Pujic, Milos et al.

Patent Trials and Appeals Board

Feb 3, 2020

14691264 - (D) (P.T.A.B. Feb. 3, 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.
14/691,264 04/20/2015 Milos Pujic 4366-721 1228
48500 7590 02/03/2020
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
EXAMINER
SPRINGER, JAMES E
ART UNIT PAPER NUMBER
2454
NOTIFICATION DATE DELIVERY MODE
02/03/2020 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):
cjacquet@sheridanross.com
edocket@sheridanross.com
pair_Avaya@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MILOS PUJIC, GEOFF BASKWILL, MING HOU, and JOSHUA
BERTOULIN
Appeal 2019-000783
Application 14/691,264
Technology Center 2400
Before BRADLEY W. BAUMEISTER, MICHAEL J. STRAUSS, and
NABEEL U. KHAN, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–6 and 8–20. See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We refer to the Specification, filed April 20, 2015 (“Spec.”); Final Office
Action, mailed January 16, 2018 (“Final Act.”); Appeal Brief, filed May 16,
2018 (“Appeal Br.”); Examiner’s Answer, mailed September 7, 2018
(“Ans.”); and Reply Brief, filed November 5, 2018 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Avaya Inc. Appeal
Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to trigger-based subscription to users’
presence information (i.e., user status such as availability to communicate).
See generally Abstract. Claim 1, reproduced below with a disputed
limitation emphasized in italics, illustrates the claimed subject matter:
1. A system, comprising:
a presence server;
an input interface of the presence server configured to
receive a triggering event from a triggering device, and wherein
the triggering event is an email and the first user and second
users are identified from at least one of a sending email address
of the email or a receiving email address of the email;
wherein the triggering device notifies the presence server,
via the input interface, of the triggering event associating the first
user with the second user;
wherein the presence server, in response to the triggering
event, automatically and without human intervention, subscribes
the first user to presence data for the second user;
an output interface of the presence server configured to
provide presence information of the second user to a first
endpoint associated with the first user while the first user is
subscribed to the presence data of the second user; and
wherein the presence server is configured to subscribe the
first user to the presence of the second user, comprising a first set
of presence data, and in response to the triggering event, the
presence server is further configured to subscribe the first user to
a second set of presence data comprising at least one additional
subscription event not enabled by the first set of presence data.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Wu US 2006/0143646 A1 June 29, 2006
Blohm US 2006/0190600 A1 Aug. 24, 2006
Vemulapelli US 2007/0083675 A1 Apr. 12, 2007
Galvin US 2008/0288572 A1 Nov. 20, 2008
Kuhlke US 2010/0125636 A1 May 20, 2010

REJECTIONS
Claims 1–5, 8, 10–14, and 17–20 stand rejected under 35 U.S.C. § 103
as being unpatentable over Wu, Blohm, and Kuhlke. Final Act. 2–9.
Claim 6 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Wu, Blohm, Kuhlke, and Galvin. Final Act. 10–11.
Claims 9, 15, and 16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Wu, Blohm, Kuhlke, and Vemulapelli. Final Act. 11–12.

STANDARD OF REVIEW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

OPINION
The Examiner finds Wu teaches the limitations of claim 1 except for
the limitations of (1) the triggering event being an email with the first and
second users identified by the email addresse(s); and (2) the presence server
being configured to subscribe a user to a second set of presence data. Final
Act. 3. The Examiner finds Kuhlke remedies the first noted deficiency and
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Blohm the second. Final Act. 3–6. In particular, the Examiner finds Wu’s
disclosure of the triggering of a presence subscription by presence services
communications manager 350 in response to detection of an event to trigger
teaches receiving a triggering event from a triggering device. Final Act. 2.
The Examiner further finds Kuhlke’s disclosure of an email originator
electing to receive current activity updates or user interaction based presence
information from recipients of an email teaches or suggests a triggering
event that is an email wherein first and second users are identified from the
email addresses. Final Act. 5 (citing Kuhlke Fig. 3, steps 309 and 313;
¶¶ 39, 40).
The Examiner concludes that it would have been obvious to
incorporate Kuhlke’s email trigger into the presence system taught by the
combination of Wu and Blohm “in order to provide e-mail senders the
benefit of additional presence information with respect to recipients’
reaction to a sent email.” Id.
Wu’s Figure 3 is depicted below3:
Wu’s Figure 3 depicting a presence system incorporating event
services to provide event-driven presence subscription. Wu ¶ 15.

3 Although omitted from the Wu application as published, Figure 3 can be
found in the subsequently issued patent US 8,280,957 B2.
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Appellant contends “[w]hile Kuhlke may enable the originator of an
email to make a selection to receive presence information, the email is
merely a document containing ‘each recipient’ and not an event triggering a
subscription.” Appeal Br. 6. According to Appellant, Kuhlke’s email “has
no effect on whether or not presence information is to be requested by an
originating user’s selection.” Id. at 7.
The Examiner responds, finding “[Kuhlke’s] transmission of the email
(317) is a necessary precondition for receiving presence information (325).
As a consequence of transmitting the email, the originator of the email
receives presence information from the recipients.” Ans. 6. The Examiner
further finds Kuhlke discloses “that the originator begins monitoring for
presence upon transmitting the email.” Id. (citing Kuhlke ¶ 30). According
to the Examiner, “transmitting the email is an event of the type that the
technique of Wu would be applicable as Wu is adapted to create presence
subscriptions upon the occurrence of any of a variety of events.” Id.
Appellant’s argument is unpersuasive of reversible Examiner error.
The disputed limitation is taught or suggested by the combination of Wu’s
triggering of presence information and Kuhlke’s description of an email
resulting in a user subscribing to presence information, not either reference
standing alone. “Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
In particular, we agree with the Examiner in finding Wu teaches an
input interface configured to receive a triggering event including a variety of
events that trigger the initiation or cessation of acquiring presence
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information. Ans. 4 (citing Wu ¶¶ 22, 25). Kuhlke discloses that, after
sending an email, “the email originator awaits the receipt of at least one
presence notification which contains activity information.” Kuhlke ¶ 30.
Thus, we agree with the Examiner that, according to Kuhlke, “transmission
of the email (317) is a necessary precondition for receiving presence
information (325)” and, therefore, teaches or suggests the use of an email as
a triggering event to acquire presence information. Ans. 6. Accordingly, we
further agree the combination of Wu and Kuhlke teaches or suggests the
disputed limitation.
Appellant further argues the Examiner’s reason for modifying Wu to
incorporate the email-triggering event of Kuhlke is improper. Appeal Br. 7.
In particular, Appellant emphasizes “[o]ne benefit of the invention claimed
is to automatically subscribe a party to the presence information of another
party, such as via receiving an email to or from the other party.” Id.
Appellant argues the Examiner’s reasoning that limiting the provision of
presence information to certain recipients to improve productivity and avoid
wasteful interactions “assumes presence information is presently provided
and, such as due to a party’s importance, should now be blocked.” Id.
Appellant urges that “this is not what is claimed nor is there motivation to
make that which is claimed.” Id.
Appellant’s argument is unpersuasive of reversible Examiner error.
The motivation to combine references need not derive from the same
problem identified in the patent as argued by Appellant, as any articulated
reason to combine the related prior art that is supported by sufficient factual
underpinnings is sufficient. See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398,
420 (2007) (holding it was error to “assum[e] that a person of ordinary skill
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attempting to solve a problem will be led only to those elements of prior art
designed to solve the same problem”); In re Beattie, 974 F.2d 1309, 1312
(Fed. Cir. 1992) (“As long as some motivation or suggestion to combine the
references is provided by the prior art taken as a whole, the law does not
require that the references be combined for the reasons contemplated by the
inventor.”).
Herein the Examiner finds “[o]ne would be motivated to make the
combination in order to provide e-mail senders the benefit of additional
presence information with respect to recipients’ reaction to a sent email.”
Final Act. 5. In light of the absence of persuasive evidence to rebut the
Examiner’s findings and conclusion, we find the Examiner has articulated
reasoning with rational underpinnings sufficient to justify the legal
conclusion of obviousness.
For the reasons discussed above, we sustain the rejection of
independent claim 1 under 35 U.S.C. § 103 as being unpatentable over Wu,
Blohm, and Kuhlke. We further sustain the rejection of independent
claims 11 and 17 that are agued on the basis of claim 1 (Appeal Br. 7)
together with the rejections of dependent claims 2–6, 8–10, 12–16, and 14–
20, which are not argued separately with particularity.

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CONCLUSION
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–5, 8, 10,
10–14, 17–20 103 Wu, Blohm, Kuhlke
1–5, 8, 10,
10–14, 17–20
6 103 Wu, Blohm, Kuhlke, Galvin 6
9, 15, 16 103 Wu, Blohm, Kuhlke, Vemulapelli 9, 15, 16
Overall
Outcome 1–6, 8–20

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED