Zoho Corporation Private Limited

Patent Trials and Appeals Board

Nov 30, 2020

2019003928 (P.T.A.B. Nov. 30, 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.
14/861,160 09/22/2015 Sridhar Vembu ZH005.US 7510
27946 7590 11/30/2020
ARTHUR J. BEHIEL
Silicon Edge Law Group LLP
7901 Stoneridge Drive
Suite 528
PLEASANTON, CA 94588
EXAMINER
COBY, FRANTZ
ART UNIT PAPER NUMBER
2454
NOTIFICATION DATE DELIVERY MODE
11/30/2020 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):
USPTO@dockettrak.com
art@siliconedgelaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SRIDHAR VEMBU, VIJAY SUNDARAM,
KARTHIKEYAN JAMBULINGAM and SUDHEER A GRANDHI

Appeal 2019-003928
Application 14/861,160
Technology Center 2400

Before CARL W. WHITEHEAD JR., DAVID M. KOHUT and
IRVIN E. BRANCH, Administrative Patent Judges.

PUR CURIAM.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–21. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use “Appellant” to reference the applicant as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“Zoho Corporation Private Limited.” Appeal Br. 1.
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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention “relates generally to document creation, and
more particularly to methods and systems for creating electronic documents
using simple commands.” Spec. ¶ 1. Claim 1 reproduced below is
illustrative of argued subject matter.
1. A computer-implemented method for creating a
document, the method comprising:
receiving a first communication from a first sender, the first
communication identifying zero or more recipients, the first
communication including a document specification including
zero or more formatting commands and document content;
parsing the first communication, the parsing including
determining whether the document specification is in a done
condition;
creating the document responsive to the first communication,
the creating including applying the zero or more formatting
commands to the document content;
storing the document; and
transmitting information for accessing the document to the first
sender, and to the zero or more recipients.
Appeal Br. 10, Claims Appendix.

Rejection
Claims 1–21 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Bedi (US 2007/0118598 A1; May 24, 2007) and
Muranaga (US 5,671,428; Sept. 23, 1997). Final Act. 3–12.
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OPINION
Claims 1–18
Appellant addresses claims 1–18 as a group. Appeal Br. 3–
7. Claim 1 is the base claim of claims 2–18, the only argued claim, and
accordingly representative. 37 C.F.R. § 41.37(c)(1)(iv). The argued
recitations are: “A computer-implemented method . . . comprising:
. . . receiving a first communication . . . including a document specification
. . . ; parsing the first communication, the parsing including determining
whether the document specification is in a done condition[.]” Id. Before
addressing Appellant’s contentions, we address the Examiner’s reliance on
Bedi and Muranaga.
The Examiner principally relies on Bedi. See Final Act. 3–4 (citing
Bedi ¶¶ 11–24, 30–47; abst.; Figs. 1C, 3A); Ans. 3–6 (citing Bedi ¶¶ 51–53;
Figs. 2, 3C). Bedi’s invention improves editing of an electronic
document. Bedi, abst. In Bedi’s cited teachings, an editor, “Alice,”
highlights “provisional text” of an electronic document (e.g., a title) and then
opens an instant message (IM) for collaborating on the highlighted
text. Bedi ¶¶ 32–34; Fig. 1b. The IM is provided to “Bob” and includes: a
conversation window 60 displaying comments (typed by Alice) and the
provisional text (highlighted by Alice); an empty input window 70 for entry
of Bob’s responsive comments and suggested changes (if any); and a send
icon 75. Id. ¶ 35, 38, 41–42; Fig. 1c. After adding responsive comments
(e.g., “This is my preferred title”) and suggested change/s (e.g., new text for
the title) to the input window 70, Bob provides them to Alice by selecting
the send icon 75. Id. ¶¶ 41–43; Fig. 1c. The IM accordingly changes
inasmuch now: displaying the entire conversation (i.e., the provisional text
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and chain of Alice and Bob’s comments) in the conversation window 60;
and emptying the input window 70 for entry of new comments and
suggested changes. Id. ¶¶ 44–47; Fig. 1d. Alice accepts the suggested
change by selecting an accept icon 80 provided only to her IM
window. Id. ¶ 47. Bedi keeps the IM open for further discussion (if
desired), but also extracts the suggested change and edits the document
accordant to the extraction. Id. ¶¶ 49–54.
The Examiner modifies Bedi in view of Muranaga’s “done” icons
described below. See Final Act. 3–4 (citing Muranaga col. 12, ll. 50–65;
Fig. 17B), 11 (citing Muranaga col. 8, ll. 52–53; Figs. 1, 3, 5); Ans. 4–6
(citing Muranaga col. 8, ll. 52–53; Figs. 10, 17A–B, 31, 39B, 45). In
Muranaga’s cited teachings, an editor opens a document editor window 141
andselects a document for editing. Muranaga col. 8, ll. 38–39; col. 12,
ll. 21–49; Figs. 3. The editor selects icons of the document editor window
141 to open a comment editor window 142 and, therewith, adds a comment
to the document. Id. at col. 9, ll. 13–14; col. 12, ll. 36–51; Fig. 5. The editor
then closes the comment editor window 142 by selecting a respective “done”
icon. Id. at col. 12, ll. 51–53. The editor may then close the document
editor window 141 by selecting a respective “done” icon. Id. at col. 12,
ll. 63–65.
The Examiner concludes it would have been obvious to add a “done”
icon to Bedi’s IM, in view of Muranaga, such that the editor (Alice) can
close the IM window when no longer needed (i.e., when editing of the
selected text is complete). Final Act. 4–5, 11; Ans. 4–5. The Examiner
reads the at-issue claim elements on this combination of Bedi and Muranaga
by reading: the claimed first communication on the IM; the claimed
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document specification on the contents of the IM’s conversation window 60
(Bedi -the comment history and provisional text); and the claimed parsing on
the process that is implemented by selecting the “accept” icon and then
selecting the “done” icon. Ans. 5–6.
Appellant contends: “[T]here is no suggestion in either Bedi or
Muranaga to use the Muranaga Done icon in the messages of Bedi’s
windows 60 and 70. . . . [A] message is ‘done’ when [the composer] hits
send.” Appeal Br. 5. We are unpersuaded of Examiner error because the
Bedi-Muranaga combination’s “done” icon is added to a document editing
window—Bedi’s IM window—for the done icon’s known use of
terminating a respective document editing window (e.g., Muranaga’s
comment editor window 142). See Ans. 4; see also KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007) (“[W]hen a [combination] simply arranges
old elements with each performing the same function it had been known to
perform and yields no more than one would expect from such an
arrangement, the combination is obvious.” (internal quotation marks
omitted)).
Moreover, Appellant does not meaningfully address the Examiner’s
rationale for the Bedi-Muranaga combination. See Ex parte Frye, 94
USPQ2d 1072, 1075–76 (BPAI 2010) (precedential) (An appellant
overcomes a § 103 rejection by showing the Examiner errs in (e.g., lacks) a
finding of fact or reasoning needed to reach the conclusion
obviousness.). At best, Appellant alleges the combination’s “send” and
“done” icons are redundant, which is not accurate because the “send” icon
updates the IM window (i.e., transmits new comments and suggested
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changes to the other user) and the “done” icon rather terminates the IM
window (see supra 3–4).
Appellant also contends: “There is no suggestion that some form of
parsing might be done to Alice or Bob’s messages to determine whether they
are ‘in a done condition.’” Appeal Br. 5. We are unpersuaded of Examiner
error because Appellant does not meaningfully address the Bedi-Muranaga
combination’s process implemented by selecting Bedi’s “accept” icon and
then Muranaga’s “done” icon. The combination’s editor (Alice) and
computer/s perform the following three-part process that includes parsing as
claimed (parts 2 and 3): (1) generate an IM conversation for editing a
selected portion of a document; (2) excerpt a suggested change (from the
conversation) to the document portion by selecting the “accept” icon (e.g., to
excerpt the most recently suggested change); and, (3) when no more editing
is desired, terminate the IM window by selecting the “done” icon. See
Ans. 3–4. At best, Appellant alleges the excerpting (part 2) is the only
parsing, the terminating (part 3) is not part of the excerpting, and the process
therefore does not achieve the claimed “parsing including determining
whether the document specification is in a done condition” (emphasis
added). Appeal Br. 5. Appellant does not explain why the above parts 2 and
3 cannot be reasonably understood as part of the same “parsing” process
(e.g., as respectively ‘start’ and ‘stop’ parts of “parsing” a suggested change
from the IM to the document). See In re Baxter Travenol Labs, 952 F.2d
388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for nonobvious
distinctions over the prior art.”).
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Appellant also contends the Bedi-Muranaga combination fails to
achieve a “computer-implemented method” (claim 1) inasmuch the
combination’s editor (Alice)—not a computer—“determin[es] whether the
document specification is in a done condition” (claim 1). Appeal Br. 6. We
are unpersuaded of Examiner error because claim 1 recites this argued
“computer” recitation in the preamble and Appellant does not present
evidence that, “in the instant case, . . . the term ‘computer’ is one that
breathes life and meaning into the claim[] and, hence, is a necessary
limitation.” In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994) (some
internal quotation marks omitted); see also MercExchange, LLC v. eBay,
Inc., 401 F.3d 1323, 1338 (Fed. Cir. 2005) (preamble’s
“computer-implemented method” recitation did not automate the ensuing
steps), vacated and remanded sub nom. eBay Inc. v. MercExchange, L.L.C.,
547 U.S. 388 (2006) (not addressing the claim construction). We will not,
on Appellant’s behalf, search the record for evidence that claim 1’s
“computer-implemented” recitation is limiting. See Paulsen, 30 F.3d at
1479 (“[R]eview of a patent in its entirety should be made to determine
whether the inventors intended [the preamble] language to represent an
additional structural limitation or mere introductory language.”); see also In
re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011) (“There has never been a
requirement for [the Office] to make an on-the-record claim construction of
every term in every rejected claim[.] . . . [The prima facie case]
. . . inform[s] of the broad statutory basis for the rejection of his claims, so
that [the applicant] may determine what the issues are on which he can or
should produce evidence.” (quotation marks and citations omitted)).
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Furthermore, even assuming (arguendo) the preamble’s “computer
implemented” recitation is limiting, Appellant fails to assert or provide
sufficient evidence to show, a required extent of the “computer”
involvement that distinguishes over the Bedi-Muranaga combination. See
Baxter, 952 F.2d at 391 (“It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for nonobvious
distinctions over the prior art.”). For example, Appellant does not address
whether the combination’s above-discussed process (see supra 6 (parts 1–3))
performs a computer-implemented “determin[ation] the document
specification is in a done condition” inasmuch a computer terminates the IM
window in response to Alice’s selection of the “done” icon (i.e., whether this
response constitutes a “computer-implemented” determination that editing of
the selected document text is completed).
For the foregoing reasons, we sustain the rejection of claims 1–18
under § 103.
Claim 19
Though Appellant presents separate arguments for independent
claim 19, the contentions do not materially differ from the contentions
addressed above for claim 1. Appeal Br. 7–8. The arguments for claim 19
are therefore also unpersuasive.
We briefly address, however, one notable difference between
claims 1 and 19. Whereas claim 1’s preamble recites the argued “computer
implemented” language, claim 19’s body recites the “one or more computers
configured to perform” the claimed operations. Id. We find this difference
immaterial because Appellant again fails to assert a required extent of the
“computer” involvement that distinguishes over the Bedi-Muranaga
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combination. For example, Appellant does not address whether the
Bedi-Muranaga combination’s above-discussed process (see supra 6
(parts 1–3)) constitutes “one or more computers configured to perform
. . . parsing [of] the first communication, the parsing including determining
whether the document specification is in a done condition” (claim 19). See
supra 6 (addressing claim 1’s similar parsing operation).
For the foregoing reasons, we sustain the rejection of claim 19 under
§ 103.
Claims 20 and 21
Claims 20 and 21 respectively depend from claims 19 and 1. Each
adds the following operation: “iterating until the document specification is
in the done condition” (claims 20 and 21). Appellant contends Muranaga’s
Figures 31 and 39B are cited for the claimed iterating but only “show
iteration”—not “iterating until the document specification is in the done
condition.” Reply Br. 4 (addressing Ans. 5). We are unpersuaded because
the Answer cites Muranaga’s Figures 31 and 39B only to emphasize that
“iteration . . . is a normal procedure of computers.” Ans. 5.
Moreover, the Bedi-Muranaga combination achieves the claimed
iterating. Specifically, Alice accepts Bob’s most recently suggested change
(Bedi ¶ 47) and the “[IM] window remains open for further discussion if
required” (id. ¶ 49). By remaining open, the IM window plainly allows for
further suggested changes and acceptance of those changes—that is, allows
for iteration of suggesting and changing operations. Such iteration continues
until Alice selects the “done” icon to terminate the IM window. For the
foregoing reasons, we sustain the rejection of claims 20 and 21 under § 103.
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OVERALL CONCLUSION
We affirm the Examiner’s decision to reject claims 1–19.
We affirm the Examiner’s decision to reject claims 20 and 21.
DECISION SUMMARY
Claims
Rejected 35 U.S.C. Basis Affirmed Reversed
1–21 § 103 Bedi, Muranaga 1–21

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this Appeal may be extended under 37 C.F.R. § 1.136(a). See
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED