Ex Parte McMurry et al

Patent Trial and Appeal Board

Dec 13, 2012

11277201 (P.T.A.B. Dec. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte KATHLEEN A. MCMURRAY, DAVID W. BUTT, STEPHEN
LEVY, DAVID A. LADD, DALE J. SEAVEY, PETER M. GITS, and
DAVID J. NOVICE
____________
Appeal 2010-008552
Application 11/277,201
Technology Center 2400
____________

Before JOSIAH C. COCKS, MICHAEL R. ZECHER, and
JUSTIN T. ARBES, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-25. App. Br. 5. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
Appellants’ Invention
Appellants invented a method, apparatus, computer readable medium,
and system for determining and reporting the overall reachability of a user
based on the current status of a variety of network elements associated with
the user. Abstract. According to Appellants, the claimed invention: (1)
evaluates customizable reachability rules to determine an overall
reachability status for the user; and (2) distributes both the reachability status
and presence status of network elements associated with the user to
authorized subscribers. Id.
Illustrative Claim
Claims 1, 9, 17, and 25 are independent claims. Independent claim 1
is illustrative:
1. A method of providing reachability status to
subscribers comprising:
presenting a plurality of reachability states, each
reachability state representing an aggregate accessibility of a
user derived from a plurality of statuses each corresponding to
one of a plurality of network elements associated with the user;
for each of the reachability states, presenting at least one
reachability rule, each reachability rule corresponding to one of
the network elements and indicating a status for satisfying the
reachability rule;
receiving a selection of one or more of the reachability
rules;
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accessing a central storage maintaining the statuses
corresponding to the network elements;
identifying an ordering of the reachability rules;
until a current reachability status is selected:
identifying one of the reachability rules based on
the identified ordering;
determining whether the identified reachability
rule is satisfied; and
if the identified reachability rule is satisfied,
selecting the reachability state associated with the
identified reachability rule as the current reachability
status;
determining one or more subscribers for receiving the
current reachability status; and
communicating the current reachability status to
subscribers.

Prior Art Relied Upon
Luzzatti US 6,714,519 B2 Mar. 30, 2004
Blohm US 2005/0198321 A1 Sept. 8, 2005

Rejections on Appeal
Claims 1, 2, 4, 6-10, 12, 14-18, 20, and 22-25 were rejected under 35
U.S.C. § 102(e) as being anticipated by Blohm. Ans. 2-16.
Claims 3, 5, 11, 13, 19, and 21 were rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Blohm and Luzzatti. Id. at
17-20.
Examiner’s Findings and Conclusions
The Examiner finds that Blohm describes “identifying an ordering of
the reachability rules,” as recited in independent claim 1. Ans. 4 and 22
(citing ¶ [0108]). In particular, the Examiner finds that Blohm’s disclosure
of setting a default or user-selected threshold creates an ordering of how
users wish to be contacted. Id. at 22. For instance, the Examiner finds that
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Blohm’s disclosure of failing to meet a predetermined threshold by not
having a certain number of workgroup members online results in a status of
“unknown” for the workgroup. Id. (citing ¶ [0105]). Similarly, the
Examiner finds that Blohm discloses selecting a user threshold that requires
a majority of the workgroup members to be available or online before the
workgroup itself is available or online. Id. However, the Examiner finds
that Blohm also discloses an instance of selecting a user threshold that only
requires one workgroup member to be available or online before the
workgroup itself is available or online. Id. (citing ¶ [0108]).
Appellants’ Contentions
Appellants contend that throughout prosecution the Examiner relies
upon multiple unrelated portions of Blohm to describe “identifying an
ordering of the reachability rules,” as recited in independent claim 1, and,
therefore, the Examiner’s position is untenable. Reply Br. 2. Nonetheless,
Appellants argue that Blohm—namely at paragraphs [0105] and [0108]—
does not describe the aforementioned claim limitation. Id. Appellants allege
that Blohm discloses using workgroup context definitions that are set based
on the aggregate status of workgroup members. Id. (citing ¶ [0108].)
Appellants also allege that in Blohm, if there are not enough workgroup
members online, the workgroup context results in a default “unknown”
status. Id. Therefore, Appellants assert that while the cited portions of
Blohm disclose setting a default status, Blohm does not describe identifying
an ordering of reachability rules, as claimed. Id.
Appellants rely upon the same arguments presented for the
anticipation rejection of independent claim 1 to rebut the anticipation
rejection of independent claims 9, 17, and 25. App. Br. 17; Reply Br. 4.
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II. ISSUE
The dispositive issue before us is whether the Examiner erred in
determining that Blohm describes “identifying an ordering of the
reachability rules,” as recited in independent claim 1, and similarly recited in
independent claims 9, 17, and 25?

III. ANALYSIS
35 U.S.C. §102(e) Rejection—Blohm
Claims 1, 9, 17, and 25
Based on the record before us, we discern error in the Examiner’s
anticipation rejection of independent claim 1, which recites, inter alia,
“identifying an ordering of the reachability rules.” We also discern error in
the Examiner’s anticipation rejection of independent claims 9, 17, and 25,
which recite a similar claim limitation.
The Examiner’s position is predicated on the notion that Blohm’s
disclosure of setting a default or user-selected threshold creates an ordering
of how users wish to be contacted. Ans. 22 (citing ¶¶ [0105] and [0108]).
However, it is not apparent to us how setting either a default rule or a
predetermined threshold constitutes identifying an order of reachability
rules, as claimed. Blohm discloses designating the status of a workgroup as
“unknown” if there are not enough eligible workgroup members online to
meet a predetermined threshold. ¶ [0105]. Setting a predetermined
threshold and determining if that threshold is satisfied does not describe
identifying an ordering of rules. Blohm further discloses setting a default
rule that requires at least one workgroup member to be available or online
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before designating the workgroup as available for voice communication,
email, or instant messaging. ¶ [0108]. While Blohm discloses identifying a
rule—in this case a default rule—Blohm does not contemplate identifying
the relative order of the default rule with respect to any other rule(s). As
such, the Examiner has not demonstrated that Blohm discloses the disputed
claim limitation.
Because the Examiner’s reliance on Blohm does not properly account
for the disputed claim limitation, we need not reach the merits of Appellants’
other arguments. It follows that the Examiner has erred in finding that
Blohm anticipates independent claims 1, 9, 17, and 25.
Claims 2, 4, 6-8, 10, 12, 14-16, 18, 20, and 22-24
Because dependent claims 2, 4, 6-8, 10, 12, 14-16, 18, 20, and 22-24
incorporate by reference the same disputed claim limitations as their
underlying base claim, the Examiner erred in rejecting these claims for the
same reasons set forth in our discussion of independent claims 1, 9, 17, and
25.
35 U.S.C. §103(a) Rejection—Combination of Blohm and Luzzatti
Claims 3, 5, 11, 13, 19, and 21
Claims 3, 5, 11, 13, 19, and 21 depend directly from independent
claims 1, 9, and 17, respectively. As applied by the Examiner, Luzzatti does
not remedy the above-noted deficiency of Blohm in the context of the
Examiner’s anticipation rejection of independent claims 1, 9, and 17. As a
result, the Examiner has erred in concluding that the combination of Blohm
and Luzzatti renders dependent claims 3, 5, 11, 13, 19, and 21 unpatentable.

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IV. CONCLUSIONS
For the foregoing reasons, the Examiner has erred in rejecting: (1)
claims 1, 2, 4, 6-10, 12, 14-18, 20, and 22-25 as being anticipated under 35
U.S.C. § 102(e); and (2) claims 3, 5, 11, 13, 19, and 21 as being
unpatentable under 35 U.S.C. § 103(a).

V. DECISION
We reverse the Examiner’s decision to reject claims 1-25.

REVERSED