Ex Parte Chen et al

Patent Trial and Appeal Board

Sep 18, 2012

10897230 (P.T.A.B. Sep. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte YEN-FU CHEN, JOHN HANS HANDY-BOSMA,
and KEITH RAYMOND WALKER

________________

Appeal 2010-005783
Application 10/897,230
Technology Center 2400
________________

Before DEBRA K. STEPHENS, DAVID M. KOHUT, and JOHN G. NEW,
Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005783
Application 10/897,230

2
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claim 35 which stands rejected as
unpatentable under 35 U.S.C. § 103(a) as being obvious over Ahmed et al.
(US 6,704,772 B1, March 9, 2004) (“Ahmed”), Suzuki (US 6,826,596 B1,
November 30, 2004) (“Suzuki”) and Poppink et al. (US 7,305,381 B1,
December 4, 2007) (“Poppink”). App. Br. 10.
Claim 36 stands rejected as unpatentable under 35 U.S.C. § 103(a) as
obvious over Ahmed, Suzuki, Poppink, and Shimizu (US 6,816,868 B1,
November 9, 2004) (“Shimizu”). App. Br. 10.
Claims 37 and 39 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as obvious over Ahmed, Maurille (US 6,484,196 B1, November
19, 2002) (“Maurille”), and Tosey (US 2005/0039048 A1, February 17,
2005) (“Tosey”). App. Br. 10.
Claims 38 and 40, stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as obvious over Ahmed, Maurille, Tosey, and Official Notice.1
App. Br. 10.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Claims 39 and 40 were also finally rejected by the Examiner as
unpatentable under 35 U.S.C. § 101 as being directed to non-statutory
subject matter. App. Br. 12. On appeal, the Examiner withdrew the final
rejection on that ground. Ans. 10.
Appeal 2010-005783
Application 10/897,230

3
STATEMENT OF THE CASE
Appellants’ invention is directed to a method, a computer program
product, and an apparatus constituting a duplicate content storage and
access program (DC SAP) and a computer upon which to practice the
claimed program product and method. Abstract. Claim 35 is illustrative of
the claims on appeal and we therefore choose it as representative. Claim 35
recites:
35. A computer implemented method for reducing utilization
of disk storage space due to duplicate content in electronic mail
message transmission, the method comprising:

intercepting, at a server, an email from a second user to a
first user in a thread of emails between a first user and a second
user, the email comprising a first message created by the first
user and a second message created by the second user;

examining the first message and the second message for
a section identifier;

responsive to determining that the first message includes
the first section identifier, extracting the first message from the
email, saving the first message in a repository connected to the
server, generating a doclink, and replacing the first message in
the email with the doclink;

responsive to determining that the second message does
not include a section identifier, generating a second section
identifier, embedding the second embedded identifier in the
second message;

sending the email to the first user at a first user computer;
and

Appeal 2010-005783
Application 10/897,230

4
responsive to the first user opening the email at the first
user computer, automatically resolving the doclink into a text of
the first message so that an entire email is displayed.

App. Br. 31.

ANALYSIS
Claim 35
Issue 1: Whether the Examiner erred in finding the combination of
Ahmed and Suzuki, discloses or suggests the limitation of Claim 35
reciting “responsive to determining that the second message does not
include a section identifier, generating a second section identifier,
embedding the second embedded identifier in the second message.”

Appellants argue that the Examiner erred in concluding that claim 1
is unpatentable under 35 U.S.C. § 103(a) as being obvious over Ahmed and
Suzuki. App. Br. 14. Specifically, Appellants contend that the Examiner
erred because Ahmed and Suzuki are silent with respect to “a section
identifier” and to an identifier that is for a message or section other than “an
initial electronic message.” App. Br. 16. Appellants argue that Ahmed
does not disclose a “section identifier” for a “section” of an electronic
message, but only identifies “the initial electronic message” and assigns an
identifier to it. Furthermore, Appellants argue that Suzuki fails to remedy
Ahmed’s silence with respect to the limitation. Id. Appellants argue that
Suzuki shows a display of “votes” in which messages are divided in an
interface; however, this display does not teach or suggest the limitation
recited above.
The Examiner answers by finding that Ahmed teaches that replies
may be associated with an earlier message by assigning an identifier to the
Appeal 2010-005783
Application 10/897,230

5
initial electronic message. Ans. 10. Thus, according to the Examiner, “an
identifier allows for the automated creation of a message-specific storage
mechanism to hold the original message as well as all subsequent replies
to that initial message.” Id. (boldface in original). The Examiner also
finds that Ahmed teaches “forking,” with a new message identifier for a
“forked” or diverging email thread that includes the initial forking message
and any associated replies having a message identifier. Ans. 11 (citing FIG.
5). Finally, the Examiner finds that Suzuki teaches reply messages to an
original message where the reply messages have an embedded identifier.
Id.
We are not persuaded by the Examiner’s findings that Ahmed and
Suzuki disclose or suggest the limitation of claim 35 reciting “responsive to
determining that the second message does not include a section identifier,
generating a second section identifier, embedding the second embedded
identifier in the second message.” Although Ahmed teaches a new message
identifier and a message string, Ahmed teaches only a single identifier for a
message and its associated replies. Ans. 10. The Examiner has not set forth
with specificity nor do we readily find where Ahmed teaches or suggests a
second message has its own embedded identifier.
Suzuki does not remedy Ahmed’s silence by disclosing or suggesting
determining that the second message does not include a section identifier,
generating a second section identifier, embedding the second embedded
identifier in the second message. The Examiner asserts Suzuki teaches
reply messages to an original message where the reply messages have an
embedded identifier (Ans. 11); however, Suzuki does not teach or suggest
generating a second section identifier that is embedded in the second
Appeal 2010-005783
Application 10/897,230

6
message. Again, as in Ahmed, only one identifier is taught or suggested for
a string of e-mails.
Accordingly, the combination of Ahmed and Suzuki does not teach
or suggest the disputed limitation. We therefore conclude that the
Examiner erred in concluding that the recited cited limitation of claim 35
would have been obvious to a person of ordinary skill in the
contemporaneous art over the combination of Ahmed and Suzuki.

Issue 2: Whether the Examiner erred in finding that the limitation of claim
35 reciting “responsive to the first user opening the email at the first user
computer, automatically resolving the doclink into a text of the first
message so that an entire email is displayed” is obvious over Ahmed and
Poppink.

Appellants also argue that the Examiner erred in finding that Ahmed
and Poppink disclose or suggest the limitation of claim 35 recited above.
Appellants contend that Ahmed teaches only assigning an identifier to an
initial message and that Poppink teaches only the automatic retrieval of
stored message information. App. Br. 20-21. Specifically, Appellants
contend that Poppink teaches that “[w]hen messages are received or
viewed, information about the sender and/or query keys extracted from
message content is automatically retrieved.” App. Br. 21. Appellants,
argue that Poppink does not therefore disclose the limitation at issue
because “information about the sender and/or query keys” does not qualify
as a “unique identifier.” Id. Moreover, argue Appellants, even assuming,
arguendo, that they could be construed to qualify as unique identifiers, such
information would not be operable to function in the other elements of
Appeal 2010-005783
Application 10/897,230

7
claim 35 because these terms are merely informational and are not unique
identifiers configured to operate as in claim 35. Id.
The Examiner responds that Ahmed teaches that when a user
manually clicks on a message link then the text of the initial message is
displayed along with the text of replies without having the content of each
reply duplicated. Ans. 11. The Examiner also finds that Poppink, col. 28,
lines 55-col. 29, line 10, teaches automatically retrieving (unconscious
retrieval technique) message content. Ans. 12. Consequently, the
Examiner finds that it would be obvious to an artisan of ordinary skill to
modify Ahmed’s use of manually clicking on the message link to retrieve
the message to use instead the methodology of automation of retrieval of
message content taught by Poppink. Id.
We are not persuaded by the Examiner’s reasoning. We find that the
combination of Ahmed and Poppink does not suggest or disclose the
limitation of claim 35 reciting “opening the email at the first user computer,
automatically resolving the doclink into a text of the first message so that an
entire email is displayed.” Ahmed teaches only having an identifier for the
first message and not for the second user (or subsequent) reply messages.
App. Br. 20. Therefore, Ahmed does not teach or suggest that when
opening the email at the first user computer, the doclink is automatically
resolved so the entire email is displayed because it does not teach the
automatic retrieval of message content from a unique section identifier
upon the email being opened.
Poppink does not remedy this deficiency, disclosing only that
information about the sender and/or query keys extracted from message
content is automatically retrieved. App. Br. 21. The Examiner has
Appeal 2010-005783
Application 10/897,230

8
therefore not shown that either reference teaches automatically resolving
the doclink into a text of the first message so that an entire email is
displayed.
Furthermore, we find that the Examiner has failed to make a prima
facie case that the remaining limitations of claim 35 would be obvious to an
artisan of ordinary skill over the cited prior art. Consequently, we conclude
that the Examiner erred in concluding that it would have been obvious to a
person of ordinary skill in the contemporary art to combine the teachings of
Ahmed, Suzuki, and Poppink to meet all of the limitations of claim 35.

Claims 36
The Examiner rejected claim 36 stands as unpatentable under 35
U.S.C. § 103(a) as obvious over the combination of Ahmed, Suzuki,
Poppink, and Shimizu. However, the Examiner has not shown that the
addition of the Shimizu reference overcomes the deficiency of the
combination of Ahmed, Suzuki, and Poppink described above.
Consequently, we conclude that the Examiner erred in concluding that it
would have been obvious to a person of ordinary skill in the contemporary
art to combine the teachings of Ahmed, Suzuki, and Poppink to meet all of
the limitations of claim 36.

Claims 37 and 39
The Examiner rejected claims 37 and 39 as unpatentable under 35
U.S.C. § 103(a) as obvious over the combination of Ahmed, Maurille and
Tosey. However, the Examiner has not shown that the addition of Maurille
and Tosey overcomes the deficiency of Ahmed described above.
Appeal 2010-005783
Application 10/897,230

9
Consequently, we conclude that the Examiner erred in concluding that it
would have been obvious to a person of ordinary skill in the contemporary
art to combine the teachings of Ahmed, Maurille, and Tosey to meet all of
the limitations of claims 37-39.

Claims 38 and 40
The Examiner rejected claims 38 and 40 as unpatentable under 35
U.S.C. § 103(a) as obvious over the combination of Ahmed, Maurille,
Tosey, and Official Notice. However, the Examiner has not shown that the
addition of the Official Notice overcomes the deficiency of Ahmed,
Maurille, and Tosey described above. Consequently, we conclude that the
Examiner erred in concluding that it would have been obvious to a person
of ordinary skill in the contemporary art to combine the teachings of
Ahmed, Maurille, Tosey, and Official Notice to meet all of the limitations
of claims 38-40.

CONCLUSION
Appellants have shown that the Examiner erred in rejecting claim 35
as unpatentable under 35 U.S.C. § 103(a) as being obvious over Ahmed,
Suzuki, and Poppink.
Appellants have shown that the Examiner erred in rejecting claim 36
as unpatentable under 35 U.S.C. § 103(a) as being obvious over Ahmed,
Suzuki, Poppink, and Shimizu.
Appellants have shown that the Examiner erred in rejecting claims 37
and 39 as unpatentable under 35 U.S.C. § 103(a) as being obvious over
Ahmed, Maurille, and Tosey.
Appeal 2010-005783
Application 10/897,230

10
Appellants have shown that the Examiner erred in rejecting claims
38-40 as unpatentable under 35 U.S.C. § 103(a) as being obvious over
Ahmed, Maurille, Tosey, and Official Notice.

DECISION
The Examiner’s rejection of claim 35 as unpatentable under 35
U.S.C. § 103(a) as being obvious over Ahmed, Suzuki, and Poppink is
reversed.
The Examiner’s rejection of claims 36 as unpatentable under 35
U.S.C. § 103(a) as being obvious over Ahmed, Maurille, and Tosey is
reversed.
The Examiner’s rejection of claims 38 and 40 as unpatentable under
35 U.S.C. § 103(a) as being obvious over Ahmed, Maurille, Tosey, and
Official Notice is reversed.

REVERSED

msc