Ex Parte Adams et al

Patent Trial and Appeal Board

Jul 13, 2016

11457303 (P.T.A.B. Jul. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111457,303 07/13/2006
89133 7590 07115/2016
RIDOUT & MAYBEE LLP
250 UNIVERSITY A VENUE
5THFLOOR
TORONTO, ON MSH 3E5
CANADA
FIRST NAMED INVENTOR
Neil Adams
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.
42783-0292 6965
EXAMINER
JAKOVAC,RYANJ
ART UNIT PAPER NUMBER
2445
NOTIFICATION DATE DELIVERY MODE
07/15/2016 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):
ipinfo@ridoutmaybee.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NEIL ADAMS, MICHAEL S. BROWN, and GEORGE BABU
Appeal2014-005166
Application 11/457,303
Technology Center 2400
Before ST. JOHN COURTENAY III, KRISTEN L. DROESCH, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
A. "1"1 ,1 "1 "1 ,..,,,-TT#'l~ll"l,..,,Al/'-r'" ,"1 T"""i •., Appeuants' appeal unaer j) u.~.L. s U4~aJ rrom me bxammer s
rejection of claims 1, 2, 4-27, and 29-34.2 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Research in Motion
Limited. App. Br. 3.
2 Claims 3 and 28 are canceled. App. Br. 44, 50.
Appeal2014-005166
Application 11/457,303
STATEMENT OF THE CASE
Introduction
Appellants' application relates to notifying users of newly-added
recipients of an email message. Abstract. Claim 1 is illustrative of the
subject matter on appeal and reads as follows:
1. An added recipient indication method carried out by a
processing apparatus having a messaging application permitting
a user to take actions in relation to messages, a set of the
messages identifiable as belonging to a common thread and each
of the messages having at least one recipient address and a date-
time stamp, the method comprising:
receiving a new message having recipient addresses and a
date-time stamp, said new message identifiable as belonging to
said thread;
comparing the recipient addresses of said new message to
at least the recipient addresses of a most recent prior message
belonging to said set of messages; and
detecting, responsive to said comparing, that said new
message includes at least one added recipient address;
receiving a request to display said new message; and
notifying, responsive to said receiving said request, that
said new message includes at least one added recipient address.
The Examiner's Rejections
Claims 1, 2, 4-10, 12-18, 21, 22, 24-27, and 29-34 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Miller (US 2006/0161849
Al; July 20, 2006) and Buchheit (US 7,814,155 B2; Oct. 12, 2010). Ans. 3.
Claim 23 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Miller, Buchheit, and Feldman (US 2007/0226204 Al; Sept. 27, 2007).
Ans. 3.
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Application 11/457,303
Claims 11, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Miller, Buchheit, and McCarthy (US 7,328,242 Bl; Feb.
5, 2008). Ans. 3.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
contentions that the Examiner has erred. We disagree with Appellants'
conclusions. Except as noted below, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the Action from which this appeal
is taken and (2) the reasons set forth by the Examiner in the Examiner's
Answer in response to Appellants' Appeal Brief. We concur with the
conclusions reached by the Examiner. We highlight the following additional
points.
Claim 1
.LA:..ppellants argue the Examiner erred in finding !vfiller teaches or
suggests "comparing the recipient addresses of said new message to at least
the recipient addresses of a most recent prior message belonging to said set
of messages." App. Br. 12-17, Reply Br. 3-5. In particular, Appellants
argue Miller teaches comparing the recipient address of a message to
previous messages in the email chain that are contained within the same
email file. App. Br. 13-16. Appellants argue the claims require that the
comparison occur between a new message file and at least one older
message file. Id. Appellants argue the purpose of the comparing step is to
determine whether new recipients have been added to an email, and Miller
merely teaches determining whether the recipient of the email was included
on previous emails in the email chain. App. Br. 15-1 7.
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Application 11/457,303
Appellants have not persuaded us that the Examiner erred in finding
Miller teaches the "comparing" step. As found by the Examiner (Ans. 4-5)
and as acknowledged by Appellants (App. Br. 15-17), Miller teaches
comparing the email address of an email recipient to the recipient address
list for previous messages in an email chain. Miller ,-i 52. Miller teaches this
comparison takes place using the email header information contained in the
same file as the received email. Id.
Claim 1 recites "comparing the recipient addresses of said new
message to at least the recipient addresses of a most recent prior message
belonging to said set of messages." The preamble recites that the "set of
messages" is "identifiable as belonging to a common thread and each of the
messages having at least one recipient address and a date-time stamp."
Nothing in claim 1 requires that the new email message is in a different file
than the existing email messages. Therefore, the scope of the "set of
messages" limitation broadly but reasonably encompasses a ne\'1/ email
message that contains older email messages from the same conversation
thread and each of the messages contains at least one recipient address and a
date-time stamp. The "comparing" step requires that the comparison take
place between the recipient address and the most recent prior message
belonging to the set of messages. Accordingly, Appellants' argument that
Miller fails to teach or suggest the "comparing" step because the comparison
does not take place between separate files is not persuasive because the
argument relies on a limitation not appearing in the claims. See In re Self,
671F.2d1344, 1348 (CCPA 1982).
Appellants also argue the Examiner erred because an ordinarily
skilled artisan would not have been motivated to combine Miller and
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Appeal2014-005166
Application 11/457,303
Buchheit. App. Br. 18. Specifically, Appellants argue the recipient of the
email in Miller is already aware of being added as a recipient and, therefore,
there would be no need to tum to Buchheit's teachings regarding
notifications that the email includes at least one new recipient. Id.
We disagree. As found by the Examiner, combining Miller with
Buchheit would be advantageous to provide notifications that a new
participant is involved in a messaging scenario. Although the email
recipient is aware that they have received the email, the recipient is not
necessarily aware whether they were included on all prior emails.
Accordingly, adding the notification of Buchheit to Miller would allow the
recipient to quickly ascertain which of the prior email messages in the
thread, including the last email message, were not received by the recipient.
For these reasons, as supported by a preponderance of the evidence, we are
not persuaded the Examiner erred regarding the rejection of claim 1.
Claims 2 and 7
Claim 2 recites "[t]he method as claimed in claim 1, wherein said
notifying comprises displaying a dialog window." Claim 7 recites a similar
limitation. Appellants argue the claims together and we treat claim 2 as
representative. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellants argue the Examiner erred in finding Buchheit teaches this
limitation. App. Br. 18-19. Specifically, Appellants argue Buchheit teaches
notifying a user using a "visually distinctive presentation format" instead of
a dialog window. Id. The Examiner finds an ordinarily skilled artisan
would have found it obvious to use a dialog window as an example of
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Appeal2014-005166
Application 11/457,303
Buchheit' s "visually distinctive presentation format." Ans. 7 (citing
Buchheit 23:59-67).
Appellants have not persuaded us that the Examiner erred in finding
Buchheit teaches the "dialog window" limitation. The Examiner finds, and
we agree, that Buchheit teaches notifying a user of new recipients in a
message using a "visually distinctive presentation format." Ans. 7 (citing
Buchheit 23 :59-67). Appellants argue a dialog window is not a visually
distinctive presentation format, but Appellants have presented no persuasive
evidence to support this conclusory assertion. See In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997) (attorney arguments and conclusory statements
that are unsupported by factual evidence are entitled to little probative
value); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Accordingly, we are not persuaded the Examiner erred in finding Buchheit
teaches a "dialog window" as recited in claim 2.
Claim 6
Claim 6 recites:
The communications device as claimed in claim 4, said
messaging module further receiving, through the user input
device, a request to send a reply-to-all message composition
derived from said new message, wherein said notification is
displayed on said display screen responsive to said receiving said
request to send said reply-to-all message composition derived
from said new message.
Appellants argue the Examiner erred in rejecting claim 6 because
neither Miller nor Buchheit teaches or suggests a notification responsive to
receipt of a request to send a reply-to-all message. App. Br. 21-22, Reply
Br. 7-8. Appellants acknowledge Buchheit teaches notifications for added
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Application 11/457,303
recipients, but argue these notifications do not occur in response to receipt of
a request to send a reply-to-all message. App. Br. 22. Instead, Appellants
argue these notifications are provided in response to a user selecting a
conversation. Reply Br. 7 (citing Buchheit 23:23-26, 23:47).
Appellants have not persuaded us that the Examiner erred in rejecting
claim 6. The Examiner finds, and we agree, that Miller teaches a request to
send a reply-to-all message in response to a newly-received message. Ans. 8
(citing Miller ,-i 37). The Examiner further finds Buchheit teaches providing
a notification in response to receiving a request for a new message. Ans. 8
(citing Buchheit 23 :59-67). The Examiner finds an ordinarily skilled artisan
would have found it obvious to provide Buchheit's notifications in response
to Miller's reply-to-all message request to provide notification of a new
participant in a messaging scenario. Ans. 8.
Appellants further argue that combining Buchheit and Miller would
result in providing a notification only \'I/hen the conversation is selected, not
when a reply-to-all message is requested. Reply Br. 8. Appellants argue the
combined teachings would not result in this type of notification because
Buchheit's notifications occur in response to selecting a conversation.
Appellants have not identified persuasive evidence in the record before us
that the Examiner's combination would have been "uniquely challenging or
difficult for one of ordinary skill in the art." Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007); see also KSR Int'!
Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("A person of ordinary skill is
also a person of ordinary creativity, not an automaton"). Accordingly, we
are not persuaded that the Examiner erred in rejecting claim 6.
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Claim 19
Claim 19 recites "[t]he method of claim 18 wherein the providing the
notification includes generating a dialog box on a display screen of the
electronic device that includes a user selectable option for modifying
recipient addresses of the reply-to-all message to change the addressed
recipients thereof." Appellants argue the Examiner erred in finding the
combination of Miller, Buchheit, and McCarthy teaches this limitation.
App. Br. 39-40, Reply Br. 8-10. In particular, Appellants argue McCarthy
teaches a dialog box as part of a thread creation window, instead of a dialog
box in response to a request to send a reply-to-all message. App. Br. 39--40
(citing McCarthy Figs. IA, lB). The Examiner finds McCarthy Figure 1 T
teaches modifying recipient addresses for new threads or for existing
threads. Ans. 9 (citing McCarthy Fig. 1 T, 11 :20-39). Appellants reply that
Figure 1 T only allows a user to add recipients to a message. Reply Br. 9 .
.LA~ppellants have not persuaded us the Examiner erred in rejecting
claim 19. The Examiner finds, and we agree, that McCarthy teaches
providing a dialog box to allow a user to modify recipients of a new email
thread or an existing email thread. Ans. 9 (citing McCarthy Fig. 1 T, 11 :20-
39). Appellants' argument that McCarthy only teaches a dialog box to allow
a user to add a recipient to an email thread is unpersuasive because claim 19
recites "modifying recipient addresses" and such modifying includes adding
new recipients. The claim does not require that the dialog box allow a user
to remove recipient addresses. Accordingly, we sustain the rejection of
claim 19.
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Application 11/457,303
CONCLUSIONS
On the record before us and in view of the analysis above, Appellants
have not persuaded us that the Examiner erred in rejecting claim 1 as
unpatentable over Miller and Buchheit. Therefore, we sustain the rejection
of representative claim 1. We also sustain the rejections of grouped claims
4, 5, 9, 11-16, 21-27, 29-32, and 34, which Appellants have not argued
separately. App. Br. 20, 21, 24-29, 32-39, 42; see 37 C.F.R.
§ 41.37(c)(l)(iv) ..
On the record before us and in view of the analysis above, Appellants
have not persuaded us that the Examiner erred in rejecting claim 2 as
unpatentable over Miller and Buchheit. Therefore, we sustain the rejection
of representative claim 2. We also sustain the rejection of grouped claims 7
and 8, which Appellants have not argued separately. App. Br. 23, 24.
On the record before us and in view of the analysis above, Appellants
have not persuaded us that the Examiner erred in rejecting claim 6 as
unpatentable over Miller and Buchheit. Therefore, we sustain the rejection
of representative claim 6. We also sustain the rejections of grouped claims
10, 17, 18, 20, and 33, which Appellants have not argued separately. App.
Br.25,29-31,37-38,40--42.
On the record before us and in view of the analysis above, Appellants
have not persuaded us that the Examiner erred in rejecting claim 19 as
unpatentable over Miller, Buchheit, and McCarthy. Therefore, we sustain
the rejection of representative claim 19. We also sustain the rejection of
grouped claim 20, which Appellants have not argued separately. App. Br.
40-42.
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Application 11/457,303
DECISION
We affirm the decision of the Examiner to reject claims 1, 2, 4-27,
and 29-34.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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