Board Affirms Examiner’s Obviousness Rejection Because the Combination of Interfaces from the References is Merely a Combination of Familiar Elements According to Known Methods That Yield a Predictable Result

April 26, 2012 – Blog Post

In Ex parte Allen et al. (Appeal 2009-014902, in Application Serial No. 10/726,457, decision issued April 25, 2012) the issue on appeal was whether the Examiner erred in determining that the combination of references teach “enlarging the chat interface and displaying the free time summary calendar adjacent to the chat area of the chat interface,” as recited in Claim 1.

Appellants’ invention related to a chat interface for comparing free time between chat members. Claim 1 was illustrative and recites, inter alia, “enlarging the chat interface and displaying the free time summary calendar adjacent to the chat area of the chat interface.”

Claims 1 and 3-7 were rejected by the Examiner under 35 U.S.C. 103(a) as unpatentable over Virta in view of Wies, Achacoso, and Conmy. The Appellants argued that even though Conmy describes a three pane interface that allows a user to organize their mail, see their mail messages, and read individual mail messages without jumping from window to window, the mail messages in Conmy are not chats, and the three pane interface of Conmy is not a chat interface.

The Board did not find Appellants’ arguments persuasive and noted that Appellants did not provide a definition of chat that excludes the mail messages taught by Conmy. The Board reasoned that “combining the chat interface taught by Wies with the scheduling interface taught by Conmy is the combination of familiar elements according to known methods that yields the predictable result of a free time summary calendar displayed adjacent to the chat area of the chat interface,” and cited KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The Board also stated that “Appellants have not provided evidence or persuasive argument to show that using the chat interface of Wies in place of the mail interface of Comny was ‘uniquely challenging or difficult for one of ordinary skill in the art,’” and citedLeapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 419). Consequently, the Board affirmed the Examiner’s obviousness rejection of Claims 1 and 3-7.