Ex Parte Patel et al

Patent Trial and Appeal Board

Nov 26, 2013

11346410 (P.T.A.B. Nov. 26, 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.
11/346,410 02/02/2006 Labhesh Patel 01236.P036 1239
27660 7590 11/27/2013
THE LAW OFFICES OF BRADLEY J. BEREZNAK
800 WEST EL CAMINO REAL
SUITE 180
MOUNTAIN VIEW, CA 94040
EXAMINER
CHACKO, JOE
ART UNIT PAPER NUMBER
2456
MAIL DATE DELIVERY MODE
11/27/2013 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 LABHESH PATEL, SANJEEV KUMAR,
MUKUL JAIN, and JOSEPH F. KHOURI
____________________

Appeal 2011-005945
Application 11/346,410
Technology Center 2400
____________________

Before JOSEPH F. RUGGIERO, JUSTIN BUSCH, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-005945
Application 11/346,410

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 5–11, 13, and 15–23. We have jurisdiction
under 35 U.S.C. § 6(b). Claims 2–4, 12, and 14 are canceled.
We affirm.
Illustrative Claim
Appellants’ disclosure relates to a unified messaging system operable
to detect an actionable item contained within a voicemail or an email
message and dynamically modify a response menu to include an option
corresponding to the actionable item. Abstract.
Claim 1, reproduced below with the disputed limitations italicized, is
illustrative of the claimed subject matter:

1. A computer-readable memory encoded with a computer
program for unified messaging operable to:
store a voicemail or email message sent by a sender to a
recipient;
deliver the voicemail or email message to the recipient;
detect an actionable item contained in a content of the
voicemail or email message;
modify a response menu to include an option
corresponding to the actionable item;
present the modified response menu to the recipient
concurrent with or following delivery of the voicemail or email
message; and
automatically execute a specific action following
selection of the option by the recipient.

Appeal 2011-005945
Application 11/346,410

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Rejections1
The Examiner made the following rejections:
Claims 1, 5–7, 9–11, 13, 15–18, 22, and 23 under 35 U.S.C. § 103(a)
as unpatentable over Skladman (US 6,438,215 B1) and Castell (US
2002/0098831 A1) (Ans. 3–7); and
Claims 8 and 19–21 under 35 U.S.C. § 103(a) as unpatentable over
Skladman, Castell, and Guedalia (US 6,907,112 B1) (Ans. 7–8).

Issue
Appellants’ arguments raise the issue of whether Skladman and
Castell teach or suggest “[1] detect an actionable item contained in a content
of the voicemail or email message; [2] modify a response menu to include an
option corresponding to the actionable item; and [3] automatically execute a
specific action following selection of the option by the recipient”
(respectively the “detect,” “modify,” and “execute” limitations), as recited in
claim 1.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in the Appeal Brief (“Br.” filed Aug. 30, 2010). We refer to the
Brief and the Answer (“Ans.” mailed Nov. 24, 2010) for the respective
positions of Appellants and the Examiner. We disagree with Appellants’
arguments (Br. 9–18) that the Examiner has erred. We adopt the Examiner’s
findings and conclusions (Ans. 3–10). We highlight the following for
emphasis.

1 Appellants’ Appeal Brief and the Examiner’s Answer include a consistent
typographical error identifying claims 3, 4, and 14 as pending (see, e.g., Br.
8, 9, 16 and Ans. 3) even though those claims are canceled (Br. at 3).
Appeal 2011-005945
Application 11/346,410

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Rejection of Claim 1 Over Skladman and Castell
Appellants argue that Skladman does not teach or suggest “detect an
actionable item contained in a content of the voicemail or email message”
because Skladman’s “envelope information” (Skladman col. 4, ll. 35-44) is
external to the content of the message and is thus not contained in the
content as claimed. Br. 10–14. Appellants further argue that one skilled in
the art would not understand Castell to teach the claimed “modify” and
“execute” limitations because “Castell, like Skladman, has nothing to do
with detecting actionable items contained in the content of the message
itself, or with presenting a modified response menu corresponding to the
detected actionable items.” Id. at 15.
We are not persuaded by Appellants’ arguments that the Examiner
has unreasonably interpreted actionable items contained in a content of a
voicemail or email message to include data such as the identification of the
sender in Skladman’s envelope information. Ans. 9 (citing Skladman, col.
4, ll. 35–44 and col. 10, ll. 35–40). We agree with the Examiner that
Appellants are narrowly interpreting envelope information as being external
to the message. Ans. 9. We are not persuaded that such a narrow
interpretation is required, nor are we persuaded that Skladman does not at
least suggest “detect an actionable item contained in a content of the
voicemail or email message.”
As to the “modify” limitation, Appellants concede that Castell teaches
“presenting a list of events that occurred in a unified messaging server to a
user of a mobile phone, the list includes incoming voicemail messages.” Br.
15. Appellants’ related arguments (id. at 14–15) do not persuade us that this
does not at least suggest the “modify” limitation. As to the “execute”
Appeal 2011-005945
Application 11/346,410

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limitation, at paragraph 36, Castell discloses that a menu of actions allows
the user to perform an action on an item in the unified event listing, which
meets the limitation. To the extent Appellants’ arguments here rely on prior
arguments that a menu item does not correspond to an actionable item
contained in message content, we do not find these arguments persuasive for
the reasons discussed above.
Appellants also argue that prima facie obviousness has not been
established due to the absence of motivation. See, e.g., Br. 9, 16. We are
not persuaded, however, because the Examiner identifies a motivation in
Castell, citing paragraph 21 and stating “that the messaging service unifies
all messaging and data services so that the mobile device is able to present
these events to the mobile device user in a consistent and harmonious
fashion.” Ans. 4. Appellants have not persuaded us that the Examiner’s
reasoning lacks rational underpinning. In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (citing In re Lee, 277 F.3d 1338, 1343–46 (Fed. Cir. 2002)
(“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”)). Moreover, the Examiner has shown that all the claim
limitations were known in the prior art, and a combination of familiar
elements is likely to be obvious when it does no more than yield predictable
results. KSR Int'l v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Accordingly, we sustain the Examiner’s rejection of claim 1 and of
claims 5–7, 9–11, 13, 15–18, 22, and 23, which are not separately argued.
Br. 9–16. We also sustain the Examiner’s rejection of claims 8 and 19–21,
which Appellants argue under a separate heading but only on the basis that
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Application 11/346,410

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Guedalia “fails to provide any of the teaching missing from the Skladman
and Castell references.” Br. 17.

DECISION
For the above reasons, the Examiner’s rejection of claims 1, 5–11, 13,
and 15–23 is affirmed.

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

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