Ex Parte Buchheit et al

Patent Trial and Appeal Board

Jul 2, 2013

10914034 (P.T.A.B. Jul. 2, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PAUL T. BUCHHEIT, BAY-WEI W. CHANG,
PETER D. MATTIS, BRIAN D. RAKOWSKI,
and TERRY A. WINOGRAD
____________________

Appeal 2011-000506
Application 10/914,034
Technology Center 2400
____________________

Before JOHN A. JEFFERY, CAROLYN D. THOMAS, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-000506
Application 10/914,034

2
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
8, 10–20, 31, 35, 36, 38–44, and 46–48. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.

Illustrative Claim
The claimed subject matter relates to the management of messages
(Spec. ¶8).
Claim 8 is illustrative and is reproduced below with key disputed
limitations emphasized:
8. A method of searching messages, comprising:
at one or more servers:
searching a message repository to identify
conversations relevant to a search query,
wherein each conversation in a subset of the
identified conversations includes a plurality of messages, the
messages sharing a common set of characteristics that meet
predefined criteria independent of the search query,
wherein the predefined criteria include a
subject of the one or more messages and information other than
the subject of the one or more messages;
creating a list of conversations representing at least
a subset of the identified conversations, each conversation in
the list being represented as a single item in the list of
conversations, at least one of the conversations in the list
comprising two or more electronic messages from distinct
senders;
identifying, for each conversation in the list of
conversations, a portion of conversation content relevant to at
least one search term of the search query; and
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producing, for concurrent display at a client, a
search result including at least the list of conversations, and the
identified portion of conversation content for each conversation
in the list of conversations.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kennedy
Sugaya
US 6,330,589 B1
US 6,665,668 B1
Dec. 11, 2001
Dec. 16, 2003
Moody US 2005/0198256 A1 Sept. 8, 2005

Rejections
The Examiner made the following rejections:
Claims 8, 15, 31, 38, and 44 stand rejected under 35 U.S.C § 101 as
claiming the same invention as claims 1, 19, 20, 38, 46, and 69 of then-
pending U.S. Pat. Appl. No. 10/914,014 (Ans. 8–9).
1

Claims 8, 10, 15, 16, 31, 38, 39, and 44 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Moody and Kennedy (Ans. 3–7).
Claims 11–14, 17–20, 35, 36, 40–43, and 46–48 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Moody, Kennedy, and Sugaya (Ans.
7–8).

ANALYSIS
We have reviewed Appellants’ arguments in the Appeal Brief and
Reply Brief, and have reviewed the Examiner’s response to Appellants’
arguments.

1
U.S. Pat. Appl. No. 10/914,014 has since issued as U.S. Pat. No.
7,818,378. Accordingly, the rejection is no longer provisional.
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Double-Patenting Rejection
Since Appellants present no arguments regarding the Examiner’s
rejection of claims 8, 15, 31, 38, and 44 under 35 U.S.C. § 101, we
summarily sustain these rejections. See MPEP § 1205.02, Rev. 9, August
2012 (“If a ground of rejection stated by the examiner is not addressed in the
appellant’s brief, that ground of rejection will be summarily sustained by the
Board”).
2

§ 103 Rejections
The dispositive issue raised by Appellants’ contentions regarding the
§ 103 rejections is whether the Examiner erred in finding the combination of
Moody and Kennedy teaches or suggests “each conversation in the list being
represented as a single item in the list of conversations, at least one of the
conversations in the list comprising two or more electronic messages from
distinct senders,” as recited in each of independent claims 8, 11, 31, and 44.
Independent claims 15 and 38 include similar limitations.
3

Moody discloses an email system that uses a threading service
(Moody ¶ 2). A search module allows a user to search a list of messages in a
number of different modes that include accessing the threading service so
that a search may return both messages that include specified search terms

2
The Examiner’s discussion of the double-patenting rejection contains an
ambiguity. Although the rejection is stated by the Examiner as a statutory
double-patenting rejection under 35 U.S.C. § 101, some general discussion
of nonstatutory double-patenting rejections is also included (Ans. 8–9).
Filing a terminal disclaimer is insufficient to overcome a statutory double-
patenting rejection. In re Vogel, 422 F.2d 438, 441 (CCPA 1970).
3
Appellants’ contentions raise additional issues. Because we are persuaded
of error with respect to the identified issue, which is dispositive of the appeal
of the § 103 rejections, we do not reach the additional issues.
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and messages identified as related by the threading service even if they do
not include the specified search terms (Moody ¶¶ 46, 50). The Examiner
identifies the set of related messages as equivalent to the “conversation”
recited in the claims (Ans. 4).
Kennedy discloses management of conversation threads with a client-
based database (Kennedy, col. 1, ll. 7–10). Of particular relevance is
Kennedy’s disclosure of a “conversation index,” illustrated in Fig. 5. A field
in the conversation index includes a unique identifier that is generated by
application of a hashing process on a “conversation root” so that all
messages derived from the same conversation root are assigned the same
identifier in the conversation index (Kennedy, col. 11, ll. 18–22).
The Examiner asserts that “the unique [identifier] is equivalent to
appellant’s single item in the list of conversations” (Ans. 11), finding that “it
would have been obvious for one of ordinary skill in the art at the time of the
invention to make a list of all unique [identifiers] in order to manage
conversation threads communicated in a client-server architecture” (Ans.
11).
The Examiner has not articulated sufficient reasoning with some
rational underpinnings to reach the limitation from the disclosures of Moody
and Kennedy. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Rather, we agree with Appellants that “[a]lthough a unique conversation
identifier in Kennedy links together the messages in a conversation, a
conversation is always displayed and stored as a list of messages, not as a
single item in a list of conversations as claimed” (Reply Br. 6).
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We therefore do not sustain the § 103 rejections of the independent
claims, nor of the claims that depend therefrom.
4

CONCLUSION
On the record before us, we conclude that the Examiner erred in
rejecting claims 8, 10–20, 31, 35, 36, 38–44, and 46–48 as unpatentable over
Moody and Kennedy, alone or in combination with Sugaya.

4
We have decided the appeal before us. However, should there be further
prosecution of claims 31, 35, 36, or 38–43, which recite a “computer
readable storage medium,” we direct the Examiner’s attention to In re
Nuijten, 500 F3.d 1346, 1356–57 (Fed. Cir. 2007) and the Director’s Memo
Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat.
Office 212 (Feb. 23, 2010) to determine whether those claims are directed to
patentable subject matter. See also Ex parte Mewherter, No. 2012-007692
(PTAB May 8, 2013) (expanded panel), available at http://e-
foia.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2012007692-05-
08-2013-4 (holding recited machine-readable storage medium ineligible
under § 101 since it encompasses transitory media). In addition, should
there be further prosecution of claim 31, which includes the apparent method
limitation of “producing …,” we direct the Examiner’s attention to IPXL
Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005)
to determine whether the claim is indefinite under 35 U.S.C. § 112, second
paragraph.
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DECISION
The Examiner’s decision rejecting claims 8, 15, 31, 38, and 44 under
35 U.S.C. § 101 is affirmed.
The Examiner’s decision rejecting claims 8, 10–20, 31, 35, 36, 38–44,
and 46–48 under 35 U.S.C. § 103(a) is reversed.
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).

AFFIRMED-IN-PART

ELD