Ex Parte Morton et al

Patent Trial and Appeal Board

Jul 31, 2013

11674231 (P.T.A.B. Jul. 31, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/674,231 02/13/2007 Michael J. Morton RSW920060211US1(540) 4151
46320 7590 07/31/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
NGUYEN, THU HA T
ART UNIT PAPER NUMBER
2453
MAIL DATE DELIVERY MODE
07/31/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL J. MORTON and GOSS F. NUZZO-JONES
____________

Appeal 2011-001792
Application 11/674,2311
Technology Center 2400
____________

Before MARC S. HOFF, KRISTEN L. DROESCH, and
JEREMY J. CURCURI, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The real party in interest is International Business Machines Corporation.
Appeal 2011-001792
Application 11/674,231

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STATEMENT OF THE CASE
Appellants’ invention is a method and apparatus for transforming user
requests and responses based on a persona. A Persona Based Interface (PBI)
associates a user’s persona with a simple instant message request to a remote
service. The PBI transforms the user’s request based on the persona and
forwards the request to the remote service. After receiving a response to the
request, the PBI transforms the response into a simple instant message based
on the persona (Spec. 3).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A computer implemented process for obtaining information from a
network service, the computer implemented process comprising:

receiving a simple instant message (IM) request embedded within an
IM in an IM server from an IM client of a user over a computer
communications network;

determining a persona for the user;

selecting a network service to fulfill the simple IM request,
transforming the simple IM request into a command for the selected network
service in a command syntax of the selected network service and sending the
command to the selected network service;

receiving a response from the network service in the IM server;

transforming the response into a simple IM response based upon the
current persona; and

sending the simple IM response embedded within an IM from the IM
server to the IM client of the user.

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Application 11/674,231

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REFERENCES
Maes US 2004/0266408 A1 Dec. 30, 2004
Weider US 2007/0050191 A1 Mar. 1, 2007
(filed Aug. 29, 2005)

REJECTIONS
Claims 1-17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Maes in view of Weider.
Claims 13-17 stand rejected under 35 U.S.C. § 101 as being directed
to nonstatutory subject matter.

ISSUE
Appellants argue that the Examiner did not properly construe the
meaning of the claim phrase “simple instant message” (App. Br. 9-10).
Appellants assert that neither Maes nor Weider teach a simple instant
message that comports with their proffered construction of the phrase (App.
Br. 12).
Appellants’ arguments present us with the following issue:
Does the combination of Maes and Weider teach or fairly suggest a
simple instant message in accordance with the claims?

PRINCIPLES OF LAW
Analysis of whether a claim is patentable over the prior art under
35 U.S.C. § 103 begins with a determination of the scope of the claim. We
determine the scope of the claims in patent applications not solely on the
basis of the claim language, but upon giving claims their broadest reasonable
construction in light of the specification as it would be interpreted by one of
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Application 11/674,231

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ordinary skill in the art. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). The properly interpreted claim must then be
compared with the prior art.

ANALYSIS
We select claim 1 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).

REJECTION UNDER § 103
We begin by determining the broadest reasonable construction of the
claim phrase “simple instant message.” Appellants’ Specification does not
present a definition for the phrase. We, therefore, look next to a dictionary
definition. “Instant messaging” is defined as “a system for exchanging typed
electronic messages instantly via the Internet or a cellular network, using a
shared software application on a personal computer or mobile device.”2 A
broad but reasonable interpretation of “instant message,” then, includes a
message that is transmitted and exchanged on such a system.
We are not persuaded by Appellants’ suggested construction of the
term as “pertaining to the use of session initiation protocol (SIP) to send
commands in request-response format in an IM” (App. Br. 10), for several
reasons. As mentioned supra, Appellants do not define “simple instant
message” or “simple IM” in the Specification. Contrary to Appellants’
suggestion that “simple instant message” has “an industrially understood
meaning” (App. Br. 10), Appellants never capitalize the word “simple” in

2 http://dictionary.reference.com/browse/instant+messaging. Accessed July
29, 2013.
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Application 11/674,231

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the application, nor abbreviate the phrase as “SIM,” as one might expect if
all three words were part of a known phrase.3 We further observe that the
term “session initiation protocol” or “SIP,” supposedly integral to the
definition of “simple IM,” is not mentioned in any of the independent claims
at issue. Considering these facts together, we do not agree that one need
construe the term “simple instant message” in the limited way Appellants
urge. Instead, we adopt the dictionary definition discussed infra.
Applying the construction of “simple instant message” as “a typed
electronic message exchanged instantly via the Internet or a cellular
network, using a shared software application on a personal computer or
mobile device,” we agree with the Examiner’s findings that Maes teaches
“receiving a simple IM request,” “transforming the simple IM request into a
command,” and “transforming the response [from a network service] into a
simple IM response” (Ans. 5). We agree with the Examiner that the SMS
message taught by Maes, as a typed electronic message exchanged instantly
via the Internet or a cellular network using a shared software application on
a personal computer or mobile device, corresponds to the “simple instant
message” recited in representative claim 1. We further agree with the
Examiner that Maes teaches mobile devices 102 communicating with
request processor 104 using methods “such as SMS, e-mail, . . . and the like”
(Ans. 19; Maes ¶ [0021]).
We conclude that the Examiner did not err in rejecting claims 1-17 as
being unpatentable over Maes in view of Weider. We will sustain the § 103
rejection.

3 For example, “session initiation protocol” is universally abbreviated as
“SIP.”
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REJECTION UNDER § 101
In the Examiner’s Answer, the Examiner entered a new ground of
rejection of claims 13-17 under 35 U.S.C. § 101 (Ans. 3-4). Appellants have
filed no Reply Brief to contest this rejection. Accordingly, we affirm pro
forma the Examiner’s § 101 rejection of claims 13-17.

CONCLUSION
The combination of Maes and Weider teaches a simple instant
message in accordance with the claims.

DECISION
The Examiner’s decision rejecting claims 1-17 is 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)(1)(iv).

AFFIRMED

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