Ex Parte Karstens

Board of Patent Appeals and Interferences

May 2, 2012

10735965 (B.P.A.I. May. 2, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/735,965 12/15/2003 Christopher Kent Karstens RSW920030208US1 3393
71474 7590 05/03/2012
Steven E. Bach Attorney at Law
10 Roberts Road
Newtown Square, PA 19073
EXAMINER
MUSA, ABDELNABI O
ART UNIT PAPER NUMBER
2478
MAIL DATE DELIVERY MODE
05/03/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CHRISTOPHER KENT KARSTENS
____________________

Appeal 2010-002115
Application 10/735,965
Technology Center 2400
____________________

Before: HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002115
Application 10/735,965
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-3 and 5-31. Claim 4 has been cancelled. We have jurisdiction under 35
U.S.C. § 6(b).
We Affirm.
Invention
Appellant’s invention relates generally to improved methods and
systems for instant messaging software applications. More particularly, the
invention on appeal is directed to “advantageous techniques for providing
some level of control by a source computer over the use of instant messaging
content delivered to a target computer.” (Spec. 1).
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer-readable medium whose contents cause a
source computer to control the use of co tent carried over a
content controlled instant message session with a target
computer, he source computer having a program for performing
the steps of:

[L1] determining a requested use attribute for instant
message content generated by the source computer;

[L2] sending the requested use attribute to the target
computer;

[L3] receiving an indication verifying whether a content
controlled instant message session is supported at the target
computer; and

[L4] establishing the content controlled instant message
session having a session use attribute based upon the requested
use attribute with the received indication, the content controlled
instant message session controlling the use of content provided
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over the session at the target computer in accordance with the
session use attribute.

(Disputed limitations labeled L1-L4 for convenience, emphasis added).

REFERENCES

Rice
Price
US 2002/0174010 A1
US 2005/0102362 A1
Nov. 21, 2002
May 12, 2005
Szeto US 7,188,143 B2 Mar. 6, 2007

REJECTIONS
Claims 1-3 and 5-31 stand rejected under 35 U.S.C §103(a) as being
unpatentable over the combination of Szeto, Price, and Rice.

GROUPING OF CLAIMS
Based on Appellant’s arguments in the Brief, we decide the appeal on
the basis of claims 1, 2, 3, 5, 6, 13, 16, 19, 24, and 26. See 37 C.F.R.
§ 41.37(c)(1)(vii).
ANALYSIS
We consider Appellant’s arguments seriatim as they are presented in
the Brief, page 16, et seq.
We begin our analysis by giving the claims their broadest reasonable
interpretation. See In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004). We
consider Appellant’s arguments only to the extent that such arguments are
directed to claimed subject matter. We decline to read limitations from the
Specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993).

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Independent Claim 1
Issue: Under §103, did the Examiner err in finding
that the cited combination of Szeto, Price, and Rice
would have taught or suggested disputed
limitations L1-L4 (see claim 1 supra), within the
meaning of claim 1?

Regarding disputed limitations L1-L3 (see claim 1 supra), we observe
that Appellant’s arguments contesting limitations L1-L3 attack the Szeto
reference in isolation. (App. Br. 16-20). Regarding the cited secondary
references, Appellant merely asserts: “Price and Rice do not provide what
Szeto lacks.” (App. Br. 19-20). Appellant also attempts to distinguish the
claimed invention by relying on the Specification: “[a]s clearly provided in
Applicant’s Specification…the use attribute may include . . . .” (App. Br.
16).
We do not find this form of argument persuasive. One cannot show
nonobviousness by attacking references individually where the rejections are
based upon combinations of references. In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986). We also decline to read limitations from the
Specification into the claims. Van Geuns, 988 F.2d at 1184.
Here, the Examiner relied on the combined teachings of Szeto, Price,
and Rice to teach or suggest disputed limitations L1-L3. In the “Response to
Arguments” section of the Answer (Ans. 13-14), the Examiner provides a
detailed explanation regarding how at least the Price reference overcomes
any purported deficiencies of Szeto, as argued by Appellant. (App. Br. 16-
19). We also observe that Appellant has not filed a Reply Brief that further
rebuts the Examiner's responsive arguments. On this record, we are not
persuaded of Examiner error regarding disputed limitations L1-L3.
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Regarding disputed limitation L4, Appellant contends that the
combination of Szeto, Price, and Rice does not teach or suggest the content
controlled instant message session controlling the use of content provided
over the session at the target computer in accordance with the session use
attribute.” (Claim 1, emphasis added; see also App. Br. 19-20).
In particular, Appellant refers to the Price reference and contends that
“paragraph [0015] provides codes to enable/disable the interface, but is
silent regarding functions. Neither a peripheral communicating with [a] user
using an instant messaging protocol nor, a thin client network disclose or
suggest controlling the use of content of instant messages at a target
computer.” (App. Br. 21).
However, the Examiner relies primarily on Szeto and Rice as teaching
or suggesting this limitation. (Ans. 4-5, 15-16). Thus, we do not find
Appellant’s singular attack on Price to be persuasive of Examiner error.
For essentially the same reasons articulated by the Examiner in the
Answer, as discussed above, we sustain the obviousness rejection of claim 1
over the combination of Szeto, Price, and Rice.

Claim 2
Issue: Under §103, did the Examiner err in finding
that the cited combination of Szeto, Price, and Rice
would have taught or suggested “wherein the
received indication further includes an indication
that a content use feature on the target computer
corresponding to the requested use attribute has
been activated,” within the meaning of claim 2?

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Appellant avers that “[t]he Examiner has concluded in error that this
feature is disclosed by Szeta (at col.11, line 40).” (App. Br. 22, last
paragraph). In particular, Appellant contends that “[c]ommon instant
messaging functions as provided in Szeto are display options. They do not
control usage of the instant message content. Moreover, Szeto does not
address providing an indication of activation of usage controls to the source
computer.” (App. Br. 22-23).
However, we observe that Appellant’s arguments fail to address the
remaining portions of Szeto relied on by the Examiner in the rejection of
claim 2: columns 3, 9, and Figures 2 and 5. (Ans. 6). Because Appellant
has not completely addressed the Examiner’s findings, we are not persuaded
of Examiner error. Therefore, we sustain the obviousness rejection of claim
2 over the combination of Szeto, Price, and Rice.

Claims 3, 8, 21, and 26
Issue: Under §103, did the Examiner err in finding
that the cited combination of Szeto, Price, and Rice
would have taught or suggested “wherein the
content use feature is a is disabled printing
function, a disabled screen capture function, a
disabled third party join function, a disabled
clipboard copy function, or a disabled logging
function at the target computer,” within the
meaning of claims 3, 8, 21, and 26?

Although the Examiner relies primarily on Szeto in the rejection (Ans.
6), the Examiner additionally refers to Rice in the “Response To
Arguments,” as teaching “AppLink Properties 1616 (Fig. 16). We observe
that Fig. 16 expressly depicts at least a disabled printing function (box 1616
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“Printing? No”), and a clipboard copy that can be enabled or disabled. (See
Ans. 15-16).
Appellant has not filed a Reply Brief that further rebuts the
Examiner's responsive arguments. On this record, we are not persuaded of
Examiner error regarding claim 3, or claims 8, 21, and 26 which recite the
same disputed limitations. Therefore, we sustain the obviousness rejection of
representative claim 3, and claims 8, 21, and 26 which fall therewith over
the combination of Szeto, Price, and Rice. See 37 C.F.R. § 41.37(c)(1)(vii).

Claim 5
Issue: Under §103, did the Examiner err in finding
that the cited combination of Szeto, Price, and Rice
would have taught or suggested “updating the
session use attribute during communication over
the content controlled instant message session after
the establishing of the content controlled instant
message session step,” within the meaning of
claim 5?

Appellant contends that Szeto does not disclose or suggest changing
use attributes during an instant message session, and refers to columns six
and nine of Szeto in support. (App. Br. 25-26).
Although the Examiner relies primarily on Szeto in the rejection, the
Examiner also refers to Rice in the “Response To Arguments,” as teaching
“toggles” (i.e., updated session use attribute(s)) which control the recipients
local capabilities, such as file printing, save to clipboard capability, etc.
(Ans. 15). We agree with and adopt the Examiner’s findings.
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Appellant has not filed a Reply Brief that further rebuts the
Examiner's responsive arguments. Therefore, on this record, we are not
persuaded of Examiner error regarding claim 5.
Claim 6
Issue: Under §103, did the Examiner err in finding
that the cited combination of Szeto, Price, and Rice
would have taught or suggested “receiving a first
message containing a first requested use attribute
from the source computer,” within the meaning of
claim 6?

Appellant contends:
The Examiner has concluded in error that this feature is
disclosed by Szeto at col. 13 line 53 and in Fig. 13. However,
the cited paragraph refers to sending a control message to an IM
client to implement an IM application. Applicants respectfully
contend that an IM application control is not the same as a use
attribute for the reasons previously presented under claim 1.
(App. Br. 27).

However, we did not find Appellant’s arguments persuasive regarding
claim 1. Therefore, we sustain the Examiner’s rejection of claim 6 for the
same reasons discussed supra regarding claim 1.

Claim 13
Appellant recites the four disputed limitations that are commensurate
in scope with the limitations that we have addressed supra regarding claim
1. (Br. 29). Appellant then contends that “the Examiner has failed to make a
prima faci[e] case of obviousness.” (App. Br. 29).
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We note that a statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.
See 37 C.F.R. § 41.37(c)(1)(vii). Therefore, we sustain the Examiner’s
rejection of claim 13 for the same reasons discussed supra regarding
claim 1.
Claims 16, 19, and 24
Appellant merely recites the respective claim limitations and then
asserts that “the Examiner has failed to make a prima faci[e] case of
obviousness.” (Br. 29-30, 33).
As previously discussed, a statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim. See 37 C.F.R. § 41.37(c)(1)(vii). Therefore, we sustain the
Examiner’s rejection of claims 16, 19, and 24 for the same reasons discussed
supra regarding independent claim 1.

Claim 20
Appellant urges that claim 20 is patentable over the cited combination
of references for the same reasons previously argued regarding claim 2. (Br.
31). However, we did not find Appellant’s arguments persuasive regarding
claim 2. Therefore, we sustain the Examiner’s rejection of claim 20 for the
same reasons discussed supra regarding claim 2.

Claim 23
Appellant urges that claim 23 is patentable over the cited combination
of references for the same reasons previously argued regarding claim 5. (Br.
32). However, we did not find Appellant’s arguments persuasive regarding
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claim 5. Therefore, we sustain the Examiner’s rejection of claim 23 for the
same reasons discussed supra regarding claim 5.

Dependent Claims 7, 9-12, 14, 15, 17, 18, 22, 25, and 27-31
Appellant does not provide any arguments traversing the Examiner’s
rejection of these remaining dependent claims. Therefore, we consider these
arguments waived. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir
2008) (“When the appellant fails to contest a ground of rejection to the
Board, section 1.192(c)(7) [(now section 41.37(c)(1)(vii))] imposes no
burden on the Board to consider the merits of that ground of rejection. . . .
[T]he Board may treat any argument with respect to that ground of rejection
as waived.”).
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 7, 9-12, 14, 15, 17, 18, 22, 25, and 27-31.

DECISION
We affirm the Examiner’s decision rejecting claims 1-3 and 5-31.

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.
§ 41.50(f).
ORDER
AFFIRMED

Appeal 2010-002115
Application 10/735,965
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