Ex Parte Raguillat et alDownload PDFPatent Trial and Appeal BoardFeb 5, 201512500110 (P.T.A.B. Feb. 5, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte FRED RAGUILLAT, COLM FARRELL, LIAM HARPUR, PATRICK JOSEPH O’SULLIVAN, and HEMA SRIKANTH ____________________ Appeal 2012-004707 Application 12/500,110 Technology Center 2100 ____________________ Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and JOHNNY A. KUMAR, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE In papers filed January 20, 2015, Appellants request a rehearing under 37 C.F.R. § 41.52 from the Decision on Appeal (Decision) of the Patent Trial and Appeal Board (Board), dated November 17, 2014. In the Decision, we affirmed the Examiner’s rejection of claims 21-40. Dec. 7 ANALYSIS In the Request for Rehearing (“Request”), Appellants allege the Board erred by misapprehending or overlooking Appellants’ arguments concerning claims 21-40. Req. Reh’g 2-9. First, Appellants dispute the Board’s holding that because the combination of Bodapati and Gill teaches email addresses being automatically populated in address fields in response to a users’ Appeal 2012-004707 Application 12/500,110 2 selection of certain attributes in a CRM client, the combination also teaches performing the functions of a messaging application. Id. at 2-3. According to Appellants, the fact that email addresses are being automatically populated does not necessarily imply the performance of a messaging application function because the populated addresses pertain to fields in a database system, as opposed to a messaging application. Id. at 3. We find no merit in this argument because as it was sufficiently addressed in the Decision. As discussed in significant details in the Decision, although Gill is concerned with issuing a search request to retrieve matching entities in a database system, Bodapati’s disclosure of retrieving a list of target email addresses to thereby populate an information field would complement Gill’s teaching to predictably result in e-mailing recipients with scores exceeding a particular threshold. Dec. 5. That is, the Decision did not infer the performance of a messaging application function solely from the Examiner’s finding that Gill teaches automatically populating fields. The Decision also cited to the Examiner’s finding that Bodapati’s teaching of a messaging application would complement Gill to thereby teach the disputed limitations. Id. Appellants are reminded that a request for rehearing is not an opportunity for Appellants to reiterate arguments presented in the Briefs that were fully addressed in the Decision. 37 C.F.R. § 41.52(f). Second, Appellants argue that the Board overlooked or misapprehended the argument that Gill does not teach the messaging application. Req. Reh’g. 4-5. This argument is without merit because Appellants continue to attach the references individually as opposed to the combination proffered by the Examiner. As noted above, and in the Decision, the Examiner also relied on Bodapati’s disclosure of retrieving Appeal 2012-004707 Application 12/500,110 3 from search engines target e-mail addresses of recipients, which are subsequently sent e-mails to teach the disputed limitations. Dec. 5. Consequently, Appellants’ attack over Gill’s teachings alone is unpersuasive of error. Third, Appellants argue the Board misapprehended Appellants’ arguments by relying upon the combination of Gill and Bodapati, whereas the Examiner relied solely upon Gill. Consequently, Appellants submit that the Board entered a new ground of rejection. Req. Reh’g 5-6. This argument is without merit because the record before us supports our finding that the Examiner rejected claim 21 over the combination of Gill and Boadapati in the final action from which this appeal is taken. Final Action 3-6. Subsequently, in the Answer, the Examiner reiterates the same rejection of claim 21 over the same combination of Gill and Bodapati, and responds to Appellants’ arguments regarding the proffered combination. Ans. 5-7, 11-14. Consequently, we properly treated Appellants’ arguments as unpersuasive for failing to consider the combination of references. Fourth, Appellants argue the Board overlooked the argument that Gill and Bodapati are non-nonalogous art because Appellants were unable to identify on this record any findings that the two references are within the same field of endeavor. Req. Reh’g 6-7. We find no merit in this argument. As noted in the Decision, because Gill and Bodapati disclose prior art elements that perform their ordinary functions to [predictably] result in a CRM system wherein a user of a client system running a CRM application can select from an interface pre-defined attributes corresponding to certain criteria to thereby retrieve from a remote server list of email addresses that fit the user’s criteria, the proffered combination is analogous. Dec. 5-6. Appeal 2012-004707 Application 12/500,110 4 Further, the Examiner fully addresses this argument by indicating the references are analogous because they are directed to the same field of endeavor of identifying user contact information in a database. Ans. 15. Consequently, the record before us fully supports our finding that the references are analogous. Fifth, Appellants argue that the Board misapprehended or overlooked Appellants’ argument by finding that the Examiner’s reliance upon the combination of Gill and Bodapati as disclosing complementary attributes. Req. Reh’g 7-8. In particular, Appellants argue because the Examiner did not use the phrase “complementary attributes” or “complementary functions”, the Board’s characterization of the two different sets of attributes disclosed by Gill and Bodapati as being complementary is tantamount to a new ground of rejection. Id. at 8. Additionally, Appellants submit because the Examiner has failed to explain how one of ordinary skill would combine these two different sets of attributes, the Board’s affirmance is not supported by the record before us. Id. We find no merits in these arguments. In particular, we fail to comprehend how our characterization of findings made by the Examiner could be tantamount to a new ground of rejection. As noted in the Decision, “although the disclosed attributes are different, it is the complementary functions that form the basis of the Examiner’s rejection.” In other words, while the Examiner may not have expressly characterized the two different sets of attributes as being complementary, such characterization can be implied from the nature of the rejection, and as supported with the fact that both references are concerned with using such attributes to user contact information in a database. Accordingly, we find no error in our affirmance of the Examiner’s rejection. Appeal 2012-004707 Application 12/500,110 5 DECISION THEREFORE, we have granted Appellants’ Request to the extent that we have reconsidered the original Decision but have DENIED it with respect to making any changes to the Decision. 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). REHEARING DENIED Ssc Copy with citationCopy as parenthetical citation