Ex Parte Zellner et al

Patent Trial and Appeal Board

Dec 6, 2013

11313574 (P.T.A.B. Dec. 6, 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.
11/313,574 12/21/2005 Samuel Zellner 050373 (9400-221) 6573
39072 7590 12/06/2013
AT&T Legal Department - MB
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
HASAN, SYED HAROON
ART UNIT PAPER NUMBER
2158
MAIL DATE DELIVERY MODE
12/06/2013 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 SAMUEL ZELLNER and JOHN RUCKART
____________

Appeal 2011-003503
Application 11/313,574
Technology Center 2100
____________

Before CAROLYN D. THOMAS, BRUCE R. WINSOR,
and KERRY BEGLEY, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellants
1
appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-4, 7, 9-14, and 17-20,
2
which constitute all the claims pending in
this application. Claims 5, 6, 8, 15, and 16 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1
The real party in interest is AT&T Intellectual Property I, L.P. App. Br. 1.
2
Appellants list claim 16 as pending. App. Br. 1. However, claim 16 is
cancelled. See App. Br. 11; see also Ans. 2.
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2
STATEMENT OF THE CASE
Appellants’ disclosure “relates to . . . communications services and,
more particularly, to . . . communicating data between devices.” Spec.,
¶ [2]. Claim 1, which is illustrative, reads as follows:
1. A method of providing activity data comprising:
performing on at least one data processing system
operations as follows:
receiving, at a presence server, activity data associated
with an activity of at least one subscriber of a presence service;
providing the activity data, from the presence server, to at
least one other subscriber of the presence service; and
automatically modifying the activity of the at least one
other subscriber of the presence service to be the same as the
activity of the at least one subscriber.
Claims 1-4, 7, 9-14, and 17-20 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Cooper (US 2002/0184634 A1; Dec. 5, 2002).
Ans. 4-11.
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.,” filed Jan. 28, 2010; “Reply Br.,” filed Nov. 9, 2010) and the Answer
(“Ans.,” mailed Sept. 9, 2010) for the respective positions of Appellants and
the Examiner. Only those arguments actually made by Appellants have been
considered in this decision. Arguments that Appellants did not make in the
Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii) (2011).

ISSUES
The issues raised by Appellants’ contentions are as follows:
Does Cooper disclose:
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receiving, at a presence server, activity data associated
with an activity of at least one subscriber of a presence service;
providing the activity data, from the presence server, to at
least one other subscriber of the presence service; and
automatically modifying the activity of the at least one
other subscriber of the presence service to be the same as the
activity of the at least one subscriber;
as recited in claim 1?
Does Cooper disclose that “providing [the activity data] comprises
altering an activity indicator associated with the activity of the at least one
subscriber on a display of a client device associated with the at least one
other subscriber,” as recited in claim 2?

ANALYSIS
We have reviewed the evidence before us and Appellants’ contentions
and arguments (App. Br. 4-8; Reply Br. 1-4) in light of the Examiner’s
findings (Ans. 4-11) and explanations (Ans. 11-21). We are unpersuaded of
error in the Examiner’s findings and explanations and, except as specifically
addressed below, we adopt them as our own to the extent they address
claims 1-4, 12-14, and 19. We provide the following additional explanations
for emphasis.
Claim 1
Appellants contend Cooper’s internet service provider host 35 is not a
“presence server” because it does not have subscribers (App. Br. 7) and
because it is not part of an instant messaging system (Reply Br. 3). We
construe the term “presence server” giving it its broadest reasonable
interpretation as it would have been understood by one of ordinary skill in
the art in light of the Specification, In re Morris, 127 F.3d 1048, 1054 (Fed.
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Cir. 1997), without importing limitations from the Specification into the
claims, In re Am. Acad. of Science Tech. Ctr., 367 F.3d. 1359, 1369 (Fed.
Cir. 2004).
A pertinent dictionary definition is “presence technology n. An
application, such as instant messaging, which finds specific users when they
are connected to the network and which may alert interested users of each
other’s presence.” MICROSOFT COMPUTER DICTIONARY 418 (5th ed. 2002).
In the definition, the reference to instant messaging is exemplary, and the
reference to alerting interested users of each other’s presence indicates an
optional (“may”) characteristic. We construe “presence server” to
encompass a server that implements “presence technology,” i.e., a server
that implements an application that finds specific users when they are
connected to the network. We conclude this construction is consistent with
how the term would be understood by those skilled in the art and with
Appellants’ Specification.
As properly construed, “presence server” is not limited to instant
messaging. Although Appellants contend the “[S]pecification and claims
are clearly directed to Instant Messaging and Presence (IM&P) services”
(Reply Br. 3), we find no such limitation in the claims and no definition of
“presence server” in the Specification (as distinct from exemplary
descriptions) that would preclude the term from encompassing Cooper’s host
35.
Although we do not agree with the Examiner that for a “presence
server” “there is neither a user requirement, nor a subscription requirement,
nor a participation requirement” (Ans. 16), we do agree that “Cooper
actually discloses a presence service with participating subscribers,” (id.
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(emphasis omitted)). The recited “subscriber” reads on Cooper’s “viewer.”
See Cooper, ¶ [0008]. As explained by the Examiner (Ans. 13), Cooper
discloses: “[t]he host 35 may monitor and track all viewers that are
participating in a TV ride.” Cooper, ¶ [0050]. Accordingly, Cooper’s host
35 is a “presence server” as that term is broadly, but reasonably, construed.
As found by the Examiner, the claim limitations are met at least by
Cooper’s disclosure of a viewer spawned “TV ride.” See Cooper, ¶¶ [0008],
[0060]. Cooper discloses that: “[v]iewer-spawned TV rides are created
automatically, for example, by tuning the viewer’s set top box 20 to the TV
program that is being watched by the most TV viewers connected to the host
35 at any given time.” Id. Thus, we find Cooper discloses:
[r]eceiving, at a presence server [i.e., Cooper’s host 35
(id., ¶ [0050])], activity data associated with an activity of at
least one subscriber of a presence service [i.e., Cooper’s “the
TV program that is being watched by the most TV viewers
connected to the host 35 at any given time” (id., ¶ [0060])];
providing the activity data, from the presence server, to at
least one other subscriber of the presence service [i.e., Cooper’s
“tuning the viewer’s set top box 20 to the TV program that is
being watched by the most TV viewers connected to the host
35” (id.)]; and
automatically modifying the activity of the at least one
other subscriber of the presence service to be the same as the
activity of the at least one subscriber [i.e., Cooper’s
“automatically . . . tuning the viewer’s set top box 20 to the TV
program that is being watched by the most TV viewers
connected to the host 35” (id.)];
as recited in claim 1.
Accordingly, Appellants have failed to persuade us of error in the
rejection of claim 1. Therefore, we sustain the rejection of (1) claim 1; (2)
independent claims 12 and 19, which were argued together with claim 1 (see
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App. Br. 7); and (3) claims 7, 9-11, 17, 18, and 20, which depend from claim
1, 12, or 19, and were not separately argued with particularity.
Claim 2
Appellants contend that the Examiner erred in rejecting claim 2 for
the same reasons as claim 1, from which claim 2 depends. We are
unpersuaded for the reasons discussed supra regarding claim 1.
Appellants further contend that Cooper does not disclose an “activity
indicator” as recited in claim 2. App. Br. 8. Appellants argue that an
“activity indicator,” as recited, “is an indicator dedicated to indicating an
activity, not a current TV program or tuning that can be explained as
indicating the activity.” Reply Br. 4 (emphasis added) (citing Spec.,
¶ [41]
3
). The Examiner takes the position that, in light of Appellants’
Specification, “an activity indicator merely indicates the occurrence of an
activity wherein the activity may be one that has occurred in the past, is
currently occurring, or may occur in the future (i.e. any possible activity
wherein the time of occurrence is irrelevant); there is no explicit definition
with respect to the composition of such an indicator. Ans. 19-20 (citing
Spec., ¶ [41]). The Examiner explains that: “[t]he current TV program or
tuning (i.e. altering of TV content based on the [viewer spawned] TV ride)
indicates the activity associated with at least one subscriber wherein the TV
program or tuning is displayed on a device associated with at least one other
subscriber.” Ans. 20 (underlining omitted). The Examiner continues, “[t]he
actual display or presentation of that particular TV program is an activity

3
Appellants have misidentified the cited passage of the Specification as
paragraph [40]. See Reply Br. 4.
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indicator of most of the users connected to the host.” Ans. 21 (underlining
omitted). We agree with the Examiner.
The passages cited by Appellants as defining the “activity indicator”
are expressed in non-limiting, non-definitional terms, as indicated by the
italicized emphases below:
In some embodiments of the present invention, the
activity data is provided to the second subscriber by altering an
activity indicator associated with the activity of the first
subscriber on a display 251 of the second user device 230
associated with the second subscriber. For example, an activity
indicator may be included on an Activity Menu associated with
the presence service. Activity Menus according to some
embodiments of the present invention may be similar to “buddy
lists” . . . .
Spec., ¶ [41] (emphases added). We conclude the Examiner properly
interpreted claim 2 without importing limitations from the Specification into
the claim. See Ans. 20 (“None of the provided examples have been read into
the claimed subject matter.”). Accordingly, Appellants have not shown that
the Examiner’s claim construction is unreasonably broad or that Cooper fails
to disclose the recited “activity indicator.”
Appellants mention that claim 4 recites that the activity indicator may
indicate a mood but do not contend or explain why Cooper does not disclose
an activity indicator that is indicative of a mood, relying on the argument
made for claim 2. See App. Br. 8. Such unsupported statements are
insufficient to persuade us of error or to constitute a separate argument for
patentability. See 37 C.F.R. § 41.37(c)(1)(vii).
Accordingly, we sustain the rejection of (4) claim 2; (5) claim 13,
which was argued with claim 2 (App. Br. 8); and (6) claims 3, 4, and 14,
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which depend, directly or indirectly, from claim 2 or 13 and were not
separately argued with particularity.

ORDER
The decision of the Examiner to reject claims 1-4, 7, 9-14, and 17-20
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