Ex Parte Raguillat et al

Patent Trial and Appeal Board

Nov 13, 2014

12500110 (P.T.A.B. Nov. 13, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte FRED RAGUILLAT, COLM FARRELL, LIAM HARPUR,
PATRICK JOSEPH O’SULLIVAN, and HEMA SRIKANTH

Appeal 2012-0047071
Application 12/500,110
Technology Center 2100
____________________

Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and
JOHNNY A. KUMAR, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellants identify the real party in interest as IBM Corporation. App. Br.
1.
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Application 12/500,110

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Non-Final Rejection of claims 21–40. Claims 1–20 have been canceled.
App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method and system for automatically
populating a messaging application with a contact name identified as a result
of a search query generated from predefined attributes selected in the
messaging application, and for subsequently transmitting an electronic
message to the identified contact. Spec. ¶¶1, 4, 37, Fig. 2.
Representative Claim
Independent claim 21 is representative. It reads as follows:
21. A computer-implemented method for transmitting an
electronic message, comprising:
receiving, within a messaging application, a selection of
a plurality of pre-defined attributes;
generating a query for a contact name based upon the
selected plurality of pre-defined attributes;
receiving, based upon the query, a plurality of contacts;
automatically populating the messaging application with
at least one of the plurality of contacts; and
transmitting, to at least one of the plurality of contacts,
the electronic message.

Prior Art Relied Upon
Grason US 6,990,495 B1 Jan. 24, 2006
Gill US 2010/0299348 A1 Nov. 25, 2010
Bodapati US 2010/0312837 A1 Dec. 9, 2010
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Rejections on Appeal
The Examiner rejects the claims on appeal:
Claims 21–24, 27–31, 34–38, and 40 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Gill and Bodapati.
Claims 25, 26, 32, 33, and 39 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Gill, Bodapati, and Grason.
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 5–17, and the Reply Brief, pages 2–16.2

Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in finding
the proposed combination of Gill and Bodapati teaches or suggests,
automatically populating a messaging application with a contact identified
as a result of a search query generated from predefined attributes selected
in the messaging application to thereby transmit an electronic message to
the identified contact, as recited in claim 21?
Appellants argue the proffered combination of references does not
teach or suggest the disputed limitations emphasized above. App. Br. 10. In
particular, Appellants argue Gill does not disclose a messaging application
from which attributes are selected to thereby transmit an e-mail to a plurality

2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed September 20, 2011), the Reply Brief (filed
January 30, 2012) and the Answer (mailed December 12, 2011) for the
respective details. We have considered in this Decision only those
arguments Appellants actually raised in the Brief. 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)(1)(vii).
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of contacts. Instead, Gill discloses phoning to a selected contact. Id. at 10–
12. Further, Appellants argue Bodapati discloses populating missing
information fields within a database, but not within a messaging application.
Id. at 13. Additionally, Appellants argue that Gill and Bodapati are non-
analogous art because neither reference is directed to messaging
applications. Rather, Gill is directed to identifying contacts in a database,
and Bodapati is directed to populating fields in a database. Id. at 15.
In response, the Examiner finds Gill’s disclosure of a customer
relationship management (CRM) system wherein a customer provides
selected attributes to a CRM server teaches providing to a messaging
application selected predefined attributes corresponding to a plurality of
contacts. Ans. 11–14. Further, the Examiner finds Bodapati’s disclosure of a
seeking unit ranking results to automatically populate information fields in a
database would complement Gill’s CRM server to predictably result in a
system that automatically populates information fields in a messaging
application. Id. at 14–15.
On the record before us, we do not find error in the Examiner’s
obviousness rejection of claim 21. We note at the outset Appellants’
principal argument is that the combination of Gill and Bodapati teaches a
system wherein a customer selects predefined attributes from an interface to
automatically retrieve results that populate information fields within a
database. Reply Br. 8–9However, Appellants submit that the cited
combination does not teach or suggest that the attribute selection and the
population of information fields occur within the context of a messaging
application. . Therefore, the pivotal issue before us turns on whether the
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proposed combination of Gill and Bodapati teaches or suggests selecting
attributes to automatically populate fields in a messaging application. We
answer this inquiry in the affirmative.
Gill discloses a CRM system wherein a user of a client system
running a CRM application selects from a user-interface certain attributes
corresponding to predefined criteria to retrieve from a CRM server a list of
contact names associated with prospective customers. Gill ¶¶ 33–38.
Further, Bodapati discloses a user querying search engines on the Internet to
retrieve a list of target email addresses, which are ranked in a search result
list from which an entry with a relevant score is selected to automatically
populate an information field. Bodapati ¶¶ 6–9 and 49. We find Gill and
Bodapati disclose prior art elements that perform their ordinary functions to
result in a CRM system wherein a user of a client system running a CRM
application can select from an interface pre-defined attributes corresponding
to certain criteria to thereby retrieve from a remote server a list of email
addresses that fit the user’s criteria.3 The proffered combination would
further result in the retrieved email addresses being scored and subsequently
populated in the information fields such that the user can e-mail recipients
corresponding to retrieved e-mail scores exceeding a particular threshold.4
We thus agree with the Examiner that because the proposed combination of
Gill and Bodapati teaches the e-mail addresses are automatically populated

3 Such a combination is an obvious combination of familiar elements
according to known methods that does no more than yield predictable
results, see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) — an
obvious improvement, see id. at 417.
4 Id.
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in the address fields in response to a user’s selection of certain attributes in
the CRM client, the CRM application running thereon does in fact perform
the function of a messaging application. Consequently, we find unavailing
Appellants’ argument that the proffered combination of Gill and Bodapati
does not teach the messaging application, and or is allegedly non-analogous
to the claimed invention.
Hence, we find the cumulative weight and the totality of the evidence
on this record reasonably support the Examiner’s finding that the combined
disclosures of Gill and Bodapati would have taught or suggested the
disputed limitations.
For at least the aforementioned reasons, we find Appellants have not
sustained the requisite burden on appeal of providing arguments or evidence
persuasive of error in the Examiner’s rejection of representative claim 21. It
therefore follows that Appellants have not shown that the Examiner erred in
finding that the combination of Gill and Bodapati renders claim 21
unpatentable.
Regarding the rejection of claim 22, Appellants argue because Gill
and Bodapati disclose two very different sets of attributes, the Examiner
incorrectly relied upon Gill’s attributes to teach the predefined attributes,
whereas the Examiner relied upon Bodapati’s attributes to teach the same
attributes upon which the rating of contacts is based. App. Br. 15.
Appellants’ individual attack of the references does not establish non-
obviousness. One cannot show non-obviousness by attacking the references
individually where the rejections are based on combinations of references.
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As discussed
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above, the Examiner relied upon the combination of Gill and Bodapati
disclosing complementary attributes to teach the attributes recited in the
disputed limitations. Therefore, although the disclosed attributes are
different, it is their complementary functions that form the basis of the
Examiner’s rejection, which we deem proper in the foregoing discussion.
Accordingly, Appellants have not shown error in the Examiner’s rejection of
claim 22.
Because Appellants have not presented separate patentability
arguments or have reiterated substantially the same arguments as those
previously discussed for patentability of claims 21 and 22 above, claims 23–
40 fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

DECISION
We affirm the Examiner’s rejections of claims 21–40 as set forth
above. 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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