Microsoft Technology Licensing, LLC

Patent Trials and Appeals Board

Sep 2, 2020

2019003467 (P.T.A.B. Sep. 2, 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.
14/572,814 12/17/2014 Vignesh Sachidanandam 356009-US-NP 1931
143198 7590 09/02/2020
MICHAEL BEST & FRIEDRICH LLP (MS)
790 N WATER ST
SUITE 2500
MILWAUKEE, WI 53202
EXAMINER
BLAUFELD, JUSTIN R
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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 VIGNESH SACHIDANANDAM,
HIROSHI TSUKAHARA, and NED BEARER FRIEND
________________

Appeal 2019-003467
Application 14/572,814
Technology Center 2100
____________

Before ELENI MANTIS MERCADER, JOYCE CRAIG, and
MATTHEW J. McNEILL, Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3‒10, 12‒15, and 17‒21, which are all the claims
pending in this application.1 Claims 2, 11, and 16 are canceled. See Appeal
Br. 13‒16. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

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.
Appeal 2019-003467
Application 14/572,814

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STATEMENT OF THE CASE
Introduction
Appellant’s application relates to reordering summaries of electronic
messages based on a configurable persistence. Spec. ¶ 2. Claim 1 illustrates
the appealed subject matter and read as follows:
1. A method executed on a computing device to restructure
a view of messages based on configurable persistence, the
method comprising:
displaying summaries of the messages within a summary
pane of a messaging user interface (UI);
inferring a due date based on a content of a first message
from the messages;
automatically reordering the displayed summaries such
that a first summary associated with the first message is moved
from an original location on the summary pane that corresponds
to a receipt time of the first message to a top location on the
summary pane for a duration of a reorder time based on the
inferred due date;
displaying the reorder time within the first summary
instead of the receipt time of the first message in order to
distinguish the first summary from remaining summaries; and
upon an expiration of the duration of the reorder time,
displaying the first summary at the original location on the
summary pane that corresponds to the receipt time of the first
message.

The Examiner’s Rejections
Claims 1, 3‒10, 12‒14, 17, 18, 20, and 21 stand rejected under
35 U.S.C. § 103 as being unpatentable over Tysowski (US 2008/0270560
A1; Oct. 30, 2008) and Baird (US 2015/0334061 A1; Nov. 19, 2015). Final
Act. 4‒23.
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Application 14/572,814

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Claim 15 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Tysowski, Baird, and MacBeth (US 2009/0235196 A1; Sept. 17, 2009).
Final Act. 23‒24.
Claim 19 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Tysowski, Baird, and Underwood (US 2014/0143738 A1; May 22,
2014). Final Act. 24‒29.
ANALYSIS
The Examiner finds the combination of Tysowski and Baird teaches
or suggests “inferring a due date based on a content of a first message from
the messages,” as recited in claim 1. See Final Act. 5; see also Ans. 4‒6. In
particular, the Examiner finds Tykowski teaches inferring from an email
message a priority level of the message, which the Examiner equates to the
claimed “due date.” See Ans. 5. The Examiner concludes both the claimed
“due date” and Tysowski’s priority level provide the information the
computing device needs to reorder the displayed summaries. Id. The
Examiner concludes the limitation “due date” is not entitled to weight in the
patentability analysis beyond this functional use because the content of the
information is non-functional descriptive material. See id. at 6 (citing Ex
parte Nehls, 88 USPQ2d 1883, 1887‒90 (BPAI 2008) (precedential)).
Appellant argues the Examiner erred because Tysowski teaches
retrieving a priority level from the header of a message, not inferring a due
date from the content of a message. See Appeal Br. 7‒8 (citing Tysowski
¶ 47).
Appellant has persuaded us of Examiner error. The Examiner has
failed to establish that Tysowski teaches or suggests “inferring a due date
based on a content of a first message from the messages.” Tysowski teaches
Appeal 2019-003467
Application 14/572,814

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determining a priority level for a message, where the priority level may be a
default value or may be provided in optional header information included
with the message. Tysowski ¶ 47. We agree with Appellant that Tysowski’s
priority level is not a “due date,” as recited in claim 1.
First, claim 1 recites “automatically reordering the displayed
summaries such that a first summary . . . is moved from an original location .
. . to a top location . . . for a duration of a reorder time based on the inferred
due date.” Claim 1 further recites “upon an expiration of the duration of the
reorder time, displaying the first summary at the original location.” Thus,
claim 1 recites using the inferred due date to determine the duration of the
reorder time for a message and, upon expiration of the duration, returning
the message to its original location. We, therefore, disagree with the
Examiner’s determination that the claimed “due date” is non-functional
descriptive material because claim 1 recites a specific function—reordering
the messages—that is based on the due date. Tysowski teaches using a
priority level to reorder messages, but a priority level is not a date, let alone
a due date.
Second, with regard to the functional aspect of reordering messages,
the Examiner finds Tysowski uses the priority level to reorder messages, but
the Examiner has not established that Tysowski’s priority level is used to
determine “duration of a reorder time,” as claimed. Thus, the Examiner has
failed to establish that Tysowski teaches using its priority level in a
functionally equivalent way to the claimed “due date.”
For these reasons, the Examiner has failed to sufficiently establish that
Tysowski and Baird, alone or in combination, teach or suggest the disputed
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Application 14/572,814

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“inferring” step.2 We, therefore, do not sustain the Examiner’s obviousness
rejection of independent claim 1.3 We also do not sustain the obviousness
rejection of independent claims 12 and 18, which recite commensurate
subject matter. We also do not sustain the obviousness rejection of
dependent claims 3‒10, 13, 14, 17, 20, and 21.
Claims 15 and 19 stand rejected as unpatentable over the combination
of Tysowski, Baird, and one of MacBeth (claim 15) and Underwood (claim
19). The Examiner does not find that MacBeth or Underwood teaches or
suggests the “inferring” step. Accordingly, we do not sustain the
obviousness rejections of claims 15 or 19 for the same reasons.

SUMMARY
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3‒10, 12‒
14, 17, 18,
20, 21
103 Tysowski, Baird 1, 3‒10,
12‒14, 17,
18, 20, 21
15 103 Tysowski, Baird,
MacBeth
15
19 103 Tysowski, Baird,
Underwood
19

2 Because we agree with at least one of the dispositive arguments advanced
by Appellant, we need not reach the merits of Appellant’s other arguments.
3 Should there be further prosecution of this application, the Examiner may
wish to consider whether the claims are patent eligible under 35 U.S.C.
§ 101. Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) § 1213.02.
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Application 14/572,814

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Overall
Outcome
1, 3‒10,
12‒15, 17‒
21

REVERSED