Ex Parte Gearhart et al

Patent Trial and Appeal Board

Mar 20, 2018

12913475 (P.T.A.B. Mar. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/913,475 10/27/2010
46321 7590 03/22/2018
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Rob A. Gearhart
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.
CAM920100028US1 (260) 3954
EXAMINER
BLOOMQUIST, KEITH D
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
03/22/2018 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROB A. GEARHART, LIAM HARPUR,
MARK KELLY, and JOHN RICE
Appeal2017-010751
Application 12/913 ,4 7 5
Technology Center 2100
Before JOHNNY A. KUMAR, HUNG H. BUI, and KEVIN C. TROCK,
Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 4--7, 10-14, and 17-20. Claims 2, 3, 8, 9, 15, and 16 have been
cancelled. Claims App'x. 11, 13, 15. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm. 1
1 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Final Office Action ("Final Act.") mailed Feb. 26, 2016, the
Appeal Brief ("App. Br.") filed Mar. 22, 2017, the Answer ("Ans.") mailed
June 16, 2017, and the Reply Brief ("Reply Br.") filed Aug. 16, 2017, for the
respective details. We have considered in this Decision only those
arguments Appellants actually raised in the Briefs. Any other arguments
Appellants could have made but chose not to make in the Briefs are deemed
to be waived. See 37 C.F.R. § 41.37(c)(l)(vii).
Appeal2017-010751
Application 12/913,475
STATEMENT OF THE CASE
Claim 1 is representative of the invention and reads as follows:
1. A method for message composition management for fatigued
composers of electronic messages, the method comprising:
logging errors in different messages that are composed by a message
composer in a messaging client executing in memory of a computer and
subsequently transmitted by the messaging client;
computing a number of the logged errors;
detecting a request by the message composer to transmit a new
message to a designated recipient in the messaging client;
computing a fatigue quotient for the message composer based upon
the computed number of the logged errors for the different messages but not
the new message; and,
diverting the message to a drafts folder instead of transmitting the
message if the fatigue quotient exceeds a threshold value.
App. Br. 11 (Claim App'x.).
Examiner's Rejections & References
(1) Claims 1, 4, 7, 10, 14, and 17 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Gmail new features - Mail Goggles,
published by The WWW Blog on 10/7 /2008 ("Mail Goggles"), Coughlan, et
al., US 8,041,344 B 1; issued Oct. 18, 2011 ("Coughlan"), and Stut, et al.,
US 2010/0021873 Al; published Jan. 28, 2010 ("Stut").
(2) Claims 6, 12, and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mail Goggles, Coughlan, Stut, and Fein, et al., US
2009/0089390 Al; published Apr. 2, 2009 ("Fein").
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Appeal2017-010751
Application 12/913,475
Issue on Appeal
Did the Examiner err in finding that the combination of Mail Goggles,
Coughlan, and Stut teaches or suggests: "computing a fatigue quotient for
the message composer based upon the computed number of the logged errors
for the different messages but not the new message" (hereinafter "fatigue
quotient" feature), as set forth in independent claim 1, and similarly recited
in independent claims 7 and 14?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
contentions that the Examiner has erred. Further, we have reviewed the
Examiner's response to claims 1, 4, 7, 10, 14, and 17 that has been argued
by Appellants. App. Br. 5-8; Reply Br. 2-10. We are unpersuaded by
Appellants' contentions. We adopt as our own (1) the findings and reasons
set forth by the Examiner in the action from which this appeal is taken and
(2) the reasons set forth by the Examiner in the Examiner's Answer in
response to Appellants' Appeal Brief. Ans. 8-10. However, we highlight
and address specific findings and arguments for emphasis as follows.
In support of the obviousness rejection, the Examiner finds:
Mail Goggles teaches a method for message composition
management for fatigued composers of electronic messages,
compnsmg:
• detecting a request by the message composer to transmit a new
message to a designated recipient in a messaging client (p. 2, methods
are implemented in a Gmail email client, which executes on one or
more computers when accessed by a user; p. 3 describes that user
fatigue is determined after a user selects to send a message); and
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Appeal2017-010751
Application 12/913,475
• computing a fatigue quotient for the message composer; and
diverting the message to a drafts folder instead of transmitting the
message ifthe fatigue quotient exceeds a threshold value (p. 2, Mail
Goggles determines fatigue through puzzle solving; a user is required
to solve puzzles in a set time to send a message; if an error threshold
is exceeded and puzzles aren't solved, the message is saved in a drafts
folder).
Coughlan, in view of Stut teaches logging errors in different
messages that are composed by a message composer in a messaging
client executing in memory of a computer and subsequently
transmitted by the messaging client; computing a number of the
logged errors; and computing a fatigue quotient based upon the
computed number of the logged errors for different messages but not
the new message.
Final Act. 2-3 (emphasis ours).
Appellants acknowledge:
1. Mail Google at page 2 determines fatigue through puzzle solving
which an end user must complete within a threshold time in order
to send a message. If an error threshold is exceeded and the
puzzles are not solved, the message is saved in a drafts folder.
2. Coughlan refers to the diversion of message when the message is
determined to have a threshold number of errors beyond a baseline
number for the user previously determined.
3. Stut provides for determining user fatigue by counting errors over
time in order to specify a baseline error rate for the user.
4. "The log excludes the current message as described in Coughlan,
which compares a current message to a baseline error rate in a
messaging system."
App. Br. 5---6. Appellants argue, however, the combination of Mail Goggles,
Coughlan, and Stut fails to teach the claimed fatigue quotient feature, i.e.,
"the fatique quotient for the message composer is computed based on the
computed number of the logged errors for the different messages but not the
new message" (App. Br. 6-8; Reply Br. 2-10).
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Appeal2017-010751
Application 12/913,475
We are not persuaded by Appellants' argument. At the outset, we
note the reference to the negative limitation "for the different messages but
not the new message" was added to independent claims 1, 7, and 14 by
Appellants in an effort to distinguish over the cited prior art in an
Amendment filed on December 28, 2015. In that Amendment, Appellants
cited paragraph 19 of the Specification as support for such a limitation. See
Amendment 10. However, as correctly recognized by the Examiner, the
negative claim limitation is not supported by Appellants' disclosure. Ans.
7-8. The cited paragraph 19 of Appellants' Specification only (1) describes
the fatigue quotient as being computed based on the previously computed
number of errors and (2) does not "describe a reason to exclude the relevant
limitation." Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351
(Fed. Cir. 2012). As such, we find there is no basis in the cited paragraph of
Appellants' Specification for adding the negative limitation and accord no
patentable weight to the negative limitation.
When the reference to "the different messages but not the new
message" is not accorded any patentable weight, we agree with the
Examiner's finding that the combination of Mail Goggles, Coughlan, and
Stut teaches or suggests every recited element of representative claim 1,
including the fatigue quotient feature as discussed above. 2 For example, the
Examiner explains:
The Board is respectfully directed to Col. 2 line 45 to
Col. 3, line 42 of Coughlan. An embodiment of the invention is
broadly described (and ... whereby a user is determined to be
impaired based on monitoring user messages to detect an impaired
2 Separate patentability is not argued for claims 4--7, 10-14, and 17-20.
App. Br. 5-9.
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Appeal2017-010751
Application 12/913,475
state. The user device can be switched to a mode which, among other
things, will send all future messages in a text messaging client to a
draft folder for a specified period of time. A user who tries to
send a new message while this mode is active - and the mode can
remain active for several hours - will have that new message and any
other new messages that the user attempts to send during that time
period sent to a draft folder instead of being transmitted.
The entering of this mode is based solely on fatigue determined
by calculations carried out based on errors made in messages
previously written. excluding any errors which may exist in the new
message. Therefore, the prior art clearly teaches that a request to
transmit a message is made, a fatigue quotient is computed based only
on logged errors for previous messages. and the message is diverted
to drafts ifthe determination has been made that the error rate. and
hence the fatigue quotient. is too high.
Ans. 10 (emphasis ours).
We agree with the Examiner's explanations
that the combination of Mail Goggles, Coughlan, and Stut teaches or
suggests the fatigue quotient feature as discussed above .
Therefore, Appellants have not shown reversible error in the
Examiner's rejection of claims 1, 4--7, 10-14, and 17-20.
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Appeal2017-010751
Application 12/913,475
DECISION3
We affirm the Examiner's rejection of claims 1, 4--7, 10-14, and 17-
20 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(v).
AFFIRMED
3 We note claim 14 recites a computer-readable storage medium having
computer readable program code. Appellants' Specification is devoid of any
definition of "computer readable storage medium" and fails to expressly
limit the term "computer readable storage medium" to exclude signals,
carrier waves, etc. Thus, interpreting "computer readable storage medium"
broadly, but reasonably, in light of Appellants' Specification, the term
"computer readable storage medium" encompasses transitory propagating
signals. See Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013)
(precedential) (expanded panel) (holding recited computer-readable storage
medium ineligible under§ 101 since it encompasses transitory media). A
signal is not within one of the four categories of patentable subject matter as
defined under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed.
Cir. 2007). See also Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013)
(precedential); Manual of Patent Examining Procedure ("MPEP") § 2106(I),
8th ed., Rev. 9 (Aug. 2012). In the event of further prosecution, the
Examiner should ascertain whether claims 14 and 17-20 should be rejected
under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
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