International Business Machines CorporationDownload PDFPatent Trials and Appeals BoardAug 4, 202013893836 - (D) (P.T.A.B. Aug. 4, 2020) Copy Citation 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. 13/893,836 05/14/2013 Itzhack Goldberg CAM920130013US1_8150-0343 2110 52021 7590 08/04/2020 Cuenot, Forsythe & Kim, LLC 20283 State Road 7 Ste. 300 Boca Raton, FL 33498 EXAMINER PANT, RANJAN ART UNIT PAPER NUMBER 2458 NOTIFICATION DATE DELIVERY MODE 08/04/2020 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 ITZHACK GOLDBERG, BRUCE A. KAHN, and BOAZ MIZRACHI ____________ Appeal 2019-002585 Application 13/893,836 Technology Center 2400 ____________ Before CARL W. WHITEHEAD JR., JAMES B. ARPIN, and MICHAEL J. ENGLE, Administrative Patent Judges. ARPIN, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejections of claims 21–40, all of the pending claims. Final Act. 2.2 1 “Appellant” here refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party-in-interest as IBM Corporation. Appeal Br. 1. 2 In this Decision, we refer to Appellant’s Appeal Brief (“Appeal Br.,” filed July 16, 2018) and Reply Brief (“Reply Br.,” filed February 8, 2019); the Final Office Action (“Final Act.,” mailed February 27, 2018) and the Examiner’s Answer (“Ans.,” mailed December 17, 2018); and the Specification (“Spec.,” filed May 14, 2013). Rather than repeat the Examiner’s findings and determinations and Appellant’s contentions in their entirety, we refer to these documents. Appeal 2019-002585 Application 13/893,836 2 Claims 1–20 are cancelled. Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellant’s claimed methods, systems, and computer program products “relate[] to electronic mail processing and, more particularly, to processing read receipts for electronic mail.” Spec. ¶ 20. As noted above, claims 21–40 stand rejected. Claims 21, 28, and 35 are independent. Appeal Br. 27 (claim 21), 28–29 (claim 28), 30–31 (claim 35) (Claims App.). Claim 21 recites “[a] computer-implemented method”; claim 28 recites “[a] computer hardware system including an email server, comprising: a hardware processor programmed to initiate . . . executable operations” substantially as recited in claim 21; and claim 35 recites [a] computer program product, comprising a computer storage hardware device having stored therein program code, the program code, which when executed within an email server, causes the email server to perform steps substantially as recited in claim 21. Id. at 27–31. Claims 22–27 depend directly or indirectly from claim 21, claims 29–34 depend directly or indirectly from claim 28, and claims 36–40 depend directly or indirectly from claim 35. Id. at 27–32. Claim 21, reproduced below with disputed limitation emphasized, is representative. 21. A computer-implemented method performed within an email server, comprising: Appeal 2019-002585 Application 13/893,836 3 receiving, by the email server and from a sender, an email addressed to a plurality of users and a read receipt distribution list; forwarding, by the email server, the email and a read receipt request to addresses of the plurality of users; receiving, by the email server and from one of the plurality of users, a read receipt for the email; and forwarding, by the email server using the read receipt distribution list, the received read receipt to users included in the read receipt distribution list, wherein the read receipt distribution list is a subset of the plurality of addresses, and the forwarding the received read receipt does not forward the received read receipt to one or more users who are within the plurality of users to which the email is addressed but not within the read receipt distribution list. Id. at 27 (emphasis added). REFERENCES AND REJECTIONS The Examiner relies upon the following references in rejecting the claims: Name3 Number Issued/Publ’d Filed Fellenstein US 7,562,118 B2 July 14, 2009 July 10, 2003 Gusler US 2005/0021650 A1 Jan. 27, 2005 July 24, 2003 Kirchmeier US 2009/0077045 A1 Mar. 19, 2009 Nov. 24, 2008 Lyle US 2009/0138557 A1 May 28, 2009 Nov. 27, 2007 Claims 21, 22, 24, 25, 27–29, 31, 32, 34–36, 38, and 39 are rejected as unpatentable under 35 U.S.C. § 103 over the combined teachings of Gusler and Lyle. Final Act. 5–8. In addition, claims 23, 30, and 37 are rejected as 3 All reference citations are to the first named inventor only. Appeal 2019-002585 Application 13/893,836 4 unpatentable under 35 U.S.C. § 103 over the combined teachings of Gusler, Lyle, and Kirchmeier (id. at 8–9); and claims 26, 33, and 40 are rejected as unpatentable under 35 U.S.C. § 103 over the combined teachings of Gusler, Lyle, and Fellenstein (id. at 9–10).4 Appellant contests the obviousness rejection of independent claim 21 (Appeal Br. 15–22; Reply Br. 2–5), and claims 22, 24, 25, 27–29, 31, 32, 34–36, 38, and 39 stand or fall together with independent claim 21 (Appeal Br. 14). Similarly, Appellant does not contest the rejections of claims 23, 26, 30, 33, 37, and 40 separately. Because we determine that our affirmance of the rejection of independent claim 21 is dispositive, except for our ultimate decision, we do not discuss the merits of the rejections of claims 22–40 further herein. We review the appealed rejection of independent claim 21 for error based upon the issues identified by Appellant, and in light of the contentions and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Unless otherwise indicated, we adopt the Examiner’s findings in the Final Action and the Answer with respect to the affirmed rejections as our own and add any additional findings of fact for emphasis. We address the rejection of claim 21 below. 4 The Examiner rejected claims 21–40 under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Final Act. 3–4. The Examiner withdrew that rejection. Ans. 3. Appeal 2019-002585 Application 13/893,836 5 ANALYSIS 1. Obviousness of Claim 21 Over Gusler and Lyle As noted above, the Examiner rejects independent claim 21 as obvious over the combined teachings of Gusler and Lyle. Final Act. 5–7. The Examiner finds that Gusler teaches or suggests the majority of the limitations of claim 21. Id. at 5–6. Nevertheless, the Examiner finds “Gusler does not explicitly show: wherein the read receipt distribution list is a subset of the plurality of addresses.” Id. at 6 (formatting omitted); see Ans. 4. The Examiner finds, however, Lyle teaches this limitation. Final Act. 6–7; Ans. 4–5. In particular, Lyle states, In accordance with an embodiment of the present invention, a user other than a sender of an e-mail message to an addressed recipient can be designated to receive a return-receipt for the e- mail message. Thereafter, in response to the addressed recipient opening the e-mail message, a return receipt can be generated and forwarded to the designated recipient in lieu of or in addition to the sender of the e-mail message. Lyle ¶ 16 (emphases added); see Final Act. 6; Ans. 4; see also Lyle ¶¶ 17, 21, 22 (describing at least one delegate other than the sender), Claims 5 (“the delegate differing from the sender”) and 8 (“delegate for the return receipt other than the sender”). The Examiner concludes: It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have modified Gusler to incorporate the teaching of Lyle such that the sender can delegate a subset of the recipients of the email to receive the read receipts in lieu of or in addition to the sender. Doing so would make the system more reliable since the sender can delegate the read receipts to multiple recipients. Final Act. 6–7; see Lyle ¶ 18 (“each of the designated delegates can monitor the progress of receipt of the e-mail message”). Appeal 2019-002585 Application 13/893,836 6 Appellant challenges the Examiner’s obviousness rejection of claim 21 for two reasons. First, Appellant contends, “Lyle fails to teach that the delegates 150 are a subset (i.e., a part of a larger group) of the set that contains the recipients 120.” Appeal Br. 16; see id. at 16–21. Second, Appellant contends the Examiner fails to show that a person of ordinary skill in the art would have had reason to combine the teachings of Gusler and Lyle to achieve the methods of claim 21. Id. at 21–22; see Reply Br. 3–5. For the reasons given below, we disagree. First, with respect to the disputed limitation of claim 21, Appellant notes the Specification states, “a ‘subset’ means less, or fewer, than all. Accordingly, a ‘subset of the recipients’ or a ‘subset of all of the recipients’ means fewer, or less, than all of the recipients of an email.” Appeal Br. 15 (quoting Spec. ¶ 29). With respect to Lyle’s teachings, however, Appellant contends: Lyle refers to e-mail return receipt delegation. As stated by Lyle in paragraph [0006], “commercially distributed e-mail clients provide for a ‘return receipt’ to notice the sender when a sent message has become read.” Lyle teaches that an email 130 is sent to one or more recipients 120. However, the return receipt 140, intended to be sent to the sender 110 of the e-mail message 130, is delegated to be received by one or more delegates 150. Accordingly, instead of the sender 110 receiving the return receipt 140, the one or more delegates 150 receive the return receipt 140. Notably, Lyle fails to teach that the delegates 150 are a subset (i.e., a part of a larger group) of the set that contains the recipients 120. There is no explicit or suggested overlapping between the delegates 150 and recipients 120. Accordingly, the delegates 150 are not a subset of the recipients 120, and therefore, Lyle fails to teach the limitations for which the Examiner is relying only upon Lyle to teach. Appeal 2019-002585 Application 13/893,836 7 Id. at 16 (emphasis added). To the extent that the Examiner finds Lyle teaches this limitation, Appellant contends the Examiner is making an unsupported finding of an inherent teaching in Lyle. Id. at 16–21. The Examiner responds that Lyle broadly teaches a sender may address an email message to one or more recipients and can designate at least one delegate, in lieu of or in addition to the sender, to receive a return receipt. Ans. 4. The Examiner reads Lyle broadly to teach or suggest that the at least one delegate may be selected from the email message recipients. Id. As noted above, Lyle does not limit who can be a delegate, except that, in at least one embodiment, the delegate may be other than or in addition to the sender. See, e.g., Lyle ¶¶ 16, 17, 21, 22. Moreover, Lyle clearly discloses one or more persons may be delegates. See id. ¶¶ 17, 18. Nothing in Lyle excludes an email message recipient from being a delegate, and there are straightforward reasons why a delegate would also be a recipient (e.g., so the delegate knows why the delegate is suddenly receiving read receipts). See Final Act. 3; Ans. 5. This is not a question of inherency, but rather of the breadth and obviousness of Lyle’s disclosure. See Final Act. 2–3. “[O]bviousness does not require the prior art to reach expressly each limitation exactly.” Beckson Marine, Inc. v. NFM, Inc., 292 F.3d 718, 727 (Fed. Cir. 2002). Here, we are persuaded that a person of ordinary skill in the art would have understood Lyle to teach or suggest that a delegate may include an email message recipient and would have understood the benefits of making a delegate also a recipient. Thus, on this record, we are not persuaded the Examiner errs in finding Lyle teaches or suggests the disputed limitation. Second, Appellant contends the Examiner fails to show that a person of ordinary skill in the art would have had reason to combine the teachings Appeal 2019-002585 Application 13/893,836 8 of Gusler and Lyle to achieve the methods of claim 21. Appeal Br. 21–22. In particular, Appellant contends, although the Examiner finds the proposed combination of the teachings of Gusler and Lyle would “provid[e] more flexibility to the sender” and/or “be more efficient/reduce email clutter and network traffic,” neither reason supports modifying the teachings of Gusler to include a “read receipt distribution list [that] is a subset of the plurality of addresses.” Reply Br. 4 (quoting Ans. 4); see Final Act. 6. Nevertheless, Appellant’s contention appears to be based on a narrow reading of Lyle. As noted above, the Examiner finds, and Appellant does not challenge, that Gusler teaches, “forwarding the received read receipt does not forward the received read receipt to one or more users who are within the plurality of users to which the email is addressed but not within the read receipt distribution list.” Final Act. 5–6 (citing Gusler ¶¶ 28, 31, Fig. 2). The Examiner further finds that Lyle teaches identifying a subset of recipients to receive the read receipts as a receipt distribution list. Id. at 6. Gusler and Lyle address similar problems in the art (see Gusler ¶ 3; Lyle ¶¶ 4, 7), which also are addressed by the present application (see Spec. ¶ 2). As the U.S. Supreme Court explained, “[u]nder the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). Here, we are persuaded the Examiner provides sufficient support for the combination of the teachings of the applied references. Final Act. 6–7; Ans. 5. Consequently, we are not persuaded that the Examiner errs in rejecting claim 21, and we sustain the obviousness rejection of claim 21. Appeal 2019-002585 Application 13/893,836 9 2. The Remaining Claims As noted above, claims 28 and 35 recite limitations corresponding to the disputed limitation of claim 21, and Appellant challenges the rejection of independent claims 28 and 35 for the same reasons as claim 21. Appeal Br. 14. Each of claims 22–27, 29–34, and 36–40 depends directly or indirectly from independent claim 21, 28, or 35. Id. at 27–32 (Claims App.). Because we are not persuaded the Examiner errs with respect to the obviousness rejection of claim 21, we also are not persuaded the Examiner errs with respect to the obviousness rejections of claims 28 and 35, as well as to the pending claims dependent therefrom. See id. at 22–24. For this reason, we sustain the obviousness rejections of those claims. DECISIONS 1. The Examiner does not err in rejecting: a. claims 21, 22, 24, 25, 27–29, 31, 32, 34–36, 38, and 39 as unpatentable under 35 U.S.C. § 103 over the combined teachings of Gusler and Lyle; b. claims 23, 30, and 37 as unpatentable under 35 U.S.C. § 103 over the combined teachings of Gusler, Lyle, and Kirchmeier; and c. claims 26, 33, and 40 as unpatentable under 35 U.S.C. § 103 over the combined teachings of Gusler, Lyle, and Fellenstein. 2. Thus, on this record, claims 21–40 are unpatentable. Appeal 2019-002585 Application 13/893,836 10 CONCLUSION For the above reasons, we affirm the Examiner’s decision rejecting claims 21–40. In summary: Claims Rejected 35 U.S.C. § References Affirmed Reversed 21, 22, 24, 25, 27–29, 31, 32, 34– 36, 38, 39 103 Gusler, Lyle 21, 22, 24, 25, 27–29, 31, 32, 34– 36, 38, 39 23, 30, 37 103 Gusler, Lyle, Kirchmeier 23, 30, 37 26, 33, 40 103 Gusler, Lyle, Fellenstein 26, 33, 40 Overall Outcome 21–40 No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED Copy with citationCopy as parenthetical citation