Ex Parte Chen et al

Patent Trial and Appeal Board

Dec 23, 2016

13954251 (P.T.A.B. Dec. 23, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/954,251 07/30/2013 Li Chen CAM920120017US2 6213
104079 7590 12/28/2016
IBM CORP - Fishkill Drafting Center
1701 North Street
B/40-3
Endicott, NY 13760
EXAMINER
PATEL, RONAK
ART UNIT PAPER NUMBER
2458
NOTIFICATION DATE DELIVERY MODE
12/28/2016 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):
endiplaw@us.ibm.com
fdciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LI CHEN, DAVID M. STECHER, and LIN SUN
Appeal 2015-0083161
Application 13/954,2512
Technology Center 2400
Before MARC S. HOFF, LARRY J. HUME, and CARL L. SILVERMAN,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 3, 4, 6, and 7. Appellants have canceled claims 2
and 5. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Copending parent Appl. Ser. No. 13/533,808 has been identified by
Appellants (Br. 1) as being related to the Appeal of the present continuation
application. However, Appl. Ser. No. 13/533,808 was abandoned on
Nov. 17, 2015 for failure to pay the Appeal Forwarding Fee, per the Notice
of Abandonment mailed Nov. 23, 2015.
2 According to Appellants, the real party in interest is International Business
Machines Corp. App. Br. 1.
Appeal 2015-008316
Application 13/954,251
STATEMENT OF THE CASE3
The Invention
Appellants' disclosed and claimed inventions generally relate to a
system, method and program product for prioritizing a plurality
of electronic messages ... [in which] a computer receives at
least one vote, from at least one first user of a plurality of users,
for each of the plurality of electronic messages . . . [that]
indicates which of the plurality of users is required to respond
to each of the plurality of electronic messages.
Spec. 1 6.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis and labeling added to contested limitation):
1. A method of prioritizing a plurality of electronic
messages, comprising:
receiving, by a computer, an electronic message from a
sender that includes a plurality of addressees and a message
priority;
transmitting, by the computer, the electronic message and
the associated priority to the plurality of addressees;
[LI] receiving, by the computer, a vote from a first
addressee of the plurality of addressees voting that a second
addressee of the plurality of addressees should send a reply
message back to the sender of the electronic messages; and
3 Our decision relies upon Appellants' Appeal Brief ("Br.," filed
Feb. 20, 2015); Examiner's Answer ("Ans.," mailed July 17, 2015); Final
Office Action ("Final Act.," mailed Sept. 22, 2014); and the original
Specification ("Spec.," filed July 30, 2013). We note Appellants did not file
a Reply Brief in response to the factual findings and legal conclusions in the
Examiner's Answer.
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Application 13/954,251
[L2] updating, by the computer, the priority of the
electronic message transmitted to the second addressee, based
at least on the vote the received from the first addressee.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Gillai et al. ("Gillai") US 2009/0094340 A1 Apr. 9, 2009
Horvitz et al. ("Horvitz") US 8,024,415 B2 Sept. 20, 2011
Rejections on Appeal
Rl. Claims 1,3,4, 6, and 7 stand provisionally rejected under the
judicially created ground of nonstatutory obviousness-type double patenting
(OTDP) over claims 7, 9—10, 12—13, 15—16 and 18—20 of copending
Application No. 13/533,808. Final Act. 3.
R2. Claims 1,3,4, 6, and 7 stand rejected under 35 U.S.C. § 103(a)
as being obvious over the combination of Horvitz and Gillai. Final Act. 7;
Ans. 2.
CFAIM GROUPING
Based on Appellants' arguments (App. Br. 5—10), we decide the
appeal of obviousness Rejection R2 of claims 1, 3, 4, 6, and 7 on the basis of
representative claim l.4
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv)
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Application 13/954,251
We address provisional OTDP Rejection R1 of claims 1, 3, 4, 6,
and 7, infra.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1,3,4,
6, and 7, and we incorporate herein and adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellants' arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments regarding claim 1 for
emphasis as follows.
1. Provisional OTDP Rejection R1 of Claims E 3, 4, 6, and 7
Issue 1
Neither Appellants nor the Examiner acknowledge OTDP Rejection
R1 in the Appeal Brief or Examiner's Answer. However, we note the
reference patent application serial number 13/533,808 has been abandoned
as of November 17, 2015, thus rendering provisional OTDP Rejection R1
moot, and therefore not before us on appeal.
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2. $103 Rejection R2 of Claims 1, 3, 4, 6, and 7
Issue 2
Appellants argue (Br. 5—10) the Examiner's rejection of claim 1 under
35 U.S.C. § 103(a) as being obvious over the combination of Horvitz and
Gillai is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a] method of prioritizing a plurality of electronic messages"
that includes, inter alia, limitations LI and L2, as recited in claim 1?
Analysis
Appellants contend:
Whereas Horvitz describes determining message priority
based on message content and recipient behavior, and Gillai
describes determining priority of messages in a thread based on
actions of all recipients of the messages, the combination of
Horvitz and Gillai does not disclose, teach or suggest an
invention embodiment in which the priority of a particular
recipient message is updated, based on whether other recipients
of the message vote that the particular recipient should respond
to the message, as required by Appellant's independent claim 1.
App. Br. 10. "Therefore, the embodiment of Appellants' claim 1 is not
obvious over the combination of Horvitz and Gillai, at least for the reasons
stated above, and this rejection is overcome with regard to claim 1." Id.
Because the Examiner rejects the claims as obvious over the
combined teachings of Horvitz and Gillai, the test for obviousness is not
what the references show individually but what the combined teachings
would have suggested to one of ordinary skill in the art. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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The Examiner finds, and we agree, Horvitz teaches or suggests
assigning priority to a message. Ans. 4 (citing Horvitz col. 13,11. 35—50).
The Examiner also finds Gillai teaches or suggests an intelligent email
management system that includes implicit or inferred email rankings based
on "a variety of independent mechanisms including the relationship between
the sender of emails and the receiver or the emails, the collective actions of
the recipients [voting/ranking]." Id. (citing Gillai 20-22).5
The Examiner further finds:
The email ranking scores (both system and/or user)
typically change as recipients receive and act [provide
suggestion such as voting] on the initial email. Each user's
response used to modify the scores [voting score/ranking
score] for the email or email thread. The score can be tied to the
initial email, the response to the email and/or a combination
where score can change [update for the same email/thread]
dynamically based on the most recent actions of the recipients.
When a receiver receives a message, the IEMS (Intelligent
email management system) calculates a revised system and per
user score based on the existing thread score (before the latest
action) and the action score of the last sender ....
Thus, Gillai explicitly indicates updating score for the
electronic message to the second addressee based on the score
5 See also Gillai 23, ("An embodiment of the IEMS includes generating
two ranking scores for each email thread. A first ranking includes a system
score that determines that thread's importance relative to all other threads in
the entire IEMS. A second ranking includes a user score that determines
that thread's importance to the user. In both cases, scoring is applied to each
message based on the relationship between sender and recipient."). We find
this disclosure of Gillai of the user score, along with other portions cited by
the Examiner, teach or at least suggest the recited "receiving ... a vote from
a first addressee of the plurality of addressees" and "updating ... the priority
of the electronic message." Claim 1.
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received from first addressee where the priority updates based
on actions of at least one of the plurality of email users.
Ans. 5 (citing Gillai Tflf 27—29, 49).
Accordingly, we find the combination of Horvitz and Gillai teaches or
at least suggests limitations LI and L2 of claim 1, and we note Appellants do
not point to a definition of "voting" in their Specification that would
preclude the Examiner's broader reading, nor do they otherwise rebut the
Examiner's findings and legal conclusions in the Answer by filing a Reply
Brief.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
claims 3, 4, 6, and 7 which fall therewith. See Claim Grouping, supra.
CONCLUSIONS
(1) The Examiner's OTDP Rejection R1 of claims 1, 3, 4, 6, and 7
has been rendered moot by the abandonment of the reference application
serial number 13/533,808. Therefore, Rejection Rlis not before us on
appeal, and forms no part of our Decision.
(2) The Examiner did not err with respect to obviousness Rejection
R2 of claims 1,3,4, 6, and 7 under 35 U.S.C. § 103(a) over the cited prior
art combination of record, and we sustain the rejection.
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DECISION
We affirm the Examiner's decision rejecting claims 1, 3, 4, 6, and 7.
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). See 37
C.F.R. § 41.50(f).
AFFIRMED
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