Ex Parte O et al

Patent Trial and Appeal Board

Mar 12, 2014

11538200 (P.T.A.B. Mar. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte PATRICK J. O’SULLIVAN, CYNTHIA E. BARBER-MINGO,
GARY DENNER, CORA CLERKIN, and SONYA PURCELL
____________
Appeal 2011-008456
Application 11/538,200
Technology Center 2400
____________

Before: JOSEPH A. FISCHETTI, GAY ANN SPAHN, and
THOMAS F. SMEGAL, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b). (2002)

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellants claim a system and method for collaborative computing, and
more particularly to instant messaging and chat systems. (Spec. 1: [0001]).

Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method for controlling active and passive participation
among participants in a thread of conversation, comprising:
creating a thread of conversation in a messaging system;
adding a plurality of participants to the thread;
classifying the participants as one of either active or passive; and,
permitting only those participants classified as active participants to post to
the thread while providing merely a view of the thread to the passive participants.

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THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:

Marks US 5,956,491 Sep. 21, 1999
Majors US 2006/0244818 A1 Nov. 2, 2006

The following rejections are before us for review.
The Examiner rejected claims 11-18 under 35 U.S.C. § 101.
The Examiner rejected claims 1-3, 5-13, and 15-18 under 35 U.S.C. § 102(b)
as anticipated by Marks.
The Examiner rejected claims 4 and 14 under 35 U.S.C. § 103(a) as obvious
over Marks in view of Majors.
FINDINGS OF FACT
1. We adopt the Examiner’s findings as set forth on pages 3-13 of the
Answer.
2. Marks discloses:
The window that displays the channel area has three
regions: the bottom region, where responses are entered;
the largest region, where a transcript of the
communication is followed; and the rightmost region,
which lists the group's current members. This list is
continuously updated with asynchronously generated
status messages received immediately when a new
member joins the group.
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(Col. 9, ll. 23-30).
3. Marks also discloses:
Now DMARKS selects the “Toggle All Posting”
option in the Maintenance pull-down menu (at FIG. 19).
This will turn off the channel property “posting,” (or
sending communications to the channel without
moderator approval) which will be indicated by the
removal of the letter “P” from next to the name
TESTCHANNEL (at FIG. 20).
Now the letter “P” is removed from after the name
TESTCHANNEL in the Channel List window (at FIG.
21), indicating that this channel is now moderated and
will only have free posting ability by designated
members.
(Col. 10, ll. 14-23).

4. Marks further discloses:
Now, type user ME (who is also on channel
TESTCHANNEL) wishes to send communications: “this
will not be written directly to the channel” (at FIG. 22).
The controller, instead of sending it immediately to the
channel to be seen by all members, will instead forward
the message to the moderators for approval. The
moderator, DMARKS, will then see the message on the
Moderation Window, which provides a preview of any
messages to be sent. To approve a message for general
viewing, DMARKS now clicks on the message.
(Col. 10, ll. 24-33).

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ANALYSIS
35 U.S.C. § 101 Rejection
The Examiner found, concerning independent claim 11, that:
The claimed invention of claim 11, comprising a
“computer program product comprising a computer
usable storage medium” under broadest reasonable
interpretation fails to exclude a data signal or a carrier
wave, and as such does not fall within at least one of the
four categories of patent eligible subject matter recited in
35 U.S.C[.] § 101 (process, machine, manufacture or
composition of matter).
(Ans. 3).
Appellants, however, argue that:
Appellants’ [S]pecification indicates that computer-
executable instructions (in the form of logic or computer
code) are stored on one or more computer readable media
as part of a computer. The USPTO has consistently
found that based on this functionality, a computer-
readable medium fully comports with the definition of a
“machine,” namely “a concrete thing, consisting of parts,
or of certain devices and combination of devices . . .
[that] includes every mechanical device or combination
of mechanical powers and devices to perform some
function and produce a certain effect or result.” The
USPTO also has found that a computer-readable medium
could be a “manufacture” under § 101 and therefore
constitutes statutory subject matter for this additional
reason.
(Br. 6) (footnotes omitted).
We agree with the Examiner. Claim 11 recites in pertinent part “a computer
usable storage medium having computer usable program code for controlling
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active and passive participation among participants in a thread of conversation,
the computer program product including: computer usable program code . . .”
(emphasis added). We find that Appellants have not met their burden to
demonstrate that claim 11 is truly drawn to a specific computer readable medium,
rather than to the underlying method of controlling active and passive participation
among participants in a thread of conversation. Thus, we construe claim 11 to
pertain to the method steps of the program code including, albeit a medium, which
we find incidental to the claimed method. Therefore, claim 11 is not truly drawn to
machine or manufacture, e.g., a readable medium, but rather to the underlying
method. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1374–75
(Fed. Cir. 2011).
Accordingly, we find nothing in the Specification or claims that limits
“computer usable storage medium” to non-transitory forms. “A transitory
propagating signal . . . is not a ‘process, machine, manufacture, or composition of
matter.’ [These] four categories define the explicit scope and reach of subject
matter patentable under 35 U.S.C § 101; thus, such a signal cannot be patentable
subject matter.” In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).
In fact, claim 11 only requires the “computer program product” as
including: “computer usable program code . . . .” We find this to be further indicia
of a transitory signal since the claim fails to constrain the code to a fixed form in
the medium. Only when computer executable instructions are claimed as fixed in a
computer readable medium can there be “ . . . programming [which] creates a new
machine, because a general purpose computer in effect becomes a special purpose
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computer once it is programmed to perform particular functions pursuant to
instructions from program software.” In re Freeman, 573 F.2d 1237, 1247 n. 11
(CCPA 1978); In re Noll, 545 F.2d 141, 148 (CCPA 1976); In re Prater, 415 F.2d
1393, 1403 n. 29 (CCPA 1969).
Accordingly, we sustain the rejection of claim 11 under 35 U.S.C. § 101 and
claims 12-18 which depend therefrom.
Rejection under 35 U.S.C. § 102
Appellants state that “claims 2, 3 and 5 through 8 stand or fall together with
claim 1, claims 10 and 11 [(sic)] stand or fall together with claim 9, and claims 12,
13 and 15 through 18 stand or fall together with claim 11.” (Br. 8). Accordingly,
we choose independent claim 1 as representative with independent claims 9 and
11, and their respective dependent claims rising and falling with claim 1. See 37
C.F.R. § 41.37(c)(1)(vii) (2011).
Appellants argue that: “ . . . while Examiner states that column 9, lines 30
through 33 and 63 through column 10, line 3 [in Marks] teaches that Toggle Write
feature sets forth whether or not a chat participant is to be passive or active, no text
in Marks provides for such an explanation.” (Br. 10).
The Examiner, however, found that:
Using claim 1 for reference, Examiner cited for the
limitation “classifying the participants as one of either
active or passive” (“Toggle Write” Marks Fig. 17 write
ability toggled ON is equivalent to “active”, write ability
toggled OFF is equivalent to “passive”; column 9 lines
30-33 “write to the channel” property associated with
user; column 9 line 63 - column 10 line 3 moderator
menu used for modifying users properties shown in Fig.
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17).
(Ans. 11).
On consideration of the record before us, and particularly the findings made
by the Examiner in the Answer at page 11, we find that the Examiner did establish
a prima facie case of anticipation for the limitation of “classifying the participants
as one of either active or passive” based on the Toggle feature disclosed by Marks.
In particular, we find that the Examiner was correct in mapping to the Toggle
feature in Marks to meet the active or passive claim feature because the effect of
the Toggle Write feature in Marks is to permit posting by a participant only to the
channel’s moderator display, to the exclusion of the remaining participants during
a previewing period. (FF 3, 4). Thus, we find that in Marks, the active participant
is the one communicating with the moderator whose message is only shared with
the moderator until such time as the moderator approves the message for general
viewing. (FF 3, 4). Anticipation “is not an ‘ipsissimis verbis’ test.” In re Bond,
910 F.2d 831, 832-33 (Fed. Cir. 1990) (citing Akzo N.V. v. U. S. Int’l. Trade
Comm’n., 808 F.2d 1471, 1479 n.11 (Fed. Cir. 1986)). “An anticipatory reference .
. . need not duplicate word for word.”
We further find that during this previewing period by the moderator of a
message sent to the moderator for general posting by a participant, a listing of all
channel participants on a given channel/thread would still be known to the
remaining participants because Marks explicitly discloses displaying a list of the
group’s current members. (FF 2).

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Rejection under 35 U.S.C. § 103(a).
Appellants concede the rejection of claims 4 and 14 under 35 U.S.C.
§ 103(a) to the outcome of independent claims 1 and 11, rejected under 35 U.S.C.
§ 102(b). (Br. 11).

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting the claims under each of
35 U.S.C. § 102(b), § 103(a) and § 101.
DECISION
AFFIRMED

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