Apple Inc.

Patent Trials and Appeals Board

Nov 25, 2020

2020003420 (P.T.A.B. Nov. 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.
15/890,004 02/06/2018 Lawrence Y. YANG P23143USD1/77770000369301 1018
150004 7590 11/25/2020
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
EXAMINER
WANG, LIANG CHE A
ART UNIT PAPER NUMBER
2447
NOTIFICATION DATE DELIVERY MODE
11/25/2020 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):
dentons_PAIR@firsttofile.com
patent.docket@dentons.com
patents.us@dentons.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LAWRENCE Y. YANG, STEPHEN O. LEMAY,
and TIFFANY S. JON
____________

Appeal 2020-003420
Application 15/890,004
Technology Center 2400
____________

Before MAHSHID D. SAADAT, LARRY J. HUME, and
JAMES W. DEJMEK, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–12. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 An oral hearing was held for this appeal on November 9, 2020.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2018). Appellant identifies the real party in interest as
Apple Inc. Appeal Br. 4.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosure is directed to “[a]n electronic device with a
touch-sensitive surface and display [that] can execute a messaging
application configured to manage emails with large attachments.” Spec. ¶ 4.
According to Appellant’s disclosure, when the attachment size exceeds a
threshold, “the device provides an option to upload the attachment to the
server and to embed in the email message a link to the location of the
attachment on the server,” and adds a version of the attachment having a
smaller size to the email message. Spec. ¶ 5.
Claims 1 and 4 are illustrative of the invention and read as follows:
1. An electronic device, comprising:
one or more processors; and
memory storing one or more programs configured to be
executed by the one or more processors, the one or more
programs including instructions for:
receiving an email message comprising a link to a
location of an attachment associated with the email
message on a server, wherein the attachment is not
embedded within the email message;
responsive to an action opening the email message,
opening the email message and displaying the link;
responsive to an action selecting the link to the
location of the attachment retrieving the attachment from
the server; and
responsive to retrieving the attachment from the
server, storing the email message with the attachment
being embedded within the email message.
4. An electronic device, comprising:
one or more processors; and
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memory storing one or more programs configured to be
executed by the one or more processors, the one or more
programs including instructions for:
displaying an email message that includes a link to
a location of an attachment associated with the email on a
server and displaying, concurrently with content of the
email message a visual indication of the validity status
corresponding to validity information of the link;
responsive to receiving selection of the link to the
location of the attachment and the link being valid,
sending a request to the server to retrieve the attachment;
and
in accordance with the determination that the
attachment has been retrieved from the server, updating
the visual indication of the validity status to indicate that
the attachment has been retrieved from the server.
Appeal Br. 26–27 (Claims Appendix).
The Examiner’s Rejection
Claims 1–12 stand rejected under 35 U.S.C. § 102(a)(1) as being
anticipated by Rose (US 2006/0168012 Al; pub. July 27, 2006). Final
Act. 2–3.
ANALYSIS
Claim 1
With respect to claim 1, Appellant contends the Examiner’s rejection
is in error because “Rose fails to disclose storing an email message with the
attachment being embedded within the email message in response to
retrieving the attachment.” Appeal Br. 13–14. The Examiner relies on
element 702a in Figure 7 and claim 1 of Rose (“attachment downloaded to
recipient’s local memory”) for disclosing this limitation. Ans. 4; Final
Act. 3. According to Appellant, Figure 7 of Rose shows different areas that
display links for accessing the attachment, such as 702a to indicate the file to
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be accessed and 702d to indicate where the file is being accessed. Appeal
Br. 15. Referring to Rose’s paragraph 45, Appellant asserts
Rose teaches that “[t]he email system allows for the searching
and downloading of the attachments after the user dicks on an
icon, or some other graphical representation, indicating that it
wishes to download the attachment”. Yet Rose is silent with
respect to how and where the attachment is stored once it is
downloaded. Consequently, Rose does not teach that the
attachment is embedded in any email message responsive to
retrieving the attachment from a server.
Id. Appellant further argues “Rose’s technique could be implemented any
number of ways that would not require the attachment to be embedded in an
email,” such as storing at a separate location that allows deleting the
attachment without deleting the email itself. Appeal Br. 16–17 (citing Rose
¶ 29). Appellant contrasts Rose’s disclosure with the recitation of
“embedded” in claim 1 that is described as storing the attachment when the
email is stored by embedding the attachment within the stored email.
Appeal Br. 16 (citing Spec. ¶ 153).
In response, the Examiner relies on Rose’s paragraphs 9 and 33 of
Rose as further disclosing an attachment download link contained in the
email, which when selected, downloads the attachment “to a storage means
local to the recipient computing device.” Ans. 5. The Examiner further
explains
Rose discloses in paragraph [0009], “downloading the
attachment from the at least one computing device to a
storage means local to the recipient computing device”;
paragraph [0046], figure 8 shows the attachment could be
downloaded from a server; figure 7 shows the process of
retrieving the attachment; paragraph [0030], shows once the
attachment is downloaded, user can click on the link again to
retrieve the attachment locally. Rose discloses once a user click
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on the download link, the attachment could be retrieved from a
server and stored locally at the user device for later access
corresponds to “responsive to retrieving the attachment from
the server, storing the email message with the attachment being
embedded within the email message”.
Ans. 6.
Rose relates to a “method and system for sending and receiving e-mail
messages in a distributed computing network” where users can “search for
and retrieve content sent as an attachment to e-mail messages on various
computing devices participating in a distributed computing network.” Rose,
Abstract. In Figure 7, Rose depicts the interface for viewing a received e-
mail wherein “[t]he attachment download link(s) and/or identifier(s) are
integrated into the e-mail message into a second area 702 and contained
preferably below the text of the e-mail 701.” Rose ¶ 45. Rose also discloses
that the user downloads the attachment “from the at least one computing
device to a storage medium local to the recipient computing device.” Rose,
Claim 1; see also ¶ 9. With respect to the way the attachment file is
received, Rose discloses that the attached file “does not consist of the actual
file content, but comprises a file download link,” which means the
attachment is separate from the email. Rose ¶ 29. Rose further discloses
that “the user can read the e-mail message prior to deciding whether to
download the attachment to their system and can also delete the attachment
without deleting the e-mail itself.” Id. Thus, Rose discloses receiving an
attachment that is stored and accessed separately from the email.
We agree with Appellant that, given the separation of the attachment
from the email itself in Rose, the cited portions of Rose fail to meet the
limitation that “responsive to retrieving the attachment from the server,
storing the email message with the attachment being embedded within the
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email message,” as recited in claim 1. Additionally, we are persuaded by
Appellant’s argument with respect to the Examiner’s equating the storage of
the attachment locally with the recited embedding the attachment within the
stored email message. See Reply Br. 4. The Examiner relies on Rose’s
disclosure related to clicking on the link to the attachment included in the
email and storing the attachment in a local storage in support of the
rejection. Ans. 6. However, as stated by Appellant, “a person of skill in the
art would not understand a disclosure of local storage, alone, to be a
disclosure of embedding an attachment within the email” because “local
storage could be carried out by separately storing the attachment and the
email.” Reply Br. 4.
Accordingly, given the record before us, we are constrained to reverse
the Examiner’s anticipation rejection of claim 1, independent claims 2 and 3
which recite similar limitations, and claims 7–12 dependent therefrom.
Claim 4
In rejecting claim 4, the Examiner relies on the findings and analysis
stated for claim 1, which included citations to Rose’s Figures 2 and 7, as
well as paragraphs 25, 33, and 45. Final Act. 3–4. Appellant contends the
Examiner has not shown that Rose teaches the recited features of claim 4,
such as
displaying an email message that includes a link to a location of
an attachment associated with the email on a server and
displaying, concurrently with content of the email message a
visual indication of the validity status corresponding to validity
information of the link;” and “in accordance with the
determination that the attachment has been retrieved from the
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server, updating the visual indication of the validity status to
indicate that the attachment has been retrieved from the server.
Appeal Br. 18–19. Appellant refers to Rose’s paragraph 33 and argues
“selection of the link taught by Rose initiates a search module when a user
selects the link,” which indicates the location of the attachment is not known
until “selection of the link initiates a search module to search for and
determine the location, if any, of the attachment.” Appeal Br. 19. More
specifically, Appellant asserts “Rose does not teach or suggest Appellant’s
recitation of providing a link to a location of an attachment associated with
the email on a server because at the time the link is selected, the location, of
the attachment is unknown” as evidenced by Rose’s Figure 8 showing an
interface displayed in response to selecting the link, including “searching” as
one of the items under “status.” Appeal Br. 20. Additionally, Appellant
argues that the reference fails to teach the recited “responsive to receiving
selection of the link to the location of the attachment and the link being
valid, sending a request to the server to retrieve the attachment” because the
location of the attachment is unknown when the link is selected. Appeal
Br. 21 (citing Rose ¶ 33); see also Reply Br. 5–6.
In response, the Examiner explains that the disputed limitations of
claim 4 are taught by the reference because
Rose in paragraph [0045], lines 6-8 discloses “the attachment
download link is integrated into the email message”; paragraph
[0044], last lines, “having email server act as storage for the
user’s email attachments”. And as discussed above, the
download link is viewed as link to a location of an attachment
associated with the email on a server.
Rose in paragraph [0033], lines 8-12 discloses “a user receives
an email with one or more attachments . . . On reading the
email, if the user wishes to download the attachment, it
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selects the attachment download link contained in the email
message”. Figure 8 shows a downloading progress of
downloading attachment from a server.
Rose in figures 7 and 8 and paragraph [0045] and [0046],
discloses presenting user the link (download link) and visual
indication (graphical indication) of a validity status
corresponding to the validity information of the link (figure 8,
status).
Ans. 6–7.
We disagree with Appellant that Rose’s attachment download link is
different from the recited “link to a location of an attachment associated with
the email on a server.” Similar to Appellant’s claim 4, selecting the
download link in Rose sends a request to the server to retrieve the
attachment. Rose ¶ 33. Although Rose describes invoking a search module
to find the attachment on different locations including the mail server, the
selection of the attachment download link in Rose, nonetheless, functions as
sending a request to the server to retrieve the attachment. Rose also allows
for downloading the attachment automatically, which implies that selecting
the link downloads the attachment from its location as determined by the
device settings. See Rose ¶ 34. That is, contrary to Appellant’s arguments
that a link to a search module does not meet the disputed limitation (see
Reply Br. 6), the broadest reasonable interpretation of the claimed “link to a
location of an attachment” does not preclude a link with enhanced
capabilities to present one or more location choices to the user or an indirect
link to involve a search module to retrieve the attachment from one of the
available locations, as described in Rose. See Rose ¶¶ 33, 34. As further
found by the Examiner, Rose’s paragraphs 45 and 46 describe the recited
visual indication as the graphical display that show a plurality of statuses
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with respect to the location and downloading of the attachment and how
retrieving the attachment is progressing. See also Rose Figs. 7, 8.
Accordingly, we sustain the Examiner’s anticipation rejection of
independent claim 4 and dependent claims 5 and 6, which are not separately
argued by Appellant. See Appeal Br. 21.
DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. § Reference Affirmed Reversed
1–3, 7–12 102(a)(1) Rose 1–3, 7–12
4–6 102(a)(1) Rose 4–6
Overall Outcome 4–6 1–3, 7–12
FINALITY AND 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). See 37
C.F.R. § 41.50(f).
AFFIRMED-IN-PART