Ex Parte Wideman

Patent Trial and Appeal Board

Jul 12, 2017

14515705 (P.T.A.B. Jul. 12, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/515,705 10/16/2014 Roderick B. Wideman QUAP107USA 1965
29393 7590
Eschweiler & Potashnik, LLC
Rosetta Center
629 Euclid Ave., Suite 1000
Cleveland, OH 44114
EXAMINER
PATEL, HITESHKUMAR R
ART UNIT PAPER NUMBER
2441
NOTIFICATION DATE DELIVERY MODE
07/14/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RODERICK B. WIDEMAN
Appeal 2017-004299
Application 14/515,705
Technology Center 2400
Before JOSEPH L. DIXON, JOHN A. JEFFERY, and JOYCE CRAIG,
Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
STATEMENT OF THE CASE
Appellant’s invention uses a messaging policy to avoid sending
duplicate messages. To this end, the system determines whether a degree of
duplication in an email message exceeds a threshold and, if so, the message
is deduplicated to produce a reduced email message with less information
than the original message. See generally Abstract; Spec. ]Hf 24—27. Claim 1,
reproduced below with our emphasis, is illustrative:
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Application 14/515,705
1. A non-transitory, computer-readable medium storing
computer-executable instructions that when executed by a personal
communication device, control the personal communication device to
perform a method, the method comprising:
accessing a messaging policy;
interfacing with an email application running on the personal
communication device;
accessing an email message associated with the email
application;
determining a degree of duplication in the email message;
upon determining that the degree of duplication exceeds a
threshold identified in the messaging policy, deduplicating the email
message to produce a reduced email message having less information
than the email message, and providing the reduced email message to a
recipient; and
upon determining that the degree of duplication does not exceed
a threshold identified in the messaging policy, providing the email
message.
THE REJECTIONS1
The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Graff (US 2014/0379814 Al; Dec. 25, 2014)2 and Staats
1 Because the Examiner withdrew a rejection under § 101 (Ans. 2), that
rejection is not before us.
2 Graffs filing date (June 21, 2013) is before the present application’s filing
date (October 16, 2014), but after the August 16, 2011 filing date of the
parent application (13/210,590) of which the present application is a
continuation-in-part. Nevertheless, Appellant does not dispute Graffs
qualification as prior art to the present application.
2
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(US 2007/0282956 Al; Dec. 6, 2007). Final Act. 1-9?
The Examiner rejected claims 2—4, 7, and 9—13 under 35 U.S.C.
§ 103(a) as unpatentable over Graff, Staats, and Floyd (US 9,092,151 Bl;
July 28, 2015).3 4 Final Act. 9-16.
The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Graff, Staats, Floyd, and Grobman (US 2004/0010543
Al; Jan. 15, 2004). Final Act. 16-17.
The Examiner rejected claims 14—20 under 35 U.S.C. § 103(a) as
unpatentable over Floyd, Graff, and Staats. Final Act. 18—25.
THE OBVIOUSNESS REJECTION OVER GRAFF AND STAATS
The Examiner finds that Graff discloses, among other things, upon
determining that a degree of duplication exceeds a threshold identified in a
messaging policy, deduplicating an email message to suppress the message;
otherwise, providing the message. Final Act. 7—9. The Examiner
acknowledges that Graff does not explicitly disclose deduplicating a
message to produce a reduced email message having less information than
the email message, and providing the reduced email message to a recipient,
and cites Staats for teaching this feature in concluding that the claim would
have been obvious. Final Act. 9.
3 Throughout this opinion, we refer to (1) the Final Rejection mailed May 2,
2016 (“Final Act.”); (2) the Appeal Brief filed September 12, 2016 (“App.
Br.”); (3) the Examiner’s Answer mailed November 14, 2016 (“Ans.”); and
(4) the Reply Brief filed January 13, 2017 (“Reply Br.”).
4 Floyd’s filing date (March 13, 2013) is before the present application’s
filing date, but after that of the ’590 parent application. Nevertheless,
Appellant does not dispute Floyd’s qualification as prior art to the present
application.
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Appellant argues that Graff and Staats collectively do not teach or
suggest the recited deduplication. App. Br. 20-23; Reply Br. 5—7.
According to Appellant, Graff sends messages across multiple platforms to
recipients in a multi-organizational environment, and Staats organizes and
views a message thread according to a hierarchy. App. Br. 23. Appellant
acknowledges that Graff can suppress duplicate email messages, but argues
this suppression differs from deduplication because it does not delete the
email message, but rather does not display it. Reply Br. 5—7.
ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Graff and Staats collectively would have taught or suggested upon
determining that a degree of duplication exceeds a threshold identified in a
messaging policy, deduplicating an email message to produce a reduced
email message having less information than the email message; otherwise,
providing the message?
ANALYSIS
We begin by construing a key term in claim 1, namely
“deduplicating.” Notably, the Specification does not define the term
“deduplicating” explicitly, unlike other terms whose clear definitions leave
no doubt as to their meaning. See, e.g., Spec. ]Hf 43—48 (defining “computer-
readable medium,” “data store,” “logic,” etc.). Nevertheless, the
Specification explains that deduplication reduces redundant data by storing a
single copy of data, and may involve dividing a larger piece of data into
smaller pieces of data. Our emphasis on the permissive term “may”
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underscores that this division-based deduplication is merely one exemplary
form of deduplication—not the only such form described in the
Specification. Accord Spec. 115 (“While chunking and hashing are
described, one of ordinary skill in the art will appreciate that other data
deduplication approaches may be employed.”).5
Although this description informs our understanding of the recited
deduplication, it is not limiting. We, therefore, construe the term
“deduplicating” with its plain meaning in the art. One computer dictionary
defines the term “dedupe” (which is short for “deduplicate”) as “the
operation of removing duplicate entries from a database of names and
addresses.” Dick Pountain, The Penguin Concise Dictionary of
Computing 113 (2003). Another dictionary defines the term “dedupe” as
“[a] file processing term for removing duplicate records from the base file.”
Harry Newton, Newton’s Telecom Dictionary 289 (22d ed. 2006).
Given this understanding of deduplication in the art and the associated
description in the Specification, deduplicating an email message in the
context of claim 1, then, involves removing at least some duplicate data or
information from that message to produce a reduced email message with less
information than the original email message.
With this construction, we see no error in the Examiner’s reliance on
Graff and Staats for collectively at least suggesting the recited deduplication.
Final Act. 8—9; Ans. 4—7, 9-11. As Graff’s Abstract explains, messages may
5 That dependent claim 2 further limits the recited deduplication to a
particular chunking technique underscores the fact that independent claim 1
is not limited to that particular deduplication technique under claim
differentiation principles. See Free Motion Fitness, Inc. v. Cybexlnt’l, Inc.,
423 F.3d 1343, 1351 (Fed. Cir. 2005).
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be screened to reduce or eliminate potentially duplicate messages via
duplication filters. Graffs system identifies these potentially duplicate
messages by determining whether a particular degree of duplication exceeds
a policy-based threshold and, if so, the duplicate message is suppressed in
some embodiments so that it is invisible to the recipient. See Final Act. 8—9
(citing Graff 11111-21, 126).
Our emphasis underscores the fact that Graffs technique is not
limited to suppressing duplicate messages to prevent their display as
Appellant seems to suggest (see Reply Br. 6), but also includes deleting
duplicate messages in other embodiments. See Graff 1126. Although
Appellant is correct that Graffs supressing duplicate messages includes not
deleting them (Reply Br. 6) with respect to some embodiments, Graffs
paragraph 126 nonetheless also suggests deleting duplicate messages in
other embodiments. Accord Graff 1138 (noting that Graffs system can
eliminate all but one of the identified duplicate messages to prevent
delivering the duplicates). But leaving this deletion aside, the Examiner
finds—and we agree—that Graffs suppressing duplicate messages
“deduplicates” those messages to the extent that at least some duplicate data
or information from those messages is removed at least with respect to their
display. See Final Act. 8; Ans. 6. Appellant’s arguments to the contrary
(Reply Br. 5—6) are unavailing and not commensurate with the scope of the
term “deduplicating” noted previously.
Although the Examiner acknowledges that Graff does not explicitly
disclose deduplicating a message to produce a reduced email message
having less information than the email message, and providing the reduced
email message to a recipient, we see no error in the Examiner’s reliance on
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Staats for at least suggesting that feature. Final Act. 9; Ans. 7, 9—11. The
Examiner finds—and we agree—that blocking displaying duplicate content
in a parent message in Staats’ Figure 2D and paragraph 47 at least suggests
producing a reduced email message with less information than the original
email message. Final Act. 9; Ans. 7.
Given this functionality, we see no error in the Examiner’s conclusion
that providing a reduced email message in Graffs deduplicating system
would have been obvious in light of Staats for the reasons indicated by the
Examiner. Final Act. 9; Ans. 10—11. Appellant’s arguments regarding
Graffs and Staats’ individual shortcomings regarding the recited
deduplication (App. Br. 20-21; Reply Br. 5—6) do not show nonobviousness
where, as here, the rejection is based on the cited references’ collective
teachings. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
On this record, the Examiner’s proposed combination is supported by
articulated reasoning with some rational underpinning to justify the
Examiner’s obviousness conclusion.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1.
THE REJECTION OVER GRAFF, STAATS, AND FLOYD
We also sustain the Examiner’s rejection of claim 2 reciting, in
pertinent part, a repository of sub-blocks specific to the email application.
Despite Appellant’s arguments to the contrary (App. Br. 23—24; Reply Br.
2), Appellant does not persuasively rebut the Examiner’s reliance on Floyd
for at least suggesting the recited email-specific sub-block repository. Final
Act. 10—11; Ans. 12—13. In the Background section describing known
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deduplication functions, Floyd explains that an example of a stored file
made up of one or more segments (i.e., “chunks”) can be an attachment to
multiple emails in an email storage system. Floyd, col. 1,11. 17—31. This
storage system of email-based chunks at least suggests a repository of
chunk-based sub-blocks specific to an associated email application.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 2, and claims 3, 4, 7, and 9-13, not argued separately with
particularity.
THE REJECTION OVER GRAFF, STAATS, FLOYD, AND GROBMAN
We do not, however, sustain the Examiner’s rejection of claim 8
reciting removing an attachment to the email message upon determining that
the attachment has more than a threshold number of duplicate sub-blocks
with respect to the repository of sub-blocks. On this record, we find
problematic the Examiner’s reliance on Grobman’s paragraphs 23, 27, and
30 for teaching this feature. See Final Act. 16—17; Ans. 16—18.
Paragraph 14 of Appellant’s Specification explains that larger pieces
of data (i.e., “blocks”) are divided into small pieces of data known as “sub­
blocks” or “chunks.” Claim 8, then, implicitly requires dividing an email
attachment into sub-blocks, and comparing the number of those sub-blocks
to a threshold.
Although Grobman’s system uses hash values to avoid obtaining
duplicate copies of email attachments in paragraphs 23, 27, and 30 as the
Examiner indicates (Ans. 18), we fail to see—nor has the Examiner
explained—how this use of hash values teaches or suggests dividing the
attachment into sub-blocks, let alone comparing the number of those
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sub-blocks to a threshold as a basis for removing the attachment as claimed.
Accord App. Br. 26—27; Reply Br. 4—5 (noting this deficiency). Nor will we
speculate in that regard here in the first instance on appeal.
Therefore, we are persuaded that the Examiner erred in rejecting
claim 8.
THE REJECTION OF CLAIMS 14-20
Claims 14 and 15
We will, however, sustain the Examiner’s rejection of claim 14
essentially for the reasons indicated previously regarding claims 1 and 2, and
the reasons indicated by the Examiner. Final Act. 17—21; Ans. 13—14. First,
Appellant’s arguments regarding Graff and Staats not generating a reduced
email message (App. Br. 24) are unpersuasive for the reasons previously
discussed. Second, Appellant’s arguments regarding Floyd’s alleged
shortcomings (App. Br. 24—25) are not germane to the reason why the
Examiner cited the reference and do not persuasively rebut the Examiner’s
rejection, which is not based on Floyd alone, but rather the cited references’
collective teachings. See Final Act. 17—21; see also Merck, 800 F.2d at
1097.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 14, and claim 15 not argued separately with particularity.
Claims 16—20
We also sustain the Examiner’s rejection of claim 16 reciting, in
pertinent part, the thread specific repository of sub-blocks is specific to a
group of less than 100 email recipients. Claim 16 depends from claim 15
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which depends from independent claim 14. In rejecting claim 14, the
Examiner relies on Floyd for teaching, among other things, deduplicating the
message by (1) chunking the message into sub-blocks, and (2) identifying
duplicate or unique sub-blocks with respect to a thread specific repository of
sub-blocks. Final Act. 18—19. The Examiner also cites Floyd for teaching
the limitations of claim 15 from which claim 16 depends. Final Act. 21—22.
In rejecting claim 16, however, the Examiner cites Graff for teaching
the additional limitation that the thread specific repository of sub-blocks is
specific to a group of less than 100 email recipients. Final Act. 22 (citing
Graff 11 82-85, 111-21, 126).
Despite Appellant’s arguments to the contrary (App. Br. 25—26; Reply
Br. 3—4), we see no error in the Examiner’s reliance on Graff in this regard,
particularly when considered in light of the teachings of the other cited
references, including Floyd. Because the Examiner finds that Floyd teaches
a thread specific repository of sub-blocks (Final Act. 21—22), we see no
reason why such a repository could not be specific to a group of email
recipients, particularly in light of Graff’s teachings regarding recipients
receiving messages via email in paragraph 84. Appellant’s arguments
regarding Graffs individual shortcomings regarding the recited repository
(App. Br. 25—26; Reply Br. 3 4) do not show nonobviousness where, as
here, the rejection is based on the cited references’ collective teachings. See
Merck, 800 F.2d at 1097.
To be sure, Graff does not specify a particular number of email
recipients, let alone less than 100 as claimed. Nevertheless, given the cited
references’ collective teachings, we see no reason why limiting the disclosed
recipients to less than 100 would not have been at least an obvious variation
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within the level of ordinarily skilled artisans yielding a predictable result.
To the extent that Appellant contends otherwise (see App. Br. 25—26; Reply
Br. 3—4), there is no persuasive evidence on this record to substantiate such a
contention.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 16, and claims 17—20 not argued separately with particularity.
CONCLUSION
Under § 103, the Examiner did not err in rejecting claims 1—7 and
9—20, but erred in rejecting claim 8.
DECISION
We affirm-in-part the Examiner’s decision to reject claims 1—20.
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).
AFFIRMED-IN-PART
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