International Business Machines Corporation

Patent Trials and Appeals Board

Sep 25, 2020

15218836 - (D) (P.T.A.B. Sep. 25, 2020)

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.
15/218,836 07/25/2016 Zhang Li CN920070029US2_8150-0686 8311
112978 7590 09/25/2020
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
EXAMINER
BLAIR, DOUGLAS B
ART UNIT PAPER NUMBER
2442
NOTIFICATION DATE DELIVERY MODE
09/25/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ZHANG LI, SU YING RUI,
SHOU HUI WANG, and ZHI YU YUE
____________

Appeal 2019-003750
Application 15/218,836
Technology Center 2400
____________

Before KALYAN K. DESHPANDE, CHARLES J. BOUDREAU,
and SHARON FENICK, Administrative Patent Judges.

BOUDREAU, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 17–34, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b)(1).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies IBM Corporation as the real party in
interest. Appeal Br. 1.
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Application 15/218,836

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CLAIMED SUBJECT MATTER
Appellant’s invention relates to instant messaging, in particular instant
message routing. Spec. ¶ 2.
Claims 17, 23, and 29 are independent. Claim 17, reproduced below,
is illustrative of the subject matter on appeal (emphases added):
17. A computer-implemented method within a server,
comprising:
receiving, from a source client, a request to initiate an
instant messaging (IM) communication with a destination
client;
acquiring, based upon a request, a context associated with
the source client and the destination client;
making a determination as to whether destination client is
a virtual user including a group of sub-users or a common user;
selecting, based upon a policy associated with the virtual
user and applied to the context, one of the sub-users; and
transferring the request to the selected one of the sub-
users.
Appeal Br. 21 (Claims App.).
REJECTION
Claims 17–34 stand rejected under pre-AIA 35 U.S.C. § 102(b) as
being anticipated by Bokish.2 Final Act. 6.3

2 Bokish, US 2004/0189698 A1 (pub. Sept. 30, 2004).
3 The Examiner withdrew a nonstatutory double patenting rejection of
claims 17–34 and a 35 U.S.C. § 101 rejection of claims 17–34. Ans. 3.
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Application 15/218,836

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OPINION
“receiving, from a source client, a request to initiate an instant
messaging (IM) communication with a destination client”
Independent claims 17, 23, and 29 recite “receiving, from a source
client, a request to initiate an instant messaging (IM) communication with a
destination client.” The Examiner interprets this claim limitation to “cover a
scenario where a source client is already engaged with the destination client
in a conversation.” Final Act. 2; see Ans. 3–4. That is, the Examiner
interprets the recited “request to initiate an instant messaging (IM)
communication” to include an instant message sent from the source client to
the destination client after they have already begun a conversation session.
See Final Act. 2–3; Ans. 3–4. For that limitation, the Examiner finds that
Bokish discloses an instant message sent by a user after the user has already
engaged in a conversation session with an agent. Final Act. 2–3, 6 (citing
Bokish ¶ 16); Ans. 3–4 (citing Bokish ¶¶ 24–25, Fig. 3).
Appellant argues that “the claimed invention is in the context of a
conversation being initiated” (Appeal Br. 17–18) or “the setting up of a IM
session” (Reply Br. 9), and that the “request to initiate an instant messaging
(IM) communication” as claimed refers to initiating a conversation, as
opposed to continuing a conversation (see Reply Br. 3–5). According to
Appellant, there would be no need to “initiate” a conversation if a
conversation was already ongoing (Appeal Br. 17; see Reply Br. 6) and,
“[b]ased upon the language of the claim[s], IM communication from a
source client to a destination client has not yet been initiated (i.e., started)”
(Reply Br. 3). Accordingly, Appellant argues that the recited “request to
initiate an instant messaging (IM) communication” can only correspond to a
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Application 15/218,836

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message sent by the user prior to assignment of an agent to the user and
establishment of a conversation session in Bokish. Reply Br. 4, 7, 9 (citing
Bokish ¶ 18, Fig. 2); see Appeal Br. 16.
We agree with the Examiner that the broadest reasonable
interpretation of a “request to initiate an instant messaging (IM)
communication” as claimed encompasses an instant message sent from the
source client to the destination client after their conversation has started.
Otherwise put, the “request to initiate an instant messaging (IM)
communication” does not necessarily have to relate to the first message sent
by the source client, or a message sent by the source client prior to
establishing a conversation session. Appellant conflates “communication”
with “conversation” (see Appeal Br. 17–18; Reply Br. 4–5), but the
Specification does not define “communication,” nor does it define
“request[ing] to initiate an instant messaging (IM) communication” as
requesting to initiate an IM conversation. Although “communication” and
“conversation” may be synonymous in certain contexts (see Reply Br. 5 &
n.1 (citing https://www/thesaurus.com/browse/conversation)), they are not
coextensive, and we agree with the Examiner that a conversation may
include a plurality of communications and, hence, a plurality of requests to
initiate a communication (see Ans. 7 (explaining that a “conversation” can
be “made up of many communications”).4 Thus, we find no error in the
Examiner’s mapping of Bokish’s instant message sent by a user after the

4 Also compare https://www.dictionary.com/browse/communication and
https://www.thesaurus.com/browse/communication, with
https://www.dictionary.com/browse/conversation and
https://www.thesaurus.com/browse/conversation.
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user and agent have already engaged in a conversation session to the recited
“request to initiate an instant messaging (IM) communication.”
“selecting, based upon a policy associated with the virtual
user and applied to the context, one of the sub-users”
The Examiner finds that Bokish discloses “selecting, based upon a
policy associated with the virtual user and applied to the context, one of the
sub-users,” as recited in independent claims 17, 23, and 29. Final Act. 6
(citing Bokish ¶ 16). Bokish discloses a system for routing instant messages
from a user to an appropriate agent at an information service bureau or
customer support center. Bokish ¶ 16, Abstr. “Once an information agent is
assigned to a user, a session is established wherein messages between the
user and the information agent will be associated with the session.” Id. ¶ 16.
The Examiner finds that Bokish’s session corresponds to the claimed
“context” (Final Act. 6; Ans. 4) and that Bokish discloses selecting an agent
(i.e., sub-user) to receive an instant message sent from a user based on a
“policy” of routing all of a user’s messages within a session to the same
agent (Final Act. 2–3; Ans. 7–8).
Appellant acknowledges that “Bokish describes directing the request
[i.e., user’s instant message] to a previously-selected agent” when the user
has previously communicated with that agent. Appeal Br. 17. Appellant
argues, however, that Bokish’s session cannot be a “context” as claimed
because in Bokish, a session is established after an agent is assigned to a
user, whereas, according to the claims, “the context must exist and be known
prior to the sub-user being selected.” Id. at 15–16 (emphases omitted)
(citing Bokish ¶ 16); see Reply Br. 2–3.
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Appellant’s argument is predicated on the assumption that the
Examiner maps Bokish’s assignment of an agent to a user (prior to
establishing a session) to the recited “selecting . . . one of the sub-users.”
However, that is not the case. As discussed above, the Examiner cites
Bokish’s instant message sent by a user after establishment of a session for
the “request to initiate an instant messaging (IM) communication.”
Consequently, the Examiner cites Bokish’s selection of an agent to whom
that instant message will be routed for “selecting . . . one of the sub-users” to
whom the request will be transferred. Ans. 4–5 (citing Bokish ¶ 16). We
agree with the Examiner that Bokish teaches selecting an agent (i.e., sub-
user) to whom a user’s instant message will be transferred based on a
“policy” of routing all of a user’s messages within a session (context) to the
same agent. See Final Act. 2–3; Ans. 7–8; Bokish ¶ 16. Thus, we find no
error in the Examiner’s finding that Bokish teaches “selecting, based upon a
policy associated with the virtual user and applied to the context, one of the
sub-users.”
For the foregoing reasons, we sustain the Examiner’s § 102 rejection
of independent claims 17, 23, and 29, as well as dependent claims 18–22,
24–28, and 30–34 not separately argued.
CONCLUSION
We affirm the Examiner’s rejection of claims 17–34 under 35 U.S.C.
§ 102.
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DECISION SUMMARY
In summary:

TIME PERIOD FOR RESPONSE
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

Claims
Rejected
35 U.S.C.
§
References/
Basis Affirmed Reversed
17–34 102 Bokish 17–34