Serdy, Frank S. et al.

Patent Trials and Appeals Board

Jun 23, 2020

2019000387 (P.T.A.B. Jun. 23, 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.
12/833,233 07/09/2010 Frank S. Serdy JR. MST-0/301964-US-CNT 6021
141674 7590 06/23/2020
Faegre Drinker Biddle & Reath LLP (Microsoft)
1500 K Street, N.W.
Suite 1100
Washington, DC 20005
EXAMINER
TAN, ALVIN H
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
06/23/2020 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):
DBRIPDocket@faegredrinker.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK S. SERDY JR., SELVARAJ NALLIAH,
and DAVID R. WILLIAMSON

Appeal 2019-000387
Application 12/833,233
Technology Center 2100

Before NABEEL U. KHAN, SHARON FENICK, and RUSSELL E. CASS,
Administrative Patent Judges.
KHAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–37.1 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Microsoft Technology Licensing, LLC, as
the real party in interest. Appeal Br. 4.
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Application 12/833,233
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CLAIMED SUBJECT MATTER
According to Appellant, the invention:
allow[s] mobile users to send replies to, or to forward, truncated
electronic mail messages, and yet still send the entire body of the
original electronic mail message, without having to download the
entire body of the mail message locally to the mobile device and
then re-transmit the entire message from the mobile device.
Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of sending an electronic mail (e-mail)
message in response to an original e-mail message having a
message body, comprising:
storing the original e-mail message in a data store;
sending a truncated e-mail message to a mobile device of
a user, the truncated e-mail message corresponding to the
original e-mail message with a portion thereof removed;
receiving, from the mobile device, a responsive e-mail in
response to the truncated e-mail identifying a recipient; and
in response to receiving the responsive e-mail, which
indicates that the user has selected to transmit a resulting e-mail
message in response to the truncated email, retrieving the
original e-mail message from the data store and sending, from
the server to the recipient, a resultant e-mail message including
the portion removed from the original e-mail message without
requiring downloading to the mobile device the portion removed
from the original e-mail message prior to sending the resultant e-
mail message.

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Application 12/833,233
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Shaw US 6,249,807 B1 June 19, 2001
Arnold US 6,275,848 B1 Aug. 14, 2001
Jain US 6,332,164 B1 Dec. 18, 2001
Smith US 7,006,242 B2 Feb. 28, 2006

REJECTIONS
1. Claims 1–21 and 23–37 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Jain, Shaw, and Smith. Final Act. 2–30.
2. Claims 22 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Jain, Shaw, Smith, and Arnold. Final Act. 30.
OPINION
Claim 1
Claim 12 recites “sending a truncated e-mail message to a mobile
device of a user, the truncated e-mail message corresponding to the original
e-mail message with a portion thereof removed” and further recites
“retrieving the original e-mail message from the data store and sending,
from the server to the recipient, a resultant e-mail message including the
portion removed from the original e-mail message without requiring
downloading to the mobile device the portion removed from the original e-
mail message.”

2 Appellant argues independent claims 1, 8, 19, 27, 33, 34, and 35 together
as a group. See Appeal Br. 19–35. We select claim 1 as representative of
these claims, pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(iv).
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The Examiner finds the combination of Jain, Shaw, and Smith teaches
the limitations of claim 1. Final Act. 3–5. Specifically, the Examiner finds
Jain teaches storing an original email message in a data store and sending a
truncated email message, with a portion of the original message removed, to
a user device. Final Act. 3 (citing Jain, 2:5–6, 5:32–33, 5:40–52). The
Examiner finds Shaw teaches receiving a responsive email identifying a
recipient in response to the truncated email. Final Act. 3 (citing Shaw, 2:66–
3:5, 3:13–15, 4:16–28, 4:35–39, 5:57–62, 6:5–7, 14:33–49). Finally, the
Examiner finds Smith teaches that a server delivers information to user
mobile devices, but because of limited capacity, a truncated information set
is generated for transmission to the mobile device, while a full information
set is reserved to be sent to a high capacity device such as a printer. Final
Act. 4 (citing Smith, 1:59–61, 3:31–50, 3:66–4:2, 4:7–12, 4:24–29, 6:34–
43). The combination of Jain, Shaw, and Smith, according to the Examiner,
would have taught one of skill in the art to display a truncated email on a
mobile device, and when sending a message responsive to the truncated
email (as taught by Shaw), retrieving the original email, which Jain and
Smith store separately, and sending it to the recipient of the responsive
email. Final Act. 5 (citing Smith, 5:66–6:3, 6:52–53, 8:29–33, 8:38–39).
The Examiner finds that one of ordinary skill in the art would have
combined Jain with Shaw’s interface for forwarding and replying to
truncated e-mails to allow a user to more easily respond to a large volume of
emails. Final Act. 3–4. The Examiner further finds that one of ordinary
skill would have combined Smith with Jain and Shaw to display truncated e-
mail messages on a portable device and retrieve the original information for
transmission to a recipient when sending a message responsive to the
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truncated e-mail, allowing a user to receive information from anywhere
while also allowing for efficient display of the information based on the type
of device being used. Final Act. 4–5.
Appellant argues “none of these [relied upon] references, nor their
combination, teaches a scenario in which a first message recipient does not
receive an entire message, but an associated server is able to send the entire
message to a second recipient.” Appeal Br. 24–25. Starting first with Jain,
Appellant argues “Jain does not disclose that a recipient form[s] a response
email message, or that such a response email message would be either a
complete or shortened message.” Id. at 25–26. According to Appellant, Jain
does not disclose an instance where the “recipient’s mobile device would
have a truncated message but the recipient’s mail server would have a
complete message . . . and certainly does not describe that a recipient’s
mobile device does not receive an entire message, but is able to send an
entire resultant message to a second recipient.” Id. at 26.
We find these arguments unpersuasive. Appellant’s arguments attack
Jain individually without considering the Examiner’s combination of
references or taking into account the Examiner’s findings as a whole.
“[O]ne cannot show non-obviousness by attacking references individually
where, as here, the rejections are based on combinations of references.” In
re Keller, 642 F.2d 413, 426 (CCPA 1981). The Examiner relies on Shaw,
not Jain, as teaching “receiving . . . a responsive e-mail in response to the
truncated e-mail identifying a recipient.” Final Act. 3–4 (citing Shaw, 2:66–
3:5, 3:13–15, 4:16–28, 4:35–39, 5:57–62, 6:5–7, 14:33–49).
Moreover, Appellant’s argument that Jain does not disclose an
instance where the recipient’s mobile device would have a truncated
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message but the recipient’s mail server would have a complete message is
not commensurate with the scope of claim 1. Claim 1 does not require that
the “recipient’s mail server” have a complete message to allow for the
creation of a resultant message. Instead, claim 1 simply requires that the
original message be stored “in a data store” and “retriev[ed] . . . from [a]
data store.” With respect to the original message being stored in a data
store, the Examiner correctly finds, Jain discloses “storing a complete
version of the electronic message in a mail server,” which is a “data store” as
recited in claim 1. Jain 2:5–6; see Final Act. 3.
Turning next to Shaw, Appellant argues that “the email server of
Shaw cannot create a resultant email message that includes a truncated (i.e.
removed) portion of the email message because the email system of Shaw
would not store those portions of the message that are truncated – instead, it
discards those portions to conserve storage space on the server.” Appeal Br.
29. Appellant further argues that the combination of Jain and Shaw would
also not teach the claim limitations “because the original email in Jain is not
stored on the truncated email recipient’s server in Jain and the original
email from which a truncated email is formed is not stored at all in Shaw.”
Id. at 29–30.
The argument that Shaw cannot create a resultant email message that
includes a truncated portion of the email message attacks Shaw individually,
rather than focusing on the Examiner’s combination of references. As
explained above, the Examiner relies on Jain, Shaw, and Smith, rather than
Shaw alone, for teaching that a resultant email is formed by including a
truncated portion of the original email message. See Final Act. 3–5. And,
Appellant’s argument that Jain does not store the original email on the
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truncated email recipient’s server is not commensurate with the scope of
claim 1, as explained above.
Finally, with regard to Smith, Appellant argues “no response email
message is formed at the mobile device; rather, abstracts are delivered to the
mobile device, at which a user can set a flag indicating that delivery of the
entire article may be desired.” Appeal Br. 33. Appellant argues that “[a]t
best Smith . . . indicates that a user receiving a shortened version of an
article could request to have a full version of that same article sent to
him/herself, Smith . . . does not disclose forwarding such an article in an
email to a third party.” Id. at 33–34.
Appellant’s argument that in Smith “no response email message is
formed,” or that Smith “does not disclose forwarding such an article in an
email to a third party,” ignores the Examiner’s findings regarding Shaw,
which the Examiner relied upon as teaching the claimed “responsive email”
in the combination of references applied in the rejection. Final Act. 3.
Furthermore, contrary to Appellant’s argument that Smith sends the full
version of the article to the user him/herself, Smith teaches sending a full
version of an article to a separate “high capacity” device, such as a printer,
rather than to the user’s mobile device. See Smith 2:41–45; 4:36–39; 8:29–
42.
For the aforementioned reasons, we sustain the Examiner’s rejection
of claim 1 and of claims 1–21 and 23–37, which were argued together as a
group. See Appeal Br. 19–35.
Claim 22
Appellant argues claim 22 separately from the other claims, but does
not present any new arguments other than to state that Arnold (which the
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Examiner relies upon in rejecting claim 22) “cannot cure the deficiencies of
Jain, Shaw, and Smith.” Appeal Br. 36. As such, we sustain the Examiner’s
rejection of claim 22 for the same reasons expressed above with respect to
claim 1.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–21, 23–
37
103 Jain, Shaw, Smith, 1–21, 23–
37

22 103 Jain, Shaw, Smith,
Arnold
22
Overall
Outcome
1–37

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED