Ex Parte Sorensen

Board of Patent Appeals and Interferences

Jun 28, 2012

10696851 (B.P.A.I. Jun. 28, 2012)

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.
10/696,851 10/30/2003 Carsten Sorensen M61.12-0542 8093
27366 7590 06/29/2012
WESTMAN CHAMPLIN (MICROSOFT CORPORATION)
SUITE 1400
900 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 55402
EXAMINER
WALSH, JOHN B
ART UNIT PAPER NUMBER
2451
MAIL DATE DELIVERY MODE
06/29/2012 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 CARSTEN SORENSEN
____________

Appeal 2009-000458
Application 10/696,851
Technology Center 2400
____________

Before BRADLEY W. BAUMEISTER, BRUCE R. WINSOR, and BRIAN
J. McNAMARA, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000458
Application 10/696,851

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Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-22, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
[Appellant‟s] invention provides a system by which entities
interact with one another in a manufacturing channel. The
entities (such as a seller and customer) use a messaging system
to perform status inquiry and functional processing steps with
respect to data stored at the resource management system of the
other.
(Abstract). Claims 1, 2, and 6, which are illustrative of the invention and of
Appellant‟s grouping of the claims (Br. 6), read as follows:
GROUP I (CLAIMS 1, 9, 10, 13-15, AND 17-19).
1. A communication system for communicating business
information from a first business to a second business, the
system comprising:
an instant messaging component configured to receive, as an
instant message, a business information access request from the
second business and generate an output based on the business
information access request;
a data store storing business information corresponding to the
business information access request; and
a data store accessing system accessing the data store based on
the output from the instant messaging component.
GROUP II (CLAIMS 2-5, 8, 16, AND 22).
2. The communication system of claim 1 wherein the
instant messaging component is configured to generate, as an
instant message, a response to the business information access
request.
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GROUP III (CLAIMS 6, 7, 11, 12, 20, AND 21).
6. The communication system of claim 2 wherein the
business information access request is a data update request,
and wherein the data store accessing system is configured to
access the data store by updating the data store based on the
data update request.
Claims 1-22 stand rejected under 35 U.S.C. § 102(e) as anticipated by
Smith (US 6,901,430 B1; May 31, 2005; filed Mar. 31, 2000). (Ans. 3).
Rather than repeat the arguments here, we make reference to the Brief
and the Answer for the respective positions of Appellant and the Examiner.
Only those arguments actually made by Appellant have been considered in
this decision. Arguments that Appellant did not make in the Brief have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUES
Appellant contends as follows:
As to the claims in claim Group I, Smith does not disclose “an instant
messaging component configured to receive, as an instant message, a
business information access request from the second business and generate
an output based on the business information access request” (emphases
added) as recited in claim 1. (See generally Br. 6-8).
As to the claims in claim Group II, Smith does not disclose “the
instant messaging component is configured to generate, as an instant
message, a response to the business information access request” (emphases
added) as recited in claim 2. (See generally Br. 8).

Appeal 2010-000458
Application 10/696,851

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As to the claims in claim Group III:
Smith neither teaches nor suggests instant messaging to
perform business data accesses. Nor does Smith teach or
suggest updating data in a data store based on such an instant
message received. Further, Smith neither teaches nor suggests
any type of user interface component that allows a user to select
a data manipulation feature as part of an instant message, which
results in the updating or modification or manipulation of data
in a receiving entity's data store.
(Emphases added) (Br. 9).
The pivotal issue presented by Appellant‟s contentions is: Does Smith
disclose “instant messages?”

ANALYSIS
We have reviewed Appellant‟s arguments (Br. 6-9) in light of the
Examiner‟s findings (Ans. 3-7) and explanations responding to Appellant‟s
arguments (Ans. 7-9). We agree with the Examiner‟s findings and
explanations (Ans. 3-9) and adopt them as our own.
For emphasis only, we note that Appellant has failed to demonstrate
that the Examiner has erred in giving the terms of the claims their broadest
reasonable interpretation in light of the Specification, In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997), without reading limitations from the
Specification into the claims, In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993). We agree with the Examiner that:
[T]he term “instant messaging” need not be explicitly
recited by Smith '430 in order to anticipate the claims. [See In
re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).] Smith '430
discloses the use of “messages” (see Column 3, lines 39-47).
The use of the term “instant” is a relative term. Smith '430
discloses “a method and system wherein a consumer is
provided real-time information” (see Column 2, lines 59-61 -
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emphasis added). In order to provide the information in real-
time the messages sent and received must be sent in a rapid
manner as to be “instant” to the user since the information
received is “real-time” information. Furthermore, there is no
claim limitations drawn to steps or structure that indicate that
the messages are any different then [sic] messages sent
throughout computer systems. The rapid speed of messages
sent within a computer system, such as the one of Smith „430,
would lead one of ordinary skill in the art to view the messages
as being “instant”.
(Ans. 7-8).
Appellant has failed to persuade us of error in the rejection of claims
1-22 as anticipated by Smith. Accordingly we will sustain the rejection of
claims 1-22.

ORDER
The decision of the Examiner to reject claims 1-22 under 35 U.S.C.
§ 102(e) as anticipated by Smith 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

kis