Apple Inc.Download PDFPatent Trials and Appeals BoardNov 25, 20202020003420 (P.T.A.B. Nov. 25, 2020) Copy Citation 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. Appeal 2020-003420 Application 15/890,004 2 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 Appeal 2020-003420 Application 15/890,004 3 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 Appeal 2020-003420 Application 15/890,004 4 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 Appeal 2020-003420 Application 15/890,004 5 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 Appeal 2020-003420 Application 15/890,004 6 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 Appeal 2020-003420 Application 15/890,004 7 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 Appeal 2020-003420 Application 15/890,004 8 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 Appeal 2020-003420 Application 15/890,004 9 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 Copy with citationCopy as parenthetical citation