Ex Parte O et al

Patent Trial and Appeal Board

Dec 20, 2013

11934849 (P.T.A.B. Dec. 20, 2013)

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.
11/934,849 11/05/2007 Patrick J. O'Sullivan RSW920070283US1 (347) 6695
46320 7590 12/20/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
ASHRAF, WASEEM
ART UNIT PAPER NUMBER
2455
MAIL DATE DELIVERY MODE
12/20/2013 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 PATRICK J. O’SULLIVAN,
HEMA SRIKANTH, and CAROL S. ZIMMET
____________________

Appeal 2011-010695
Application 11/934,849
Technology Center 2400
____________________

Before: JENNIFER D. BAHR, JOHN C. KERINS, and
EDWARD A. BROWN, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/934,849

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STATEMENT OF THE CASE
Patrick J. O’Sullivan et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1-19. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION.
The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An adaptive instant messaging awareness method comprising
overriding an instant messaging system presence awareness do
not disturb state for a user of an instant messenger in the instant
messaging system in response to determining a
contemporaneously calendared event for the user.

Rejections
Claims 8-12 and 19 stand rejected under 35 U.S.C. § 101 because,
according to the Examiner, “the claimed subject matter is not directed to a
legally recognized process, machine, manufacture, or composition of matter
as required by § 101.” Ans. 3.
Claims 1-3, 6-10, 13, and 16-19 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Doss (US 2004/0133638 A1, pub. Jul. 8,
2004).
Claims 4, 5, 11, 12, 14, and 15 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Doss.
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OPINION
Rejection under 35 U.S.C. § 101
Appellants do not present any arguments contesting the rejection of
claims 8-12 and 19 under 35 U.S.C. § 101, and thus have waived any
argument of error. We summarily sustain the rejection. See In re Berger,
279 F.3d 975, 984, 985 (Fed. Cir. 2002) (holding that the Board did not err
in sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the
applicant failed to contest the rejection on appeal).
Rejection under 35 U.S.C. § 102(b)
The issue raised in the appeal of the anticipation rejection is whether
the disclosure of Doss of updating the person’s instant messaging (IM) status
at 11:00 (the scheduled conclusion time of the 10:00 -11:00 in-person
meeting on the person’s calendar) satisfies the limitation in claims 1, 6, 8,
and 13 of “overriding” (or code enabled to “override”) a user’s “do not
disturb” IM status “in response to determining a [or based upon the]
contemporaneously calendared event for the user.” Ans. 4, 11-13; App. Br.
11-12; Doss, paras. [0015], [0067] – [0092].
After carefully considering the respective positions of the Examiner
and Appellants on this issue, we find that Appellants have the better
position. In the example of Doss’ invention relied upon by the Examiner,
Doss discloses a calendar entry for a 10:00 – 11:00 in-person meeting, with
an IM status for the meeting of “do not disturb (DND).” Doss, paras.
[0083], [0084], [0087]. Pursuant to that entry on the person’s calendar, the
DND IM status for the meeting is calendared to come to an end at 11:00 (the
end of the calendared meeting time). See Doss, para. [0092] (disclosing that
the status engine shows that the person was in DND mode from 10:00 until
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Application 11/934,849

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11:00). Thus, in this example, Doss’ status engine does not “override” (“set
aside,” “’supersede’ or ‘overrule’”) the DND status when it updates the
person’s status at 11:00, when the meeting ends, as contended by the
Examiner. See Ans. 12-13. Rather, the status engine merely communicates
the change in IM status that occurs at the expiration of the in-person meeting
and DND calendared event.
We therefore do not sustain the Examiner’s rejection of independent
claims 1, 6, 8, and 13 and of their dependent claims 2, 3, 7, 9, 10, and 16-19
as anticipated by Doss.
Rejection of claims 4, 5, 11, 12, 14, and 15
under 35 U.S.C. § 103(a)
In rejecting claims 4, 12, and 14, the Examiner finds that Doss
discloses changing from an initial IM status (active) to a different status
when a calendared event is detected, and then reverting back to the initial
status when the calendared event is over. Ans. 9; see Doss, paras. [0069] –
[0092]. The Examiner finds, however, that Doss differs from the claimed
subject matter in that Doss starts from an initial IM status of “available,”1
changes the status to DND during the meeting, and then reverts back to the
initial status after the meeting is over; the claims, on the other hand, recite
starting from a DND status, changing the status to indicate a calendar event
such as a meeting, and reverting back to the DND status once the meeting is
over. Id.
The Examiner finds that Doss discloses that the initial status can be
selected by the user to be DND. Ans. 9, citing Doss, para. [0008] (stating,

1 More precisely, Doss indicates an initial IM status of “active” (the default
preference for free time). Doss, para. [0071].
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“[a] user can select a particular IM status,” such as DND). Thus, the
Examiner determines that it would have been obvious for a person using
Doss’ system to initially select a DND status, have the status changed to
meeting when the meeting time starts, and revert back to DND once the
meeting is over. Ans. 9.
The scenario proposed by the Examiner could be accomplished using
Doss’ system by the user setting IM status to DND, rather than “active,” for
free time prior to the 10:00 – 11:00 meeting, by setting the IM status
preference for free time to DND, and retaining the default IM status
preference of “active” for in-person meetings when entering the details for
the 10:00 in-person meeting on the calendar. See Doss, para. [0008]
(disclosing that the user can select a particular IM status from options
including DND and “active”); paras. [0076] and [0078] (showing a default
IM status preference of “active” for in-person meetings). Doss discloses
that as the information in the calendar changes, the information provided to
the IM systems and electronic boards is automatically updated and that,
consequently, when an entity’s status changes, such as from being free to
being in a meeting, the dynamic contact information is automatically
updated. Doss, para. [0015]. Doss gives no indication or suggestion that
DND status would be treated any differently from any other status upon
encountering a contemporaneously calendared event specifying a different
IM status. Doss’ system thus comprises program code enabled to override
an IM status of DND in response to determining a contemporaneously
calendared event (i.e., the 10:00 – 11:00 meeting) and to revert the status to
DND in response to determining a passage of the contemporaneously
calendared event for the user (i.e., the end of the 10:00 – 11:00 meeting).
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Accordingly, Doss satisfies all of the limitations of claim 12. The
Examiner’s conclusion that Doss renders obvious the subject matter of claim
12 thus is correct. It is well settled that “anticipation is the epitome of
obviousness.” In re McDaniel, 293 F3d. 1379, 1385 (Fed. Cir.
2002)(quoting Connell v. Sears Roebuck & Co., 722 F.2d 1542, 1548 (Fed.
Cir. 1983)); In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982).
Moreover, the selection of the combination of settings discussed
above from the finite number of identified, predictable options encompassed
by Doss’ teachings involves no innovation and would have been obvious to
a person of ordinary skill in the art. Thus, the Examiner’s conclusion that
Doss renders obvious the subject matter of claims 4, 12, and 14 is correct.
For the above reasons, we sustain the Examiner’s rejection of claims
4, 12, and 14 under 35 U.S.C. § 103(a) as unpatentable over Doss.
However, because our rationale in sustaining the rejection differs somewhat
from that articulated by the Examiner, we designate our affirmance of this
rejection as a new ground pursuant to 37 C.F.R. § 41.50(b) to provide
Appellants with an opportunity to react thereto.
We adopt the Examiner’s additional findings and reasoning in
rejecting claims 5, 11, and 15 under 35 U.S.C. § 103(a) as unpatentable over
Doss. See Ans. 10. Inasmuch as our rejection of these claims is based in
part on our rationale sustaining the rejection of claims 4, 12, and 14, we also
designate our affirmance of the rejection of these claims as a new ground of
rejection pursuant to 37 C.F.R. § 41.50(b), to provide Appellants with an
opportunity to react thereto.
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New Ground of Rejection – claims 1-3, 6-10, 13, and 16-19
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter the
following new ground of rejection:
Claims 1-3, 6-10, 13, and 16-19 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Doss.
The conclusion that the subject matter of dependent claims 4, 5, 11,
12, 14, and 15, supra, would have been obvious necessarily is also a
conclusion that the subject matter of independent claims 1, 8, and 13, from
which claims 4, 5, 11, 12, 14, and 15 depend, would have been obvious. See
Ormco Corp. v. Align Tech., 498 F.3d 1307, 1319 (Fed. Cir. 2007) (when a
dependent claim is “found to have been obvious, the broader claims . . . must
also have been obvious”).
We further adopt the uncontested findings of the Examiner addressing
the additional limitations of independent claim 6 (Ans. 4, l. 16 – 5, l. 3) and
of dependent claims 2, 3, 7, 9, 10, and 16-19 (Ans. 6-7).
DECISION
The Examiner’s decision rejecting claims 8-12 and 19 under
35 U.S.C. § 101 is affirmed.
The Examiner’s decision rejecting claims 1-3, 6-10, 13, and 16-19
under 35 U.S.C. § 102(b) as being anticipated by Doss is reversed.
The Examiner’s decision rejecting claims 4, 5, 11, 12, 14, and 15
under 35 U.S.C. § 103(a) as being unpatentable over Doss is affirmed, but
the affirmance is designated a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).
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Claims 1-3, 6-10, 13, and 16-19 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Doss. This is a new ground of rejection pursuant
to 37 C.F.R. § 41.50(b).
FINALITY OF DECISION
Regarding the affirmed rejection(s), 37 CFR § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds 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 Appellants, 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:
(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. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. § 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
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prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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