2020004496 (P.T.A.B. Dec. 13, 2021)

International Business Machines Corporation

Patent Trials and Appeals BoardDec 13, 2021

2020004496 (P.T.A.B. Dec. 13, 2021)

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. 15/368,630 12/04/2016 Michael N. Abernethy JR. CAM920070222US2_8150-0725 1932 112978 7590 12/13/2021 Cuenot, Forsythe & Kim, LLC 20283 State Road 7, Suite 300 Boca Raton, FL 33498 EXAMINER HAILU, TADESSE ART UNIT PAPER NUMBER 2173 NOTIFICATION DATE DELIVERY MODE 12/13/2021 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 following e-mail address(es): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHAEL N. ABERNETHY JR., TRAVIS M. GRIGSBY and FRANK L. JANIA ___________ Appeal 2020-004496 Application 15/368,630 Technology Center 2100 ____________ Before CARL W. WHITEHEAD JR., JOHNNY A. KUMAR and CARL L. SILVERMAN, Administrative Patent Judges. WHITEHEAD JR., Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2020-004496 Application 15/368,630 2 STATEMENT OF THE CASE1 Appellant2 filed a Request for Rehearing, under 37 C.F.R. § 41.52, of our Decision affirming the Examiner’s final rejection of claims 21–40.3 Appellant contends that the Decision contains an “undesignated new ground of rejection.” Request 1. For the reasons given below, we grant Appellant’s request for rehearing and enter a new ground of rejection under 37 C.F.R. § 41.50(b). References Name4 Reference Date Chen US 2007/0198645 A1 August 23, 2007 Eren US 2007/0233801 A1 October 4, 2007 We affirm the obviousness rejection of claims 21–40 under 35 U.S.C. § 103(a) as being unpatentable over Eren and Chen. See Decision 9; see also Answer 3–11. 1 Rather than reiterate Appellant’s arguments and the Examiner’s determinations, we refer to the Appeal Brief (filed January 17, 2020), the Reply Brief (filed May 29, 2020), the Final Action (mailed September 6, 2019) and the Answers (mailed April 3, 2020; April 8, 2021), for the respective details. 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a) (“The word ‘applicant’ when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.”). Appellant identifies IBM Corporation as the real party in interest. Appeal Brief 1. “A Decision on Appeal was rendered in parent U.S. Application No. 12/117, 762, on December 21, 2015.” Appeal Brief 1. 3 Claims 21 and 31 are independent. Claims 1–20 are cancelled. 4 All reference citations are to the first named inventor only. Appeal 2020-004496 Application 15/368,630 3 The Examiner determines that, “Eren, however does not seem to clearly teach ‘receiving, from the user, a selection of one of a plurality of messages within an IM session transcript’ and ‘generating an association between the stored IM message fragment and the selected one of the plurality of messages.”’ Answer 4 (emphasis added). The Examiner finds Chen addresses Eren’s deficiency by teaching, “generating an association between a stored IM message fragment and the selected one of the plurality of messages” as recited in claim 21. Answer 5 (citing Chen ¶¶ 10, 49, 58, 65–69 and Abstract). Contrary to the Examiner’s determination, we do not find Eren deficient based upon Applicant’s Figure 4 in comparison to Eren’s Figure 1: Here, we discern no meaningful difference between Appellant’s drop down type list where fragment messages are stored and Eren’s sub-windows 130 and 140 where message fragments are stored. See Eren ¶ 22; Appellant’s Figure 4. Therefore, Eren actually discloses generating an association between a stored IM message fragment and a selected message as required by claim 21. See Eren ¶ 22, [Figure 1]. Decision 8. Appellant contends: On one hand, the Examiner asserts that Eren does not disclose the limitations of “generating an association between a stored IM message fragment and the selected one of the plurality of messages.” On the other hand, the Board directly contradicts the Examiner’s findings of fact by asserting that “Eren actually discloses generating an association between a stored IM message fragment and a selected message as required by claim 21.” Request 4. Appellant argues, that, “The Board’s finding of fact that ‘Eren actually discloses generating an association between a stored IM message fragment and a selected message’ is new to the proceedings, and Appeal 2020-004496 Application 15/368,630 4 consequently, the Board should have designated a new grounds of rejection.” Request 4. Appellant further argues: Notwithstanding that the Board’s finding of fact that “Eren actually discloses generating an association between a stored IM message fragment and a selected message” is new to the proceedings, this finding of fact is both unexplained and not supported by the teachings of Eren. The Board proceeded this finding of fact with the assertion that “We discern no meaningful difference between Appellant's drop down type list where fragments are stored and Eren’s sub-windows 130 and 140 where message fragments are stored.” However, this finding (i.e., “we discern no meaningful difference ...”) does not explain how Eren discloses the limitations at issue. Moreover, Appellants’ position is that Eren does not disclose the limitations at issue. Request 4. We find Appellant’s argument that our finding of fact in regard to Eren was not explained in the Decision unpersuasive of error. In the Decision, not only do we site to multiple paragraphs from both Eren and Appellant’s Specification for comparison; we also reproduce specific paragraphs from the Specification, and reproduce both Eren’s Figure 1 and Appellant’s Figure 4 to support our finding. See Decision 4–8. However, because we rely on facts and reasoning not raised by the Examiner, we designate our affirmance of claims 21–40 as new ground of rejection to safeguard Appellant’s procedural entitlements. See In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011) (“Mere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making new ground of rejection Appeal 2020-004496 Application 15/368,630 5 when the Board relies on new facts and rationales not previously raised to the applicant by the examiner.”). Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Granted Denied New Ground 21–40 103 Eren, Chen 21–40 21–40 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 the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE 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 prosecution 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. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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). See 37 C.F.R. § 41.50(f). Appeal 2020-004496 Application 15/368,630 6 REHEARING GRANTED 37 C.F.R. § 41.50(b)