Ex Parte Cama

Patent Trial and Appeal Board

Mar 28, 2014

12131589 (P.T.A.B. Mar. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KARL CAMA
____________

Appeal 2012-000049
Application 12/131,589
Technology Center 2400
____________

Before JOHN A. JEFFERY, DAVID M. KOHUT, and ERIC B. CHEN,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 9, 10, and 12-22. Claims 1-8 and 11 are cancelled.
We have jurisdiction under 35 U.S.C. § 6(b), and we affirm.

STATEMENT OF THE CASE
Appellant’s invention identifies and tracks grouped content in e-mail
campaigns. To this end, an instruction set is placed in an e-mail to form a
modified e-mail, where the instruction set is used to track information about
the grouped content. See generally Abstract. Claim 9 is illustrative:
9. A computer system for identifying and tracking grouped
content in e-mail campaigns, the computer system comprising:
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one or more processors, one or more computer-readable
memories, and one or more computer-readable, tangible storage
devices;
program instructions, stored on at least one of the one or more
storage devices for execution by at least one of the one or more
processors via at least one of the one or more memories, to select an
e-mail for tracking, wherein a body of the e-mail contains a grouped
content having a plurality of sections, where a section is expandable to
present additional content associated with the section, and wherein
each section comprises a summary level and a full text level;
program instructions, stored on at least one of the one or more
storage devices for execution by at least one of the one or more
processors via at least one of the one or more memories, to place an
instruction set in the e-mail to form a modified e-mail, wherein the
modified e-mail contains the grouped content having a plurality of
levels that are expandable to present additional content and
program instructions, stored on at least one of the one or more
storage devices for execution by at least one of the one or more
processors via at least one of the one or more memories, to send the
modified e-mail to a recipient, wherein the instruction set is used to
track information about the grouped content in the modified e-mail by
sending a tracking message indicating actions performed by the
recipient to a tracking device, wherein the information about the
grouped content in the modified e-mail comprises information
detailing the actions performed by the recipient, wherein an action of
the actions performed by the recipient comprises expanding a section
in the plurality of sections to view the additional content associated
with the section.
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THE REJECTIONS
The Examiner rejected claims 9, 10, 13, 14, and 16-20 under 35
U.S.C. § 103(a) as obvious over Knox (US 7,076,533 B1; issued July 11,
2006; filed Nov. 6, 2002), Patterson (US 6,751,670 B1; issued June 15,
2004), and Junkin (US 6,493,717 B1; issued Dec. 10, 2002). Ans. 5-16.1
The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as obvious
over Knox, Patterson, Junkin, and Detweiler (US 6,948,125 B2; issued Sept.
20, 2005). Ans. 17.
The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as obvious
over Knox, Patterson, Junkin, and Malik (US 2004/0078447 A1; published
Apr. 22, 2004). Ans. 17-18.
The Examiner rejected claims 21 and 22 under 35 U.S.C. § 103(a) as
obvious over Knox, Patterson, Junkin, and Ghaffar (US 6,978,316 B2;
issued Dec. 20, 2005; filed Mar. 27, 2002).

CONTENTIONS
The Examiner finds that Knox discloses various recited elements of
claim 1 including placing an instruction set in an e-mail to form a modified
e-mail. Ans. 5-6. Although the Examiner acknowledges that Knox’s
instruction set is not used to send a tracking message indicating recipient
actions to a tracking device, the Examiner cites Patterson for teaching this
feature. Ans. 6-7. The Examiner also acknowledges that these tracked
actions do not include the recipient’s expanding a section of grouped

1 Throughout this opinion, we refer to (1) the Appeal Brief filed March 9,
2011 (supplemented April 18, 2011) (“App. Br.”); (2) the Examiner’s
Answer mailed July 11, 2011 (“Ans.”); and (3) the Reply Brief filed
September 12, 2011 (“Reply Br.”).
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content, where each section comprises summary and full-text levels, but the
Examiner cites Junkin as teaching this feature in concluding that the claim
would have been obvious. Ans. 7-9.
Appellant argues that the cited prior art does not teach or suggest that
the instruction set is used to track information about the grouped content in
the modified e-mail by sending a tracking message indicating the recipient’s
actions to tracking device as claimed. App. Br. 10-16; Reply Br. 2-4.
According to Appellant, Knox’s detecting opening a modified e-mail via a
received tracking code does not track information about grouped content in a
modified e-mail as claimed, nor do Patterson and Junkin cure that
deficiency. Id. Appellant adds that combining Junkin with Knox to track
expansions of HTML-formatted hierarchical pages as the Examiner proposes
would change Knox’s principle of operation because it would not create an
image call or traverse a hyperlink—the only means by which Knox
determines whether an e-mail was opened. App. Br. 16-20; Reply Br. 3.
Appellant argues various other recited limitations summarized below.

ISSUES
I. Under § 103, has the Examiner erred by finding that Knox,
Patterson, and Junkin collectively would have taught or suggested:
(1) the instruction set is used to track information about grouped
content in a modified e-mail by sending a tracking message indicating
recipient-performed actions comprising expanding a section to view
additional content associated with the section as recited in claim 9; and
(2) program instructions to execute the instruction set responsive to
manipulating the grouped content by the recipient, where the set (a) collects
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information about the grouped content, and (b) sends the information to a
collection device as recited in claim 10?
II. Would combining the teachings of Junkin with Knox as proposed
impermissibly change Knox’s principle of operation?

ANALYSIS
Claims 9, 13, 14, and 16-20
We sustain the Examiner’s obviousness rejection of representative
claim 9 for the reasons indicated by the Examiner. Ans. 5-9, 22-27. As the
Examiner indicates, Knox’s detecting opening an email is a non-limiting
example of how a tracking code is used: the code can alternatively be used
to monitor whether the recipient clicked through on one or more hyperlinks
in the outgoing e-mail. Ans. 22-23; Knox, col. 2, ll. 44-48 (“When the
tracking code is embedded in a hyperlink in the outgoing mail, the tracking
code[] is also used to monitor whether the recipient has opened the outgoing
email and/or clicked through on one or more of the hyperlinks in the
outgoing email.”) (emphasis added).
Because links are clicked to expand and collapse group content as
shown in Junkin’s Figure 10, we see no reason why the Knox/Patterson
tracking system could not track the user’s clicking links in the e-mail to
expand sections of grouped content in addition to tracking the user’s clicking
other links in the e-mail. Nor has Appellant persuasively rebutted the
Examiner’s position that including linked grouped content, such as that
shown by Junkin, in an e-mail would have been obvious. Ans. 24. Such an
enhancement predictably uses prior art elements according to their
established functions—an obvious improvement. See KSR Int’l Co. v.
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Teleflex, Inc., 550 U.S. 398, 417 (2007). This enhancement would not
impermissibly change Knox’s principle of operation as Appellant contends
(App. Br. 16-20; Reply Br. 3), but rather enhance that operation by adding
the ability to track the user’s clicking HTML links in e-mail associated with
grouped content along with other types of embedded links. Appellant’s
arguments regarding the cited references’ individual shortcomings (see App.
Br. 11-16) are likewise unpersuasive, for such individual attacks do not
show non-obviousness where, as here, the rejection is based on the
references’ collective teachings. See In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
Appellant’s contention that the Examiner unreasonably equated the
recited tracking to Junkin’s detecting tree-view expansions is likewise
unpersuasive. Reply Br. 3-4. Notably, the Examiner relied principally on
Knox and Patterson—not Junkin—for the recited tracking limitations in
connection with the modified e-mail. See Ans. 5-7. Rather, Junkin was
cited merely to show that expanding a section of grouped content by clicking
links is known in the art, and that including such a click-based expansion in
an e-mail where user’s clicks on links in that e-mail are tracked, such as that
in the Knox/Patterson system, would have been obvious. Ans. 8-9, 23-24.
We see no error in this reasoning, particularly in view of the undisputed fact
that the user’s expansions in Junkin are detected—expansions that involve
clicking as noted above. See Reply Br. 3 (acknowledging that Junkin’s
operating system may have to detect some interaction with Junkin’s tree
view to expand the tree). Tracking these detected click-based interactions in
an e-mail using the Knox/Patterson system would have been obvious for the
reasons noted above and by the Examiner.
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Therefore, we are not persuaded that the Examiner erred in rejecting
representative claim 9, and claims 13, 14, and 16-20 not argued separately
with particularity.

Claim 10
We also sustain the Examiner’s rejection of claim 10 reciting, in
pertinent part, program instructions to execute the instruction set responsive
to manipulating the grouped content by the recipient, where the set (1)
collects information about the grouped content, and (2) sends the
information to a collection device.
Appellant does not dispute that Knox collects and sends information
about grouped content to a collection device, but rather argues that Knox’s
image call activation is not responsive to the recipient’s manipulating
grouped content as claimed. Reply Br. 4. We find this argument, as well as
Appellant’s other arguments regarding the references’ individual
shortcomings (App. Br. 20-23), unavailing for the reasons noted above and
by the Examiner. Ans. 9-10, 27-28. On this record, we see no error in the
Examiner’s position that the recited information collection and sending
would be performed responsive to the recipient’s manipulating grouped
content in an e-mail via clicking associated links, particularly when Junkin is
combined with the Knox/Patterson tracking system as noted above.

THE REMAINING OBVIOUSNESS REJECTIONS
We also sustain the Examiner’s obviousness rejections of claims 12,
15, 21, and 22. Ans. 17-21. Despite nominally arguing these claims
separately, Appellant reiterates similar arguments made in connection with
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claim 9 and alleges that the additional cited references fail to cure those
purported deficiencies. App. Br. 24-31. We are not persuaded by these
arguments, however, for the reasons previously discussed.

CONCLUSION
The Examiner did not err in rejecting claims 9, 10, and 12-22 under
§ 103.

DECISION
The Examiner’s decision rejecting claims 9, 10, and 12-22 is affirmed.
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

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