Ex Parte Kotzin

Board of Patent Appeals and Interferences

May 29, 2012

10749321 (B.P.A.I. May. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL D. KOTZIN
____________

Appeal 2010-001836
Application 10/749,321
Technology Center 2100
____________

Before LANCE L. BARRY, ST. JOHN COURTENAY III, and ANDREW
J. DILLON, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-23. The Appellant appeals
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

Appeal 2010-001836
Application 10/749,321
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INVENTION
The following claim illustrates the invention on appeal.
23. A method for managing the access to user presence
attribute information comprising:
receiving a request for user presence attribute
information;
identifying a user requesting the user presence attribute
information;
determining whether the user requesting the user
presence attribute information is authorized to have access to
the requested user presence attribute information including
receiving any conditions relative to the requesting
user associated with receiving access to the user presence
attribute information, and
determining whether the received conditions
relative to the requesting user associated with receiving
access have been met;
wherein, if the conditions relative to the requesting user
associated with receiving access have been met, then
forwarding the user presence attribute information to the
requesting user.

REFERENCES AND REJECTIONS
Wade US 5,552,776 Sep. 03, 1996
Fushiki US 6,433,704 B1 Aug. 13, 2002
Kruse US 6,684,279 B1 Jan. 27, 2004
Raverdy US 6,957,217 B2 Oct. 18, 2005

Appellant's Admitted Prior Art (“AAPA”) (Spec. 1, ll. 10-24).

Claims 1, 6, 7, 10, 11, 15, 16, and 19-22 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the Appellant's Admitted
Prior Art ("AAPA") and Raverdy.
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Claims 2-5, 13, 14, and 23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over AAPA, Raverdy, and Wade.
Claims 8, 9, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over AAPA, Raverdy, and Fushiki.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over AAPA, Raverdy, and Kruse.

DISCUSSION
Based on the dependencies of the claims, we will decide the appeal of
claims 1-22 on the basis of independent claims 1 and 15. We will decide the
appeal of claim 23 individually. Therefore, the issues before us follow.
Did the Examiner err in finding that AAPA would have taught or
suggested "access condition entries define the conditions when the
corresponding user presence attribute information is available to the
corresponding identified one or more users," as required by independent
claim 1 and as similarly recited in independent claim 15?
Did the Examiner err in concluding that combined teachings of
AAPA, Raverdy, and Wade would have taught or suggested the limitations
of claim 23?
We address the issues seriatim.

CLAIMS 1 AND 15
The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001) (citations
omitted).
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Application 10/749,321
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Here, regarding the AAPA, the Examiner finds that "the access
condition (e.g. on-line status [of the buddy list users] condition) having the
predefined subset of users being online needs to be satisfied, in order for the
user to be alerted of the user presence attribute information corresponding to
the buddy list." (Ans. 20.)
We agree with the Appellant, however, that "a particular user's on-line
status is not a condition . . . that is associated with granting or denying
access to the presence information of another user. The on-line status is an
example of a type of presence information." (Reply Br. 3.)
Furthermore, the Examiner does not allege, let alone show, that the
other applied references cure the aforementioned deficiency of AAPA.
Therefore, we conclude that the Examiner erred in finding that AAPA
would have taught or suggested "the access condition entries define the
conditions when the corresponding user presence attribute information is
available to the corresponding identified one or more users," as required by
independent claim 1 and as similarly recited in independent claim 15.

CLAIM 23
In arguing against the rejection of independent claim 23, the
Appellant relies on the same arguments that he made for independent
claims 1 and 15. (App. Br. 9; Reply Br. 5.)
However, claim 23 has a different scope than claims 1 and 15.
Furthermore, the Examiner combines different teachings in a different way
to reject claim 23 (Ans. 16-18) than he does to reject claims 1 and 15. (Ans.
3-6, 19-22.) Consequently, the Appellant's arguments are not commensurate
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with the scope of claim 23 (Reply Br. 3-4) or don’t address the Examiner's
proposed combination of teachings. (Reply Br. 2-3, 4-5.)
Therefore, we conclude that the Examiner did not err in concluding
that the combined teachings of AAPA, Raverdy, and Wade would have
taught or suggested the limitations of independent claim 23.

DECISION
We affirm the rejection of claim 23.
We reverse the rejections of claims 1 and 15 and those of claims 2-14
and 16-22, which depend therefrom.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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