2020001682 (P.T.A.B. May. 7, 2021)

Andrew Kegel et al.

Patent Trials and Appeals BoardMay 7, 2021

2020001682 (P.T.A.B. May. 7, 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. 15/418,369 01/27/2017 Andrew G. Kegel 160237-US-NP 8492 163037 7590 05/07/2021 Advanced Micro Devices, Inc. c/o Kennedy Lenart Spraggins LLP 797 Sam Bass Road #2559 ROUND ROCK, TX 78681 EXAMINER TANG, KAREN C ART UNIT PAPER NUMBER 2447 NOTIFICATION DATE DELIVERY MODE 05/07/2021 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): eofficeaction@appcoll.com kate@klspatents.com office@klspatents.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREW G. KEGEL and ARKAPRAVA BASU Appeal 2020-001682 Application 15/418,369 Technology Center 2400 Before JOSEPH L. DIXON, SCOTT B. HOWARD, and JOYCE CRAIG, Administrative Patent Judges. HOWARD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–20. See Final Act. 1. 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 Advanced Micro Devices, Inc. Appeal Br. 1. Appeal 2020-001682 Application 15/418,369 2 CLAIMED SUBJECT MATTER2 The claims are directed to a system and method of managing electronic meeting invitations by suppressing automatic response to the request. Claim 1, reproduced below with the disputed limitation emphasized, is illustrative of the claimed subject matter: 1. A method of messaging, comprising: generating a message to invite one or more invitees to a meeting, the message including an assertion to suppress an auto- responder of the one or more invitees; and sending the message to the one or more invitees, the assertion suppressing the auto-responder of the one or more invitees. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Majeti US 8,150,385 B1 Apr. 3, 2012 Norwitz US 2002/0076015 A1 June 20, 2002 Thuerk US 2005/0076090 A1 Apr. 7, 2005 REJECTION Claims 1–20 are rejected under 35 U.S.C. § 103 as being unpatentable over Norwitz in view of Majeti and Thuerk. Final Act. 3. OPINION The Examiner finds that both Norwitz and Majeti teach a “message including an assertion to suppress an auto-responder of the one or more 2 We note that the language of independent claims 1, 9, and 12 is directed to a method, medium, and computer where the claimed “assertion” is at the sender side and the actual suppressing is only an intended use and unclaimed element in the claimed invention. We leave it to the Examiner and Appellant to further consider this in any further prosecution on the merits. Appeal 2020-001682 Application 15/418,369 3 invitees” as recited in claim 1. Final Act. 3. Specifically, the Examiner finds Norwitz teaches a “message including an assertion to suppress an auto- responder of the one or more invitees.” Id. (citing Norwitz ¶ 74); see also Ans. 6–7 (“Norwitz teaches generating a message to invite one or more invitees to a meeting, the message including an assertion (act of entering the user email address/contact) to suppress an auto responder of the one or more invitees (e.g., to take response with only acceptance or decline).”). The Examiner further finds Majeti teaches that “it is well known that the message including an assertion to suppress an auto-responder.” Final Act. 3 (citing Majeti 4:45–65). The Examiner further finds that “[Majeti’s] system is capable to determine whether to allow or disallowed to generate message from the receiver and sent it to the original sender.” Ans. 7 (citing Majeti 4:65–7:5). Appellant argues Norwitz paragraph 74 “deals with messaging is the phone menu option for ‘the enabling/disabling of the automatic response message for incoming E-mail messages (block 277).’” Appeal Br. 15. Appellant further argues that the “passage has nothing to do with generating a message with an assertion to suppress an auto responder of one or more invitees.” Id.; see also Reply Br. 3 (“The enabling/disabling of the automatic response message for incoming E-mail messages is controlled by the message recipient--not by way of an assertion in a sender’s message.”). Similarly, Appellant argues that Majeti teaches “disabling auto reply at the user side based on a list that is maintained at the user’s device.” Appeal Br. 16. Based on the record, we are persuaded by Appellant’s arguments that the Examiner erred. With regard to Norwitz, paragraph 74 describes how a Appeal 2020-001682 Application 15/418,369 4 user can enable/disable an automatic response message in response to incoming e-mail messages: As shown in block 275 in the options portion, the user is initially presented with the various user options. These include updating the ‘follow me’ call procedure (block 276), the enabling/disabling of the automatic response message for incoming E-mail messages (block 277), updating/changing the personal access code (block 278), changing the customized greeting(s) provided to callers (block 279), and an update/change in time zone location of the user (block 280), as determined by the time zone portion. Norwitz ¶ 74 (emphases added); see also id. at Fig. 28. Although this allows a user to turn on and off automatic response message in response to receiving an email, it neither shows nor suggests having the incoming message with “an assertion to suppress an auto-responder of the one or more invitees,” as recited in claim 1. Nor has the Examiner sufficiently explained how the additional citations in the Answer teach that feature. See Ans. 6–7. Similarly, Majeti describes how a user can configure their own email to limit which incoming email messages will generate an automatic response based on the email address of the user. See Norwitz, 4:45–7:5. Although this allows the user to determine whether or not to send an auto-response, the Examiner does not sufficiently explain how that teaches a “message including an assertion to suppress an auto-responder of the one or more invitees” as recited in claim 1. Accordingly, we agree with Appellant the Examiner’s finding that Norwitz and Majeti each teach the disputed limitation is in error because it is not supported by a preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (Examiner’s burden of proving non- patentability is by a preponderance of the evidence); see also In re Warner, Appeal 2020-001682 Application 15/418,369 5 379 F.2d 1011, 1017 (CCPA 1967) (“The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not, because it may doubt that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.”). Therefore, we are constrained on this record to reverse the Examiner’s rejection of claim 1, along with the rejections of claims 9, 12, and 19 which recite limitations commensurate in scope to the disputed limitations discussed above, and dependent claims 2–8, 10, 11, 13–18, and 20. CONCLUSION The Examiner’s rejection is REVERSED. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 103 Norwitz, Majeti, Thuerk 1–20 REVERSED