Ex Parte Nottingham et al

Patent Trial and Appeal Board

Jan 24, 2018

12772645 (P.T.A.B. Jan. 24, 2018)

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.
12/772,645 05/03/2010 ALASDAIR NOTTINGHAM GB920090002US1 4315
37945 7590 01/26/2018
DTTKFW YFF
EXAMINER
YEE AND ASSOCIATES, P.C. PAN, PHOEBE X
P.O. BOX 802333
DALLAS, TX 75380 ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
01/26/2018 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):
ptonotifs @yeeiplaw.com
mgamez @ yeeiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALASDAIR NOTTINGHAM, KEVIN B. SMITH,
and TIMOTHY J. WARD
Appeal 2017-003272
Application 12/772,645
Technology Center 2100
Before JOHN A. EVANS, CATHERINE SHIANG, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 3.
Appeal 2017-003272
Application 12/772,645
INVENTION
Appellants’ claimed invention relates to notification of additional
recipients of email messages. Abstract. Claim 1 reads as follows:
1. A method for providing notification to email clients
with recipient updates resulting from email forwards
comprising:
sending an initial email message to a plurality of
recipients;
receiving a notification message from a first one of the
plurality of recipients responsive to the first one forwarding the
initial email message to at least one additional recipient,
wherein the notification message indicates that the first one has
forwarded the initial email message to the at least one
additional recipient;
responsive to receipt of the notification message,
composing an update message, wherein the update message
indicates that the first one has forwarded the initial email
message to the at least one additional recipient;
sending the update message to at least one of the plurality
of recipients other than the first one; and
updating a distribution list of the initial email message
maintained by an email client that sent the initial email message
to indicate that the at least one additional recipient received the
initial email message, wherein the updated distribution list
comprises the plurality of recipients and the at least one
additional recipient.
REJECTIONS
Claims 1—3, 5—8, 10-12, 14—16, and 18—20 stand rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of David Sterling
et al., Inside Microsoft® Exchange Server 2007 Web Services, 1—15 (Nov.
28, 2007) (Microsoft Press) (“Inside Exchange”) and Gusler et al. (US
7,120,671 B2; issued Oct. 10, 2006) (“Gusler”).
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Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Inside Exchange, Gusler, and Jain et al. (US
2010/0011068 Al; published Jan. 14, 2010) (“Jain”).
Claims 9 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Inside Exchange, Gusler, and Adams
et al. (US 2007/0073871 Al; published Mar. 29, 2007) (“Adams”).
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Inside Exchange, Gusler, and Bates et al. (US
6,810,408 Bl; issued Oct. 26, 2004) (“Bates”).
Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Inside Exchange, Gusler, and Peter G. Aitken,
Microsoft® Outlook® 2007 Bible, 1—14 (Apr. 30, 2007) (John Wiley & Sons)
(“Outlook Bible”).
ANALYSIS
We have reviewed the rejections of claims 1—21 in light of
Appellants’ arguments that the Examiner erred. We have considered in this
decision only those arguments Appellants actually raised in the Briefs. Any
other arguments that Appellants could have made but chose not to make in
the Briefs are deemed waived. See 37 C.F.R. § 41.37(c)(l)(iv).
We agree with and adopt as our own the Examiner’s findings of facts
and conclusions as set forth in the Examiner’s Answer (Ans. 2—9) and in the
Final Office Action (Final Act. 6—20) from which this appeal was taken. We
provide the following explanation for emphasis.
Claims 1—5, 7, and 9—15
With respect to independent claim 1, Appellants contend the
Examiner erred because the cited portions of Inside Exchange and Gusler do
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not teach or suggest the limitation “wherein the notification message
indicates that the first one has forwarded the initial email message to the at
least one additional recipient,” recited in claim 1. App. Br. 11. Appellants
argue Inside Exchange teaches only that a meeting has been forwarded, and
does not teach an identification of to whom the meeting was forwarded. Id.
(citing Inside Exchange 11:55—59).
We are not persuaded by Appellants’ arguments. The test for
obviousness is not whether the claimed invention is expressly suggested in
any one or all of the references, but whether the claimed subject matter
would have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references. In re Keller, 642 F.2d 413, 425
(CCPA 1981). The Examiner found Gusler teaches a graphical user
interface (GUI) (Fig. 4 (420)) that displays a list of recipients who have
received the initial email, where the list can change according to received
notifications such as a notification indicating the email has been forwarded,
and that the forward notification inherently includes the identity of the
forwarded recipient in order for the recipient to be reflected on the GUI that
displays a list of recipients who have received the email. Ans. 3 (citing
Gusler col. 8:16—28, Fig. 4).
“The test for obviousness is what the combined teachings of the [prior
art] references would have suggested to one of ordinary skill in the art.” In
re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). We agree with the Examiner
that Gusler suggests keeping track of the identity of the recipient of a
forwarded e-mail message so it can later be displayed on a list. See Ans. 3.
Thus, we agree the cited portions of Inside Exchange and Gusler collectively
teach or suggest the disputed limitation “wherein the notification message
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indicates that the first one has forwarded the initial email message to the at
least one additional recipient,” recited in claim 1.
Appellants next contend the cited potions of Inside Exchange and
Gusler do not teach or suggest “sending the update message to at least one of
the plurality of recipients other than the first one,” as recited in claim 1.
App. Br. 12. Appellants argue that, while Inside Exchange teaches “update
messages being sent to meeting attendees of different kinds, there is no
suggestion that these update messages indicate ‘that the first one has
forwarded the initial email message to the at least one additional recipient, ’
which is a requirement of the claim.” Id.
We are not persuaded by Appellants’ arguments for reasons similar to
those discussed above. The Examiner found Inside Exchange and Gusler
together teach the disputed limitation. Ans. 4. In particular, we agree with
the Examiner that Gusler teaches or at least suggests transmitting a message
to a number of persons to notify them that a recipient has been provided with
the content of an e-mail message. Id. (citing Gusler col. 3:60-67).
Appellants have not persuasively rebutted the Examiner’s findings in the
Reply Brief. See Reply Br. 6. Moreover, Appellants have not persuasively
addressed the cited teachings and suggestions of Gusler, but instead based
their argument on the language used by the Examiner to summarize the cited
teachings.
For these reasons, we are not persuaded the Examiner erred in finding
Inside Exchange and Gusler collectively teach or suggest the disputed
limitations of claim 1.
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Appellants next contend one of ordinary skill would not be motivated
to combine the references in the manner suggested by the Examiner. App.
Br. 13. Appellants argue Inside Exchange teaches away from forwarding
e-mail messages. Id. (citing Inside Exchange 10:55—65).
We disagree. Appellants have not identified where Inside Exchange
actually criticizes, discredits, or otherwise discourages forwarding e-mail
messages. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.
Cir. 2009) (“A reference does not teach away, however, if it merely
expresses a general preference for an alternative invention but does not
‘criticize, discredit, or otherwise discourage’ investigation into the invention
claimed”) (citing Fulton). The portion of Inside Exchange cited by
Appellants refers to forwarding meeting requests in Exchange Web Services
using a Forwardltem response object. See Inside Exchange 10. The cited
warning that using Forwardltem with a non-meeting creates and sends a new
message with the calendar item as an attachment does not actually criticize,
discredit, or otherwise discourage forwarding e-mail messages. Moreover,
the Examiner provides “articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006); Final Act. 7.
For these reasons, we are not persuaded the Examiner erred in
combining the teachings of Inside Exchange and Gusler.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of independent claim 1, as well as the Examiner’s 35 U.S.C. § 103(a)
rejection of independent claim 12, which Appellants argue is patentable for
similar reasons. App. Br. 11. We also sustain the Examiner’s rejections of
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dependent claims 2—5, 7, 9—11, and 13—15, for which Appellants make no
arguments other than those for the independent claims from which those
claims depend. Id. at 16.
Claims 8 and 16—21
With regard to independent claim 16, Appellants contend the
Examiner erred for the same reasons discussed above for claims 1 and 12.
App. Br. 13—14. For the reasons we are not persuaded of error in the
rejection of claims 1 and 12, we are not persuaded of error in the rejection of
claim 16.
Appellants further contend the combination of Inside Exchange and
Gusler does not teach or suggest the recited limitation:
wherein when said reply-all option is triggered for one message
of the previously sent email messages, the email client sends a
reply message to a subset of recipients associated with the one
message of the previously sent email messages . . . wherein the
email client automatically includes the others in the reply
message, and wherein the others were not included as recipients
in the one message of the previously sent email messages.
App. Br. 14. Appellants recite the claim language and explain what the cited
portions of Inside Exchange teach, but do not persuasively explain why the
cited teachings would not have suggested the disputed limitation to an
artisan of ordinary skill in the art. See id. at 14—15. Rule 41.37 “require[s]
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art.” In reLovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011).
The Examiner found Inside Exchange (p. 13,11. 49-50) teaches that,
after a meeting has been created (p. 3,11. 52—54, Fig. 10-1) and subsequently
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updated (p. 10,11. 63—65), meeting update messages from the original
meeting created are sent to all attendees of the meeting. Ans. 7—8. Thus, the
Examiner found Inside Exchange teaches sending a message to attendees,
including the newly forwarded attendee, that was previously sent to a subset
of all attendees, as claim 16 requires. The Examiner further cites Inside
Exchange (p.10,11. 67—74) to teach the originator of the meeting receiving a
notification message for a forwarded meeting request by one of the
attendees, and Inside Exchange (p.10,11. 63—65, p. 3,11. 49-50) to teach the
originator sending update/reply-all messages to all attendees. The Examiner
relies on Gusler (col. 3:60-67, col. 8: 23—28, Fig. 4 (420)) to teach that the
update messages to all attendees include information indicating that the
original message was forwarded. Appellants have not persuasively rebutted
the Examiner’s findings through persuasive argument or objective evidence,
or persuaded us that the combined teachings would not have suggested the
disputed limitation to one of ordinary skill in the art. See Young, 927 F.2d at
591.
Appellants also argue Inside Exchange fails to “teach or suggest that
the meeting organizer triggers a reply-all option for one message (or meeting
updates) of previously sent messages (or meetings).” App. Br. 14; Reply Br.
7. The plain language of the claim, however, does not require that the
meeting organizer trigger a reply-all option for one message of previously
sent messages. Rather, claim 16 requires “a reply-all option of the email
client implemented within at least a portion of the computer usable program
code,” and further requires that “when said reply-all option is triggered for
one message of the previously sent email messages,” certain recited activity
occurs. See App. Br. 21 (Claims App.). Because claim 16 is silent with
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regard to who or what triggers the reply-all option, Appellants have not
persuaded us that the claim requires either that a meeting organizer trigger a
reply-all option for one message of previously sent messages (App. Br. 14)
or that “a previous sent email message triggers the ‘reply-all’ option.”
(Reply Br. 7).
For these reasons, we are not persuaded the Examiner erred in finding
the combination of Inside Exchange and Gusler teaches or suggests the
disputed limitations of claim 16.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of independent claim 16, as well as the Examiner’s 35 U.S.C. § 103(a)
rejections of dependent claim 8, which Appellants argue is patentable for
similar reasons, and dependent claims 17—21, not argued separately. App.
Br. 16.
Claim 6
Appellants contend the Examiner erred in rejecting dependent claim 6
because “Gusler does not specifically teach or suggest that the user interface
presents a visual indicator indicating an additional recipient to which the
email has been forwarded by an initial recipient of the email.” App. Br. 15.
In particular, Appellants argue that Gusler “does not provide any specific
‘forwarded recipient’ (e.g., the ‘additional recipient’) status information.”
Reply Br. 8.
We do not find Appellants’ arguments persuasive. Appellants
acknowledge Gusler teaches representing information on a user interface
that identifies the users who have been provided with or perceived the
contents of an email message. App. Br. 15. The Examiner found Gusler
(col. 7:59-61, col. 8:5—15, Fig. 4) teaches a GUI showing the original email
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message and information (Fig. 4 (420)) about which recipients been
provided with the content of the message, and further teaches (col. 8:16—28)
the list of users who opened the message can change from time to time,
based on additional notifications, such as a notification of a forwarded
message. Ans. 8. The portions of Gusler cited by the Examiner also teach
that section 420 of Figure 4 “may provide output based on one or more kinds
of multiple-party receipt notifications such as: (1) notifications reporting that
the message has been sent somewhere in some manner (e.g. forwarded or
faxed).” Gusler col. 8:25—28. Thus, we agree with the Examiner that Gusler
at least suggests the disputed limitation.
For these reasons, we are not persuaded the Examiner erred in finding
the combination of Inside Exchange and Gusler teaches or suggests the
disputed limitations of claim 6. Accordingly, we sustain the Examiner’s
35 U.S.C. § 103(a) rejection of dependent claim 6.
DECISION
We affirm the Examiner’s decision to reject claims 1—21.
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). See
37 C.F.R. § 41.50(f).
AFFIRMED
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