Ex Parte Adams et alDownload PDFPatent Trial and Appeal BoardDec 22, 201613572139 (P.T.A.B. Dec. 22, 2016) Copy Citation 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. 13/572,139 08/10/2012 Neil ADAMS 1679-938/JLW 7441 14551 7590 12/27/2016 Rowand LLP (BlackBerry) Suite 900, 357 Bay St. Toronto, ON M5H 2T7 CANADA EXAMINER HWANG, JOON H ART UNIT PAPER NUMBER 2447 NOTIFICATION DATE DELIVERY MODE 12/27/2016 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): mailbox@rowandlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NEIL ADAMS and RAYMOND VANDER VEEN Appeal 2015-005863 Application 13/572,139 Technology Center 2400 Before JASON V. MORGAN, JOSEPH P. LENTIVECH, and AMBER L. HAGY, Administrative Patent Judges. HAGY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—37, which are all of the pending claims. We have jurisdiction over these claims under 35 U.S.C. § 6(b). We reverse. Appeal 2015-005863 Application 13/572,139 Introduction According to the inventors, “[t]his invention relates to the field of electronic mail (‘email’) messages, and more specifically, to updating message threads for email messages in wireless and other devices.” (Spec. 12.) Exemplary Claim Claim 1, reproduced below with the disputed limitation italicized, is exemplary of the claimed subject matter: 1. A method, comprising: displaying, on a display of a device, an email compose screen for composition of a reply email message; detecting arrival of a new email message; and while the email compose screen is displayed, in response to a determination that the new email message belongs to an email message thread to which the reply email message belongs, displaying in the email compose screen an indication of arrival of the new email message. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Forstall et al. US 2004/0260756 A1 Dec. 23, 2004 Kraft et al. US 2007/0090923 Al Apr. 26, 2007 Ellis US 2010/0115559 Al May 6,2010 Simpson, Alan and Brian Underdahl. Alan Simpson s Windows XP Bible, New York, NY: Hungry Minds, Inc., 2001 (“Simpson”). Dwergs (“Can I Send MSN instant messages with Hotmail?”), MSN Messenger FAQ, Mess with MSN Messenger, 26 January 2005, accessed 27 December 2012, archived version available at and ) (“dwergs”). REJECTIONS Claims 1—4, 6—9, 11, 14, 17—21, 23—26, 28, 31, and 34—37 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Simpson, Ellis, and dwergs. (Final Act. 11—28.) Claims 5 and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Simpson, Ellis, Forstall, and dwergs. (Final Act. 28—30.) Claims 10, 12, 15, 16, 27, 29, 32, and 33 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Simpson, Ellis, dwergs, and Kraft. (Final Act. 30—35.) Claims 13 and 30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Simpson, Ellis, dwergs, Kraft, and Forstall. (Final Act. 35-36.) ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner erred. We concur with Appellants’ contention that the Examiner erred in finding the combination of Simpson, Ellis, and dwergs teaches or suggests “while the email compose screen is displayed, in response to a determination that the new email message belongs to an email message thread to which the reply email message belongs, displaying in the email compose screen an indication of arrival of the new email message,” as recited in independent claim 1 and commensurately recited in independent 3 Appeal 2015-005863 Application 13/572,139 claims 18 and 35. (See App. Br. 6—7.)1 In particular, the Examiner finds Ellis teaches “in response to a determination that the new email message belongs to an email message thread to which the reply email message belongs, displaying ... an indication of arrival of the new email message.” (Final Act. 13.) As support for this finding, the Examiner cites Ellis’s teachings that a user may be notified via popup message if a new newsgroup message has been posted: The user may ask to be notified when a new newsgroup message is received in this thread ([0032]). A pop-up window 420 may appear over a display screen content 422 when a new newsgroup message has been posted in a newsgroup that the user has request notification for (Figure 28B; [0175]). (Final Act. 13.) As Appellants correctly contend, however, the Examiner has not found the prior art teaches or suggests displaying an indication of an arrival of a new email message “in response to a determination that the new email message belongs to an email message thread to which the reply email message belongs,” as recited in the claims (emphasis added). (See App. Br. 6—8.) Although we agree with the Examiner that the cited references teach or suggest a pop-up message indicating arrival of a new email message (Final Act. 12—13, Ans. 4), the Examiner has not found any of the references (including Ellis) teaches or suggests a causal link between the pop-up message indicating the arrival of a new email message and a determination that the new email message belongs to the email thread to which the reply email message belongs. As Appellants persuasively argue, “[n]othing in 1 Appellants’ contentions present additional issues. Because the identified issue is dispositive of Appellants’ arguments on appeal, we do not reach the additional issues. 4 Appeal 2015-005863 Application 13/572,139 Ellis teaches that the display of the indication of arrival of the new message is contingent on invocation or display of a reply message or a composition screen for a reply message of the message thread.” (App. Br. 7.) On this record, we are persuaded by Appellants’ arguments that the Examiner’s findings fall short of demonstrating that all limitations are taught or suggested by the cited combination of references. Accordingly, we will not sustain the Examiner’s rejection of independent claims 1, 18, or 35, or the rejections of the dependent claims. DECISION For the above reasons, the Examiner’s rejections of claims 1—37 are reversed. REVERSED 5 Copy with citationCopy as parenthetical citation