Ex Parte Chakra et alDownload PDFPatent Trial and Appeal BoardMay 11, 201613166961 (P.T.A.B. May. 11, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/166,961 58139 7590 IBM CORP, (WSM) c/o WINSTEAD P.C. P.O. BOX 131851 DALLAS, TX 75313 06/23/2011 05/13/2016 FIRST NAMED INVENTOR AlChakra 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. RSW920110054US 1 7010 EXAMINER LY, ANH ART UNIT PAPER NUMBER 2162 NOTIFICATION DATE DELIVERY MODE 05/13/2016 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): patdocket@winstead.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AL CHAKRA, GARY DENNER, ITZHACK GOLDBERG, METTE F. HAMMER, GEORGE KYRIACOU, and PATRICKJ. O'SULLIVAN Appeal2014-006372 Application 13/166,961 Technology Center 2100 Before JOSEPH L. DIXON, JOHN P. PINKERTON, and JOHN D. HAMANN, Administrative Patent Judges. PINKERTON, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 Appellants identify International Business Machines Corp. as the real party in interest. App. Br. 1. Appeal2014-006372 Application 13/166,961 STATEMENT OF THE CASE Introduction Appellants' described and claimed invention is generally directed to providing accurate recipient lists by correlating tagged keywords in a document to the recipient lists. Spec. i-f 1. 2 Claim 1 is exemplary and reproduced below: 1. A method for providing accurate recipient lists, the method comprising: identifying keywords in a document; tagging said identified keywords in said document; receiving a list of recipients to be correlated with said tagged keywords; and associating, by a processor, said received list of recipients with said tagged keywords. Rejection on Appeal3 Claims 1-21 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Jin (US 2011/0184937 Al; Pub. July 28, 2011). ANALYSIS We have reviewed the Examiner's rejection in light of Appellants' arguments in the Briefs that the Examiner erred. We disagree with Appellants' conclusions the Examiner erred in rejecting claims 1, 10, and 16. 2 Our Decision refers to the Final Office Action mailed Oct. 1, 2013 ("Final Act."); Appellants' Appeal Brief filed Jan. 15, 2014 ("App. Br."); the Examiner's Answer mailed Mar. 11, 2014 ("Ans."); Appellants' Reply Brief filed May 5, 2014 ("Reply Br."); and, the original Specification filed June 23, 2011 ("Spec."). 3 The Examiner also rejected claims 10-15 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Final Act. 12. However, in the Advisory Action mailed Dec. 12, 2013, the Examiner states Appellants' amendment of claim 10 overcomes the rejection under 35 U.S.C. § 101. 2 Appeal2014-006372 Application 13/166,961 Appellants have, however, persuaded us of error in the Examiner's rejection of claims 2-9, 11-15, and 17-21. Unless indicated otherwise, we adopt as our own the findings, conclusions, and reasons set forth by the Examiner relating to claims 1, 10, and 16 in the action from which this appeal is taken (Final Act. 12-23) and in the Examiner's Answer in response to the Appeal Brief (Ans. 3-15). For emphasis, we consider and highlight specific arguments as presented in the Briefs. Claims 1, 10, and 16 Appellants contend claims 1, 10, and 16 are not anticipated by Jin. App. Br. 4--10; Reply Br. 2-3. In particular, Appellants argue there is no language in Jin that discloses "receiving a list of recipients to be correlated with said tagged keywords," as recited in claim 1, and as similarly recited in claims 10 and 16. App. Br. 4--7; Reply Br. 2. Appellants also argue there is no language in Jin that discloses "associating, by a processor, said received list of recipients with said tagged keywords," as recited in claim 1, and as similarly recited in claims 10 and 16. App. Br. 7-10; Reply Br. 3. We are not persuaded by Appellants' arguments. The Examiner finds Jin discloses "receiving a list of recipients to be correlated with the tagged keywords." Ans. 3-5 (citing Jin Abstract, Figures 1and2, i-fi-15, 6, 18, 25- 27, 30-37, 39, 41, and 42). In describing Figures 1 and 2, paragraph 26 of Jin discloses the electronic mail server 20 may include messages to be distributed and also accounts for users, which "can be thought of as including a sender 25 and a set of potential recipients 22." Paragraph 30 of Jin discloses that the people-tagging system 40 would include a database where each user or potential recipient "would have been applied a list of tags 65 representing the expertise and interests of the user 60." Paragraph 30 of 3 Appeal2014-006372 Application 13/166,961 Jin also discloses that "every potential recipient 22's tagging information may be evaluated against the sharing condition 38 associated with the electronic message 33 to find one or more potential recipients 22 whose associated tags and data match the sharing condition 38." As explained in paragraph 35 of Jin, the "sharing condition" may include keywords related to the message 33 and "the message 33 may be tagged with a list of keywords." It is well established that a reference need not describe a limitation in haec verba to satisfy that limitation for purposes of anticipation or obviousness. See In re Bode, 550 F.2d 656, 660 (CCPA 1977); Standard Havens Prods. v. Gencor Indus., 953 F.2d 1360, 1369 (Fed. Cir. 1991) ("An anticipatory reference, however, need not duplicate word for word what is in the claims."). Thus, although Jin does not use the phrase "a list of recipients," we agree with the Examiner that Jin discloses "receiving a list of recipients" because Jin discloses the database of potential recipients 22, and their associated tagging information, that we agree constitutes the claimed "list of recipients." We also agree with the Examiner that Jin discloses a list of recipients "to be correlated with said tagged keywords" because Jin discloses the potential recipients' 22 tagging information is to be "evaluated against" or "correlated with" the sharing condition, i.e., the keywords with which the message is tagged. The Examiner also finds Jin discloses "associating, by a processor, said received list of recipients with said tagged keywords." Ans. 6 (citing Jin i-fi-f 18, 23, 26-27, and 30-35, Abstract). We agree with the Examiner's finding because Jin discloses, as the Examiner finds, "using the processor of the computer to execute the invention processes." See id. (citing Jin i123). 4 Appeal2014-006372 Application 13/166,961 We also agree with the Examiner's finding because paragraph 30 of Jin discloses "[i]f a potential recipient 22's tags satisfy the sharing condition 38 of the message 33, the message 33 may be delivered to the recipient 22." That is, Jen discloses if a potential recipient's tags satisfy or match the tagged keywords of the sharing condition, the recipients are associated with the tagged keywords because the message with those keywords is delivered to the recipient. Thus, we sustain the Examiner's rejection of claims 1, 10, and 16 under 35 U.S.C. § 102(e) as being anticipated by Jin. Independent Claim 7 and Dependent Claims 2-6, 8, 9, 11-15, and 17-21 Appellants contend the Examiner erred in rejecting independent claim 7 and dependent claims 2-6, 8, 9, 11-15, and 17-21 because Jin does not disclose one or more limitations of each of these claims. 4 App. Br. 10-33; Reply Br. 4--1 7. The Examiner disagrees and, citing various paragraphs of Jin, finds Jin discloses all of the limitations of these claims. Ans. 6-15. Regarding claim 7, Appellants argue Jin does not disclose the limitations "identifying a set of recipients that received a notice of content changes to a document" and "creating, by a processor, a tag of said identified keywords to be associated with said set of recipients." App. Br. 10-15; Reply Br. 4--5. "To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently." In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We 4 Appellants also argue claims 2---6, which depend from claim 1, claims 11- 15, which depend from claim 10, and claims 17-21, which depend from claim 16, are not anticipated for the reasons argued that claims 1, 10, and 16 are not anticipated by Jin. App. Br. 15-16. For the reasons discussed supra regarding claims 1, 10, and 16, we are not persuaded by these arguments. 5 Appeal2014-006372 Application 13/166,961 agree with Appellants the record does not support the Examiner's finding that Jin discloses identifying a set of recipients "that received a notice of content changes to a document." App. Br. 10-13. Although the Examiner finds the sender may modify the list of keywords selected by the recipient selection tool (see Ans. 7, citing Jin i-fi-1 5 and 36, and page 5, claims 1 and 13), we agree with Appellants Jin does not disclose identifying a set of recipients "that received a notice of content changes to a document," as recited in claim 7. See Reply Br. 5. Thus, we do not sustain the rejection of claim 7, as well as the rejection of claims 8 and 9, which depend therefrom. 5 Regarding claims 2---6, 11-15, and 1 7-21, the Examiner's findings are unconvincing because they are nonresponsive to Appellants' arguments and fail to identify particular portions of Jin disclosing the disputed limitations. See Ans. 9-15. Accordingly, we agree with Appellants the evidence of record does not support the Examiner's findings that Jin discloses: ( 1) "identifying a second document containing the tagged keywords," as recited in claim 2, and as similarly recited in claims 11and17 (see App. Br. 16-18; Reply Br. 8-10); (2) "providing said list of recipients to a user in response to identifying said second document containing said tagged keywords," as recited in claim 3, and as similarly recited in claims 12 and 18 (see App. Br. 18-21; Reply Br. 10-11); 5 Although Appellants separately argue the rejection of claims 8 and 9, we need not address those arguments because our decision to not sustain the rejection of claim 7 upon which claims 8 and 9 each depend is dispositive with respect to claims 8 and 9. See 37 C.F.R. § 41.37(c)(l)(iv). 6 Appeal2014-006372 Application 13/166,961 (3) "receiving modifications to said list of recipients in response to identifying said second document containing said tagged keywords," as recited in claim 4, and as similarly recited in claims 13 and 19 (see App. Br. 21-23; Reply Br. 11-12); ( 4) "storing said tagged keywords in a list," as recited in claim 5, and as similarly recited in claims 14 and 20 (see App. Br. 23- 25; Reply Br. 12-14); and ( 5) "wherein said list comprises multiple sets of tagged keywords that are each associated with a recipient list," as recited in claim 6, and as similarly recited in claims 15 and 21 (see App. Br. 26- 28; Reply Br. 14--15). Thus, we do not sustain the Examiner's rejections of claims 2---6, 11- 15, and 17-21. DECISION We affirm the Examiner's decision rejecting claims 1, 10, and 16. We reverse the Examiner's decision rejecting claims 2-9, 11-15, and 17-21. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 7 Copy with citationCopy as parenthetical citation