Ex Parte Ruelas

Patent Trial and Appeal Board

Mar 17, 2014

12164061 (P.T.A.B. Mar. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte GABRIEL RUELAS
________________

Appeal 2011-012655
Application 12/164,061
Technology Center 2400
________________

Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and,
JAMES P. CALVE, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-012655
Application 12/164,061

2
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s final rejection of claims 1-21. App. Br. 4. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter relates to “Instant Messaging (IM)
technologies.” Spec. para. [0002]. Independent claim 1 is illustrative of the
claims on appeal and is reproduced below:
1. A data processing system implemented method of
managing participants in an instant messaging meeting,
comprising:
scheduling an instant messaging meeting in a calendar
module;
communicating information about the scheduled instant
messaging meeting to an instant messaging module including
information necessary to contact confirmed participants; and
at a specified time, signalling the instant messaging
module to automatically start the instant messaging meeting by
initiating instant messaging contact with the confirmed
participants.

EVIDENCE RELIED ON BY THE EXAMINER

Beyda US 2003/0233417 A1 Dec. 18, 2003
Lake US 2005/0080859 A1 Apr. 14, 2005

THE REJECTIONS ON APPEAL
1. Claims 15-21 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter. Ans. 3.
Appeal 2011-012655
Application 12/164,061

3
2. Claims 1-3, 7-10, 14-17, and 21 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Beyda. Ans. 4.
3. Claims 4-6, 11-13, and 18-20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Beyda and Lake. Ans. 6.
ANALYSIS
The rejection of claims 15-21
as being directed to non-statutory subject matter
Independent claim 15, and, by extension, dependent claims 16-21, is
directed to a “data processor readable storage medium.” Paragraph [0028]
of Appellant’s Specification provides guidance as to the meaning of this
claim term but concludes that “[t]he particular configurations shown by way
of example in this specification are not meant to be limiting.” After noting
this Paragraph [0028], the Examiner finds that the above claim term “is not
limited to tangible embodiments” and instead is “defined as including both
tangible embodiments . . . and intangible embodiments (e.g., transitory
media).” Ans. 3; see also 8. Consequently, the Examiner finds that “the
claims are not limited to statutory subject matter and are therefore non-
statutory.” Ans. 3. In the Final Office Action mailed October 5, 2010, (as
well as in the Examiner’s Answer) the “Examiner urges Applicant to amend
both the Specification and the above specified claims to add the language
‘non-transitory computer readable medium’ in order to avoid § 101 issues.”
Final 4; Ans. 3.
Appellant does not amend claim 15 or Appellant’s Specification in the
manner recommended. Instead, Appellant argues unrelated Paragraph
[0026], which describes FIG. 1 and does not address the aforementioned
language found in Paragraph [0028] or the Examiner’s findings in that
regard. App. Br. 9. Appellant further contends that “the specification
Appeal 2011-012655
Application 12/164,061

4
provides several examples of data storage media that are data processor
readable” and that “[n]either of these devices is an intangible or transitory
medium that is excluded from patentability under 35 U.S.C. § 101.” App.
Br. 9. In reply, the Examiner finds that in view of Paragraph [0028], “a
broadest reasonable interpretation of a ‘storage medium’ could cover
transitory media such as signals.” Ans. 8. Appellant does not show where
the Examiner has erred in this finding regarding the “broadest reasonable
interpretation” based on the express language found in Paragraph [0028] of
Appellant’s Specification. Ans. 8. Subsequently, in the Reply Brief,
Appellant “disavow[s] that portion of the scope of data processor readable
storage medium in claims 15-21 that would otherwise cover transitory
signals.” Reply Br. 2.
In view of Appellant’s Specification, and specifically that portion
referenced in Paragraph [0028] which clearly states that “this specification
[is] not meant to be limiting,” Appellant’s statement in the Reply Brief,
which could have been made earlier and which now purports to disavow
coverage of transitory signals is not persuasive for at least the reason that
such disavowal is contrary to the express language presently found in the
unamended Specification, and does not manifest a clear and unambiguous
intent to limit the scope of claim 15 to non-transitory signals, particularly
where Appellant also argues that claim 15 does not cover transitory signals
because claim 15 is directed to a computer program product that comprises a
computer usable storage medium and program instructions stored on the
computer usable storage medium. Reply Br. 2. In fact, claim 15 recites “[a]
data processor readable storage medium for storing data processor code that
when loaded into a data processing device . . . .” Appellant discloses a data
Appeal 2011-012655
Application 12/164,061

5
processing system readable media 116 that can provide data to a disk drive
114. Spec. para. [0028].
In this matter, we are guided by our reviewing court which has
provided instruction that “the mode of claim interpretation that is used by
courts in litigation . . . . is not the mode of claim interpretation that is
applicable during prosecution of a pending application before the PTO. . . .
The reason is simply that during patent prosecution when claims can be
amended, ambiguities should be recognized, scope and breadth of language
explored, and clarification imposed. . . . [T]his way . . . uncertainties of
claim scope [can] be removed, as much as possible, during the
administrative process.” In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
See also In re Am. Acad. Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004); In re Taylor, 484 F. App’x. 540, 543 (Fed Cir. 2012) (unprecedential)
(declining to limit claim scope during prosecution based on argument). The
Examiner appears to be following these instructions in seeking certainty and
clarification. In view of the above, we sustain the Examiner’s rejection of
claims 15-21 as being directed to non-statutory subject matter.
The rejection of claims 1-3, 7-10, 14-17, and 21
as being anticipated by Beyda
Appellant argues independent claim 1 and claims 2, 3, 7-10, 14-17,
and 21 together. App. Br. 11-15. The only arguments presented with
respect to independent claims 8 and 15 are that they “are not anticipated by
or obvious over Beyda by similar reasoning.” App. Br. 13, 14. We select
claim 1 for review with claims 2, 3, 7-10, 14-17, and 21 standing or falling
with claim 1.
In rejecting claim 1, the Examiner expressly relies on Paragraphs
[0049], [0050], and [0052] of Beyda as well as Beyda Fig. 6. Ans. 4 and 9-
Appeal 2011-012655
Application 12/164,061

6
10. In Beyda Fig. 6, and particularly steps 612 and 614 disclosed therein, a
telephone server begins a conference during which chat lines of
communication are opened. See also Beyda para. [0050]. Appellant
contends that “Beyda initiates a telecommunication call to [begin] the
conference by calling all parties” as contrasted with claim 1 which “signals
an instant messaging module” and “initiates the instant messaging contact”
for communicating between the conference participants. App. Br. 13; see
also Reply Br. 3-4. More succinctly, Appellant contends that “Beyda calls a
party over the telephone (not an instant messaging module).” App. Br. 13.
Appellant’s focus on a telephone call that precedes the establishment of IM
communication between conference participants as taught by Beyda is not
persuasive. See Reply Br. 4. We agree with the Examiner’s finding that
“[a]lthough initial communication between clients in Beyda occurs by
initiating a telephone call, this has nothing to do with starting an instant
messaging meeting. Beyda’s telephone call does not initiate an instant
messaging meeting” as recited in claim 1. Ans. 10 (italics added). In other
words, the Examiner finds that “[o]pening a chat channel is the equivalent of
[starting] an instant messaging session.” Ans. 10. Appellant does not
persuasively explain how this reasoning by the Examiner is in error.
We further note that Appellant’s preamble employs the transitional
term “comprising” which is “inclusive or open-ended and does not exclude
additional, unrecited elements or method steps.” Georgia-Pacific Corp. v.
U.S. Gypsum Co., 195 F.3d 1322, 1327 (Fed. Cir. 1999). Hence,
Appellant’s focus on unrecited telephone steps in Beyda is not indicative of
Examiner error in finding that “Beyda’s ‘opening of the chat channels’”
“explicitly teaches ‘signaling the instant messaging module to automatically
Appeal 2011-012655
Application 12/164,061

7
start the instant messaging meeting by initiating instant messaging contact
with the confirmed participants’” as claimed. Ans. 10. We also note that
Appellant has not identified language in claim 1 that specifically precludes a
prior telephone call in the manner described in Beyda. See app. Br. 15.
Appellant further contends that “the timing of when the information is
available to the IM application is also different between the invention of
claim 1 and Beyda’s invention.” App. Br. 13. Here, Appellant contends that
“claim 1 communicates the information necessary to contact confirmed
participants, and then at a specified time performs the signaling and the start
of the instant messaging meeting.” App. Br. 13; see also Reply Br. 4. In
other words, “the communicating occurs prior to the signaling.” App. Br.
13. Beyda Fig. 7 (described in more detail at Paragraph [0052]) illustrates a
flow chart wherein steps 708 and 710 disclose, respectively, the receipt of
the IM list of conferees followed by the selection of a party for a chat.
Appellant does not adequately explain how this, along with the express
teachings of Beyda Paragraph [0050] (which discloses providing a “buddy
list to the IM server” and “the server determines if the parties to the
teleconference have IM capability”), fails to teach the step of
“communicating information about the scheduled instant messaging meeting
to an instant messaging module” prior to the step of “signaling” a start of an
IM meeting. Ans. 4, 10.
Appellant also addresses the limitation of “at a specified time, the
instant messaging module is signaled to automatically start the instant
messaging meeting by initiating instant messaging contact with the
confirmed participants.” App. Br. 14; see also Reply Br. 4. Again,
Appellant focuses on Beyda’s prior telephone call as discussed above. See
Appeal 2011-012655
Application 12/164,061

8
App. Br. 14. Appellant does not explain how Beyda fails to disclose this
step such as when Beyda addresses Fig. 7 and states that the called party’s
IM application may be activated “automatically.” Beyda para. [0052]; see
also Ans. 4, 10.
In view of the record presented, we are not persuaded of Examiner
error and accordingly, we sustain the Examiner’s rejection of claims 1-3, 7-
10, 14-17, and 21.
The rejection of claims 4-6, 11-13, and 18-20
as being unpatentable over Beyda and Lake
In responding to this § 103 rejection over Beyda and Lake, Appellant
does not dispute the Examiner’s rationale for the additional reliance on
Lake. Instead, Appellant contends that the Examiner “does not combine
Lake with Beyda to overcome the deficiencies in Beyda as described by
Appellant.” App. Br. 16. Appellant’s contention is not persuasive and
accordingly, we sustain the Examiner’s rejection of claims 4-6, 11-13, and
18-20.

DECISION
The Examiner’s rejections of claims 1-21 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)(1)(iv).

AFFIRMED

Klh