Ex Parte Adams et al

Patent Trial and Appeal Board

Oct 14, 2014

11968447 (P.T.A.B. Oct. 14, 2014)

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.
11/968,447 01/02/2008 Neil Patrick Adams T1300-35US-184607-374374 8952
27155 7590 10/14/2014
McCarthy Tetrault LLP
Box 48
Suite #4700 Toronto Dominion Bank Tower
TORONTO, ON M5K 1E6
CANADA
EXAMINER
GORTAYO, DANGELINO N
ART UNIT PAPER NUMBER
2168
MAIL DATE DELIVERY MODE
10/14/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte NEIL PATRICK ADAMS and RAYMOND VANDER VEEN1
________________

Appeal 2012-005988
Application 11/968,447
Technology Center 2100
________________

Before JASON V. MORGAN, JOHN A. EVANS, and KEVIN C. TROCK,
Administrative Patent Judges.

TROCK, Administrative Patent Judge.

DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1, 3–5, 9–13, 18, 19, and 26–31. Claims 2, 6–8, 14–17,
and 20–25 are canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Research in Motion Limited is the Real Party in Interest. App. Br. 3.
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Invention
The Appellants’ invention relates to a system and method for
providing information relating to an email, and more particularly to
processing and transmitting email by selectively obtaining and adding data,
text and information into an email as it is processed, provided to and
retrieved by an electronic device. Spec ¶ 1.
Exemplary Claim
Exemplary claim 1 is reproduced below with key limitations
emphasized:
1. A server for providing information relating to an item that is
embedded in data packets of an electronic transmission
addressed to an electronic device, comprising:
a first process to analyze contents of said data packets to
identify a category relating to said item comprising any of: a
telephone number, a name, a URL address or a place;
a second process to execute a database search in a
database of a plurality of databases for identification
information relating to said item based on the category of
said item, wherein when said category is
said telephone number, said database relates to a
telephone directory and said identification information
relates to said telephone number;
said name, said database relates to a name directory
and said identification information relates to said name;
and
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said place, said database relates to map database and
said identification information relates to direction
information to get to said place;
a third process to retrieve results from said search and
associate said results with a new transmission for said item,
said new transmission including data from said transmission
and information located through said results of said search;
and
a fourth process to prepare said new transmission for
delivery to said device.
Rejections
The Examiner rejects claims 1, 3–5, 9–13, 18–19 and 26–31under 35
U.S.C. 103(a) as being unpatentable over Curry (US Patent 7,392,289 B2),
Taboada (US Patent 7,788,590 B2) and Wolff (US Patent 7,770,102 B1).
Ans. 5.
The Examiner rejects claims 4, 13, and 19 under 35 U.S.C. 103(a) as
being unpatentable over Curry, Taboada, Wolff, and Bookstaff (US
Publication 2005/0289113 A1). Ans 12.
ISSUES
1. Did the Examiner err in finding the combination of Curry,
Taboada, and Wolff teach or suggest executing database searches when a
category of an item relates to a place, as recited in claims 1 and 11?
2. Did the Examiner err in combining Curry, Taboada, Wolff and
Bookstaff in forming a rejection under 35 U.S.C. § 103(a) because these
references are not analogous art?
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ANALYSIS
The Examiner finds Curry teaches an e-mail formatter in a server that
receives an e-mail message which is then parsed and analyzed for
information. Ans. 5, 6. The step of parsing and analyzing a message’s
source includes comparing the parsed information to a template so that
category information and source information can be determined from the
parsed information of the message. Ans. 5, 6, and 16; citing Curry col. 9, l.
27 – col. 10, l. 45. The Examiner also finds that Curry teaches analyzing the
contents of an electronic transmission to identify items and a related
category to the item, including phone number, name, URL address and
place, through a database search for identified items. Ans. 5, 6, and 16;
citing Curry col. 7, ll. 1–21; col. 8, ll. 8–34; col. 10, ll. 15–58.
The Examiner finds Taboada teaches a user interface that is able to
display additional information related to text items in an electronic
document, the text item being assigned specific data types. Ans. 6, 16, and
17; citing Taboada Abstract, col. 4, l. 63–col. 5, l. 46. Specifically, the
Examiner finds Taboada teaches a text item in an electronic document
identified as being a name or telephone number data type, wherein actions
can be made to execute a search for a name in a contact database or a
matching phone number can be found in a telephone directory. Ans. 6, 16,
and 17; citing Taboada col. 10, l. 17–col. 11, l. 34 and ll. 53- 67.
The Examiner finds Wolff is directed to extracting text items from
electronic documents and assigning semantic categories to the text items,
specifically a location category. Ans. 7, 17; citing Wolff col. 5, ll. 17–48;
col. 7, l. 12–col. 8, l. 19; col. 9, ll. 1–36; col. 10, ll. 10–46; and col. 11, l. 48–
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col. 12, l. 49. More specifically, the Examiner finds that in Wolff text items
are parsed and can be assigned into a place semantic category, the semantic
category related to specific actions based on a match and when a semantic
category of a data item is determined to be an address, a search for an
address can be made to a search engine to provide location and map
information for the related address. Id.
The Examiner finds it would have been obvious for one of ordinary
skill in the art at the time the invention was made to combine Curry’s
method of modifying and formatting messages with additional information
from a database query search and Taboada’s ability to assign data types to
text items with related searches based on data types with Wolff’s ability to
place text items parsed from an electronic document into semantic categories
including an address type. Ans. 7.
Appellants contend the Examiner erred because Curry, Taboada and
Wolff do not disclose the claimed feature of executing database searches
when a category of an item in a data packet relates to a place as recited in
claims 1 and 11. App. Br. 12. Appellants contend that Wolff does not
disclose all searching elements of claims 1 and 11. App. Br. 13.
Appellants’ arguments are not responsive to the Examiner’s findings
and do not persuasively show error. The Examiner uses Wolff to
demonstrate how text items are parsed and can be assigned into a place
semantic category, the semantic category related to specific actions based on
a match and when a semantic category of a data item is determined to be an
address, a search for an address can be made to a search engine to provide
location and map information for the related address. Ans. 17. The
Examiner does not use Wolff to demonstrate all searching elements of
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claims 1 and 11 as Appellants contend. App. Br. 13. Rather, as described
above, the Examiner uses Wolff to demonstrate database searches for
identification information related to place categories such as an address or
directions as claimed in claims 1 and 11. Ans. 7, 17.
Accordingly, we find that the Examiner did not err in finding the
combination of Curry, Taboada, and Wolff teaches or suggests executing
database searches when a category of an item relates to a place, as recited in
claims 1 and 11.
Appellants also contend the Examiner erred in combining Curry,
Taboada, Wolff and Bookstaff because they are non-analogous art and the
references are not sufficiently linked in their fields to the Applicants’
invention. Rep. Br. 15, 16. Appellants’ arguments are unpersuasive.
“Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of the problem
addressed and, (2) if the reference is not within the field of the inventor’s
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved.” In re Klein, 647 F.3d 1343,
1348 (Fed. Cir. 2011).
Here, the Specification indicates that the field of endeavor for the
claimed invention is systems and methods for processing and transmitting
email, and in particular selectively obtaining and adding data, text and
information into an email as it is processed, provided to and retrieved by an
electronic device. Spec. ¶ 1.
Curry involves systems, methods, and computer products by which an
e-mail is automatically processed. Curry Abstract. Such processing
involves text-parsing the received email for identifying email attributes. Id.
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Taboada involves processing information about a selected text item,
data item or other object in an electronic document or electronic mail
message (“email”). Taboada Abstract; col. 1, ll. 50–54; Fig. 3; col. 7, ll. 21–
26. Upon selection of an item in an electronic document or email a quick
look-up function may be invoked for retrieving information from a local or
remote information source about the selected item. Taboada Abstract; Fig.
3; col. 2, ll. 4–10.
Wolff involves methods and systems for semantically labelling strings
of text during creation and processing of electronic documents, such as word
processing documents or email. Wolff Abstract; col. 9, ll. 1–24; col 10, ll.
10–26; col. 13, ll. 27–31; col. 14, ll. 43–47.
Bookstaff involves methods and systems that parse electronic
information messages (e.g., e-mail messages, instant messages, etc.) for
keywords and make search engine queries or database queries for electronic
links based on the identified keywords. Bookstaff Abstract. The electronic
links returned from search engine queries or database queries are added to
the electronic information messages creating a modified message. Id.
We find that Curry, Taboada, Wolff, and Bookstaff involve systems
or methods which use or process electronic messages or email and the text or
data found therein and are in the appropriate field of endeavor with the
claimed invention and, therefore, are analogous art.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claims 1 and 11, and claims 3–5, 9, 10, 12, 13, 18, 19, and 26–31, which
Appellants do not argue separately. App. Br. 12–16.
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DECISION
We affirm the Examiner’s decision rejecting claims 1, 3–5, 9–13, 18,
19, and 26–31. 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. § 41.50(f).
AFFIRMED

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