Ex Parte Bastide et al

Patent Trial and Appeal Board

Oct 4, 2017

13900238 (P.T.A.B. Oct. 4, 2017)

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.
13/900,238 05/22/2013 Paul R. Bastide RSW920130054US2 3706
75949 7590
IBM CORPORATION
C/O: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
10/06/2017 EXAMINER
NGANKAM, PATRICK F
ART UNIT PAPER NUMBER
2454
NOTIFICATION DATE DELIVERY MODE
10/06/2017 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):
patents @ fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL R. BASTIDE, MATTHEW E. BROOMHALL, and
ROBERT E. LOREDO
(Applicant: International Business Machines Corporation)
Appeal 2017-004174
Application 13/900,238
Technology Center 2400
Before MICHAEL J. STRAUSS, BETH Z. SHAW, and
DAVID J. CUTITTAII, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—4, 6—14, 16—19, and 21, all of the pending claims
of the application.1 This appeal is related to an appeal (2017-004176) for
co-pending application 13/898,342. Appeal Br. 3. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
1 Claims 5, 15, and 20 are canceled. Appeal Br. 4.
Appeal 2017-004174
Application 13/900,238
STATEMENT OF THE CASE
According to Appellant, the application relates to “embedding
actionable content in electronic messages.” Spec. 12.2 Claims 1, 9, and 16
are independent. Claim 1 is representative and is reproduced below with
disputed limitations italicized:
1. A method for embedding actionable content in an
electronic communication, comprising, with an embedding
system:
in response to detecting that a user has indicated an
electronic message is to be sent by a first computing device to a
second computing device, identifying specific service identifiers
in said electronic message with a service machine, the specific
service identifier being unique to a particular electronic message
relative to all other identifiers used for other electronic
messages;
associating an embedding gadget with electronic message,
the embedding gadget being generated by a gadget generator of
the embedding system based on a comparison of the electronic
message with a number of previous electronic messages; and
modifying said electronic message based on said
embedding gadget,
wherein modifying said electronic message based on said
embedding gadget comprises:
retrieving content of an embedded actionable
content from a network; and
embedding the content associated with the
actionable content into the body of the electronic message,
2 This Decision refers to: (1) Appellant’s Specification filed May 22, 2013
and subsequent amendments on February 24, 2015 (Spec.); (2) the Final
Office Action (Final Act.) mailed March 24, 2016; (3) the Appeal Brief
(Appeal Br.) filed July 14, 2016; (4) the Examiner’s Answer (Ans.) mailed
November 23, 2016 and (5) the Reply Brief (Reply Br.) filed January 17,
2017.
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Appeal 2017-004174
Application 13/900,238
wherein the actionable content comprises
functionality within the electronic message based on the
content retrieved from the network.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal includes:
Ji et al. (“Ji”)
Thurlow et al.
(“Thurlow”)
Schatz et al. (“Schatz”)
Burkholder et al.
(“Burkholder”)
Agrawal et al.
(“Agrawal”)
Craddock et al.
(“Craddock”)
US 5,889,943
US 6,457,879 B1
US 2005/0097176 Al
US 2007/0038717 Al
US 7,890,591 B2
US 2011/179362 Al
REJECTIONS
Mar. 30, 1999
Oct. 1,2002
May 5, 2005
Feb. 15,2007
Feb. 15,2011
July 21, 2011
(1) Claims 1—3, 6—9, 12, 13 and 16—21 stand rejected under
35 U.S.C. § 103 as unpatentable over the combination of Craddock and
Burkholder. Final Act. 11—26.
(2) Claim 4 stands rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Craddock, Burkholder, and Schatz. Final Act. 26—
28.
(3) Claim 10 stands rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Craddock, Burkholder, and Ji. Final Act. 28—29.
(4) Claim 11 stands rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Craddock, Burkholder, and Thurlow. Final
Act. 29-30.
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Application 13/900,238
(5) Claim 14 stands rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Craddock, Burkholder, and Agrawal. Final
Act. 30-31.
(6) Claims 1—4, 6—14, 16—19, and 21 are provisionally rejected on
the ground of non-statutory double patenting over claims 1—13 and 15—20 of
copending Application No. 13/898,342. Final Act. 3—11.
Our review in this appeal is limited only to the above rejections and
issues raised by Appellant. Arguments not made are waived.
See MPEP § 1205.02; 37 C.F.R. §§ 41.37(c)(l)(iv) and 41.39(a)(1).
ISSUE
1. Does the Examiner err in finding the combination of Craddock and
Burkholder teaches or suggests “the specific service identifier being unique
to a particular electronic message relative to all other identifiers used for
other electronic messages,” as recited in claim 1?
CONTENTIONS AND DISCUSSION
We disagree with Appellant’s contentions with respect to independent
claim 1 and we adopt as our own (1) the Examiner’s findings and reasoning
set forth in the Office Action from which this appeal is taken (Final Act. 12—
15) and (2) the Examiner’s reasoning set forth in the Examiner’s Answer
(Ans. 4—9). We highlight the following points for emphasis.
The Examiner finds Burkholder’s unique variable ID (i.e., identifier)
teaches the “specific service identifier” of claim 1. Appeal Br. 13—14 (citing
Burkholder || 7, 41).
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Application 13/900,238
Appellant argues the “unique identifier of Burkholder identifies a
recipient in order to personalize the email, and is not a ‘specific service
identifier being unique to a particular electronic message.'''’'’ Appeal Br. 13.
We find this argument unpersuasive because we agree with the
Examiner’s finding that “Burkholder teaches that the unique ID ... is a
unique parameter within a distributed email that contains proper variables
for FLASH users and HTML users, or any appropriate format for example
and is particular to an electronic communication relative to other identifiers
used for communicating with other recipients.” Ans. 8 (citing Burkholder
11 17, 53,54, 95.)
Appellant fails to proffer sufficient evidence to establish why the term
unique, used to describe the variable ID included within each of
Burkholder’s emails, is insufficient to teach or suggest that each email
includes a different identifier. For example, one paragraph of Burkholder
cited by the Examiner states, in part, that “the mass emails and distributed
rich media contain a unique variable ID (i.e., identifier) that determines all
of the proper components and data for each recipient.” Ans. 8 (citing
Burkholder 1 53).
Accordingly, we agree the Examiner’s findings from Burkholder
teach a “specific service identifier,” as recited in claim 1. Cumulative to the
Examiner’s findings and without reliance in reaching our decision, we
highlight additional teachings from Burkholder that support the Examiner’s
position. For example, in describing user interaction with a FLASH email to
purchase products from an online retailer, Burkholder states “[u]pon
selection of one of these menu items, a request is transmitted to the query
response module with a unique ID assigned to the email.'’'’ Burkholder 1 65,
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emphasis added. In addition, in describing Figure 3’s flow diagram of a
process executed by one or more server modules for implementing a mass
email, Burkholder indicates that “[i]n step 112, the email is transmitted to
the recipient in the determined output format, with a unique ID (i.e.,
identifier) associated with the email.” Burkholder 172. In view of the
above, we find unpersuasive of Examiner error Appellant’s argument that
the unique identifier of Burkholder identifies a recipient and so is not a
specific service identifier unique to a particular electronic message.
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 1. Appellant provides similar arguments for independent claims 9 and
16 and so the rejection of these claims is sustained for similar reasons.
Dependent claims 2—4, 6—8, 10-14, 17—19, and 21 are not argued separately,
and thus, fall with their respective independent claims. Appeal Br. 17.
Obviousness-type Double Patenting Rejections
The Examiner provisionally rejects all of the claims on appeal for
obviousness-type double patenting based on claims 1—13 and 15—20 of U.S.
Patent Application No. 13/898,342. Final Act. 3—11.
Appellant does not provide arguments disputing this rejection in the
Appeal Brief. Appeal Br. 11; see also Ans. 3^4. Accordingly, we affirm
this rejection pro-forma.
DECISION
We affirm the Examiner’s decision rejecting claims 1—4, 6—14, 16—19,
and 21 under 35 U.S.C. § 103.
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Application 13/900,238
We summarily affirm the Examiner’s double patenting rejection of
claims 1—4, 6—14, 16—19, and 21.
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)(iv).
AFFIRMED
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