Ex Parte BOMBACINO et alDownload PDFPatent Trial and Appeal BoardMar 16, 201613172176 (P.T.A.B. Mar. 16, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/172, 176 06/29/2011 VINICIO BOMBACINO 52021 7590 03/18/2016 Cuenot, Forsythe & Kim, LLC 20283 State Road 7 Ste. 300 Boca Raton, FL 33498 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 ATTORNEY DOCKET NO. CONFIRMATION NO. FR920110020US1_8150-0093 6809 EXAMINER CELANI, NICHOLAS P ART UNIT PAPER NUMBER 2449 NOTIFICATION DATE DELIVERY MODE 03/18/2016 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): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VINICIO BOMBACINO, CLAUDIO FALCONE, LEONARDO LANNI, and ANDREA TORTOSA Appeal2014-001953 Application 13/172,176 Technology Center 2400 Before BETH Z. SHAW, WILLIAM M. FINK, and DANIEL J. GALLIGAN, Administrative Patent Judges. SHAW, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner's final rejection of claims 1-24, which represent all the pending claims in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. INVENTION The invention is for "logical thread management through email infrastructure." Spec. i-f 3. Claim 1 is illustrative and is reproduced below: 1. A method of logical thread management, the method comprising: via a processor, receiving at least one user input within an electronic mail (email) client associating a first email with a logical Appeal2014-001953 Application 13/172,176 thread, wherein the first email specifies a task assigned to at least one recipient of the first email; sending the first email to the at least one recipient; adding the first email to a logical thread list associated with the logical thread; receiving a task response from the recipient; and within the logical thread list, automatically updating a task status associated with the first email based upon the task response. REJECTIONS The Examiner rejected claims 1-3, 11-15, and 23-24 under 35 U.S.C. § 103(a) as unpatentable over Tonnison (US 2008/0046518 Al; published Feb. 21, 2008) and Keating (GB 2447279 A; published Sept. 10, 2008). Ans. 4--10. The Examiner rejected claims 4--6 and 16-18 under 35 U.S.C. § 103(a) as unpatentable over Tonnison, Keating, and Hammer (US 2010/0017194 Al; published Jan. 21, 2010). Ans. 10-13. The Examiner rejected claims 7-9 and 19-21under35 U.S.C. § 103(a) as unpatentable over Tonnison, Keating, and Wisniewski (US 2005/0120108 Al; published June 2, 2005). Ans. 13-17. The Examiner rejected claims 10 and 22 under 35 U.S.C. § 103(a) as unpatentable over Tonnison, Keating, Bhatawdekar (US 2006/0241997 Al; published Oct. 26, 2006), and Polimeni (US 2008/0250084 Al; published Oct. 9, 2008). Ans. 17-19. ISSUES Appellants present multiple arguments as to why the Examiner has erred. We focus our discussion below on the following issues: 2 Appeal2014-001953 Application 13/172,176 1. Did the Examiner err in finding the combination ofTonnison and Keating teaches or suggests "receiving at least one user input within an electronic mail (email) client associating a first email with a logical thread" and "adding the first email to a logical thread list associated with the logical thread" as recited in claim 1? 2. Did the Examiner err in finding the combination of Tonnison, Keating, and Hammer teaches or suggests "wherein identifying the task response in the second email comprises performing a semantic analysis on content of the second email," as recited in dependent claim 4? ANALYSIS We have reviewed Appellants' arguments in the Briefs, the Examiner's rejections, and the Examiner's response to Appellants' arguments. We adopt as our own the findings and reasons set forth in the rejection from which appeal is taken and the Examiner's Answer in response to Appellants' Appeal Brief. See Ans. 4--28. We highlight and address specific arguments and findings for emphasis as follows. At the outset, we remind Appellants that: [The USPTO] applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant's specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). 3 Appeal2014-001953 Application 13/172,176 Issue 1 : Claim 1 Appellants argue that the Examiner improperly construed "logical thread" and that it should be construed as "a group of events that are related to a common subject" as defined in Appellants' Specification. App. Br. 11; Reply Br. 1--4. The Examiner finds, however, that "even assuming" Appellants' definition of "logical thread," the limitation is taught in Tonnison by the concept of email replies because the second email is associated with the first, and furthermore the limitation is also taught by Tonnison's "creation of projects and the association of all emails with the project into [a] central folder." Ans. 21. We agree with the Examiner's findings that Tonnison's teachings of email replies and of grouping of emails into project folders teaches or suggests receiving at least one user input within an electronic mail (email) client associating a first email with a logical thread. Id. (citing Tonnison Fig. 14; Fig. 27, i-fi-f 17, 121). Appellants further argue that associating an email to an email thread is "not based on a user input received within the email." App. Br. 12. However, we agree with the Examiner's finding that Appellants' argument is not commensurate with the scope of claim 1. Ans. 21-22. We decline to import the argued limitations into the claim. We are also not persuaded by Appellants' arguments that T onnison fails to teach a logical thread list associated with the logical thread, or that a database "does not necessarily refer to a list." App. Br. 15; Reply Br. 9. We agree with the Examiner's finding that Tonnison teaches the recited "adding the first email to a logical thread list associated with the logical thread" for example by Tonnison's teaching of logging email information in a database. See Ans. 23-24 (citing Tonnison i-fi-f 109, 123, 140, 142, Fig. 14). 4 Appeal2014-001953 Application 13/172,176 Appellants argue the combination of Tonnison and Keating is based on "speculative reasoning." App. Br. 17-18. Upon reviewing the record before us, we find that the Examiner's rationale for the proposed modification in the prior art suffices as an articulated reason with some rational underpinning to establish a prima facie case of obviousness. See Ans. 24--25; see also KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In summary, we find that an ordinarily skilled artisan at the time of the claimed invention would have combined Tonnison's teaching of emails and grouping of emails (see Tonnison i-fi-f 109, 123, 140, 142, Fig. 14), with Keating's teaching of automated task updates (see Keating, pp. 10, 11. 9-17) "to improve communication by allowing information to be shared without requiring manually typing [it] out." Ans. 24--25. In the absence of sufficient evidence or line of technical reasoning to the contrary, the Examiner's findings are reasonable and we find no reversible error. Accordingly, we sustain the rejection of claim 1. Issue 2: Claim 4 The Examiner finds that the combination of Tonnison, Keating, and Hammer teaches or suggests "wherein identifying the task response in the second email comprises performing a semantic analysis on content of the second email," as recited in dependent claim 4. Ans. 25-26; Final Act. 9. Appellants argue that Hammer merely describes performing semantic analysis on an email field and not on the "content" as claimed. App. Br. 19; Reply Br. 12-14. We are not persuaded by this argument because, as the Examiner finds, "[t]he text entered into the subject field is content of the email" (Ans. 25), as the claim requires. Appellants' argument presumes the subject field is not "content," but Appellants do not point to any portion of 5 Appeal2014-001953 Application 13/172,176 the claim or Specification to support their argument, and we decline to read the argued limitation into claim 4. Moreover, we are not persuaded by Appellants' arguments that the semantic analysis of Hammer is performed to determine if a pattern exists and not "to identify[] the task response in the second email." App. Br. 19; Reply Br. 15-16. We agree with the Examiner that the combination of Keating and Hammer teaches the disputed limitation of claim 4. See Ans. 26-27. Keating teaches parsing a message to determine task categories such as job complete, and Hammer teaches semantic analysis to determine if a pattern exists. Ans. 27-28 (citing Keating, p. 8 1. 31-p. 9 1. 19). Moreover, the Examiner rejects claim 4 over the combined teachings of Tonnison, Hammer, and Keating, and what the combined teachings would have suggested to one of ordinary skill in the art. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Merck & Co., Inc., 800 F .2d 1091, 1097 (Fed. Cir. 1986). Accordingly, absent persuasive rebuttal evidence or technical reasoning to the contrary, we are not persuaded that the Examiner erred in finding the combination of cited references teaches or suggests the elements of claim 4. Therefore, we sustain the rejection of dependent claim 4. Because Appellants do not present separate patentability arguments or reiterate substantially the same arguments as those previously discussed for patentability of claims 1 and 4 above, the remaining pending claims fall therewith. See 37 C.F.R. § 41.37(c)(l)(iv). DECISION We affirm the rejection of claims 1-24. 6 Appeal2014-001953 Application 13/172,176 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation