Ex Parte Bastide et al

Patent Trial and Appeal Board

Oct 4, 2017

13898342 (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.
13/898,342 05/20/2013 Paul R. Bastide RSW920130054US1 3072
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 2017-004176
Application 13/898,342
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—13 and 15—20, all of the pending claims of the
application.1 This appeal is related to an appeal (2017-004174) for co­
pending application 13/900,238. Appeal Br. 3. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Claim 14 is canceled. Appeal Br. 4.
Appeal 2017-004176
Application 13/898,342
STATEMENT OF THE CASE
According to Appellant, the application relates to “embedding
actionable content in electronic messages.” Spec. 12.2 Claims 1, 9, and 17
are independent. Claims 1, 4, and 9 are representative and are reproduced
below with disputed limitations italicized:
1. A computer program product for embedding actionable
content in electronic communication, comprising:
a computer readable storage device comprising computer
readable program code embodied therewith, said computer
readable program code comprising program instructions that,
when executed, causes a processor to:
associate an embedding gadget with an electronic
message; and
modify said electronic message based on said embedding
gadget, wherein modification of said electronic message
comprises:
retrieving content of an embedded actionable
content from a network;
embedding the content associated with the
actionable content into the body of the electronic message
by replacing a body of the electronic message with user-
interactionable content comprising a URL pointing to said
embedding gadget associated with the electronic message;
responsive to a user selection of the user-
interactionable content, presenting the user-
interactionable content in the electronic message without
navigating away from the electronic message,
2 This Decision refers to: (1) Appellant’s Specification filed May 20, 2013
and subsequent amendments on November 26, 2014 (Spec.); (2) the Final
Office Action (Final Act.) mailed December 9, 2015; (3) the Appeal Brief
(Appeal Br.) filed April 8, 2016; (4) the Examiner’s Answer (Ans.) mailed
November 22, 2016 and (5) the Reply Brief (Reply Br.) filed January 17,
2017.
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wherein the user-interactionable content comprises
functionality within the electronic message based on the content
retrieved from the network.
4. The computer program product of claim 3, wherein said
attributes of said service mail messages comprises a retum-to
function in said electronic message is unaddressed or set to other
email addresses, a lookup table that includes said service mail
message for said electronic message, and templates in said
electronic message.
9. A system for embedding actionable content in an
electronic communication, comprising:
a detection engine to detect that an electronic message has
been sent;
an identification engine to identify specific service
identifiers in said electronic message, the specific service
identifier being unique to a particular electronic message
relative to all other identifiers used for other electronic
messages;
an association engine to associate an embedding gadget
with said electronic message;
and
a modification engine to modify said electronic message
based on said embedding gadget, the embedding gadget
embedding user-interactionable content within the electronic
message by replacing a portion of a body of the electronic
message with said user-interactionable content before receipt of
the electronic message by a recipient, the user-interactionable
content comprising a URL pointing to said embedding gadget
associated with said electronic message and said specific service
identifiers.
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal includes:
Ji et al. (“Ji”) US 5,889,943 Mar. 30, 1999
Thurlow et al. US 6,457,879 B1 Oct. 1,2002
(“Thurlow”)
Burkholder et al. US 2007/0038717 Al Feb. 15,2007
(“Burkholder”)
Agrawal et al. US 7,890,591 B2 Feb. 15,2011
(“Agrawal”)
Nesladek et al. US 2011/0099507 Al Apr. 28, 2011
(“Nesladek”)
Craddock et al. US 2011/179362 Al July 21, 2011
(“Craddock”)
Byrne et al. (“Byrne”) US 2012/0290945 Al Nov. 15,2012
Shalabi et al. (“Shalabi”) US 2013/0030922 Al Jan. 31,2013
REJECTIONS
(1) Claims 1—3 and 7—8 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Craddock and Byrne. Final Act. 5—11.
(2) Claim 4 stands rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Craddock, Byrne, and Nesladek. Final Act. 11—12.
(3) Claims 5, 6, 9, 12, 13, and 16 stand rejected under 35 U.S.C.
§ 103 as unpatentable over the combination of Craddock, Byrne, and
Burkholder. Final Act. 12—19.
(4) Claim 10 stands rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Craddock, Byrne, Burkholder, and Ji. Final
Act. 19-20.
(5) Claim 11 stands rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Craddock, Byrne, Burkholder, and Agrawal. Final
Act. 20-21.
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(6) Claim 15 stands rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Craddock, Byrne, Burkholder, and Thurlow. Final
Act. 22-23.
(7) Claims 17, 18, 19 and 20 stand rejected under 35 U.S.C. § 103
as unpatentable over the combination of Craddock, Burkholder, and Shalabi.
Final Act. 23—27.
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).
ISSUES
1. Does the Examiner err in finding the combination of Craddock and
Byrne teaches or suggests “responsive to a user selection of the user-
interactionable content, presenting the user-interactionable content in the
electronic message without navigating away from the electronic message,
wherein the user-interactionable content comprises functionality within the
electronic message based on the content retrieved from the network,” as
recited in claim 1 ?
2. Does the Examiner err in finding the combination of Craddock,
Byrne, and Nesladek teaches or suggests “attributes of said service mail
messages comprises . . . templates in said electronic message,” as recited in
claim 4?
3. Does the Examiner err in finding the combination of Craddock,
Byrne, 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 9?
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CONTENTIONS AND DISCUSSION
We disagree with Appellant’s contentions, 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. 5—13) and (2) the Examiner’s
reasoning set forth in the Examiner’s Answer (Ans. 5—17). We highlight the
following points for emphasis.
Issue 1
The Examiner finds independent claim 1 is obvious over the
combination of Craddock and Byrne. Final Act. 5—9. Specifically, the
Examiner finds Craddock teaches “responsive to a user selection of the user-
interactionable content, presenting the user-interactionable content in the
electronic message without navigating away from the electronic message,”
as recited in claim 1.
Appellant argues the Examiner’s finding is erroneous because
“Craddock simply provides for execution of another application which
causes the associated computing device to navigate away from the electronic
message when a user selects the interactive view of Craddock.” Appeal
Br. 15.
We find Appellant’s arguments unpersuasive of error. As an initial
matter we note that although claim 1 recites “presenting the user-
interactionable content in the electronic message without navigating away
from the electronic message,” the claim is not limited to presenting all
content without navigating away. That is, a broad but reasonable
interpretation of the claim merely requires presenting some content without
navigating away.
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The Examiner notes that Craddock teaches fetching some content
from third party platform 70. Ans. 7. The Examiner also finds Craddock
teaches using metadata embedded within the email to display other content
such as static images. For example, the Examiner finds
once a user interacts] with the embedded metadata of Fig. 1 A
(for example accepting the networking invitation within the body
of the email), a new interactive screen is generated within the
body of the email as a response as shown in Fig. IB (see
Craddock: Paragraph 29), therefore eliminating the need to call
a separate application outside of the email application to display
the results emanating from the user’s selection. Consequently,
contrary to the Appellant’s assertions, the email agent of
Craddock does not need generate a different page or use an
application outside of the electronic message system to run the
metadata inline of the e-mail message. Instead, in the system of
Craddock, the sender includes for example metadata in the
HTML portion of the extensive email, which is used to render
the interactive and static views within the body of the extensive
email (see Craddock: Paragraphs 43 44).
Ans. 7—8.
We agree with the Examiner’s finding that Craddock’s emails include
metadata in the HTML portion, which is used to render static views within
the body of the email without navigating away. Id. Cumulative to the
Examiner’s findings from Craddock and without reliance in reaching our
decision, we highlight additional teachings from Craddock that support the
Examiner’s position. For example, in describing “the steps of a service
provider for presenting an extensible email” as shown in Figure 6, Craddock
states “if it is determined in step 360 that an email with an interactive view
was selected, the mail user agent 64 displays any static view associated with
the email in step 366 from the email metadata.” Craddock || 14, 62.
Craddock further teaches that user agent 64 may render static views within
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the email without navigating away. Id. 130 (“The extensible email may
further include a static view 56 which may be defined by the sender in the
sent email and need not be fetched by the receiving mail user agent 64.”)
Accordingly, we agree with the Examiner’s finding that Craddock
teaches “responsive to a user selection of the user-interactionable content,
presenting the user-interactionable content in the electronic message without
navigating away from the electronic message,” as recited in claim 1.
The Examiner finds Byrne teaches “wherein the user-interactionable
content comprises functionality within the electronic message based on the
content retrieved from the network,” as recited in claim 1. Final Act. 7—8
(citing Byrne 13, 17, 18).
Appellant argues
The “automatically embedded content 518” of Byrne described
at paragraph [0058] is not “user-interactionable content
compris[ing]functionality within the electronic message” as
recited in claim 1, since Byrne is silent regarding whether its
embedded content (518) contains functionality, and since no
functionality is described in connection with any type of content
embedded by the gadget of Byrne.
Appeal Br. 16.
We find Appellant’s argument unpersuasive because we agree with
the Examiner’s finding that “Byrne suggests that an extension or gadget can
be configured to provide active content features and functionality within the
framework of an electronic messaging application (see Byrne: ]]17) and
these gadget(s) and/or extension(s) include functionalities for automatically
injecting, when activated, content inline of an electronic message.” Ans. 11
(citing Byrne 17, 18, Fig. 5B, Abstract). Cumulative to the Examiner’s
findings from Byrne, we highlight additional teachings from Byrne that
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support the Examiner’s position. Byrne states “gadgets and/or the associated
functionality can be installed locally.” Byrne 116. Under a broadest
reasonable interpretation, claim l’s functionality within the email may be
interpreted to mean that the function is executed locally and without
navigating away from the email. See Spec. 61 (“Additionally, an embedding
gadget can be installed locally or accessed over a network. Further, the
embedding gadget can be designed to provide interactive content and
functionality within an electronic message.”). In addition to Figures 5B
cited by the Examiner, Figures 5C and 5D of Byrne also show content
(videos) being injected into the email body.
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 1. Dependent claims 2, 3, and 5—8 are not argued separately, and thus
fall with their respective independent claims. Appeal Br. 19—22.
Issue 2
The Examiner finds independent claim 4 is obvious over the
combination of Craddock, Byrne, and Nesladek. Final Act. 11—12.
Specifically, in finding Craddock teaches “templates in said electronic
message,” as recited in claim 4, the Examiner explains:
the personalized e-mail body to be displayed to the user
comprises a standard “static view” 56 (“From:”, “Date”, “To:”,
etc.), a default value (“Benjamin Poon” in “Benjamin Poon has
indicated you ... ) and a prompt message (“Benjamin Poon” in
the signature line) among other things as illustrated in Fig. 1 A
of Craddock, which are repeated formats in an electronic
message and are particular to each recipient and each content to
be rendered to the recipient. Although Craddock does not
explicitly uses the term “template” to identify a pre-formatted
form containing standard email messages personalization
symbols, it would be apparent to an ordinary skilled artisan that
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the email format presented in Figs. 1A, 4 and/or 10 of Craddock
include standard parameters of an electronic message which are
automatically replaced with default values based on
predetermined rules set in a mail server.
Ans. 13.
Appellant argues the Examiner’s finding is erroneous because “these
elements may not be considered templates because they are not described as
being ‘set and repeated formats in an electronic message’ (Appellant’s
specification, para. [0061]), and change or are variable between two
different emails.” Reply Br. 10.
We understand Appellant to argue that interpreting the claim term
“templates” to encompass the static view, default value, and prompt message
described by Craddock is inconsistent with Appellant’s Specification. Id.
Here, we disagree with Appellant’s characterization of the claimed templates
in the Specification as “set and repeated formats.” Reply Br. 10. Rather
than expressly limiting the term “templates,” Appellant’s Specification
simply notes that “set and repeated formats in an electronic message” may
be an example of templates, as indicated by the non-limiting term “such as”
used after “templates.” Spec. | 61. Thus, we find the static view, default
value, or prompt message described by Craddock is consistent with
Appellant’s Specification. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997). Accordingly, Appellant does not provide persuasive evidence to
rebut the Examiner’s finding that the scope of the claimed “templates,”
when read in light of Appellant’s Specification, encompasses the static view,
default value, and prompt message of Craddock. Appellant also fails to
establish Craddock’s standard parameters are “variable between two
different emails.” Reply Br. 10.
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Appellant argues for the first time in the Reply Brief that the
paragraphs of Nesladek cited by the Examiner fail to suggest “the claimed,
‘retum-to function in said electronic message is unaddressed or set to other
email addresses,’” as recited in claim 4. Reply Br. 10. That argument is
untimely and will not be considered in the absence of any good faith
showing why it could not have been timely presented in Appellant’s Appeal
Brief. 37 C.F.R. § 41.41(b)(2) (2013).
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 4.
Issue 3
The Examiner finds Burkholder’s unique variable ID (i.e., identifier)
teaches the “specific service identifiers” of claim 9. Appeal Br. 12—13
(citing Burkholder H 7, 41).
Appellant argues the “‘unique . . . identifiers’ of Burkholder identify a
recipient in order to personalize the email,” and thus is not a specific service
identifier “being unique to a particular electronic message.” Id. at 21.
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. 16 (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
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Burkholder’s emails, is insufficient to 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. 15, emphasis omitted (citing
Burkholder 1 53).
Accordingly, we agree the Examiner’s findings from Burkholder
teach “specific service identifiers,” as recited in claim 9. Cumulative to the
Examiner’s findings, 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 | 65, 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.” Id. 172. In view of
the above, we find unpersuasive of Examiner error Appellant’s argument
that the unique identifiers of Burkholder identify 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 9. Appellant provides similar arguments for independent claim 17 and
so the rejection of this claim is sustained for similar reasons. Dependent
claims 10-13, 15, 16, and 18—20 are not argued separately, and thus fall with
their respective independent claims. Appeal Br. 23—25.
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DECISION
We affirm the Examiner’s decision rejecting claims 1—13 and 15—20
under 35 U.S.C. § 103.
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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