Ex Parte Chen et al

Patent Trial and Appeal Board

Apr 29, 2013

11189934 (P.T.A.B. Apr. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte YEN-FU CHEN, JOHN H. HANDY-BOSMA,
and KEITH R. WALKER
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Appeal 2010-011531
Application 11/189,934
Technology Center 2400
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Before ROBERT E. NAPPI, KRISTEN L. DROESCH, and STACEY
G.WHITE, Administrative Patent Judges.

WHITE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011531
Application 11/189,934

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SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 13, and 20-23. Claims 2-12 and 14-19 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFRIM.
STATEMENT OF CASE
Appellants describe the present invention as relating to the parsing of
email messages. (0002). Claim 1 is illustrative and is reproduced below
(disputed limitation in italics):1
1. A computer-implemented method of parsing an email,
the method comprising:
receiving an email, wherein receiving the email further
comprises determining a format of the email;
determining, by a processor, whether the email includes a
response history, wherein determining whether the email
includes the response history further comprises:
responsive to a determination that the email is text
format, searching for at least one line within the email that
begins with a number of symbols that is not followed by at least
one line that begins with fewer symbols; and
responsive to a determination that the email is markup
language format, searching for at least one tag configured to
generate a number of reply indicators that is not followed by at
least one tag configured to generate a fewer number of reply
indicators;

1 Appellants’ Claims Appendix reflects an amendment after final rejection
that was not entered by the Examiner and claim 13 as recited in the
Appendix contains an additional limitation not in any amendment.
Appellants’ October 28, 2009 Amendment was the last amendment entered
by the Examiner and as such, we refer to that Amendment for the current
pending claim language.
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responsive to a determination that the email includes the
response history, removing the response history from the email;
responsive to removing the response history from the
email, storing the response history;
responsive to a determination that the email includes the
response history, identifying a number of levels of response in
the response history to form a set of response levels;
identifying, for each response level in the set of response
levels, an embedded response, to form a set of embedded
responses; and
providing a separate link in the email to each response
level in the set of response levels and to each embedded
response in the set of embedded responses.

REJECTIONS
(1) Claims 13 and 22 stand rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
(2) Claims 1, 13, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lim (U.S. Patent No. 7,222,299 B1) and Heumesser
(U.S. Publication No. 2004/0221012 A1).
(3) Claims 21-23 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Lim, Heumesser, and Wodtke (U.S. Publication No.
2006/0143270 A1).

We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2011).
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ISSUES
Appellants’ contentions present the following issues:
(1) Did the Examiner err in rejecting claims 13 and 22 under 35
U.S.C. § 101?
(2) Did the Examiner err in finding that Lim does not teach away
from the claimed invention?
(3) Did the Examiner err in finding that Lim as modified by
Heumesser discloses “responsive to a determination that the
email is text format, searching for at least one line within the
email that begins with a number of symbols that is not followed
by at least one line that begins with fewer symbols; and
responsive to a determination that the email is markup language
format, searching for at least one tag configured to generate a
number of reply indicators that is not followed by at least one
tag configured to generate a fewer number of reply
indicators[,]” as required by claim 1?
(4) Did the Examiner err in finding that Lim discloses “responsive
to removing the response history from the email, storing the
response history” and “providing a separate link in the email to
each response level in the set of response levels and to each
embedded response in the set of embedded responses” as
recited in claim 1?
ANALYSIS
Issue One:
The Examiner rejected claims 13 and 22 under 35 U.S.C. § 101 in the
December 24, 2009 Final Rejection and the rejection is maintained in the
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Examiner’s Answer. Appellants’ Reply Brief includes argument regarding
this rejection, but their original brief fails to argue this point. “Any bases for
asserting error, whether factual or legal, that are not raised in the principal
brief are waived.” Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative); see also Optivus Tech., Inc. v. Ion Beam Appl’ns. S.A., 469
F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by an appellant in its
opening brief . . . is waived.” (citations and quotation marks omitted)).
Thus, this basis for asserting error is waived and we sustain Examiner’s
rejection of claims 13 and 22 under 35 U.S.C. § 101. See 37 C.F.R.
§ 41.41(b)(2).2
Issue Two:
Appellants aver that Lim’s disclosure of identifying quoted text by
performing a character-to-character comparison teaches away from the
claimed searching for “symbols” or “tags.” (Br. 12) We do not find this
argument persuasive. “Whether or not a reference teaches away from a
claimed invention is a question of fact.” In re Mouttet, 686 F.3d 1322, 1334
(Fed. Cir. 2012). “A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction

2 In addition to being waived, we also find Appellants’ argument
unpersuasive. Appellants state that the Examiner improperly interprets the
claims because the specification does not address carrier waves and signals
and as such, one of skill in the art would interpret these claims to exclude
non-statutory subject matter. (Reply Br. 5-6). Appellants’ argument does
not persuade us of any error in Examiner’s reasoning. We find nothing in
the claim language or the specification that limits the scope of claims 13 and
22 to a non-transitory medium. A claim that can include a carrier wave or
signal is not patentable under 35 U.S.C. § 101. See In re Nuijten, 500 F.3d
1346, 1357 (Fed. Cir. 2007).
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divergent from the path that was taken by the applicant.” In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994). We find no such teaching here.
Lim discloses the use of the “<” character to identify quoted text.
(Ans. 9 (Lim 2:49; 6:36-50)). The Examiner points out that “<” is also
disclosed in the instant application as a “symbol.” (Id. (citing Spec. 00041);
see also Br. 6 (citing Spec. 00041 in support of the searching for “symbols”
limitation)). The Examiner also cites a definition from the Microsoft
Computing Dictionary showing that terms “character” and “symbol” may be
used interchangeably by one of skill in the art. (Id.). In addition, Lim
explicitly states that there may be numerous ways to identify and compare
text. (10:1-3). Lim’s disclosure of comparing characters does not disparage
or otherwise direct one of skill in the art away from the claimed searching
for tags and symbols. Thus, we disagree with Appellants and find that Lim
does not teach away from the claimed invention. See DyStar Textilfarben
GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) (“We will
not read into a reference a teaching away from a process where no such
language exists.”).
Issue Three:
Appellants argue that Lim does not teach or suggest the following
limitations of claim 1:
responsive to a determination that the email is text
format, searching for at least one line within the email that
begins with a number of symbols that is not followed by at least
one line that begins with fewer symbols; and
responsive to a determination that the email is markup
language format, searching for at least one tag configured to
generate a number of reply indicators that is not followed by at
least one tag configured to generate a fewer number of reply
indicators
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(Br. 15). The Examiner relies on Heumesser and not Lim to disclose these
limitations (Ans. 11-12). Appellants’ original brief contains no argument
regarding Heumesser’s disclosure, and thus, any argument regarding
Heumesser is waived.3 Borden, 93 USPQ2d at 1474.
Issue Four:
Appellants argue that Lim does not disclose “responsive to removing
the response history from the email, storing the response history” or
“providing a separate link in the email to each response level in the set of
response levels and to each embedded response in the set of embedded
responses” as recited in claim 1. (Br. 13-15) Appellants contend that the
HTML markups and identifiers in Lim are not the claimed “response
history.” (Reply Br. 5). According to Appellants, Lim stores HTML
markups identifying the location of the text as opposed to their invention
which stores the text. (Br. 13). The Examiner equates the storing of Lim’s
markups and associated identifiers with the claimed storing of response
history because these markups and identifiers are used to identify the
previously viewed portions of email messages. (Ans. 10). Appellants have
not directed us to any evidence that would point to an error in the
Examiner’s reasoning. Therefore, we adopt the Examiner’s findings and
underlying reasoning, which are incorporated herein by reference.

3 In addition, we find unpersuasive Appellants’ arguments in their Reply
Brief. Heumesser discloses a method for filtering emails. (Abstract)
Appellants’ Reply Brief lacks sufficient explanation as to why they believe
Heumesser’s filtering with “user input masks” fails to render obvious the
disputed “searching” limitations of claim 1. (Reply Br. 4-5).
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For the foregoing reasons, Appellants’ arguments have not persuaded
us of error in the Examiner’s obviousness rejection of independent claims 1
and independent claims 13 and 20, which contain commensurate limitations.
Accordingly, we sustain the Examiner’s rejection of those claims and
dependent claims 21-23, which are not argued separately and fall with the
above-listed independent claims.
DECISION
The Examiner’s decision rejecting claims 1, 13, and 20-23 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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