent & Trademark Office, Interim Examination Instructions for
Evaluating Subject Matter Eligibility Under 35 U.S.C. §101, Aug. 2009, at
2, available at http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-
25_interim_101_ instructions.pdf (“Interim Instructions”).
The USPTO also provides the following guidance:
The broadest reasonable interpretation of a claim drawn to a
computer readable medium . . . typically covers forms of non-
transitory tangible media and transitory propagating signals per
se in view of the ordinary and customary meaning of computer
readable media, particularly when the specification is silent. . . .
When the broadest reasonable interpretation of a claim covers a
signal per se, the claim must be rejected under 35 U.S.C. § 101
as covering non-statutory subject matter.
David J. Kappos, Subject Matter Eligibility of Computer Readable
Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).
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Independent claim 20 recites, in pertinent part, “[a] computer program
product comprising a computer-readable medium comprising computer-
usable program code stored thereon.” Upon reviewing Appellants'
Specification for context, we find that what constitutes the claimed
“computer readable medium” explicitly includes within its scope a
propagation medium further including a propagated data signal with the
computer-usable program code embodied therewith, either in baseband or as
part of a carrier wave. The computer-usable program code may be
transmitted using any appropriate medium, including but not limited to the
Internet, wireline, optical fiber, cable, RF (radio frequency wave). FF 04-04.
As independent claim 20 covers both statutory and non-statutory
embodiments, it embraces subject matter that is not eligible for patent
protection and, therefore, is directed to non-statutory subject matter.
Appellants argue at Appeal Brief pages 10 to 20 that a computer
readable medium used for storage is distinct from a computer readable
medium used for transmission. This argument is unpersuasive for three
reasons: (1) a propagating signal with software embedded clearly retains the
software information for the life of the signal, and so is a form of storage;
(2) the distinction between a medium “for storage” and “for transmission” is
between intended aspirational use, not between the physical character of the
medium; and (3) Appellants’ Specification lexicographically allows transient
media within the scope of the recited claim phrasing.
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Claims 1, 4, 6-13 and 15-20 rejected under 35 U.S.C. § 103(a) as
unpatentable over Daniell and Beyda
Claim 5 rejected under 35 U.S.C. § 103(a) as unpatentable over Daniell,
Beyda and Schiavone
We are persuaded by the Appellants’ argument that
the issue at hand is not whether or not the applied prior art
teaches some rule (and corresponding action accompanying the
rule) that establishes how a particular instant message is to be
treated. The prior art (both applied and not applied) probably
teach dozens, if not hundreds of different rules that describe a
condition(s) by which a received instant message is to be acted
upon and the action(s) to be taken upon the condition(s) being
met. Instead, the issue at hand involves whether or not Beyda
(the Examiner has relied solely upon Beyda for the limitations
at issue) teaches "determining that the instant message is not a
salutation message" (i.e., the condition) that precedes the action
(i.e., "forwarding the instant message in an electronic mail
message"). Therefore, the issue at hand is not what Beyda
"could teach," as argued by the Examiner, but what Beyda
actually teaches.
Now that the proper issue has been framed, Appellants' review
of the Examiner's cited passages within Beyda reveals no
teaching of "determining that the instant message is not a
salutation message." Although Beyda teaches rules for
governing the processing of an instant message, this generic
teaching does not render obvious the specific limitations being
claimed. The teaching of some conditions and accompanying
actions by Beyda does not render obvious all conditions and
accompanying actions or render obvious the specific condition
and accompanying action being claimed. Therefore, the
Examiner has failed to properly characterize the scope and
content of Beyda.
Br. 26.
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The Examiner found that
the instant messages of Beyda can be any type of messages
including "instant message which is not a salutation
message". Also, the rule which is governing the processing of
an instant message in Beyda is capable of establishing whether
or not the instant messaging of the instant application satisfies a
criterion for forwarding the instant message in an electronic
mail message.
Ans. 18-19. 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. While the contents of such
a message might not warrant patentable weight as being non-functional, the
characterization determination of such a message acting as a decision
criterion does warrant weight.
All independent claims have a similar limitation.
CONCLUSIONS OF LAW
The rejection of claim 20 under 35 U.S.C. § 101 as directed to non-
statutory subject matter is proper.
The rejection of claims 1, 4, 6-13 and 15-20 under 35 U.S.C. § 103(a) as
unpatentable over Daniell and Beyda is improper.
The rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable over
Daniell, Beyda and Schiavone is improper.
DECISION
The rejection of claims 1, 4-13 and 15-19 is reversed.
The rejection of claim 20 is affirmed.
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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)(1)(iv) (2011).

AFFIRMED-IN-PART

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