Ex Parte Beringer

Board of Patent Appeals and Interferences

Apr 15, 2010

10339779 (B.P.A.I. Apr. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOERG BERINGER
____________

Appeal 2009-005521
Application 10/339,779
Technology Center 2400
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Decided: April 15, 2010
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Before JOHN C. MARTIN, KARL D. EASTHOM, and THOMAS S.
HAHN, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals1 under 35 U.S.C. § 134(a) from the final rejection
of claims 1-12, 14-34, 36-39, and 44-47. Claims 13, 35, and 40-43 have
been cancelled. No other claims are pending. (See App. Br. 5; Advisory
Action (May 21, 2007).)2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s Invention
Appellant’s invention manages email documents using context
information. The context information includes profile information of an
associated user of an e-mail document. This profile information “may
include” a user’s photograph, recent projects and activities, personal
information, and other contact information. (¶¶ 0006, 0022.)
“Context information 104 relating to an email document 100 or to an
associated user of an email document may be displayed. In general, context
information 104 includes more or different information than simply the
commonly-used fields of ‘Subject’ 122, ‘To’, ‘From’, ‘cc’, ‘Bcc’, ‘Date’,
etc.” (¶ 0021; see Fig.1.)
The disclosure further lists as “example[s]”, the following context
information: “a recent received email list, a recent sent email list, a project
task description, or a suggested operation to perform on the received email.”
(¶ 0006).

1 This opinion refers to Appellant’s Brief (“App. Br.”), Appellant’s Reply
Brief (“Reply Br.”), and the Examiner’s Answer (“Ans.”).
2 Appellant lists claim 25 as cancelled, an obvious inadvertent error.
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The Claims, Prior Art, and Rejections
Exemplary claims 1 and 10 follow:
1. A method for managing electronic messages, the method
comprising:
identifying a user associated with a received message;
retrieving context information comprising profile information
corresponding to the identified user and collected information from previous
electronic messages; and
presenting the received message and the retrieved context information
to an end user.

10. A method for managing electronic messages, the method
comprising:
receiving an email from a sender, the email including an identifier and
a body;
retrieving context information associated with the email, wherein the
context information comprises a list of recently received emails from an
associated user;
displaying the identifier in a first portion of a display;
displaying the body in a second portion of the display; and
displaying the context information in a third portion of the display.

The Examiner relies on the following prior art references:
Scannell US 5,377,354 Dec. 24, 1994
Achacoso US 6,161,149 Dec. 12, 2000
Doganata US 6,728,714 B1 Apr. 27, 2004

The Examiner rejected claims 1-12, 14-27, 29, 31-33, 36-39, and 44-
47 as anticipated under 35 U.S.C. § 102(b) based on Scannell; claim 34 as
obvious under 35 U.S.C. § 103(a) based on Scannell and Achacoso; and
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claims 28 and 30 as obvious under 35 U.S.C. § 103(a) based on Scannell and
Doganata.3
ISSUE
Appellant contests the Examiner’s finding that Scannell discloses the
last two steps of claim 1 and a related step in claim 10. (App. Br. 10-12;
Ans. 3, 5.) Appellant’s contentions raise the following issues:
Did the Examiner err in finding that Scannell discloses “retrieving
context information comprising profile information corresponding to the
identified user and collected information from previous electronic messages;
and presenting the received message and the retrieved context information to
an end user,” as recited in claim 1?
Did the Examiner err in finding that Scannell discloses “retrieving
context information associated with the email, wherein the context
information comprises a list of recently received emails from an associated
user,” as recited in claim 10?

FINDINGS OF FACT (FF)
Scannell
1. Scannell’s system processes email messages according to rules
stored in a rules store 12. Message fields stored in a message store 11 are
matched against corresponding fields in the rules store 12 by a rules test unit
13, prioritized, and then, based on the priority (e.g., a number from 1 to 5),
stored in one or more folders 16-18 in the main folder store 15, and/or

3 The Examiner entered Appellant’s after-final amendments and withdrew a
35 U.S.C. § 101 final rejection to claims 45-47 and an objection to claims 14
and 15. (App. Br. 5; Advisory Action (May 21, 2007).)
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transmitted or forwarded accordingly to other work stations. The system is
“highly flexible” (col. 2, l. 44) and presents messages to a user in “user
created and stored files” (col. 2, ll. 57-58) in a prioritized fashion regardless
of when they were received chronologically. (Abstract; col. 1, ll. 39-44, col.
2, ll. 44-63; col. 3, ll. 33-54; col. 5, ll. 15-25, col. 7, ll. 30-66; col. 9, ll. 16-
22; Fig. 1).
2. Each message can be processed as it is received in a continuous
mode, or in a batch mode. (Col. 3, ll. 62-64.) In batch mode, a user can pre-
select times to process accumulated messages against the rules, “(e.g. at
times 0845 and 1245, so that the processed messages are available for the
user to deal with when the user comes in the morning and back from lunch)
or when demanded by the user.” (Col. 4, ll. 1-5.)
3. Messages can be prioritized based on the sender, the subject field,
the text of the message (as determined by keywords), or any weighted
combination. (Col. 2, ll. 42-48; col. 6, ll. 9-17; col. 8, ll. 2-4; col. 9, ll. 23-
30.) The priorities can be used to delete, forward, and/or send the messages
to an in-tray folder and to any other further appropriate folder. A message in
a folder can be inspected later by the user. (Col. 2, ll. 57-60; col. 7, ll. 1-7;
col. 8, ll. 14-19; col. 9, ll. 16-22; col. 9, ll. 54-56.) “[T]he processed
messages will be in the in-tray folder 16, in prioritized order for the user to
attend to. Of course, the users can choose to transfer the messages directly
to the in-tray, without processing, if they so desire.” (Col. 5, ll. 8-12.)
“[T]he message is filed in the in-tray with the appropriate priority appended
to it and in any further appropriate folders and forwarded to the appropriate
addresses (if any).” (Col. 8, ll. 15-19.)
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4. A sender field 26 in an email message store 11 and a similar field
37 in a rules store 12 respectively contain the identities of relatively current
and past senders. (Fig. 2; col. 5, ll. 26-49.) “A user may want to treat
messages from different senders (e.g. either of two joint chairman of a
committee) in the same way.” (Col. 6, ll. 28-30.) A date field is optional.
(Col. 5, ll. 40-41.)
5. The monitor 21 displays the rules so that they can be amended or
inspected. The sender list, key phrase list, and other aspects of a rule can be
displayed. (Col. 8, ll. 36-66.) Proposed actions and the message to be acted
upon can be simultaneously displayed in a split-screen during a manual
mode in which a user can employ a cursor to decide to implement the
proposed action. (Col. 4, ll. 17-28.)
Appellant’s Disclosure
6. The facts listed above under the heading “Appellant’s Invention”
are incorporated herein by reference [hereinafter “(FF 6)”].
PRINCIPLES OF LAW
The Examiner bears the initial burden of factually supporting any
rejection. On appeal, Appellant may rebut the Examiner’s findings with
opposing evidence or argument. See In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992). Appellant has the burden on appeal to show reversible
error by the Examiner in maintaining the rejection. See 37 C.F.R.
§ 41.37(c)(1)(vii).
“It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim . . . .” In
re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986).
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“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
(citation omitted).
ANALYSIS
According to Appellant, Scannell teaches storing messages in the
main folder store 15, which includes “‘in-tray folder 16 and other folders’”
(App. Br. 10 (quoting Scannell)), but Scannell does not disclose “‘retrieving
. . . collected information from previous electronic messages’, as required
by claim 1” (App. Br. 10). “No such information is retrieved from any
previous messages that are stored by main folder store 15 of Scannell et al.”
(Id. at 10-11.) Appellant acknowledges that Scannell stores messages in
store 11. (Id. at 10.)
As Appellant indicates, Scannell’s system stores received email
messages. Scannell’s system stores the messages before and after
prioritizing them. Prioritization is based on a set of stored rules (designed
by the email user/recipient) to select and prioritize emails based on different
criteria, such as the email sender and/or a specific key word in the message
body or subject line.
The stored rule prioritizes, by batch processing at pre-selected times,
all previous emails from a sender previously stored in the receiving
computer’s message store 11. For example, each morning, the sender
address field in a batch of emails at store 11 can be exploited by a specific
rule in rules store 12 to create a set of emails prioritized based on having
been sent by a chairman, and thereafter, stored in another particular folder
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17 or 18, and in-tray 16, for later presentation to the user in order of assigned
priority.
In addition, two or more categories, or rules, can be used to prioritize
emails. Therefore, the chairman’s emails with a particular keyword phrase
could also be prioritized and stored in another folder for later presentation to
the user in order of assigned priority. Or, this subset of emails could be
forwarded to another email user or deleted. (See FF 1-4.)
Before addressing the disputed “collected information” in claim 1, it
is helpful to discuss first the recited “profile information” and the related
claim steps. Receiving a single email from a user and identifying the user as
a chairman according to Scannell’s priority scheme satisfies the first step of
claim 1. As to the second step, retrieving the following one of Scannell’s
rules from store 12 constitutes retrieving profile information corresponding
to the previously identified user (as a chairman). This particular rule
includes the chairman’s name, a priority designation number, and a
designated intended storage file location for an email matching the rule.
This priority designation of a specific sender as being important (i.e.,
a chairman) is in the nature of personal information. Interpreting this type of
personal information as profile information is consistent with Appellant’s
disclosure, which as noted above explains that profile information may
include, inter alia, personal information. (¶¶ 0006, 0022.). Further,
Appellant’s disclosure does not define a closed set of profile information.
(See FF 6.) Also, retrieving the rule, a part of the rule, and/or retrieving the
resulting matching information gleaned from application of the rule,
constitutes retrieving context information in the form of profile information.
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Turning to the recited “collected information,” Appellant’s arguments
notwithstanding (App. Br. 10-11), retrieving all emails from store 11 during
batch processing thereof, or retrieving and forwarding the chairman’s emails
during batch processing, constitutes retrieving the recited “collected
information from previous electronic messages.” The recited phrase is broad
enough to read on collecting all or part of emails received prior to receipt of
the “received message” recited in the first step of claim 1. In other words,
the “received message” in step 1 may be one of the last messages sent from
the chairman (with previously sent emails prioritized and placed in in-tray
16 before this last one).
Appellant argues that the collected information must be part of the
context information. (App. Br. 11; Reply Br. 3.) However, claim 1 does not
clearly require the “collected information” (claim 1, line 4) to be a subset of
the “context information.” That is, while “collected information” is
modified by “retrieving” (line 3), it is arguably not also subject to the term
“comprising” (id.) and thus is not a subset of the “context information.”
Regardless, Scannell satisfies the second step of claim 1 under either
interpretation. Appellant’s disclosure indicates that context information
generally constitutes more or different information than information found
in the commonly-used fields of “Subject,” “To,” “From,” etc. (FF 6.) Thus,
collected context information is broad enough to encompass all of the
information within the body (and other fields) of Scannell’s previous emails
in store 11 or store 15. In light of Appellant’s disclosure, collected context
information also includes the fact that the emails are stored in specific
folders 17, 18, in addition to the in-tray 16, in store 15. (Compare FF 6 with
FF 1-4.) (Note: this storage of specific emails in specific folders (collected
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context information) is distinct from the priority number designation (profile
context information) even if the former depends on the latter. Furthermore,
different emails having different priorities may be designated to be sent to
the same or a different folder.) Collected information also constitutes the
implicit list of such emails in any of store 11 and folders 16, 17, 18, etc.
(Id.) Messages are listed in pre-designated folders 16-18, or any other user-
defined folder, according to the priority number assigned for later
presentation to the user. (See FF 1-4.)
As another alternative, as indicated supra, Scannell’s system
reasonably envisions searching for a keyword phrase within a chairman’s
email, giving the chairman’s emails containing that phrase higher priority
than the emails not containing the phrase, and thereafter creating two
respective (implicit) lists – i.e., one each in respective storage files. (See FF
1-4.) One such file list includes the recited profile information and the other
file list constitutes the recited collected information in the second step of
claim 1.
Therefore, contrary to Appellant’s arguments (App. Br. 10-11),
Scannell also satisfies the second step of claim 1, “retrieving context
information comprising profile information corresponding to the identified
user and collected information from previous electronic messages.”
With respect to the final step of claim 1, “presenting the received
message and the retrieved context information to an end user,” Appellant
argues that Scannell does not disclose this step because Scannell does not
disclose “collected information from previous electronic messages.” (App.
Br. 11.) In other words, Appellant relies on arguments pertaining to the
second step. To the contrary, Scannell discloses this collected information
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as discussed supra. Furthermore, as explained above, claim 1 does not
require “presenting” of the “collected information,” because the “collected
information” is not clearly recited as part of the “context information,”
which is what claim 1 recites is presented along with the received message.
Also, assuming for the sake of argument that the “collected information” is
part of the “context information,” Scannell’s user, the email recipient, can
inspect and display any of the messages and folders containing prioritized
lists, and other email messages. (See FF 1-5.) Scannell’s user can also
display the rules, listing with the rules, for example, designated/prioritized
senders, keywords, etc. (FF 5.) Therefore, Scannell also discloses
“presenting the received message and the retrieved context information to an
end user,” as recited in the final step of claim 1. (This final step in claim 1
does not require the message and context information to be presented
together, or even different portions of the context information (i.e., profile
and collected) to be presented together.)4
With respect to claim 10, Appellant argues that “assigning priorities
to messages in [an] in-tray folder 16” does not constitute “retrieving context
information associated with the email, wherein the context information
comprises a list of recently received emails from an associated user.” (App.
Br. 12.) To the contrary, this limitation is broad enough to read on
Scannell’s generic list of all recently received emails retrieved from the store

4 Of course, presenting the context information requires retrieving it. Hence,
as indicated supra, batch processing the last message satisfies the first step
of claim 1, and then, retrieving and displaying prioritized messages for
review (i.e., from in-tray 16 or other folders 17, 18) satisfies the second and
third steps. (Presenting and retrieving profile information also includes
presenting the chairman’s email as prioritized email.)
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11 for batch processing. In other words, a list from all senders comprises a
list from any one sender, including the recited “associated user.”
Alternatively, Scannell’s system prioritizes and creates a list for
certain specific senders as noted above. Based on reasoning similar to that
involved in the foregoing discussion of claim 1, forming a prioritized list
associated with a sender (chairman) of previously stored emails constitutes
“retrieving context information associated with the email, wherein the
context information comprises a list of recently received emails from an
associated user.” For example, prioritizing emails at a certain time each day
will result in a list of recent emails (including an associated email) from a
chairman (or other senders) being listed in the in-tray folder 16 and
optionally in another designated folder (17, 18, etc.).5 (FF 1-4.) Therefore,
Scannell satisfies the disputed limitation of claim 10.
Based on the foregoing discussion, the Examiner has not erred in the
rejection of claims 1 and 10. Appellant did not present separate patentability
arguments for claims 2-9, 11, 12, 14-27, 29, 31-33, 36-39, and 44-47, also
rejected as anticipated by Scannell. Appellant also did not present separate
patentability arguments for claim 34, rejected as obvious based on the
additional reference to Achacoso, and claims 28 and 30, rejected as obvious
based on the additional reference to Doganata. Therefore, claims 2-9, 11,
12, 14-34, 36-39, and 44-47 fall with claims 1 and 10 as not separately

5 Appellant’s disclosure states that “[t]he amount of time for an email
document 118 to be considered ‘recent’ may also be individually
configurable.” (¶ 0024.) Scannell’s system allows a user to designate batch
processing times. After batch processing and a user’s inspection of the
result each day, only the most recent (i.e., day-to-day) emails in the message
store 11 would be prioritized. (See FF 1-2.)
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argued. In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987); 37 C.F.R. §
41.37(c)(1)(vii).
CONCLUSION
The Examiner did not err in finding that Scannell discloses “retrieving
context information comprising profile information corresponding to the
identified user and collected information from previous electronic messages;
and presenting the received message and the retrieved context information to
an end user,” as recited in claim 1.
The Examiner did not err in finding that Scannell discloses
“retrieving context information associated with the email, wherein the
context information comprises a list of recently received emails from an
associated user,” as recited in claim 10.
DECISION
We affirm the Examiner’s decision rejecting claims 1-12, 14-34, 36-
39, and 44-47.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136. See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

KMF

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