Ex Parte Buchheit et al

Patent Trial and Appeal Board

Sep 7, 2016

10914035 (P.T.A.B. Sep. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/914,035 08/06/2004
82750 7590 09/09/2016
Morgan, Lewis & Bockius LLP I Google
1400 Page Mill Road
Palo Alto, CA 94304-1124
FIRST NAMED INVENTOR
Paul T. Buchheit
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
060963-5012US 4398
EXAMINER
ELFERVIG, TAYLOR A
ART UNIT PAPER NUMBER
2445
NOTIFICATION DATE DELIVERY MODE
09/09/2016 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):
padocketingdepartment@morganlewis.com
vskliba@morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte PAUL T. BUCHHEIT, BAY-WEI W. CHANG,
JING YEE LIM, BRIAND. RAKOWSKI, and
SANJEEV SINGH
Appeal2013-006478
Application 10/914,035
Technology Center 2400
Before JOSEPH L. DIXON, JOHN A. JEFFERY, and
CAROLYN D. THOMAS, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1, 5-7, 9-16, 21, 22, 30, 32, 34--40, 42, 46-48, 50-57, 62, 63, 68, 70,
72-78, 80, and 81. Claims 2--4, 8, 17-20, 23-29, 31, 33, 41, 43--45, 49, 58-
61, 64---67, 69, 71, and 79 are canceled. We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.
1 Appellants indicate that Google Inc. is the real party in interest.
Appeal2013-006478
Application 10/914,035
The claims are directed to a displaying conversations in a
conversation-based email system. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A method of processing messages, comprising:
at a client computer:
receiving from a server a plurality of messages associated
with a user;
wherein each of the plurality of messages is associated
with a respective conversation, each conversation comprising a
set of one or more related messages;
displaying, in a conversation view, content of a selected
conversation that is associated with a plurality of messages, the
content including one or more viewed or read messages
displayed in a compacted mode and an unviewed or unread
message displayed in an expanded mode, wherein when a
respective message is displayed in compacted mode, at least a
first portion of a message body of the respective message is
displayed and a second portion of the message body of the
respective message is not displayed in the conversation view; and
while displaying the one or more messages in the
compacted mode, responding to detecting selection of an
expand-all affordance by displaying in the conversation view a
message body of each of the messages associated with the
selected conversation.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Morton et al.
Daniell
Ito
US 6,438,564B1
US 2004/0054737 Al
US 6,757,889 Bl
2
Aug.20,2002
Mar. 18, 2004
June 29, 2004
Appeal2013-006478
Application 10/914,035
Introduction to Microsoft Outlook 2000 Mail, Created: 10 September 2001,
Original Source: http://www.officetutotials.com/
Venolia, Gina et al. Supporting Email Wor~ow, Technical Report MSR-
TR-2001-88; Microsoft Research; Microsoft Corporation; Revised
December 2001 (Original September 2001)
Tom Syroid et al., Outlook 2000 in a Nutshell, O'Reilly Media, Inc., May 2,
2000
Herb Tyson, Sams Teach Yourself Microsoft® Outlook® 2000 in 24 Hours,
p. 237, © 1999. Sams.
REJECTIONS
The Examiner made the following rejections:
Claims 9, 21, 22, 34, 50, 62, 63 and 72 stand rejected under 35 U.S.C.
112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which Appellant regards as the
invention.
Claims 1, 5, 7, 9-11, 22, 30, 32-36, 42, 46, 48-52, 63, 68, 70-74, 80,
and 81 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Daniell in view of Tyson in further view of Morton.
Claims 6, 21, 47, and 62 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Daniell in view of Tyson in further view of Morton
in further view of Ito.
Claims 8, 33, 49, and 71 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Daniell in view of Tyson in further view of Morton
further in view of Syroid.
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Appeal2013-006478
Application 10/914,035
Claims 12-16, 37--40, 53-57, and 75-78 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Daniell in view of Tyson in
further view of Morton further in view of Venolia.
ANALYSIS
35 U.S.C. § 112, second paragraph
The Examiner maintains that claim 9 is unclear because it claims an
"affordance". (Ans. 5).
Appellants repeat the same presentation which they provided in the
after final response. (App. Br. 28). Again, the Examiner has not addressed
Appellants' reference to appendix A of the after final amendment filed July
23, 2012, but the Examiner indicates that the rejection under 35 U.S.C.
§ 112, second paragraph is withdrawn. (Ans. 26). Since the Examiner
repeats the rejection and then expressly withdraws the rejection, we treat the
rejection as being withdrawn, and we do not further address the merits of the
rejection.
35 U.S.C. § 103
With respect to independent claims 1, 30, 42, 68, 80, and 81, the
Examiner sets forth the correlation of the teachings of the Tyson reference
regarding Microsoft Outlook 2000 auto preview function. (Final Act. 6-7).2
The Examiner does not include any detail regarding the compacted view for
the read emails. The Examiner indicates that the three lines of auto preview
pertain to the unread messages. (Ans. 6).
2 We note that the Final Action does not include pagination. We start our
pagination from the cover page with the office action summary as page 2.
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Application 10/914,035
Appellants respond to the Examiner's correlation of the prior art
teachings of the Tyson reference regarding the auto preview being applied to
the unread emails. (App. Br. 14--17).
The Examiner repeats the statement of rejection in the Examiner's
Answer with the same correlation of the auto preview three lines to the
unread messages and the read messages to a compacted view, but does not
address the merits of the compacted view. (Ans. 7-8).
In the response to arguments section of the Examiner's Answer, the
Examiner specifically responds to Appellants' arguments and maintains that
the compacted view and unread messages in expanded view:
Read messages are displayed in a compacted view with
only the normal headings showing. For example, the headings
would normally be the date, from, subject, message (first portion)
and others. The message heading is equivalent to the first portion
of the message body because only part of the message is able to
be viewed. Unread messages on the other hand are displayed in
an expanded. Tyson teaches that unread messages are displayed
with the first three lines of the message (second portion) in the
top part of the inbox. Based on the language used in the claim,
the teachings of Tyson reads on the claim by visually
distinguishing between read and unread messages and using a
compacted display and an expanded display to make this
distinction.
(2) Examiner provides a screenshot of the auto preview that
displays read and unread messages where read message are
shown in a compacted mode and unread messages are shown in
an expanded mode. At the top, the categories of TO, FROM,
SUBJECT and RECEIVED are present. While not shown
directly, the option of displaying the MESSAGE as one of these
categories is available in Microsoft Outlook 2000.
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Appeal2013-006478
Application 10/914,035
Examiner also provides a screenshot of adding new categories
via a field chooser and it can be seen that MESSAGE is one of
the categories available to be chosen and displayed. It is this that
would be equivalent to the first portion of the message body.
(Ans. 21-22).
MPEP 706.020) sets forth the "Contents of a 35 U.S.C. 103
Rejection." This section further states:
To support the conclusion that the claimed invention is directed
to obvious subject matter, either the references must expressly or
impliedly suggest the claimed invention or the examiner must
present a convincing line of reasoning as to why the artisan
would have found the claimed invention to have been obvious in
light of the teachings of the references." Ex parte Clapp, 227
USPQ 972, 973 (Bd. Pat. App. & Inter. 1985).
This section of the MPEP goes on to further clarify "[vv]here a reference
is relied on to support a rejection, whether or not in a minor capacity,
that reference should be nositivelv included in the statement of the - - - - - - - ~ - - .,I - - - - - - - -
rejection. See Jn re !loch, 428 F.2d 1341, 1342 n,3 (CCPA 1970).~'
Appellants argue in the Appeal Brief:
The Board is reminded that the present claims recite that "when
a respective message is displayed in compacted mode, at least
a first portion of a message body of the respective message is
displayed and a second portion of the message body of the
respective message is not displayed . . ." Although the
Examiner argues that "The message heading is equivalent to
the first portion of the message body because only part of the
message is able to be viewed" (08/13/12 Advisory Action) there
is no support in Tyson for this interpretation. In fact, the images
of Tyson which show a compacted view, do not include any
portions of the message body of a message.
(App. Br. 17). Appellants further argue:
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Appeal2013-006478
Application 10/914,035
As is clear from the Tyson page 336 image, no portions of
a message body are displayed in Tyson's compacted view. As
such, Tyson does not teach "when a respective message is
displayed in compacted mode, at least a first portion of a message
body of the respective message is displayed and a second portion
of the message body of the respective message is not displayed
... " as recited in the claims.
Furthermore, since Tyson does not include an image of the
"Auto Preview" feature that it explains, the Appellants have
found an exemplary image of Outlook's AutoPreview feature.
This image clearly illustrates that no portions of the message
body are displayed when the AutoPreview in Outlook is turned
off for read messages. The exemplary Auto Preview illustration
is shown below and in Appendix B of the Office Action
Response filed on July 23, 2012.
(App. Br. 18).
We agree with Appellants that based upon the prior art references
relied upon by the Examiner in the Final Action (Daniell in view of Tyson in
further view of Morton), the Examiner has not made the requisite showing of
obviousness based upon the prior art references identified in the statement of
the rejection. In the Examiner's Answer, the Examiner provides additional
extrinsic evidence beyond the teachings of the prior art references relied
upon, but the Examiner has not modified the statement of the rejection nor
the listing of prior art references relied upon by the Examiner.
Consequently, we will not consider the Examiner's unsupported speculation
as to additional features in Microsoft Outlook 2000. If the Examiner desires
to modify a rejection to be over the Microsoft Outlook 2000 software
package rather than the discrete prior art teachings of the package, the
Examiner may do this in any further prosecution on the merits.
Additionally, we find no discussion of the "field chooser" in the Final
Action or in any of the Examiner's four statements of the obviousness
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Appeal2013-006478
Application 10/914,035
rejections in the Examiner's Answer. (Ans. 5-20). Consequently, we are
left to speculate as to the references applied, the prior art teachings relied
upon, and the content of those references in the evaluation of the
obviousness rejection. We note that the Board is a reviewing body and not a
place of initial examination. Moreover, it is our view that the requirements
of 35 U.S.C. § 103 essentially require a mapping of each argued limitation to
the corresponding portion of the three references (Daniell in view of Tyson
in further view of Morton), which the Examiner must identify with
particularity. Here, in that the Examiner's obviousness rejection is not well
supported by the express disclosures of the Daniell, Tyson, and Morton
references, and the Examiner relies on conjecture, such conjecture would
require us to resort to speculation, unfounded assumptions, or hindsight
reconstruction. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). We
will not resort to such speculation or assumptions to cure the deficiencies in
the factual basis in order to support the Examiner's obviousness
rejection. Consequently, we cannot sustain the rejection of independent
claim 1 and its corresponding dependent claims 2--4, 6, 7, 9, 11-15, and 22. 3
The Examiner relies upon the rejection of independent claim 1 for
each of independent claims 30, 42, 68, 80, and 81. (Ans. 13). Because these
independent claims contain similar limitations and the Examiner has not
remedied the prior art rejection, we similarly cannot sustain the obviousness
rejections of independent claims 30, 42, 68, 80, and 81 and their respective
dependent claims 32-36, 46, 48-52, 63, and 70-74.
3 We note for the Examiner's reference that the Syroid reference at page 86
appears to mention "field chooser," but the Examiner has not relied upon
this portion of the reference in any of the rejections.
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Appeal2013-006478
Application 10/914,035
The Examiner does not identify how the additional prior art references
remedy the noted deficiency above, and we cannot sustain the rejection of
dependent claims 6, 8, 12-16, 21, 33, 37--40, 47, 49, 53-57, 62, 72, and 75-
78.
CONCLUSION
The Examiner erred in rejecting independent claims 1, 30, 42, 68, 80,
and 81under35 U.S.C. § 103 based upon the Daniell, Tyson, and Morton
references.
DECISION
For the above reasons, we reverse the Examiner's rejection of claims
1, 5-16, 21, 22, 30, 32--40, 42, 46-57, 62, 63, 68, 70-78, 80, and 81 under
§ 103.
REVERSED
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