Ex Parte Mayer

Patent Trial and Appeal Board

Apr 25, 2017

10328088 (P.T.A.B. Apr. 25, 2017)

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.
10/328,088 12/20/2002 Yaron Mayer P-BBM-7369-US 1632
91924 7590
NAOMI ASSIA
32 Habarzel Street
Tel-Aviv, 6971048
ISRAEL
EXAMINER
LEROUX, ETIENNE PIERRE
ART UNIT PAPER NUMBER
2161
NOTIFICATION DATE DELIVERY MODE
04/27/2017 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):
naomih@computer-law.co.il
adi@computer-law.co.il
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YARON MAYER
Appeal 2016-008278
Application 10/328,088
Technology Center 2100
Before JASON V. MORGAN, NABEEL U. KHAN, and
KAMRAN JIVANI, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review, under 35 U.S.C. § 134(a), of the
Examiner’s final decision rejecting claims 110—129. App. Br., Claims
App’x. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-008278
Application 10/328,088
THE INVENTION
Appellant’s invention is directed to a system for online dating
including “searching, finding, and contacting dates on the Internet in instant
messaging networks[.]” Abst.
Independent claim 110 is reproduced, below, with emphasis on a
disputed limitation.
Claim 110: A system for searching, finding and contacting
persons on the Internet in instant messaging networks,
comprising:
a. a client program, located on a user’s computer;
b. at least one server, located on the Internet;
c. a database located on the server, and containing
compatibility data for a plurality of users;
d. means for entering compatibility data into said database;
e. a search module for searching said database to obtain a list
of persons having compatibility with the user, said compatibility
being based on the entered compatibility data for said plurality
of users;
f. means for sorting said list into persons having
compatibility with the user who are currently on-line and persons
having compatibility with the user who are not currently on-line;
and
g. an instant messaging element enabling exchange of
messages between the user and a person having compatibility
with the user who is currently on-line, and which uses a
contactee list.
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Application 10/328,088
REFERENCES and REJECTIONS
Claims 110 and 112—129 are rejected, under 35 U.S.C. § 103(a), as
unpatentable over Collins (US 5,963,951; Oct. 5, 1999) and Ogle
(US 6,430,604 Bl; Aug. 6, 2002). Final Act. 2-5 (April 3, 2012).
Claim 111 is rejected, under 35 U.S.C. § 103(a), as unpatentable over
Collins, Ogle, and applicant admitted prior art (AAPA). Final Act. 5—6.
ANALYSIS
Claims 110—123
Claim 110 is representative of claims 112—123. 37 C.F.R. § 41.37(c)
(l)(iv) (2012). As to claim 111, Appellant only argues “the rejection of
claim 110 is not proper” and thus “the rejection of claim 111 is also not
proper.” Br. 15. Accordingly, all claims fall with claim 110 for the reasons
below.
The Examiner finds claim 110’s invention suggested by a
combination of Collin’s and Ogle’s teachings. Generally, the Examiner
finds Collins teaches a database of subscriber information that can be
searched based on personal preference to return a search result and accordant
voice mailing of compatible persons. Ans. 4—7. The Examiner finds Ogle
teaches instant messaging to persons of a contact list. Ans. 7. Combining
the teachings of Collins and Ogle, the Examiner finds it would have been
obvious to implement Collin’s search results as Ogle’s instant messaging
contact list (e.g., place therein) for purposes of instant messaging the
compatible persons. Ans. 3—9. The Examiner presents several reasons why
an artisan would contemplate the combination. Id. at 6—9. The Examiner
principally states an artisan would understand Collin’s search results of
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Appeal 2016-008278
Application 10/328,088
compatible persons and respective voicemail identifiers (e.g., the disclosed
“box numbers”) as analogous to a contact list {id. at 6—7, 9) and Collin’s
voicemail messaging as improved by Ogle’s instant messaging {id. at 8—9).
The Examiner has articulated a comprehensive and well-reasoned
combination of Collin’s and Ogle’s teachings. Ans. 3—9. As such, we adopt
the Examiner’s findings and conclusions therein. We also adopt the
Examiner’s concordant findings and conclusions within claim 110’s
rejection at the Final Action’s pages 2—A. We also adopt the Examiner’s
findings and conclusions at the Answer’s pages 9-15, which further address
Appellant’s arguments. Those findings and conclusions are also
comprehensive. We note the following for emphasis.
Appellant argues there is “no disclosure in Collins of contacting
compatible persons, whether by instant messaging or by any other means.”
Br. 5. The argument neglects that Collins discloses contacting of compatible
persons via a “box number” for voicemail. See Ans. 9 (citing Collins col. 1,
1. 55—col. 2,1. 5).
Appellant argues:
[E]ven if Ogle et al. really did make it obvious to use instant
messaging to contact people on a list generated by Collins, this
says nothing about rebuilding the Collins system so that it had its
own instant messaging element as claimed. It would have been
much easier/natural just to use the existing Collins system to
generate a list of names and switch to an existing instant
messaging application.
Br. 6; see also id. at 11 (“No suggestion is cited to rebuild an existing
software application . . .”). The argument lacks supporting evidence and a
recognizable basis in obviousness analysis. “[I]t is well settled that it is not
‘invention’ to broadly provide a mechanical or automatic means to replace
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Appeal 2016-008278
Application 10/328,088
manual activity which has accomplished the same result.” In re Venner, 262
F.2d 91, 95 (CCPA 1958). Merely providing instant messaging capabilities,
such as those taught or suggested by Ogle, directly in a contact generation
system such as that taught or suggested by Collins, rather than requiring a
user to switch to a different system, is comparable in that it automates the
means by which generated contact information is put to use (i.e., it
eliminates the step of manually switching over to a non-integrated instant
messaging application and moving the requisite information from the contact
generation system to the instant messaging application).
Appellant argues “[Ogle’s] disclosure of a user including names of
persons in an address book does not necessarily mean that the user enjoys
communicating with such persons.” Br. 8. The argument mischaracterizes
the Examiner’s findings and conclusions. The Examiner does not find that a
contact list user is compatible with, e.g., likes, everyone in the contact list.
The Examiner finds, rather, an artisan would understand Collin’s search
results of compatible persons and respective voicemail identifiers as
analogous to a contact list. See supra 3 (Examiner’s findings). And, to
further emphasize the degree of analogousness, the Examiner notes Collin’s
search results and Ogle’s contact list would both be further understood as
identifying people compatible with the user. See Ans. 12.
Appellant argues: “The examiner characterizes the problem that both
Collins and Ogle et al. solve as ‘enabling compatible people to meet.’
[S]uch is not the subject of the disclosure of Ogle[.]” Br. 10 (citation
omitted). The argument neglects that both references are, like claim 110,
directed to contacting people of interest. See Ans. 12—15; see also In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (problem test for analogous art
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Application 10/328,088
is whether a reference “is reasonably pertinent to the particular problem with
which the inventor is involved”).
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of claims 110—123.
Claims 124^129
Claim 124 is representative of depending claims 125—129. 37 C.F.R.
§ 41.37(c)(l)(iv) (2012).
Though addressing claims 124—129 under separate heading, Appellant
only adds (compare supra) “the method of claim 124 is for a user to search,
find and con tact dates on the Internet [.]” Br. 13. Appellant then reiterates
the above vein of arguments that there is no presented reason to rebuild
Collin’s software with an IM message utility. Br. 14. For the reasons supra,
the argument is not persuasive.
Accordingly, we sustain the Examiner's rejection of claims 124—129.
DECISION
The rejections of claims 110—129 are affirmed.
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
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