Ex Parte Khoo et al

Patent Trial and Appeal Board

Nov 13, 2014

11581980 (P.T.A.B. Nov. 13, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JUSTIN KHOO and YING XU
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Appeal 2012–001605
Application 11/581,980
Technology Center 2400
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
BART A. GERSTENBLITH, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Justin Khoo and Ying Xu (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1–17 and 19–46, the only
claims pending in the application on appeal. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented an enhancement of e-mail messages to provide
a preview mechanism, whereby senders of e-mail may provide special

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed April 13, 2011) and Reply Brief (“Reply Br.,” filed August 9,
2011), and the Examiner’s Answer (“Ans.,” mailed June 22, 2011).
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customized preview content, such as graphical messages in addition to the e-
mail content (Specification para. 2).
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added].
1. A method
of enhancing an electronic message
in a message listing
of a client application
receiving electronic messages,
the electronic messages having a message body
containing message body content,
the method comprising:
[1] incorporating into said electronic message
one or more preview instructions for preview content,
said preview instructions identifying said preview
content for retrieval and display by the client application,
the preview content comprising imagery that is
descriptive of the subject matter of the message body
content;
[2] associating by the client application
a preview trigger
with the electronic message
on said message listing
in response to said preview instructions;
[3] providing an identifier
on said message listing
to indicate that
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said electronic message has associated preview
content;
and
[4] displaying,
upon actuating said preview trigger by a user,
said preview content
in accordance with said preview instructions
within a preview window on said message listing.
The Examiner relies upon the following prior art:
Shaw US 5,809,242 Sept. 15, 1998
Bailey US 5,835,084 Nov. 10, 1998
Murphy US 2002/0033961 A1 Mar. 21, 2002
Satomi2 US 2002/0038337 A1 Mar. 28, 2002
Capiel US 6,449,634 B1 Sept. 10, 2002
Baker US 6,546,417 B1 Apr. 8, 2003
Claims 1, 2, 4, 6–9, 11, 13, 14, 19–25, 27, 29–34, 37, 39, 43, and 45
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Bailey and
Shaw.3

2 Satomi is not listed in the Evidence Relied Upon. Ans. 4. Satomi is
applied in the rejection of claim 28.

3 None of the rejections include claim 38, although claim 38 is indicated as
being rejected in the Final Rejection cover page. This omission is not
among the Appellants’ contentions and we take the omission to be a
typographic error. It is unclear which of the rejections claim 38 is meant to
fall within.
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Claims 3, 5, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bailey, Shaw, and Baker.
Claims 10, 17, 26, 35, 36, and 40–42 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bailey, Shaw, and Murphy.
Claims 12 and 44 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bailey, Shaw, and Capiel.
Claim 28 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Bailey, Shaw, and Satomi.
Claim 46 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Bailey, Shaw, Murphy, and Baker.
ISSUES
The issues of obviousness turn primarily on whether the art describes e-
mails that contain preview instructions that identify preview content.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Bailey
01. Bailey is directed to computer-implemented messaging programs–
–such as electronic mail, bulletin board systems, and paging
programs––which list messages addressed to a user. Bailey is
particularly directed to distinguishing messages to be read by the
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user from messages that have been read by the user. Bailey 1:9–
14.
02. Bailey describes its prior art as including a message window that
typically includes a list of message headers organized in
chronological order according to the time they are received. The
list often shows the sender’s name, the subject of the message, and
the time received. The list of messages will often include
messages that have been read by the user, and messages which
have not been read. There is a visual indication distinguishing
between the read and unread messages. The read/unread
indication is particularly useful because the user often wants to
focus first on the new messages, especially in high-traffic
newsgroups which may post hundreds of messages each day.
Bailey 1:30–46.
03. To read a message, the user selects the message with a highlight
bar and opens a second window containing the content of the
message. When the user finishes the message, the content-specific
window is closed and the related message header in the message
list is marked as being read. Bailey 1:47–55.
04. Some prior art messaging programs add a preview pane to the
graphical message window. The preview pane is a dedicated
portion of the message window and typically adjoins a panel
containing the list of messages. The preview pane shows the
content of the message that is highlighted by the highlight bar in
the message list. The preview pane is a convenient way for the
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user to quickly ascertain the gist of a message without having to
open a separate window. Bailey 1:56–64.
05. Bailey describes distinguishing messages to be read by a user
from messages that have been read by the user. A user launches a
messaging application (e.g., e-mail, browser, paging) by activating
a graphical message window in a graphical user interface
environment. The message window lists the messages addressed
to the user (both read and unread). The message window has a
preview pane in which a message can be viewed by a user without
opening that message into a separate message-specific window.
Bailey 2:34–43.
06. Bailey describes how a highlight bar identifies a particular
message in the list which is displayed in the preview pane.
Heuristics are employed to determine whether the user is likely to
be reading the message while it is displayed in the preview pane.
For instance, one heuristic is whether the user scrolls the message
in the preview pane. Scrolling is evidence that the user is likely to
be reading the message. Another heuristic is whether the entire
message is visible in the preview pane for a selected time period
(e.g., 2–5 seconds). This behavior indicates that the user is likely
to have read the message while depicted. If any heuristic
condition is met, the message is marked as read. Bailey 2:44–55.
07. Bailey describes how the preview pane becomes a quick tool to
perusing messages without having to explicitly open the message
into its own separate window. By using heuristics, the method
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more intelligently reflects the user’s reading pattern, leaving those
messages that are likely to be unread indicated as being unread
while marking as read those messages that are likely to have been
read. Bailey 2:56–62.
08. Bailey describes how a message application organizes messages
addressed to the user and presents them in an ordered fashion.
Examples of the message application include an electronic mail
(e-mail) program, a paging program, and a bulletin board
program. Bailey 3:60–66.
09. Bailey describes how an explicit action that causes the message to
be marked as read occurs when the user explicitly opens the
message. If the message is opened (i.e., the “yes” branch from
step 76), the user is assumed to be reading the message and the
mark__as__read flag is set to TRUE (step 78); otherwise, the flag
remains FALSE. Other than this explicit action, there are other
implicit heuristics which the computer monitors. Any one of
these implicit heuristic conditions might be sufficient to conclude
that the user has in fact read the highlighted message. One
implicit heuristic is whether the user has scrolled the message
while it is displayed in the preview pane (step 80). Scrolling
evidences that the user has purposefully sought to view more of
the message within the preview pane, thereby indicating that the
user has read the message. If scrolling occurs, the
mark__as__read flag is set to TRUE (step 78); otherwise, the flag
remains FALSE. Bailey 5:39–60.
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Shaw
10. Shaw is directed to an electronic mail system that displays
advertisements to remote users, and in particular, to a system that
displays targeted advertisements to remote users when the users
are off-line. Shaw 1:8–11.
11. Shaw describes how advertisements may include community
service messages, system information messages, colorful and
pleasing artwork, photographic works, logos, slogans and the like.
The client allows the user to select a particular advertisement to
have displayed additional information relating to the
advertisement. This additional information is also stored locally,
and can be displayed to the user when the client program is off-
line and not connected to the server system. An advertisement
may include a “more information” button, that when selected, a
predetermined message requesting further information is prepared
and communicated to the server system when the client program
next connects to the server system. At that or a later time,
additional related information is sent by e-mail to the user who
made the request. Shaw 5:49–6:8
12. Shaw describes how banner advertisements may be interactive.
For example, by clicking on the banner advertisement, the user
may be provided with further information concerning the subject
matter of the current banner advertisement. By clicking on the
banner advertisement, the user may be provided with an e-mail
message template to create an e-mail message, having the
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addressee already filled in with the e-mail address of a company
associated with the subject matter of the current banner
advertisement. Shaw 13:48–60.
ANALYSIS
We are persuaded by the Appellants’ argument that the e-mails in Shaw
do not contain preview instructions that identify preview content, as
claimed. App. Br. 20. Any preview instructions described by Shaw are in
Shaw’s application, not in the e-mail content. The Examiner makes no
findings otherwise. All of the portions Examiner cites simply show Shaw’s
application performing the preview steps.
The Examiner’s response at Ans. 39–41 concludes that the e-mail in
Bailey does contain preview instructions that identify preview content.
Ans. 39. But the Examiner then tellingly finds that the “columns and
abstract show an email application having inherent instructions to improve
the method for previewing an email message that have message body
content using the application.” Id. (emphasis added). All of the independent
claims require the preview instructions to be in the e-mail content. The
Examiner found that the art has such instructions in the e-mail application,
not in the e-mail content.
All three independent claims have similar such limitations.
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CONCLUSIONS OF LAW
The rejection of claims 1, 2, 4, 6–9, 11, 13, 14, 19–25, 27, 29–34, 37, 39,
43, and 45 under 35 U.S.C. § 103(a) as unpatentable over Bailey and Shaw
is improper.
The rejection of claims 3, 5, 15, and 16 under 35 U.S.C. § 103(a) as
unpatentable over Bailey, Shaw, and Baker is improper.
The rejection of claims 10, 17, 26, 35, 36, and 40–42 under 35 U.S.C.
§ 103(a) as unpatentable over Bailey, Shaw, and Murphy is improper.
The rejection of claims 12 and 44 under 35 U.S.C. § 103(a) as
unpatentable over Bailey, Shaw, and Capiel is improper.
The rejection of claim 28 under 35 U.S.C. § 103(a) as unpatentable over
Bailey, Shaw, and Satomi is improper.
The rejection of claim 46 under 35 U.S.C. § 103(a) as unpatentable over
Bailey, Shaw, Murphy, and Baker is improper.
DECISION
The rejections of claims 1–17 and 19–46 are reversed.

REVERSED

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