Ex Parte Bera

Board of Patent Appeals and Interferences

Jul 26, 2010

10307838 (B.P.A.I. Jul. 26, 2010)

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.
10/307,838 12/02/2002 Rajendra Kumar Bera JP920010204US1 2031
39903 7590 07/27/2010
IBM ENDICOTT (ANTHONY ENGLAND)
LAW OFFICE OF ANTHONY ENGLAND
PO Box 5307
AUSTIN, TX 78763-5307
EXAMINER
THAI, HANH B
ART UNIT PAPER NUMBER
2163
MAIL DATE DELIVERY MODE
07/27/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RAJENDRA KUMAR BERA
____________

Appeal 2008-006006
Application 10/307,838
Technology Center 2100
____________

Before JOHN A. JEFFERY, JAY P. LUCAS, and JAMES R. HUGHES,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-10, 12-21, and 23-32. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2008-006006
Application 10/307,838

2
STATEMENT OF THE CASE
Appellant’s invention enables multiple authors to concurrently edit a
document and communicate with each other via private email. See generally
Spec. 2-3. Claim 1 is illustrative with key disputed limitations emphasized:
1. A method for enabling concurrent editing of a document containing
a plurality of independent or loosely connected segments by multiple
authors, comprising the steps of:
assigning editing rights for each segment of a document to a defined
set of segment authors, wherein the editing rights enable each segment's set
of authors to create or change their respective segment of the document, and
wherein the creating or changing includes concurrently creating or changing
the respective segments;
making available a special segment of the document, wherein the
special segment contains metadata of the document shared by all the
segments of said document;
providing email means private to said document, for enabling such an
author of the document to send a [sic] email message to a certain one of the
segments of the document, the email message being addressed to an author
of the certain segment; and
displaying the email message responsive to such an author of the
certain segment of the document browsing or editing the certain segment.

The Examiner relies on the following as evidence of unpatentability:
Walker US 2002/0065848 A1 May 30, 2002
Apfel US 6,405,225 B1 June 11, 2002

Appeal 2008-006006
Application 10/307,838

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THE REJECTION2
The Examiner rejected claims 1-10, 12-21, and 23-32 under 35 U.S.C.
§ 103(a) as unpatentable over Walker and Apfel. Ans. 3-7.3

CONTENTIONS
Regarding independent claim 1, the Examiner finds that Walker
discloses a method for enabling concurrent document editing with every
recited feature except for (1) providing private email means to enable the
document author to send an email message to a document segment that is
addressed to an author of that segment, and (2) displaying the email message
responsive to the segment author browsing or editing the segment. Ans. 4,
8-9. Although the Examiner cites Apfel for these features in concluding the
claim would have been obvious (id.), Appellant argues that the cited prior
fails to teach or suggest these features. Br. 10-11. The issue before us, then,
is as follows:

2 Since the Examiner withdrew a previous rejection under 35 U.S.C. § 112
(Ans. 3), only the obviousness rejection is before us. Although the
Examiner responds to Appellant’s arguments regarding the § 112 rejection
in the Answer (Ans. 8), we nevertheless presume that the Examiner intended
to withdraw the § 112 rejection in view of the clear and unambiguous
statement to this effect on Page 3 of the Answer.
3 Throughout this opinion, we refer to the Appeal Brief filed January 22,
2007, and the Examiner’s Answer mailed August 9, 2007.
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Application 10/307,838

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ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Walker and Apfel collectively would have taught or suggested (1)
providing private email means to enable the document author to send an
email message to a document segment that is addressed to an author of that
segment, and (2) displaying the email message responsive to the segment
author browsing or editing the segment?

FINDINGS OF FACT (FF)
1. Walker’s system enables multiple users to simultaneously edit a
document via a file system 104 in which a number of workspaces 122 are
stored. The document is divided into mutually-exclusive sections that are
stored in a separate data container. Typically, data can only be edited after
obtaining an exclusive lock for the container in which the section is stored.
Different members may simultaneously lock different document sections to
allow the members to simultaneously edit different sections. Walker,
Abstract; ¶¶ 0011-18; 0049-63; Figs. 1, 4-6.
2. Changes to a document are posted by each editor to a workspace
server 122 which then broadcasts the changes to all connected members of
the workspace, thus allowing the members to view changes after they are
posted. Walker, Abstract; ¶¶ 0412-33; Fig. 17.
3. Apfel integrates email functionality into a word processor by
incorporating an email graphical user interface within the word processor via
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Application 10/307,838

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“Envelope” 308 (i.e., an object functioning as a conduit between the
document editor 302 and the email client 312). Thus, the user can execute
many of the email client’s functions, yet retain the word processor’s rich
document editing functionality. Apfel, Title; Abstract; col. 9, l. 54 – col. 12,
l. 54; Figs. 3, 4a-4b.

ANALYSIS
We will not sustain the Examiner’s rejection of independent claim 1.
First, it is undisputed that Walker fails to disclose the last two steps of claim
1, namely (1) providing private email means to enable the document author
to send an email message to a document segment that is addressed to an
author of that segment, and (2) displaying the email message responsive to
the segment author browsing or editing the segment.
But the Examiner’s reliance on Apfel to cure this deficiency is
problematic at best. Apfel merely integrates email functionality into a word
processor by incorporating an email graphical user interface within the word
processor. FF 3. Thus, the user can execute many of the email client’s
functions, yet retain the word processor’s document editing functionality.
Id.
Even assuming that this functionality could have been combined with
Walker such that each respective document editor of a particular section (FF
1) also had email functionality, this enhancement hardly would have taught
or suggested providing a private email capability that would enable a
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Application 10/307,838

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document author to send email message to a particular document segment,
let alone display that message responsive to the recipient segment author
browsing or editing the segment as claimed.
Rather, each editor in Walker posts changes to a workspace server
which then broadcasts those changes to all connected members of a
workspace, thus allowing the members to view changes after they are
posted. FF 2. In short, the Examiner has not identified any direct
communication between the individual document authors in Walker’s
scheme, let alone a private email means enabling sending email to a certain
document segment as claimed. But even assuming, without deciding, that
such a capability could be provided in light of Apfel (a finding that has not
been made on this record in any event), there is still no teaching or
suggestion on this record to display such an email message responsive to the
recipient segment author browsing or editing that document segment as
claimed. The Examiner has pointed to nothing on this record that reasonably
would have taught or suggested this crucial causal relationship.
We are therefore persuaded that the Examiner erred in rejecting (1)
independent claim 1; (2) independent claims 12 and 23 which recite
commensurate limitations; and (3) claims dependent thereon for similar
reasons. Since this issue is dispositive of our reversal of the Examiner’s
rejection, we need not address Appellant’s other arguments pertaining to the
references’ combinability (Br. 11-13) or various dependent claims (Br. 13-
14).
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Application 10/307,838

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CONCLUSION
The Examiner erred in rejecting claims 1-10, 12-21, and 23-32 under
§ 103.

DECISION
The Examiner’s decision rejecting claims 1-10, 12-21, and 23-32 is
reversed.

REVERSED

rwk

IBM ENDICOTT (ANTHONY ENGLAND)
LAW OFFICE OF ANTHONY ENGLAND
PO Box 5307
AUSTIN TX 78763-5307