Ex Parte Scott

Patent Trial and Appeal Board

Dec 17, 2013

10976418 (P.T.A.B. Dec. 17, 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.
10/976,418 10/29/2004 Sherryl Lee Lorraine Scott 16813-18US 8728
20988 7590 12/17/2013
NORTON ROSE FULBRIGHT CANADA LLP
1, Place Ville Marie
SUITE 2500
MONTREAL, QC H3B 1R1
CANADA
EXAMINER
MACILWINEN, JOHN MOORE JAIN
ART UNIT PAPER NUMBER
2442
MAIL DATE DELIVERY MODE
12/17/2013 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 SHERRYL LEE LORRAINE SCOTT
____________________

Appeal 2011-005871
Application 10/976,418
Technology Center 2400
____________________

Before MAHSHID D. SAADAT, BRUCE R. WINSOR, and
JON B. TORNQUIST, Administrative Patent Judges.

TORNQUIST, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/976,418

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Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Introduction
The disclosure relates to a method and apparatus for composing
electronic mail messages. Spec. [0005]. Claim 1, reproduced below, is
representative of the claimed subject matter:
1. A method for composing an email on a wireless
communication device comprising:

providing an email composition interface having one or more
fields to define a content of the email, at least one of the fields
having a field descriptor coupled to an extended interface
component operable in response to input to present a plurality
of options including adding a field to and removing a field from
the email composition interface for further defining the content
of the email; and

invoking the extended interface component in response to the
input,

wherein the extended interface component comprises a drop
down list extending from the field descriptor and the input
comprises positioning a user focus on the field descriptor.

The Examiner’s Rejections
The Examiner has rejected claims 1-16 under 35 U.S.C. § 103(a) as
unpatentable over Ray (John Ray, William Ray, Mac OS X Unleashed, Nov.

1 Appellant identifies the real party in interest as Research In Motion Ltd.
App. Br. 4.
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14, 2001), Gallop (Damien Gallop, Bcc in Mac OS X, November 2, 2001),
Collins (U.S. 2002/0013817 A1; Jan. 31, 2002), and Omoigui (U.S.
2003/0126136 A1; July 3, 2003).

Grouping of Claims
In view of Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant did not make in the Briefs have
not been considered and are deemed to be waived. See id.

Appellant’s Contentions
With respect to claim 1, Appellant contends that the combination of
references is improper because: (a) Ray and Gallop do not pertain to
wireless communication devices and are “clearly not concerned with . . . the
challenges of that particular device environment for email composition,”
App. Br. 22; see also App. Br. 14-17, 24; (b) the combination of Ray,
Gallop, and Collins does not teach the claimed “drop down list extending
from the field descriptor,” App. Br. 21-24; Reply Br. 8-9; (c) Ray and
Gallop do not teach a field descriptor coupled to an extended interface
component, App. Br. 20-22, 24; Reply Br. 5-6; (d) Omoigui does not teach
positioning a user focus on a field descriptor, App. Br. 24-25, 29; and (e) no
motivation exists for combining the references because Ray and Gallop
relate to Mac OS X, and not wireless communication devices. App. Br. 26-
27.

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Issue on Appeal
Did the Examiner err in rejecting the claims as obvious over Ray,
Gallop, Collins, and Omoigui because the cited references fail to teach or
suggest the argued limitations?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions. We adopt as our own the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and the reasons set
forth by the Examiner in the Examiner’s Answer. See Ans. 10-54. We
highlight and address specific findings and arguments for emphasis as
follows.
With respect to Appellant’s contention (a), the Examiner found, and
we agree, that the Specification defines wireless communication devices to
include laptop computers capable of wireless communication. Ans. 12-14;
Spec. [0002], [0014], [0019] (noting that a wireless communication device
may include a computer or laptop computer connected to a wireless
modem). Accordingly, Appellant’s arguments relying on the smaller screen
size of wireless communication devices and “the challenges of that
particular device environment for email composition” are not persuasive.
See App. Br. 17, 22, 24.
With respect to Appellant’s contentions (b) and (c) related to the
teachings of Ray and Gallop, we note that the Examiner also relied upon
Collins to teach “a field descriptor coupled to an extended interface
component” and “wherein the extended interface component comprises a
drop down list extending from the field descriptor.” Ans. 14, 16-17; Collins,
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Fig. 4. Therefore, Appellant’s assertions that Ray and Gallop fail to teach
these limitations are not persuasive.
With respect to contention (b), Appellant specifically asserts that
Collins does not teach adding or removing a field through a drop down list.
App. Br. 31; Reply Br. 9. However, the Examiner does not rely on Collins
for this teaching. Ans. 25-26. The Examiner found, and we agree, that Ray
and Gallop teach adding and removing fields in an email composition
interface using a menu. Ans. 5-6. The Examiner also reasonably found that
one of skill in the art could readily adapt these teachings to modify the drop
down list of Collins to permit adding and removing fields from the email
composition interface. Ans. 5-6, 48; Collins, [0046] (noting that the
adjustment of email fields is preferably achieved using a drop down menu).
We also note that Collins teaches the “to:” field can be changed to a “bcc:”
field. See Collins Fig. 4. Such a change could be interpreted as removing a
“to:” field and adding a “bcc:” field from the email composition interface
thereby causing both a field to be added and removed using a drop down list,
as recited in claim 1. See Collins, Fig. 4, [0046].
With respect to Appellant’s contention (d), the Examiner found, and
we agree, that the combination of Collins and Omoigui as set forth by the
Examiner merely substitutes one known method of input option
(clicking/selecting in Collins) with another known method (hovering in
Omoigui) to yield a predictable result. Ans. 20, 29. Appellant’s argument
that Omoigui does not teach a field descriptor is unpersuasive because the
Examiner does not rely on Omoigui for this teaching and the input option
taught in Omoigui is not limited to any particular interface type, element or
descriptor. See Ans. 44-45.
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With respect to Appellant’s contention (e), the Examiner reasonably
found that each element of claim 1 was known in the art and the drop down
list of Collins could readily be modified to include both the known email
menu options of Ray and Gallop and the known user focus option of
Omoigui. See Ans. 46, 48, 50, 51; KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007) (noting that “the predictable use of prior art elements
according to their established functions” counsels in favor of a finding of
obviousness). Appellant’s argument that no motivation to combine the
references exists because Ray, Gallop, and Collins are related to computers
and not wireless communication devices is unpersuasive because the
definition of wireless communication devices includes both computers and
laptop computers connected to a wireless modem. See Ans. 47; Spec.
[0002], [0014], [0019] (noting that wireless communication devices include
but are “in no way limited to a computer or other device connected to a
wireless modem.”)
Based on the foregoing, we are not persuaded the Examiner erred in
finding claims 1-16 obvious in light of the combination of Ray, Gallop,
Collins, and Omoigui.

DECISION

The Examiner’s rejection of claims 1-16 as unpatentable over the
combination of Ray, Gallop, Collins, and Omoigui is affirmed.

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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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