Ex Parte Bhogal et al

Board of Patent Appeals and Interferences

Oct 12, 2010

10637020 (B.P.A.I. Oct. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KULVIR SINGH BHOGAL, NIZAMUDEEN ISHMAEL, JR.,
ROBERT J. KAMPER, ROHIT R. SAHASRABUDHE,
and MANDEEP SINGH SIDHU
____________

Appeal 2009-007741
Application 10/637,020
Technology Center 2400
____________

Before JOHN A. JEFFERY, ST. JOHN COURTENAY III,
and JAMES R. HUGHES, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 16-45. Claims 1-15 have been canceled. Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

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.
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STATEMENT OF THE CASE
Appellants invented a system and computer program product for
creating a collaborative email document. See generally Spec. 1, 3. Claim 16
is reproduced below with the key disputed limitations emphasized:
16. A system for writing a collaborative email document, the
system comprising:
means for establishing a collaborative email document on
an administrator's computer;
means for identifying one or more collaborators who are
authorized to view and edit the document;
means for providing to the collaborators copies of the
document for viewing and editing, wherein the collaborators'
copies reside on collaborators' computers;
means for creating revisions in at least one copy of the
document;
means for recording the revisions; and
means for updating the copies of the document on
collaborators' computers with the revisions.

The Examiner relies on the following as evidence of unpatentability:
Bly US 5,220,657 June 15, 1993
Greenlee, Jr. US 2001/0037273 A1 Nov. 1, 2001
Edelstein US 2004/0172450 A1 Sept. 2, 2004
(filed Feb. 28, 2003)

Estrada US 2004/0230658 A1 Nov. 18, 2004
(filed Feb. 17, 2004 and
claiming priority to
Provisional App. No.
60/447,323, filed Feb.
14, 2003)

Vdaygiri US 2005/0188016 A1 Aug. 25, 2005
(filed Nov. 25, 2003)

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THE REJECTIONS
1. The Examiner rejected claims 16-18, 23, 24, 26, 30-33, 38, 39,
41, and 45 under 35 U.S.C. § 102(e) as anticipated by Edelstein. Ans. 3-7.2
2. The Examiner rejected claims 19, 20, 34, and 35 under 35 U.S.C.
§ 103(a) as unpatentable over Edelstein and Estrada. Ans. 7-9.
3. The Examiner rejected claims 21, 22, 36, and 37 under 35 U.S.C.
§ 103(a) as unpatentable over Edelstein and Greenlee, Jr. Ans. 9-11.
4. The Examiner rejected claims 25 and 40 under 35 U.S.C. § 103(a)
as unpatentable over Edelstein and Bly. Ans. 12-13.
5. The Examiner rejected claims 27-29 and 42-44 under 35 U.S.C.
§ 103(a) as unpatentable over Edelstein and Vdaygiri. Ans. 13-17.

CLAIM GROUPING
As for the § 102 rejection, Appellants argue independent claims 16
and 31 separately, but the discussion of claim 31 relies on the arguments
presented for claim 16. See Br. 11. Additionally, dependent claims 17, 18,
23, 24, 26, 30, 32, 33, 38, 39, 41, and 45 rely on the discussion of either
claim 16 or 31. See id. Accordingly, we select claim 16 as representative of
the group. See 37 C.F.R. § 41.37(c)(1)(vii).
Regarding the § 103 rejections, Appellants argue the following claim
groupings separately: (1) claims 19, 20, 34, and 35; (2) claims 21, 22, 36,
and 37; (3) claims 25 and 40; and (4) claims 27-29 and 42-44. See Br. 11-
15. Accordingly, we select claims 19, 21, 25, and 27 as representative of
each group, respectively. See 37 C.F.R. § 41.37(c)(1)(vii).

2 Throughout this opinion, we refer to (1) the Appeal Brief filed January 31,
2008 and (2) the Examiner’s Answer mailed April 29, 2008.
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THE ANTICIPATION REJECTION OVER EDELSTEIN
Regarding representative independent claim 16, the Examiner finds
that Edelstein discloses a means for establishing a collaborative email
document as an application that permits a user to attach a document to an
email and allows other users to edit the attached document. Ans. 3-4, 17-18.
Appellants argue that attaching an editable document to an email is not a
collaborative email document and thus fails to disclose a means for
establishing a collaborative email document. Br. 6-7.
The issue before us, then, is as follows:

ISSUE
Under § 102, has the Examiner erred in rejecting claim 16 by finding
that Edelstein discloses a collaborative email document?

FINDINGS OF FACT
1. Appellants do not define “collaborative email document.” See
generally Specification.
2. Appellants discuss the step of establishing a collaborative email
document 502 may involve opening an email document, identifying the
document as a collaborative one, and identifying an administrator for the
document. Spec. 21-22; Fig. 5.
3. Appellants describe that providing copies to the collaborators
(506) involves emailing copies from the administrative client to the
collaborators. Spec. 24; Fig. 5.

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4. In order to begin collaboration, Edelstein discloses an initiating
collaborator uses the first computer 200 and an electronic messaging
software 210 (e.g., email client application) to create an electronic message.
The electronic message includes a distribution list of recipients or other
collaborators. The initiating collaborator includes the documents for
collaboration as attachments to the electronic message. Edelstein, ¶¶ 0027,
0039; Fig. 2.
5. Edelstein explains that the first user can send an electronic
message with attachments (e.g., a presentation document) and can request
collaboration be initiated by selecting collaboration on the user interface
pane. The email is sent from a first user to the collaborators (e.g., second
and third users). The second user can then edit the presentation document,
and the document version on the collaboration site is updated. When a third
user opens the document, the new version is opened for the third user to edit.
Edelstein, ¶¶ 0039-41.
6. Edelstein discloses an embodiment where only the initiating
collaborator may add a collaborator. Edelstein, ¶ 0042.

ANALYSIS
The crux of this appeal involves whether Edelstein discloses a
“collaborative email document” and thus “a means for establishing a
collaborative email document” as recited in claim 16. Claims are given their
broadest reasonable interpretation in light of the specification and as they
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal citations
omitted). The Specification does not specifically define the term,
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“collaborative email document.” See FF 1. Further, Appellants have not
provided any evidence that the phrase, “collaborative email document,” has
a particular meaning to those of ordinary skill in the art. See Br. 6-10.
Given that no special or particular meaning has been established for this
term, the term will be given its broadest reasonable construction in light of
the disclosure. We find the term “collaborative email document” includes
an email and its attachments that collectively form an email document and
allows for collaboration. Given this construction, we turn to Edelstein.
Edelstein discloses electronic messaging software that creates a
vehicle for collaborating with other users. See FF 4. Edelstein’s software
permits a user to create an email with an attached document (e.g., a
presentation document) and initiate document collaboration by selecting
collaboration on the user interface pane. See FF 4-5. Contrary to
Appellants’ assertions (Br. 6-7), we therefore find that Edelstein discloses an
email having an attachment that collectively forms an email document and
allows for collaboration with other users, and therefore constitutes a
“collaborative email document” as recited. See FF 4-5. Moreover, because
Edelstein discloses a collaborative email document being created by a first
user (see id.), Edelstein further discloses a means for establishing a
collaborative email document as recited in claim 16.
Additionally, we note that neither Appellants nor the Examiner
indicates whether the “means for” language found in claim 16 invokes
35 U.S.C. § 112, ¶ 6. See Ans. 3-4; Br. 6-8. But even assuming 35 U.S.C.
§ 112, ¶ 6 has been invoked, Edelstein teaches at least an equivalent “means
for establishing a collaborative email document.” See Biomedino L.L.C. v.
Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007); see also In re
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Donaldson Co., Inc., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). That is,
the corresponding structure or acts for the “means for establishing a
collaborative email document” in the Specification includes opening an
email document, identifying the document as a collaborative one, and
identifying an administrator for the document. See FF 2. Similarly,
Edelstein discloses (1) opening an email document when creating an email
message with attachments (see FF 4-5), (2) identifying the document as
“collaborative” by selecting recipients and collaboration on the user
interface pane (see id.), and (3) identifying an administrator for the
document when only the initiating collaborator can add a collaborator (see
FF 6).
As such, Edelstein discloses the recited collaborative email document
and thus the means for establishing a collaborative email document as
recited in clam 16. Additionally, because Edelstein discloses the claimed
“collaborative email document,” we are not persuaded by Appellants’
contentions (see Br. 8-9) that Edelstein does not disclose the other recited
means in paragraphs two through seven of claim 16, which explicitly or
implicitly recite “the document.” Although the technical requirements to
edit the attached document may differ from editing an email message itself
(Br. 8), Edelstein nonetheless provides document copies to collaborators by
emailing the “collaborative email document” (i.e., email and attachment) to
the other users for editing. See FF 5. Because an email copy is provided to
each collaborator (see FF 3), Edelstein’s document provision is at least an
equivalent means for providing to the collaborators copies of the document
for editing recited in claims 16 and 31.

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For the foregoing reasons, Appellants have not shown error in the
anticipation rejection of independent claim 16 based on Edelstein. We
therefore sustain the rejection of claim 16, and claims 17, 18, 23, 24, 26,
30-33, 38, 39, 41, and 45 which fall with claim 16.

THE OBVIOUSNESS REJECTIONS
As for representative claims 19, 21, 25, and 27 and their
corresponding rejections, Appellants rely on the arguments presented for
claims 16 and 31. See Br. 11-15. We are not persuaded by these arguments
for the reasons stated above and refer to our previous discussion. This
argument also fails to persuasively rebut the Examiner’s obviousness
conclusion (Ans. 7-17) – a position we find reasonable.
For the foregoing reasons, Appellants have not shown error in the
§ 103 rejections of claims 19, 21, 25, and 27. We therefore sustain the
rejections of claims 19, 21, 25, and 27, and claims 20, 22, 28, 29, 34-37, 40,
and 42-44 which fall with claim 19, 21, 25, and 27.

CONCLUSION
The Examiner did not err in rejecting (1) claims 16-18, 23, 24, 26,
30-33, 38, 39, 41, and 45 under § 102, and (2) claims 19-22, 25, 27-29, 34-
37, 40, and 42-44 under § 103.

ORDER
The Examiner’s decision rejecting claims 16-45 is affirmed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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