Ex Parte Lefar et al

Patent Trial and Appeal Board

Aug 2, 2016

12856140 (P.T.A.B. Aug. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/856,140 08/13/2010
96355 7590 08/04/2016
NIXON & VANDERHYE, P,C /Vonage
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Marc Lefar
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.
JCE-5524-15 1415
EXAMINER
CHU, WUTCHUNG
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
08/04/2016 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC LEF AR, JOHN RILEY, JOHN ERICKSON, DEEP AK
OTTUR, ANDREW ROBERT BROCK, and ANDREW H. TRIPP
Appeal2015-002238 1
Application 12/856,140
Technology Center 2400
Before ALLEN R. MacDONALD, JEAN R. HOMERE, and
AMBER L. HAGY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
1 "[C]opending Application Nos. 12/841,250, 12/841,258, 12/841,285,
12/841,290, 12/822,970, and 13/244,898, ... either were on appeal, or are
currently on appeal." App. Br. 4.
Appeal2015-002238
Application 12/856,140
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-7, 9-15, 17-20, and 22-24. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm-in-part, and enter a new ground of rejection.
Exemplary Claims
Exemplary claims 1 and 10 under appeal read as follows (emphasis
added):
1. A method of presenting messages to members of a messaging
group in an Internet Protocol (IP) environment, comprising:
receiving a message from at least one member of a messaging
group that includes a plurality of members, wherein the messaging
group is identified by a group identifier;
obtaining predetermined handling instructions, that are
registered with an IP telephony service provider, that indicate how
messages are distributed to members of the messaging group; and
transmitting the message to a plurality of communication
devices based on the predetermined handling instructions, such that
the communication devices can display the message on a display
screen, each of the communication devices belonging to a member of
the messaging group.
10. The method of claim 1, wherein the message is received from a
first member of the messaging group, wherein the message is directed
to a second member of the messaging group, and wherein the
transmitted message allows the plurality of communication devices to
display the message on a display screen with indications that the
message was sent from the first member and that the message was
directed to the second member.
2
Appeal2015-002238
Application 12/856,140
Rejections on Appeal
1. The Examiner rejected claims 1, 3-5, 9, 19, 20, 22, and 23
provisionally on the ground of nonstatutory obviousness-type double
patenting as being unpatentable over claims 1-3, 7, 20, and 21 of copending
U.S. Application No. 12/841,290 in combination with Neelakantan et al. (US
2009/0061825 Al; Mar. 5, 2009).2
2. The Examiner rejected claims 1, 9, 10, 18-20, 22, and 24 under
35 U.S.C. § 102(b) as being anticipated by Gagne et al. (US 2007/0286101
Al; Dec. 13, 2007).3
3. The Examiner rejected claim 2 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Gagne and Hager (US
2005/0159144 Al; July 21, 2005). The Examiner rejected claims 3-7 and
11-15 under 35 U.S.C. § 103(a) as being unpatentable over the combination
of Gagne and Neelakantan. The Examiner rejected claim 17 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Gagne,
Neelakantan, and Tofighbakhsh et al. (US 2011/0142221 Al; June 16,
2011). The Examiner rejected claim 23 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Gagne and Tofighbakhsh.4
2 Arguments are not presented for this provisional rejection. Therefore, we
affirm the Examiner's rejection proforma. Except for our ultimate decision,
this rejection of these claims is not discussed further herein.
3 Separate patentability is not argued for claims 18-20 and 22. Except for
our ultimate decision, the Examiner's rejection of these claims is not
discussed further herein.
4 In addressing these § 103 rejections, Appellants merely reference the
arguments directed to the § 102 rejection. Without more, the patentability
of these claims rejected under 103(a) are not separately argued from that of
their base claims rejected on a separate basis under § 102. Except for our
3
Appeal2015-002238
Application 12/856,140
Appellants ' Contentions
1. Appellants contend the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(b) because:
Gagne does not at all disclose or suggest an IP telephony
service provider registering handling instructions that indicate
how messages are to be distributed to members of a messaging
group. Consequently, Gagne would not transmit messages to
members of the messaging group based on the registered and
obtained handling instructions.
App. Br. 9.
2. Appellants contend the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(b) because:
[P]aragraph [0039] [of Gagne] indicates that the
communication establishing the conference may be in the form
of a text message. Paragraph [0039] does not indicate that the
conference is a text message itself. Likewise, paragraph [0049]
describes that the conference report (e.g., sent to the meeting
coordinator) can be in the form of a text message. This is not
analogous to conducting the conference via text message (or
group messaging).
App. Br. 11.
3. Appellants contend the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(b) because:
[CJ laim 1, for example, clearly requires that the same message
that is received is passed to various members of the group
(based on the obtained handling instructions). Paragraph [0045]
of Gagne does not provide this teaching. In particular, Gagne
creates a message to initiate a conference and sends out the
created message to members of the group. Gagne does not
receive this message, obtain handling instructions to process the
ultimate decision, the rejections of these claims are not discussed further
herein.
4
Appeal2015-002238
Application 12/856,140
(same) message, and then send the (same) message based on the
handling instructions.
App. Br. 13.
4. Appellants contend the Examiner erred in rejecting claim 9
because:
Gagne describes a system for establishing a conference call
between one or more members of a group where a member can
initiate the conference by sending a conference request message
to the system. Gagne indicates that a conference message can
be sent to a subset of a discussion group. See paragraph [0048]
of Gagne. However, the subset in Gagne is a dynamically
determined subset. Thus, Gagne cannot select a subset based on
predetermined handling instructions.
App. Br. 14.
5. Appellants contend the Examiner erred in rejecting claim 10
because:
Gagne is not transmitting messages between two members and
having the message be displayed on displays of other members
in the group. That is, Gagne just transmits a conference invite to
members in a format suitable for display on each member's
device. This is not analogous to first and second members
communicating through a message, where the message between
the two members is displayed on a plurality of devices.
App. Br. 15-16.
6. Appellants contend the Examiner erred in rejecting claim 24
because:
Gagne describes sending a conference message to a subset of
discussion members. The subset could include only members
that did not participate in a conference. However, Gagne is not
sending copies of a message to members that were not intended
recipients of the original message. In fact, Gagne' s message
sent to the subset is sent to a group of intended recipients even
if the recipients were not participants in the conference. That is,
5
Appeal2015-002238
Application 12/856,140
Gagne still intends to send the message to non-participants and
does not at all indicate that the non-participants should not have
received the message.
App. Br. 16-17.
Issues on Appeal
Did the Examiner err in rejecting claims 1, 9, 10, and 24 as being
anticipated under 35 U.S.C. § 102(b) because Gagne fails to describe the
limitations argued by Appellants?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. As
to claims 1 and 9, we disagree with Appellants' conclusions. Except as
noted below, 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. As to claims 1 and 9, we concur with the
conclusions reached by the Examiner. We highlight the following points.
As to Appellants' above contention 1, we disagree for the reasons set
forth by the Examiner. Contrary to Appellants' argument that "Gagne fails
to describe an IP telephony service provider per se" (App. Br. 11 ), the
Examiner correctly finds that Gagne teaches "voice over IP" (i.e., an IP
telephony service provider). Ans. 4. Further, the Examiner correctly finds
that Gagne teaches "transmitting the message to a plurality of
communication devices based on predetermined handing instructions" (Final
Act. 8). In particular, Gagne teaches:
6
Appeal2015-002238
Application 12/856,140
Stored with the member identifiers is the communication
handle of each member 105 of the discussion group 103. Thus
the application controller 110 is able to transmit the message
relaying the conference request to each member by using the
communication handles and by formatting the message to be
compatible to each communication handle of the group
members 105. For example, if member 105a is part of the
discussion group 103, the application controller 110 is able to
determine that member 105a employs a laptop computer as a
communication device 107 to participate in conferences. This
knowledge is gained by accessing the group information in
the database 130. The application controller 110 may then
operate to format the conference request message in an email
message, which is a format compatible with the laptop
computer of member 105a.
Gagne i-f 45; emphasis added.
As to Appellants' above contention 2, we disagree for the reasons set
forth by the Examiner. Contrary to Appellants' argument, Gagne teaches
that "conference messages" (Gagne i-fi-134--38), which are part of the
conference, may be in the form of text messages or email messages.
Further, although Appellants attempt to distinguish over Gagne by arguing
that messaging to establish a conference is not analogous to conducting a
conference, Appellants overlook that claim 1 is not limited to conducting a
conference. Rather, claim 1 is more broadly directed to a "method of
presenting messages to members of a messaging group in an Internet
Protocol (IP) environment."
As to Appellants' above contention 3, we disagree. Contrary to
Appellants' argument, Gagne at paragraphs 44--45 teaches that the initiating
group member creates the conference request, which is sent to the
application controller, which "conference request" is then included in a
message relayed to each member 105.
7
Appeal2015-002238
Application 12/856,140
As to Appellants' above contention 4, we disagree. Contrary to
Appellants' argument, nothing in claim 9 precludes the "predetermined
handling instructions" from being predetermined dynamically as in Gagne.
Appellants' argument simply presupposes that one precludes the other. We
see no reason that this must be the case.
As to Appellants' above contentions 5 and 6, we agree. However, the
subject matter of claims 10 and 24 are analogous to the conventional email
message routing techniques of "cc" and "bee." Therefore, we reject claims
10 and 24 under 35 U.S.C. § 103(a) as being unpatentable over Gagne. We
conclude it would have been obvious to use these conventional message
routing techniques in a messaging system such as that of Gagne. We also
note that Appellants' argument fails to indicate any particular definition for
their use of the term "intended recipients" in claim 24. We construe the term
to mean no more than the standard distinction between the "to" function and
the "cc" or "bee" functions in the conventional email message routing
techniques.
37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
8
Appeal2015-002238
Application 12/856,140
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1, 9, 18-20, and 22
as being anticipated under 35 U.S.C. § 102(b).
(2) The Examiner has not erred in rejecting claims 2-7, 11-15, 17,
and 23 as being unpatentable under 35 U.S.C. § 103(a).
(3) Appellants have established that the Examiner erred in rejecting
claims 10 and 24 as being anticipated under 35 U.S.C. § 102(b).
(4) We reject claims 10 and 24 as being unpatentable under 35 U.S.C.
§ 103(a).
(5) Claims 1-7, 9-15, 17-20, and 22-24 are not patentable.
DECISION
The Examiner's rejection of claims 1, 9, 18-20, and 22 as being
anticipated under 35 U.S.C. § 102(b) is affirmed.
The Examiner's rejection of claims 10 and 24 as being anticipated
under 35 U.S.C. § 102(b) is reversed.
The Examiner's rejections of claims 2-7, 11-15, 17, and 23 as being
unpatentable under 35 U.S.C. § 103(a) are affirmed.
9
Appeal2015-002238
Application 12/856,140
The Examiner's provisional rejection of claims 1, 3-5, 9, 19, 20, 22,
and 23 on the ground of nonstatutory obviousness-type double patenting is
affirmed.
A new ground of rejection under 35 U.S.C. § 103(a) is entered for
claims 10 and 24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
10