Ex Parte Singh

Patent Trial and Appeal Board

Nov 12, 2014

11693130 (P.T.A.B. Nov. 12, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/693,130 03/29/2007 SANJEEV KUMAR SINGH SKS004 8771
76665 7590 11/12/2014
Sanjeev Kumar Singh
54 Lawerence Ave
Danbury, CT 06810
EXAMINER
AFOLABI, MARK O
ART UNIT PAPER NUMBER
2442
MAIL DATE DELIVERY MODE
11/12/2014 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 SANJEEV KUMAR SINGH
____________
Appeal 2012-004317
Application 11/693,130
Technology Center 2400
____________

Before JOHN C. KERINS, LYNNE H. BROWNE and
THOMAS F. SMEGAL, Administrative Patent Judges.

SMEGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Sanjeev Kumar Singh (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1–9 and 21–31. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM−IN−PART and enter a NEW GROUND OF
REJECTION pursuant to 37 C.F.R. § 41.50(b).

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CLAIMED SUBJECT MATTER
An understanding of the invention can be derived from a reading of
independent claim 1, which is reproduced below with disputed limitations
italicized for emphasis.

1. A method of enabling electronic messaging using an
interactive user interface of a hand-held, portable electronic
device, the method comprising:
providing one or more templates with non-user-
populated, user-editable precomposed message content for use
at said interactive user interface to compose an electronic
message having a message body and a subject field in an
interactive session associated with a user;
receiving user input to supply a template from said one or
more templates at said interactive user interface for the creation
of said electronic message by including in the interactive
session at least a first precomposed message content portion
based on a non-user-populated, user-editable precomposed
message content of the template in said message body and
selectively including in the interactive session at least a second
precomposed message content portion based on said non-user-
populated, user-editable precomposed message content of the
template in the subject field; and
enabling the user to edit said non-user-populated, user-
editable precomposed message content of the template in the
interactive session at said interactive user interface for
populating said message body and the subject field of said
electronic message at said interactive user interface of said
hand-held, portable electronic device for delivery to an intended
recipient over a wireless network at the end of the interactive
session.

Appeal Br. 44, Clms. App’x.

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REJECTIONS ON APPEAL
The following Examiner’s rejections are before us for review.
1. Claims 1–9 and 28–31 are rejected under 35 U.S.C. §103(a) as
unpatentable over Lemay (US 2008/0034117 A1, pub. Feb. 7,
2008) and Adams (US 7,603,424 B2, iss. Oct. 13, 2009).
2. Claims 21–27 are rejected under 35 U.S.C. §103(a) as unpatentable
over Gupta (US 2002/0099777 A1, pub. July 25, 2002) and
Adams.
ANALYSIS
Obviousness of claims 1–9 and 28–31 based on Lemay and Adams.
Claims 1−9
Appellant argues claim 1 on pages 9–27 of the Appeal Brief, further
noting at page 42 of the Appeal Brief that claims 2–9 are allowable based on
their dependency from claim 1. We select claim 1 as the representative
claim for this group such that the remaining claims stand or fall with claim
1. 37 C.F.R. § 41.37(c) (1) (vii) (2011).
Appellant summarizes claim 1, inter alia, as a method of
enabling electronic messaging using an interactive user
interface [] of a hand-held, portable electronic device []
compris[ing] providing one or more templates . . . with non-
user populated, user-editable precomposed message content []
for use at said interactive user interface to compose an
electronic message . . . having a message body and a subject
field.1

Appeal Br. 4 (emphasis added).

1 The italicized language does not appear in the Specification as filed March
29, 2007, but was added to claim 1 in an Amendment filed October 26,
2009.
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Appellant acknowledges that

Lemay is directed to an electronic messaging system for
providing a host of non-user created template styles which are
provided by the system and are capable to incorporating multi-
media content in the message body only which can be
personalized by a user in a way such that the template is
received as formatted by the user. ([§§] 8–10).

Appeal Br. 22.

However, Appellant argues that Lemay does not teach “selectively
including in the interactive session at least a second precomposed
message content portion based on said non-user populated, user-
editable precomposed message content of the template in the subject
field, as recited in claim 1.” Reply Br. 2−3.
While finding Lemay “teaches selecting a template [to] include
precomposed message content that is not populated by the user,” the
Examiner states that “Lemay did not explicitly mention anything about
subject field.” Ans. 27. For that reason, the Examiner relies on Adams as
teaching that the
user can generate a reply to the email message using content
from one or more template replies, the reply having a subject
line and a body [i.e., met the limitation in the ‘subject field’ as
indicated in the claim 1]; presenting a choice of the one or more
template replies to the user; receiving a command to select a
template reply from the choice, the template reply having a
subject line and a body, col. 2, line 63 through col. 3, line 10,
and col. 10, lines 29–41, Adams.
Id. at 27−28.
Appellant argues that Adams fails to overcome the deficiencies of
Lemay because the cited portions of Adams are merely directed towards
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user-created precomposed message content. There is, according to
Appellant, no mention in the cited portions of Adams of “selectively
including in the interactive session at least a second precomposed
message content portion based on the NON−user−populated, user-
editable precomposed message CONTENT OF the TEMPLATE in the
subject field.” Appeal Br. 11.
This contention is not persuasive. To the extent Appellant contends
that Adams does not disclose a “non-user populated, user-editable” message
content of the template in the subject field, as claimed, we disagree. In
determining the scope of patent claims, we give claims “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations omitted).
Here, Appellant has not pointed to any lexicographic definition in the
Specification of the term “non-user populated, user-editable message content
of the template in the subject field” or identified any other disclosure therein
that would preclude the Examiner interpreting the phrase “non-user
populated” merely to refer “to the precomposed message (i.e., messages
inserted from one or more template replies, see, col. 2, line 63 through col.
3, line 10, esp., col. 3, lines 7−10 and abstract, Adams).”2 Answer 28. Thus,
we agree with the Examiner and find that the broadest reasonable
interpretation of “non-user populated template” also includes any template
created by the “several ways” disclosed in Adams at col. 10, ll. 20–47.

2 See footnote 1.
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Appellant further contends that Adams teaches away from the present
claims because “the TEMPLATE replies of Adams are explicitly disclosed
as being created by a user only. See, Adams, col. 10, lines 20–47 and Figure
8.” Appeal Br. 19. In that Appellant acknowledges that Lemay teaches
“non-user created templates,” Appellant’s argument at best amounts to an
assertion that the references have differences. To show a teaching away, it is
not enough for Appellant to merely argue that there are differences between
two references. See In re Beattie, 974 F. 2d 1309, 1312–13 (Fed. Cir. 1992).
Thus, Appellant’s argument is not persuasive.
Appellant also contends that Adams is directed to a different problem,
i.e., “to generating responses to frequently asked questions (FAQs) received
by email messages in wireless type devices by using a bank of template
replies created by the user. (col. 7, line 55 - col. 8, line 18).” Appeal Br.
22. However, the Examiner does not rely on Adams for teaching either non-
user populated templates or for generating responses to frequently asked
questions, but rather finds that Adams teaches templates for both a subject
line and a body. Appellant fails to persuade us that the Examiner’s finding
is erroneous. We also are not persuaded by Appellant’s attempt to argue the
references separately. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986).
Appellant also argues the “[c]ombination of Lemay and Adams taken
as a whole would not suggest to one of ordinary skill in the art the claimed
invention. To the contrary, according to Appellant, a person of ordinary skill
in the art would not be motivated to substitute the teachings of Adams into
Lemay, because that would make Lemay inoperable.” Appeal Br. 21
(emphasis omitted). Appellant concludes that “the combination of Lemay
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and Adams−even if proper, which Applicant in no way concede[s]−clearly
does not disclose, teach, or suggest all of the features recited by claim 1.” Id
at 27.
Appellant’s position based on a rigid application of the TSM test is
simply obsolete. Rather, the proper inquiry is whether the Examiner has
articulated adequate reasoning based on a rational underpinning to explain
why a person of ordinary skill in the art would have been led to combine the
teachings of the cited art as applied in the rejection. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)), in which the Court rejected the rigid requirement of a
teaching or suggestion or motivation to combine known elements in order to
show obviousness. KSR, 550 U.S. at 415. The Court noted that an
obviousness analysis “need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” Id. at 418. Thus, Appellant does not apprise us of error in
the Examiner’s provision of articulated reasoning with rational underpinning
for the combination of Lemay and Adams used in the rejection.
Appellant continues by arguing that “substituting the user populated
subject 810 taught by Adams into the solution proposed by Lemay would
make the stationary template shown in Lemay inoperative.” Appeal Br. 24
(emphasis omitted). Appellant does not explain where the Examiner’s
rejection is based on such a substitution nor is it otherwise self-evident from
the record. We are instructed by our reviewing court that “[a]ttorney’s
arguments in a brief cannot take the place of evidence.” In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) (citation omitted); see also In re De Blauwe,
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736 F.2d 699, 705 (Fed. Cir. 1984) (lawyer arguments and conclusory
statements which are unsupported by factual evidence are entitled to little
probative value).
For the foregoing reasons, we sustain the Examiner’s rejection under
35 U.S.C. §103 of claims 1−9 over Lemay and Adams.
Claims 28−31.
We are persuaded by Appellant’s arguments that the Examiner failed
to establish a prima facie showing of obviousness in rejecting claims 28−31
over Lemay and Adams.
The Examiner relies on Adams for “enabling the client….to store for
execution a mail client” and for “enabling a client to receive a messaging
application program” both as recited by claim 28. See col. 6, ll. 2–22 of
Adams. Answer 14−15. However, as argued by Appellant, from the
disclosure of Adams at col. 6, lines 2−22, it is clear that “there is only one
messaging software, i.e., the PIM application at the device 210 taught by
Adams” Appeal Br. 29. Thus we agree with Appellant that
The Examiner has presented no evidence or any basis in fact
and/or technical reasoning, to support that a person of ordinary
skill in the art would read the cited portions of Adams as
disclosing the messaging application program (APP) configured
to communicate with the mail client for providing the electronic
messaging even though the cited portions of Adams are entirely
silent as to such a messaging APP.

Appeal Br. 30.
For the foregoing reasons, we do not sustain the rejection of 28−31
over Lemay and Adams.

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Obviousness of claims 21–27 over Gupta and Adams.
Appellant argues claim 21 on pages 32–41 of the Appeal Brief, further
noting at page 42 of the Appeal Brief that claims 22–27 are allowable based
on their dependency from claim 21. We select claim 21 as the representative
claim for this group such that the remaining claims stand or fall with claim
21. 37 C.F.R. § 41.37(c) (1) (vii) (2011).
Appellant contends that the Examiner “conceded in the Final Office
Action on page 18, [that] Gupta does not disclose, teach, or suggest
including a precomposed message content based on the NON−user-
populated, user-editable precomposed message content of the template in
the subject field of the electronic message.” Appeal Br. 33 (emphasis
omitted). Appellant misreads the Final Office Action. See also page 21 of
the Answer.
What the Examiner actually finds (as previously observed with
Lemay) is that Gupta does not disclose a non-user populated, user-editable
precomposed message content of the template “in the subject field,” as
recited in claim 1. Thus the Examiner again looks to Adams for teaching
“said user-editable precomposed message content of the template in the
subject field.” Answer 21. (emphasis added).
Furthermore, the Examiner finds that
Adams also indicated that user can generate a reply to the email
message using content from one or more template replies, the
reply having a subject line and a body [i.e., met the limitation in
the 'subject field' as indicated in the claim 1]; presenting a
choice of the one or more template replies to the user; receiving
a command to select a template reply from the choice, the
template reply having a subject line and a body, col. 2, line 63
through col. 3, line 10, and col. 10, lines 29-41, Adams.

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Answer 35.
In response, Appellant only argues that “the Examiner essentially
repeats his positions about the Adams which were advanced with respect to
rejection of claims 1 and 28. Appellant believes all of such arguments
related to Adams as applicable to claim 21 have been fully addressed earlier
in this Reply Brief.” Reply Br. 20. Thus Appellant fails to advance any
argument to which we have not previously responded.
For the foregoing reasons, we sustain the Examiner’s rejection under
35 U.S.C. §103 of claims 21–27 over Gupta and Adams.

NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW
GROUND OF REJECTION against claims 1−9 and 21−31 under 35 U.S.C.
§ 112, first paragraph, for failing to comply with the written description
requirement.
“[T]he test for sufficiency [of the written description] is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.” Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en banc) (citations omitted). “And while the
description requirement does not demand any particular form of disclosure,
or that the specification recite[s] the claimed invention in haec verba, a
description that merely renders the invention obvious does not satisfy the
requirement.” Id. at 1352 (citation omitted).
In mapping claim 1, Appellant points to the written description at
“page 22, lines 19-20, page 23, lines 6-7; Figure 2, item 215b and page 8 ,
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lines 3-5 , page 8, line 16”, to support the claim limitation “with non-user-
populated, user-editable precomposed message content.” Appeal Br. 4. See
also Answer at page 28–29. We do not find the cited portions of the
Specification to provide sufficient support for this limitation.
In particular, the Specification at page 23, lines 5–9 states that “[t]he
set of message templates 210 may provide at least one of a first template
210a with a user determined content 215a, a second template 210b with a
predefined content 215b or a third template 210c with a user editable
content 215c for use in the messaging application program 140 capable of
communicating with the server 125 in the network 130” (emphasis added).
We find that the description of “a third template with a user editable
content”, does not convey to those skilled in the art that the inventor had
possession of the claimed subject matter, i.e., that the “user editable content”
was disclosed as being located in a template that was non-user populated,
rather than user populated.
Thus, the Specification fails to reasonably convey to those skilled in
the art that as of the filing date the inventor had possession of the claim
limitation “with non-user-populated, user-editable precomposed message
content.”
DECISION
The rejection of claims 1−9 under 35 U.S.C. § 103(a) as unpatentable
over Lemay and Adams is AFFIRMED.
The rejection of claims 28−31 under 35 U.S.C. § 103(a) as
unpatentable over Lemay and Adams is REVERSED.
The rejection of claims 21−27 under 35 U.S.C. § 103(a) as
unpatentable over Gupta and Adams is AFFIRMED.
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We enter a NEW GROUND OF REJECTION of claims 1−9 and
21−31 under 35 U.S.C. § 112, first paragraph.
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) provides
“Appellants may file a single request for rehearing within two months from
the date of the original decision of the Board.”
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that, “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THIS DECISION must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
proceeding will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding
be reheard under § 41.52 by the Board upon the same
record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
rejections, the effective date of the affirmance will be deferred until the
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prosecution before the Examiner concludes unless, the affirmed rejection is
overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejections, including any timely request for rehearing
thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED−IN−PART; 37 C.F.R. § 41.50(b).

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