Ex Parte Ferguson

Patent Trial and Appeal Board

Jul 16, 2013

10787925 (P.T.A.B. Jul. 16, 2013)

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.
10/787,925 02/27/2004 Tabitha Ferguson 13210-9 6691
1059 7590 07/17/2013
BERESKIN & PARR LLP/S.E.N.C.R.L., s.r.l.
40 KING STREET WEST
40th Floor
TORONTO, ON M5H 3Y2
CANADA
EXAMINER
BELANI, KISHIN G
ART UNIT PAPER NUMBER
2443
MAIL DATE DELIVERY MODE
07/17/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte TABITHA FERGUSON

________________

Appeal 2010-009696
Application 10/787,925
Technology Center 2400
________________

Before DAVID M. KOHUT, MICHAEL J. STRAUSS, and JOHN G.
NEW, Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-009696
Application 10/787,925

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SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1-24. Specifically, claims 1, 3, 4, 6,
8, 9, 11, 13, 14, 16, 17, 19, 20, and 22 stand rejected as unpatentable under
35 U.S.C. § 103(a) as being obvious over the combination of Bhogal et al.
(US 2005/0033811 A1, February 10, 2005) (“Bhogal”), Delgado et al. (US
2004/0205674 A1, October 14, 2004) (“Delgado”) and Moran et al. (US
2004/0068567 A1, April 8, 2004) (“Moran”).
Claims 2, 5, 7, 10, 12, 15, 18, 21, 23, and 24 stand rejected as
unpatentable under 35 U.S.C. § 103(a) as being obvious over the
combination of Bhogal, Delgado, Moran, and Mendez et al. (US 5,961,590,
October 5, 1999) (“Mendez”).
The Examiner has also entered a NEW GROUND of rejection with
respect to claim 22, which stands rejected as unpatentable under 35 U.S.C.
§ 101 as being directed to nonstatutory subject matter.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

NATURE OF THE CLAIMED INVENTION
Appellant’s invention is directed to a method and system for
synchronizing a draft of an email, including a computer device and a
handheld device in communication with the computer device via a wireless
communication network. Abstract.

Appeal 2010-009696
Application 10/787,925

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GROUPING OF CLAIMS

Because Appellant argues that the Examiner erred for substantially
the same reasons with respect to claims, 1-24, we select claim 1 as
representative. App. Br. 8, 16. Claim 1 recites:
1. A system for synchronizing a draft of an email, the
system comprising:

a computer device;

a handheld device in communication with the computer
device;

a saving module located in one device chosen from the
group consisting of the computer device and the handheld
device to allow a user to save an email message therein as a
draft;

a sending module in the one device for sending the draft
therefrom to the other device of the group; and

a send trigger module in the one device for issuing
instructions, which are unsolicited by the other device, that
cause the sending module to send the draft from the one device
to the other device in response to the email message being
saved as a draft;

and wherein the handheld device comprises an e-mail
sending module for sending a draft received from the computer
device to a recipient over a wireless network.

App. Br. 18.

The Examiner enters a new ground of rejection for claim 22, which
recites:
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Application 10/787,925

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22. A computer readable medium having computer
instructions for synchronizing a draft of an email message, the
instructions for performing the acts of:

saving an email message as a draft on one device chosen
from the group consisting of a computer device and a handheld
device;

sending the draft from the one device to the other device
of the group in response to commands issued by the one device
that are unsolicited by the other device, wherein the commands
are issued in response to the email message being saved as a
draft; and

sending the draft received at the handheld device from
the computing device to a recipient over a wireless network.

App. Br. 21-22.

ISSUES AND ANALYSES
Claim 1
Issue
Appellant argues that the Examiner erred in finding Delgado teaches
or suggests the limitation of claim 1 reciting “send the draft from the one
device to the other device in response to the email message being saved as a
draft.” App. Br. 8. We therefore address the issue of whether the Examiner
so erred.

Appeal 2010-009696
Application 10/787,925

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Analysis
Appellant argues that the language of the disputed limitation which
recites “in response to” requires that the sending of the draft by the one
device (to the other device as a draft, not to the recipient) be a consequence
of the email message being saved as a draft on the one device. App. Br. 8.
Appellant argues that the claimed relationship between the act of sending
the draft to the other device and the act of saving the draft is therefore one
of causality. Id.
Specifically, Appellant contends that Delgado teaches providing a
user an option to (i) save a message as a draft or (ii) send the [final]
message by selecting a corresponding button on a web form, but argues that
Delgado does not disclose that a draft is sent from one device to the other
device in response to the e-mail message being saved as a draft on the one
device. App. Br. 9. Appellant points to paragraph [0036] of Delgado,
which recites:
The e-mail message form may contain an address options block
and a send options block. The address options block and the
send options block provide addressing and sending options to
the user for the e-mail message. For example, the address
options block may include the following windows for inputting
of information by the user: “to:” (who the message is addressed
to), “subject:” (what the message is about) “cc:” (who is sent a
copy of the message in addition to the recipients in the "to:"
option) and “bcc:” (who is also sent a copy of the message but
who is not listed on the copies sent to the recipients in the “to:”
and “cc:” options). The address options block may contain an
address book link for linking to an address book database of
stored e-mail addresses and a save block that can allow a user to
save copies of the e-mail message. The send block may include
blocks for sending the message, attaching a file, saving a draft,
Appeal 2010-009696
Application 10/787,925

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clearing the e-mail form, as well as selecting signatures for the
e-mail message.

Delgado, ¶ [0036], App. Br. 9-10. Appellant contends that that the “send
block” referred to in the last sentence of paragraph [0036] refers to the
“send options block” described in the first and second sentences of the
paragraph and which is depicted as the lower portion of the web e-mail
form shown in Figures 4 and 7 of Delgado. App. Br. 11.
Delgado Figure 4 is reproduced below:

DELGADO FIG. 4
Sample email form

Appellant argues than an artisan of ordinary skill would understand
that each button in the send options block represents an independent,
mutually exclusive option that may be selected by a user. App. Br. 12.
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Appellant rejects the Examiner’s finding that “it is quite reasonable for the
[E]xaminer to interpret that Delgado et al. teach executing all the listed
actions for the ‘send block’ with a single mouse click ....” Id. (quoting
Advisory Action, August 11, 2006)(boldface in original). Appellant
contends rather that any “grouping” of options in the send options block in
Delgado is an artifact of the layout of the buttons on the form, and does not
imply the execution of different functions simultaneously being triggered
by a single user selection. App. Br. 12.
The Examiner responds that the “send” block (or button) described in
paragraph [0036] is not the same as the “send options” block described in
the same paragraph. Ans. 35. The Examiner finds that the “send” block is
one of the options included in a list of individual options (i.e., “Send,”
“Attachment,” “Save as Draft,” and “Clear”) for the “Send Options” block,
as depicted in Figs. 4 and 7. Id. The Examiner finds that paragraph [0036]
discloses that “[t]he send block may include blocks for sending the
message, attaching a file, saving a draft, clearing the e-mail form, as well as
selecting signatures for the e-mail message.” Id. (quoting Delgado, ¶
[0036]) (emphasis added). According to the Examiner, it is the “Send”
block that may include one or more of these additional options, which get
executed when a user clicks on the “Send” button shown in Figs. 4 and 7,
and that the “Send” block has been so named because it may include one or
more functionalities. Ans. 35. Therefore, finds the Examiner, Delgado
teaches or suggests saving a message as a draft and sending the message,
using a single click on the “Send” block, since multiple functions listed in
Delgado's paragraph [0036] can be coded for execution in a script
Appeal 2010-009696
Application 10/787,925

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(equivalent to appellant’s send trigger module) that will be associated with
a click of a single button. Id.
We disagree with the Examiner’s findings. Delgado explicitly
teaches a “send options block [that] provides … sending options to the user
for the e-mail message. Delgado, ¶ [0036], App. Br. 9-10. We interpret
this language to refer to the series of buttons depicted in the lower portion
of the email form depicted in Delgado’s Fig. 4, which are individually
labeled “Send,” “Attachment,” “Save as Draft,” and “Clear,” as these
buttons severally represent “sending options [provided] to the user’ as
described in paragraph [0036].
Delgado Figure 4 is reproduced below:

DELGADO FIG. 4 (detail)
“Send Options Block”

The Examiner provides no evidence from Delgado, or from the other
cited prior art (nor can we find any), that supports the Examiner’s finding
that the single button marked “Send” supports a multiplicity of functions or,
indeed, any other function other than to send the email. The other possible
functions described by Delgado’s paragraph [0036] are supported by the
other individual buttons in the send options block.
Nor do we agree with the Examiner’s finding that Moran further
supports the teachings of Delgado. Ans. 39. Moran teaches that
transferring an email draft from a desktop to a mobile device, and
automatically saving the draft to the desktop when the draft is transferred.
Id. However, Moran does not teach or suggest transmitting a draft
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whenever a draft is saved, as required by the disputed limitation. In
Moran’s invention, the saving of a document does not require the transfer of
the document from one device to another.
We therefore conclude that the Examiner erred in finding that the
combination of the cited prior art references teaches or suggests the
limitation of claim 1 reciting “send the draft from the one device to the
other device in response to the email message being saved as a draft.”
Furthermore, since we find this issue to be dispositive, we do not reach
Appellant’s additional arguments.

Claim 22
Issue
In the Examiner’s Answer, the Examiner issued a new ground of
rejection with respect to claim 22 under 35 U.S.C. § 101 as being directed
to nonstatutory subject matter. Ans. 3-4. We therefore address the issue of
whether the Examiner so erred.

Analysis
The Examiner finds that, in view of the ordinary and customary
meaning of computer-readable media, the broadest reasonable interpretation
of claim 22 includes forms of both non-transitory tangible media and
transitory propagating signals. Ans. 3. The Examiner notes that when the
broadest reasonable interpretation of a claim covers a transitory signal, the
claim must be rejected under 35 U.S.C. § 101 as covering nonstatutory
subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007)
(transitory embodiments are not directed to statutory subject matter). The
Appeal 2010-009696
Application 10/787,925

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Examiner therefore concludes that claim 22 is unpatentable under 35 U.S.C.
§ 101
Appellant replies that person of ordinary skill in the art would not
construe claim 22 to encompass transitory signals, in view of the
Specification. Reply Br. 4.
We agree with the Examiner’s reasoning and adopt it as our own.
Moreover, we accord no evidentiary weight to Appellant’s naked assertion
that an artisan of ordinary skill would not, when viewed in light of the
Specification, construe claim 22 to encompass transitory signals. See In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (Attorney arguments and
conclusory statements that are unsupported by factual evidence are entitled
to little probative value). Additionally, Appellant has not cited to any
portion of the Specification, nor do we find anywhere in the Specification, a
specific definition of the term “computer readable medium” that would
preclude the term from including a transitory signal. We therefore conclude
that the Examiner did not err in rejecting claim 22 under 35 U.S.C. § 101 as
being directed to nonstatutory subject matter.

DECISION

The Examiner’s rejection of claims 1-24 as unpatentable under 35
U.S.C. § 103(a) is reversed.
The Examiner’s rejection of claim 22 under 35 U.S.C. § 101 is
affirmed.

Appeal 2010-009696
Application 10/787,925

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TIME PERIOD FOR RESPONSE
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