Microsoft Technology Licensing, LLC

Patent Trials and Appeals Board

Jun 29, 2020

14737658 - (D) (P.T.A.B. Jun. 29, 2020)

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.
14/737,658 06/12/2015 Santosh Kumar 357322-US-NP 6975
143198 7590 06/29/2020
MICHAEL BEST & FRIEDRICH LLP (MS)
790 N WATER ST
SUITE 2500
MILWAUKEE, WI 53202
EXAMINER
BENGZON, GREG C
ART UNIT PAPER NUMBER
2444
NOTIFICATION DATE DELIVERY MODE
06/29/2020 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SANTOSH KUMAR, GISELLI PANONTINI DESOUZA SANA,
ALISSON TEIXEIRA, AMIT GUPTA, CINDY KWAN,
SANGYA SINGH, NARESH SUNDARAM, and JOHANNES GEHRKE
____________

Appeal 2019-001669
Application 14/737,658
Technology Center 2400
____________

Before CAROLYN D. THOMAS, JEREMY J. CURCURI, and
AMBER L. HAGY, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 8–11, 15, and 17–20. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Microsoft
Technology Licensing, LLC. Appeal Br. 2.
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The present invention relates generally to an endorsement being
transmitted to participants of a conversation over a designated
communication channel. See Spec., Abstract.
Method Claim 8 is illustrative:
8. A method executed on a computing device to
distribute endorsement indications in a communication
environment, the method comprising:
in response to a receipt of an exchanged communication
through a communication service, detecting a selection of an
endorsement for the exchanged communication by a recipient
of the exchanged communication;
transmitting an endorsement indication based on the
selected endorsement to a sender and one or more other
recipients of the exchanged communication over a designated
communication channel instead of transmitting the endorsement
indication as a reply or reply-all type communication for
reduction of computing and communication resources, wherein:
the designated communication channel is a control
messaging channel in a transport layer of the communication
service that is distinct from a communication exchange channel
over which the exchanged communication is exchanged,
the endorsement indication is transmitted as a control
message that comprises an action to create the endorsement
indication and metadata associated with the action that includes
the selected endorsement, and
special transport delivery agents at mailboxes of the
sender and the one or more other recipients of the exchanged
communication are configured to intercept the control message
and process the metadata to create the endorsement indication;
providing the endorsement indication as one of a
message and a notification such that display of the endorsement
indication is enabled through communication user experiences
associated with the sender and the one or more other recipients
of the exchanged communication; and
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enabling removal of the endorsement indication by the
sender or the one or more other recipients of the exchanged
communication.

Appellant appeals the following rejections:
R1. Claims 1–6, 8–11, 15, and 17–20 are provisionally rejected on
the ground of nonstatutory double patenting as being unpatentable over
claims 1–8 of copending Application No. 14/737,805. Final Act. 11.
R2. Claim 1–6, 8–11, 15, and 17–20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Zhang (US 2014/0325391 A1, Oct. 30,
2014), Ogawa (US 2015/0081790 A1, Mar. 19, 2015), McDonough (US
2008/0305815 A1, Dec. 11, 2008), Pascal (US 2014/0330913 A1, Nov. 6,
2014), and Bendel (US 2011/0320542 A1, Dec. 29, 2011). Final Act. 12–
37.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
Provisional Double Patenting Rejection
Claims 1–6, 8–11, 15, and 17–20 are provisionally rejected on the
ground of nonstatutory double patenting as being unpatentable over claims
1–8 of copending Application No. 14/737,805. Final Act. 11.
Although Appellant requests that “the rejection be held in abeyance
until the pending claims are otherwise indicated to be in condition for
allowance” (see Appeal Br. 5), we highlight that cited Application No.
14/737,805 issued as Patent No. 9,954,807 on April 24, 2018, and a
Terminal Disclaimer was filed on December 14, 2017, with reference to the
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present application, i.e., Application No. 14/737,658 filed June 12, 2015.
As a result, the above-noted provisional rejection is rendered moot.
Rejection under § 103(a)
We note that Appellant makes various arguments that do not
persuasively rebut the combination made by the Examiner. For instance, as
noted by the Examiner (see Ans. 5), Appellant cannot show non-obviousness
by attacking references individually, where the rejections are based on
combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425–26 (CCPA 1981). The
following are some exemplary arguments made by Appellant, which fall into
this category:
Firstly, Appellant contends “McDonough fails to teach or suggest a
control messaging channel in a transport layer of the communication service
(the designated communication channel) that transmits an endorsement
indication to a sender and other recipients of the exchanged
communication.” Appeal Br. 8–9.
The Examiner emphasizes, and we agree, that “McDonough is not
relied upon to disclose transmitting an endorsement indication to a sender
and other recipients of the exchanged communication” (Ans. 4; see also
Final Act. 14), but rather Zhang is relied upon to teach this feature. Id.
citing Zhang ¶¶ 38, 51. Appellant fails to rebut these specific teachings of
Zhang and/or the combination made.
Secondly, Appellant contends that “Pascal fails to teach or suggest a
control messaging channel (i.e., a channel distinct from a communication
exchange channel) that is internal (i.e., within a transport layer of the
communication service).” Appeal Br. 10.
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The Examiner emphasizes that “Pascal is not relied upon to disclose a
channel distinct from a communication exchange channel” (Ans. 6; see also
Final Act. 21–22), but rather McDonough is relied upon to teach a channel
distinct from a communication exchange channel. Id. (citing McDonough
¶¶ 60, 61, 79). Here, Pascal is relied upon to teach that it is known to send
messages via channels within a transport layer of a communication service.
See Ans. 7; Final Act. 25. Appellant’s arguments are limited to Pascal’s
teachings and not what the combined McDonough-Pascal would have
suggested.
Thirdly, Appellant contends that “Pascal fails to teach or suggest that
(1) the agents are located at the mailboxes of the sender . . . and (2) the
agents are configured to intercept a control message (as opposed to email)
. . . and process the metadata to create the endorsement indication.” Appeal
Br. 10.
The Examiner finds that Pascal discloses “email client applications
. . . such as Google Mail and Microsoft Outlook™ that are equivalent to
agents that are located at the mailboxes of the sender.” See Ans. 8; see also
Final Act. 24, citing Pascal ¶ 49. Appellant fails to rebut this specific
finding. Additionally, the Examiner emphasizes that “Pascal is not relied
upon to disclose [] intercepting a control message (as opposed to email) as it
is transmitted over the control messaging channel” (see Ans. 8; see also
Final Act. 17), but rather Ogawa is being relied upon for this specific
feature. Id. Also, the Examiner relies upon Zhang, not Pascal, to teach
processing the metadata to create the endorsement indication. See Final Act.
15. Here, Appellant’s arguments are limited to Pascal’s teachings and not
what the combined Ogawa-Zhang-Pascal would have suggested.
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Finally, Appellant contends that “[a]lthough a reduction of resources
may be implied from the reduction of the number of messages sent, in
Bendel, the single message is transmitted as a standard communication (i.e.,
as a communication analogous to a reply or a reply-all type communication)
. . . . Thus, Bendel teaches away from Claim [8]” because Bendel teaches a
communication analogous to a reply. Appeal Br. 10–11.
Here, the Examiner relies upon Bendel to teach “a decluttering system
for reducing the redundancy in voluminous content” (Final Act. 26), i.e., for
teaching the claimed reduction of computing and communication resources.
The Examiner emphasizes that “Bendal is not relied upon for transmitting an
endorsement indication over a designated communication channel.”
Ans. 11. Instead, Zhang is relied upon for teaching transmitting an
endorsement indication to a sender, and McDonough is relied upon for
teaching a channel distinct from a communication exchange. Id.
Furthermore, Bendel is not relied upon to teach the claimed instead of
transmitting the endorsement indication as a reply or reply-all type
communication, rather Pascal is being relied upon by the Examiner for this
teaching. See Final Act. 24, citing Pascal ¶ 65. In other words, for the
aforementioned limitation, Appellant merely presents arguments regarding
Bendel, although the Examiner is relying on the combined teachings of
Bendal, Zhang, McDonough, and Pascal.
In summary, Appellant’s numerous arguments do not take into
account what the collective teachings of the prior art would have suggested
to one of ordinary skill in the art and are therefore ineffective to rebut the
Examiner’s prima facie case of obviousness. See In re Keller, 642 F.2d at
425 (“The test for obviousness is not whether . . . the claimed invention must
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be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art.”) (citations omitted). This reasoning is
applicable here.

CONCLUSION
The Examiner’s rejection of claims 1–6, 8–11, 15, and 17–20 as being
unpatentable under 35 U.S.C. § 103 is affirmed.

In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8–11, 15,
17–20
103 Zhang, Ogawa,
McDonough,
Pascal, Bendel
1–6,
8–11, 15,
17–20

No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED