Ex Parte Dietz et al

Patent Trial and Appeal Board

Oct 18, 2017

11255143 (P.T.A.B. Oct. 18, 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.
11/255,143 10/20/2005 Timothy Alan Dietz AUS920050552US1 5030
32329 7590 10/20/2017
IBM CORPORATION
INTELLECTUAL PROPERTY LAW
11501 BURNET ROAD
AUSTIN, TX 78758
EXAMINER
OHBA, MELLISSA M
ART UNIT PAPER NUMBER
2164
NOTIFICATION DATE DELIVERY MODE
10/20/2017 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):
attm@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY ALAN DIETZ, WALID KOBROSLY, and
NADEEM MALIK
Appeal 2015-007071
Application 11/255,143
Technology Center 2100
Before CAROLYN D. THOMAS, BRADLEY W. BAUMEISTER, and
DAVID J. CUTITTAII, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1, 2, 8, 9, and 21—24, all the pending
claims in the present application.1 Claims 3—7 and 10-20 are canceled. See
App. Br. 2 and Claims Appendix. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Examiner denied entry of the after final amendment on October 13,
2014. Thus, claims 1 and 2 remain pending. See Notification of Non-
Compliant Appeal Brief dated November 4, 2014; See also Advisory Action
dated October 21, 2014.
Appeal 2015-007071
Application 11/255,143
The present invention relates generally to transforming selected
sections of a web document into e-mail messages. See Abstract.
Claim 8 is illustrative:
8. In a World Wide Web (Web) network of computer
controlled displays, a method for transmitting a designated portion of
a received Web document by electronic mail to destinations on a Web
network comprising:
creating an electronic mail message;
storing said electronic mail message;
displaying a received network Web document;
enabling a user to define a portion of the content of said
displayed document;
enabling a user to transform the defined portion of said
document into the body of said stored electronic mail message; and
transmitting said electronic mail message to at least one
destination on said Web network.
Appellants appeal the following rejections:
Claims 1, 2, 8, 9, and 21—24 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hoffman (US 2006/0277482 Al, Dec. 7, 2006),
Microsoft Office Outlook, https://office.micrsoft.com/en-
us/outlook/HP052428051033.aspx (Last visited April 21, 2008), and Ong
(US 2004/0257346 Al, Dec. 23, 2004) (Ans. 2).
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
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Appeal 2015-007071
Application 11/255,143
ANALYSIS
Rejection under § 103(a)
Issue: Did the Examiner err in finding that the cited art collectively
teaches or suggests enabling a user to transform the defined portions of said
document into the body of said stored electronic mail message, as set forth
in claim 8?
Appellants contend that “Ong fails to teach this combination of
elements or how it would be obvious to combine such elements with the
limited disclosure of Hoffman so as to teach the present invention” (App.
Br. 10). Appellants further contend that “when Ong emails the ‘captured
image,’ it only suggests the equivalent of emailing the captured image in a
photograph as an attachment to an email. There is nothing further in Ong to
suggest any transformation of the captured content into the body of a stored
email massage” (id. at 11).
The Examiner finds that “[t]he combination of Hoffman and the
function of Outlook[’s] save message discloses the claimed steps of creating
an electronic email and storing (saving) the electronic mail and enabling a
portion of content to be inserted into the saved electronic message” (Ans. 3).
The Examiner further finds that Ong’s teachings add to Hoffman and
Outlook being “able to ‘transform’ a defined portion of a webpage into the
body of an electronic mail message” (id.). We agree with the Examiner.
As an initial matter, we highlight that in a prior decision, i.e., Appeal
No. 2010-010346 (dated May 29, 2013) hereinafter Prior Decision, we
found that Hoffman does not anticipate the claimed invention. Specifically,
we found “Hoffman’s generating an electronic mail message does not
expressly disclose a transformation into a previously stored electronic mail
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Appeal 2015-007071
Application 11/255,143
message because Hoffman describes inserting the selected portions into a
newly generated electronic mail message” (Prior Decision 4). We further
found that “[t]o the extent that this limitation would have been obvious over
Hoffman or Hoffman and another reference . . . however, are questions that
are not before us; we will not speculate in that regard here in the first
instance on appeal” {id. at 5).
However, before us now is an obviousness rejection over the
combination of Hoffman, Microsoft Outlook, and Ong {see Ans. 2).
Specifically, as noted supra, the Examiner finds, and we agree, that the
combined teachings of Hoffman’s inserting selected portions of a document
into a newly generated electronic mail message and Outlook’s saved
message function teaches the claimed enabling a portion of content to be
inserted into the saved electronic message {see id. at 3). The Examiner
further finds that Ong teaches being able to “‘transform’ a defined portion of
a webpage into the body of an electronic mail message” {id.), similar to the
teachings in Hoffman.
Although Appellants contend that Ong “only suggests ... an
attachment to an email [and] [t]here is nothing further in Ong to suggest any
transformation of the captured content into the body of a stored email
massage” (App. Br. 11), we emphasize that Hoffman is being used to teach
transformation into the body of an email {see Hoffman | 86) and Microsoft
Outlook is being used to teach a save/store function for email. Thus,
Appellants’ argument against Ong separately from Hoffman and Microsoft
Outlook does not persuasively rebut the combination made by the Examiner.
One cannot show non-obviousness by attacking references individually,
where the rejections are based on combinations of references. In re Merck
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Appeal 2015-007071
Application 11/255,143
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d
413,425-26 (CCPA 1981).
Furthermore, Appellants have not shown where Ong “only” suggests
an attachment to an email. Rather, Ong’s teaching is cumulative to
Hoffman’s teachings in that Ong broadly discloses that “[t]he email feature
permits users to easily share information by emailing the captured image and
any annotations” (1 58). Thus, Ong’s disclosure is not limited to emailing
attachments. In fact, Ong’s Figure 6 illustrates an image being placed in the
body of the email (see Fig. 6).
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 8. Appellants’ arguments regarding the Examiner’s rejection of
independent claims 1,21, and 23 rely on the same arguments as for claim 8,
and Appellants do not argue separate patentability for these other claims.
See App. Br. 8—12. We, therefore, also sustain the Examiner’s rejection of
claims 1, 2, 9, and 21—24.
DECISION
We affirm the Examiner’s § 103(a) rejection of claims 1, 2, 8, 9 and
21-24.
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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