Ex Parte Chakra et al

Patent Trial and Appeal Board

Aug 21, 2018

15133524 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/133,524 04/20/2016 AlChakra
112978 7590 08/23/2018
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
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.
CAM920120043US2_8150-0650 7052
EXAMINER
FAN,HUA
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AL CHAKRA, THOMAS DOLAN, JOHN RICE, and
HAMED SAKO
Appeal2018-002753
Application 15/133,524
Technology Center 2400
Before ERIC S. FRAHM, BETH Z. SHAW, and
NORMAN H. BEAMER, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 21-3 8. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Throughout this Decision we have considered the Appeal Brief filed July
24, 2017 ("App. Br."), the Reply Brief filed January 16, 2018 ("Reply Br."),
the Specification filed April 20, 2016 ("Spec."), the Examiner's Answer
mailed November 16, 2017 ("Ans.") and the Final Rejection mailed
February 22, 2017 ("Final Act.").
2 The real party in interest is IBM Corporation. App. Br. 1.
Appeal2018-002753
Application 15/133,524
INVENTION
Appellants' invention is directed to managing discussion threads
within an electronic communication system. Spec., Abstract.
Claim 21 is illustrative of the claims at issue and reproduced below:
21. A computer-implemented method, comprising:
detecting an electronic message, sent from a sender to a first
recipient, forwarded from the sender to a second recipient;
identifying, responsive to the detecting, as a virtual discussion
thread at least one additional electronic message related to the
forwarded message, exchanged between the sender and the second
recipient, that is not addressed to the first recipient;
notifying a client of the first recipient that the virtual discussion
thread exists and is correlated with the electronic message from the
sender; and
sending the virtual discussion thread to the client of the first
recipient.
REJECTIONS
The Examiner rejected claims 33-38 under 35 U.S.C. § 101 as
directed to non-statutory subject matter. Final Act. 5.
The Examiner rejected claims 21-38 under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Naick et al (US 2009/0125596 Al, pub.
May 14, 2009) (hereinafter "Naick") and Official Notice. Final Act. 6.
ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's obviousness rejections, and the Examiner's response to the
Appellants' arguments. Appellants do not proffer sufficient argument or
evidence for us to find error in the Examiner's findings. We agree with and
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adopt the Examiner's findings and conclusions in the Final Action and
Answer.
Rejection under 35 USC§ 101
Claim 33 is directed to "[a] computer program product, comprising: a
computer-readable storage medium having stored thereon program code that,
when executed by a computer hardware system, configures the computer
hardware system to perform .... " The Examiner concludes that there is no
controlling definition in the Specification of the recited computer usable
storage medium, and although the Specification discloses two type of media:
computer readable storage medium and computer readable signal medium,
they are not disclosed to be mutually exclusive. Ans. 10. As a result, the
recited "computer-readable storage medium" is presumed to include both
transitory and non-transitory media and therefore is nonstatutory. Id. We
agree with the Examiner.
Appellants contend that the term "computer-readable storage
medium" ( emphasis added) precludes claim 33 from embracing non-
statutory subject matter. See App. Br. 1 O; Reply Br. 3. Appellants argue a
distinction has been made in the Specification between a storage medium
and a signal, or "signal medium." App. Br. 11. Appellants argue:
Paragraph [0011] of the present specification begins with
the statement that "[t]he computer readable medium may be a
computer readable signal medium or a computer readable
storage medium" ( emphasis added). Paragraph [0011] then
provides a number of examples of storage mediums. Notably,
none of these examples describe a transitory, propagating signal
per se. Reference is also made to paragraph [0012], which
states "[a] computer-readable signal medium may be any
computer-readable medium that is not a computer-readable
storage medium" ( emphasis added). Therefore, the present
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specification clearly distinguishes a signal medium from a
storage medium, and thus, one having ordinary skill in the art
would not construe the claimed "storage medium" as consisting
of a transitory, propagating signal since such a construction is
unreasonable as being inconsistent with the above-identified
statement from paragraph [0012] of the present specification.
After setting forth what is considered a "storage
medium" in paragraph [0011] of the present specification,
Appellants describe a signal medium in paragraph [0012]. In
particular, paragraph [0012] includes the statement that "[a]
computer readable signal medium may include a propagated
data signal with computer readable program code embodied
therein" ( emphasis added). Thus, a clear and unmistakable
distinction has been made by Appellants between a storage
medium and a propagating signal.
App. Br. 10-11.
We are unpersuaded. "[T]hose of ordinary skill in the art would
understand the claim term 'machine-readable storage medium' would
include signals per se." Ex parte Mewherter, 107 USPQ2d 1857, 1862
(PTAB 2013) (precedential-in-part) (machine-readable storage medium non-
statutory where the Specification is silent as to meaning). The Mewherter
panel explained, "a signal with embedded data [is a storage medium] ... for
data can be copied and held by a transitory recording medium, albeit
temporarily, for future recovery of the embedded data." (Id.)
Appellants point to the written description in the Specification as
distinguishing a "computer-readable storage medium" from a propagation
medium such as a signal. App. Br. 10-11. However, the cited passages fail
to define or limit the term "computer-usable storage medium" to purely
statutory subject matter. Moreover, the Specification fails to denote that
computer-usable storage media exclude propagation media. Indeed,
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paragraph 11 states "[a]ny combination of one or more computer-readable
medium( s) may be utilized." Spec. ,r 11. As the Examiner explains, and we
agree, the computer readable storage medium and computer readable signal
medium are not disclosed as being mutually exclusive. Ans. 10.
Accordingly, giving the phrase its broadest reasonable interpretation in light
of the Specification, see In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997),
we construe the recited "computer-readable storage medium" to encompass
a transitory signal, which is non-statutory subject matter. Therefore, we
sustain the rejection of claims 33-38 as directed to non-statutory subject
matter under 35 U.S.C. § 101.
Rejections under 35 USC§ 103
Appellants argue Naick and Official Notice do not teach "'an
electronic message sent from a sender to a first recipient"' and "forwarded
from the sender to a second recipient," as recited in claim 21. App. Br. 18.
N aick expressly teaches that its "process determines if the selected
email message is a reply email message." Naick ,r 42. The Examiner finds
N aick teaches all the elements of claim 21 except that N aick does not
expressly disclose that the electronic message was forwarded by the sender
to the second recipient, and takes Official Notice that it is a known practice,
at the time of the invention, to forward a message. Final Act. 7-8 ( emphasis
added). We agree with the Examiner's findings.
The Examiner offers evidence to support taking of notice that
forwarding emails was well-known and expected in the art. Final Act. 7-8;
Ans. 11-12. Appellants do not contest that forwarding emails was well-
known and expected in the art. None of the Appellants' arguments contain
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adequate information to create on its face a reasonable doubt regarding the
circumstances justifying notice of what is well-known to one of ordinary
skill in the art. Moreover, despite Appellants' arguments to the contrary
(App. Br. 24), we see no error in the Examiner's proposed combination.
First, Appellants' arguments regarding Naick's alleged individual
shortcomings in this regard (App. Br. 22-24) are unavailing, for the
Examiner does not rely solely on Naick for teaching "detecting an electronic
message, sent from a sender to a first recipient, forwarded from the sender to
a second recipient," but rather the cited prior art collectively. See Final Act.
7-8; Ans. 11-12. Moreover, the Examiner does not rely on Official Notice
alone for teaching this element, but rather Naick and Official Notice
combined. Therefore, Appellants' arguments do not show nonobviousness
where, as here, the rejection is based on the cited references' collective
teachings. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Upon reviewing the record before us, we find that the Examiner's
suggestion for the proposed modification in the prior art suffices as an
articulated reason with a rational underpinning to establish a prima facie
case of obviousness. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). In summary, we find that an ordinarily skilled artisan at the time of
the claimed invention would have combined Naick's teachings of detecting
an electronic message sent from a sender to a first recipient and also sent to a
second recipient (see Naick ,r,r 42--43), with Official Notice that it was a
known at the time of the invention for a sender to forward a message sent to
a first recipient to a second recipient, in order to handle situation when the
first recipient is unavailable to process the message, or when the sender left
out the second recipient unintentionally when the message was sent to the
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first recipient. Final Act. 7-8. Thus, we are not persuaded of error in the
Examiner's obviousness rejection of independent claim 21.
Dependent claim 23 recites "the identifying [as a virtual thread] is
performed responsive to a determination that the first recipient has a status
of unavailable." Regarding dependent claim 23, Appellants argue the
Examiner's Official Notice was improper because, although the evidence
cited in support may teach "it [is] obvious to send a message to a sender that
an email recipient is unavailable, this does not suggest that the identification
of a virtual discussion is performed responsive to a determination that a first
recipient has a status of unavailable, as claimed." App. Br. 25. Appellants
also argue the combination ofNaick with Official Notice to reject claim 23
lacks sufficient rational underpinning. Id. However, the Examiner relies on
Naick, and not Official Notice, to teach identifying a virtual discussion
thread. Final Act. 7 (citing Naick ,r,r 47--48). The Examiner relies on
Official Notice, supported by evidence, to teach that it was known at the
time of the invention to forward an email to another recipient or device upon
detecting that the first recipient has a status of unavailable. Final Act. 8-9;
Ans. 11-12. Again, Appellants' arguments do not show nonobviousness
where, as here, the rejection is based on the cited references' collective
teachings.
We find the Examiner's proposed combination of the cited teachings
ofNaick and Official Notice is no more than a simple arrangement of old
elements with each performing the same function it had been known to
perform, yielding no more than one would expect from such an arrangement.
KSR, 550 U.S. at 416. The ordinarily skilled artisan, being "a person of
ordinary creativity, not an automaton," would be able to fit the teachings of
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the cited references together like pieces of a puzzle to predictably result in
system where a virtual discussion thread is identified response to a
determination that a first recipient has a status of unavailable. Id. at 420-21.
Because Appellants have not demonstrated that the Examiner's proffered
combination would have been "uniquely challenging or difficult for one of
ordinary skill in the art," we agree with the Examiner that the proposed
modification would have been within the purview of the ordinarily skilled
artisan. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Accordingly, we are not
persuaded of error in the Examiner's obviousness rejection of dependent
claim 23.
Appellants generally argue the Examiner's combination ofNaick with
Official Notice is improper with respect to dependent claim 25. App. Br. 26.
Not only are Appellants contentions unsubstantiated by any persuasive
evidence on this record, it is well settled that "a determination of
obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements." In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012) (citations omitted). Nor is the test for obviousness
whether a secondary reference's features can be bodily incorporated into the
structure of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA
1981 ). Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art. Id. And here, the
Examiner's proposed combination uses prior art elements predictably
according to their established functions to yield a predictable result. See
KSR, 550 U.S. at 417. The Examiner's proposed combination ofNaick with
Official Notice is supported by articulated reasoning with a rational
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underpinning to justify the Examiner's obviousness conclusion. See Final
Act. 7-9. Accordingly, we are not persuaded of error in the Examiner's
obviousness rejection of dependent claim 25.
Accordingly, for these reasons and for the reasons stated in the Final
Rejection and Answer, we sustain the§ 103 rejection of claims 21, 23, and
25. For the same reasons, we sustain the rejection of claims 22, 24, and 26-
3 8, for which Appellants present no additional arguments.
DECISION
The decision of the Examiner to reject claims 21-38 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)(l)(iv).
AFFIRMED
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