Ex Parte Muller et al

Board of Patent Appeals and Interferences

Jun 22, 2012

10734494 (B.P.A.I. Jun. 22, 2012)

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.
10/734,494 12/12/2003 Michael J. Muller LOT920030093US1_003 1618
51835 7590 06/25/2012
IBM LOTUS & RATIONAL SW
c/o GUERIN & RODRIGUEZ
5 MOUNT ROYAL AVENUE
MOUNT ROYAL OFFICE PARK
MARLBOROUGH, MA 01752
EXAMINER
WOOLCOCK, MADHU
ART UNIT PAPER NUMBER
2451
MAIL DATE DELIVERY MODE
06/25/2012 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 MICHAEL J. MULLER and DANIEL M. GRUEN
____________________

Appeal 2010-003028
Application 10/734,494
Technology Center 2400
____________________

Before DEBRA K. STEPHENS, DAVID M. KOHUT, and BRYAN F.
MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-003028
Application 10/734,494

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Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1 and 4-10. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 2-3 and 11-33 have been cancelled.
We AFFIRM.
Introduction
According to Appellants, the invention relates to managing
interruptions to a network user. (Abstract).

STATEMENT OF THE CASE

Exemplary Claim
Claim 1 is an exemplary claim and is reproduced below:
1. A method for managing interruptions to a network user, the
interruptions being generated by a plurality of senders on a network,
the network user having a permanent reception list the method
comprising:
modifying a temporary reception list in response to at least one
of a determination of an occurrence of a retrospective activity in a
user-defined time period and a determination of a prospective activity
scheduled to occur in a user-defined time period, the retrospective and
prospective activities being activities that are independent of
communications having simultaneous participation between the
network user and another network user, the permanent reception list
and temporary reception list each indicating at least one sender from
whom the network user is willing to accept an interruption;
receiving an interruption from one of the senders on the
network; and
presenting the interruption to the network user if one of the
permanent reception list and the temporary reception list includes an
entry associated with the one of the senders on the network.

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Prior Art
Brown US 2003/0055908 A1 Mar. 20, 2003
Roskind US 2003/0065721 A1 Apr. 3, 2003
Curbow US 2003/0222765 A1 Dec. 4, 2003
Daniell US 2004/0068545 A1 Apr. 8, 2004
Kaminsky US 2005/0055405 A1 Mar. 10 2005
Alexander US 6,988,128 B1 Jan. 17, 2006

Rejections
Claims 1 and 4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Roskind and Curbow. (Ans. 3). Claim 5 stands rejected
under 35 U.S.C. § 103(a) as being unpatentable over Roskind, Curbow, and
Brown. (Ans. 6). Claims 7 and 10 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Roskind, Curbow, and Kaminsky. (Ans. 7).
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Roskind, Curbow, Kaminsky and Alexander. (Ans. 8). Claims 8 and 9
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Roskind,
Curbow, Kaminsky, and Daniell. (Ans. 9).

Based upon Appellants’ arguments1, we select representative claim 1
to decide this appeal for the group consisting of claims 1 and 4-10. (See
App. Br. 6-10). We have only considered those arguments that Appellants
actually raised in the Brief. Arguments Appellants could have made but

1 Appellant argues claims 1 and 4 as a group (Br. 8). Appellant argues
claims 5-10 separately. However, Appellant makes only a conclusory
statement that claims 5-10 are patentable “for at least the reasons provided
above with respect to claim 1.” (Br. 8-10.) Based on the absence of a
specific argument directed to claims 5-10, we treat claims 1, and 4-10 as
standing or falling together.
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chose not to make in the Brief have not been considered and are deemed to
be waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2010).

ISSUE
35 U.S.C. § 103(a): claims 1 and 4-10
Appellants assert their invention is not obvious over Roskind and
Curbow because the combination does not teach a user-defined time period
for the retrospective and prospective activities and/or that the retrospective
and prospective activities are activities that are independent of
communications having simultaneous participation between the network
user and another network user. (Br. 6-7). Specifically, Appellants contend
“Curbow does not teach notification of particular emails based on upcoming
events but rather relies on a subsequent step applying the user selected rules
to any initially-identified emails to determine the final emails for
notification.” (Br. 7). Appellants further assert “Curbow does not teach or
suggest that any determined upcoming events could be used to modify
existing lists of network users such as Appellants' recited temporary
reception list.” (Id.). Appellants also assert that there is no motivation to
combine Roskind and Curbow. (Br. 7-8).

Issue:
1. Has the Examiner erred in finding that Roskind and Curbow can be
combined and that the combination would have taught or
suggested “modifying a temporary reception list in response to at
least one of a determination of an occurrence of a retrospective
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activity in a user-defined time period and a determination of a
prospective activity scheduled to occur in a user-defined time
period, the retrospective and prospective activities being activities
that are independent of communications having simultaneous
participation between the network user and another network user”
as recited in claim 1?

ANALYSIS
We agree with the Examiner’s findings and conclusions (Ans. 3-5, 11-
14) and adopt them as our own. We agree with the Examiner that Curbow
teaches or suggests:
a determination of an occurrence of a retrospective activity in a user-
defined time period and a determination of a prospective activity
scheduled to occur in a user-defined time period, the retrospective and
prospective activities being activities that are independent of
communications having simultaneous participation between the
network user and another network user

(Ans. 11).
We further emphasize Appellants appear to be arguing the references
individually while the Examiner is relying on the combination of Roskind
and Curbow. Appellants argue that Curbow does not modify a temporary
reception list (Br. 7). However, we agree with the Examiner that Roskind
teaches or at least suggests the modification of existing temporary reception
list. (Ans. 12).
We agree with the Examiner that Appellants are arguing limitations
not recited in the claim (Ans. 11). Specifically, “the claim language of the
argued claim does not explicitly explain how a prospective activity
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scheduled to occur in a user-defined time period is determined.” (Id.). In
other words, the claim does not limit the “determining” to a one-step process
as suggested by Appellant. The claims simply recite determining the
occurrence of such activity in a user-defined time period and we agree with
the Examiner that the combination teaches or suggests this limitation (Ans.
3-5 and 11-12).
Appellants further argue that:
one would not be motivated to combine Curbow's compound
screening technique for identifying emails for notification and alert
with Roskind to achieve Appellants' recited method which includes
modifying a temporary reception list where the temporary reception
list indicates ‘at least one sender from whom the network user is
willing to accept an interruption.’

(Br. 7-8). Specifically, Appellants argue that “Curbow alerts a user to email
communications that may be important when the user otherwise may not be
aware of its importance.” (Id.). Additionally, Appellants argue that, “[i]n
contrast, Appellants' invention, as recited in claim 1, solves the problem of
how to manage an overwhelming number of interruptions from immediate
communications to a user by preventing less important interruptions from
reaching the user.” (Id.). However, “[i]n determining whether the subject
matter of a patent claim is obvious, neither the particular motivation nor the
avowed purpose of the patentee controls.” KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 419 (2007). Accordingly, even if Curbow discusses different
problems in the art, these arguments are not persuasive. Additionally, we
find that Curbow and Roskind are analogous art because they are from the
same field of endeavor. See Comaper Corp. v. Antec, Inc., 596 F.3d 1343,
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1351 (Fed. Cir. 2010) (quoting In re Clay, 966 F.2d 656, 658-59 (Fed. Cir.
1992)).
We also agree with the Examiner that “although Roskind is directed to
an instant messaging environment and Curbow is directed an email
environment” they can be combined because “monitoring the reception and
notification of electronic messages can result in the user working more
efficiently by preventing unnecessary distractions and also prevent
unintentionally ignoring or missing essential messages [which] is true for
both instant messaging and emails.” (Ans. 12). Our reviewing court finds
that:
an implicit motivation to combine exists not only when a suggestion
may be gleaned from the prior art as a whole, but when the
‘improvement’ is technology-independent and the combination of
references results in a product or process that is more desirable, for
example because it is stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient … In such situations, the
proper question is whether the ordinary artisan possesses knowledge
and skills rendering him capable of combining the prior art
references.

DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006) (emphasis in original).
Accordingly, the Examiner did not err in finding the combination of
Roskind and Curbow would have taught or suggested the invention as
recited in independent claim 1, commensurately recited claims 4-10, not
separately argued. Therefore, the Examiner did not err in rejecting claims 1,
and 4-10 under 35 U.S.C. § 103(a) for obviousness over the combination of
Roskind and Curbow.

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DECISION
The Examiner’s rejection of claims 1 and 4-10 U.S.C. § 103(a) as
being obvious over the combination of Roskind and Curbow 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) (2010).

AFFIRMED

ELD