Ex Parte Cheng

Patent Trial and Appeal Board

Feb 27, 2017

12766484 (P.T.A.B. Feb. 27, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/766,484 04/23/2010 David J. Cheng 329284.01 1551
69316 7590 03/01/2017
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
TANG, KAREN C
ART UNIT PAPER NUMBER
2447
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
u sdocket @ micro soft .com
chriochs @microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID J. CHENG
Appeal 2016-003018
Application 12/766,484
Technology Center 2400
Before ST. JOHN COURTENAY III, JOHHNY A. KUMAR, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—15 and 21—27, which are all the claims remaining in
the application. Claims 16—20 are cancelled. (App. Br. 5). We have
jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
Appeal 2016-003018
Application 12/766,484
Invention
The disclosed and claimed invention on appeal relates to email
viewing techniques. Abstract.
Representative Claim
1. A method comprising:
[LI] determining one or more types of composed textual or
non-textual content are included in an email by a computing
device through examination of metadata that describes the one
or more types of composed textual or non-textual content, the
email including a header and the composed content, the
composed content including at least one of a variety of textual
or non-textual content;
choosing one of a plurality of preconfigured views for the email
by the computing device based on the determination, the
plurality of views including different views that are each
configured for presentation of a specific type of composed
textual or non-textual content; and
[L2] outputting the composed textual or non-textual content of
the email in a user interface by the computing device using the
chosen one of the preconfigured views.
(Contested limitations LI and L2 emphasized).
2
Appeal 2016-003018
Application 12/766,484
Rejections 1
A. Claims 1—15 and 21—27 2 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over the combined teachings and
suggestions of Matsuzawa et al. (US 2011/0078612 Al, published
Mar. 31, 2011) (hereinafter “Matsuzawa”), Baude et al. (US
2008/0126353 Al, published May 29, 2008) (hereinafter “Baude”),
Friedman et al. (US 2010/0005399 Al, published Jan. 7, 2010)
(hereinafter “Friedman”), and Van Dok et al. (US 2006/0161868 Al,
published July 20, 2006) (hereinafter “Van Dok”).
B. Claim 26 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of
Matsuzawa, Baude, Friedman, Van Dok, and Tilden et al. (US
2011/0225257 Al, published Sept. 15, 2011) (hereinafter “Tilden”). 3
1 We note the “Notice of Panel Decision from Pre-Appeal Brief Review”
(mailed July 8, 2015) indicates that claims 1—16 and 18—23 are rejected,
which is inconsistent with the Final Action “Office Action Summary” that
indicates claims 1—15 and 21—27 are rejected by the Examiner. Appellant
agrees that “Claims 1—15 and 21—27 are pending and are the subject of this
appeal. Claims 16—20 were previously cancelled without prejudice.” (App.
Br. 5).
2 The Examiner indicates claim 27 is rejected only on the Final “Office
Action Summary” page. The Examiner also does not include claims 24—26
in the heading of rejection A (Final Act. 2), but indicates on Final Act. (10)
that “Claim[s] 24—26 are rejected under similar rational[e] as claims 1—14,
21-23.”
3 We note claim 26 is cumulatively rejected under both rejections A and B.
See Final Act. 7, 10. We consider the Examiner reference to claim 19 (in
the rejection under the heading of rejection B on Final Act. 10) as a
typographical error, because claim 19 is cancelled, and the Examiner relies
3
Appeal 2016-003018
Application 12/766,484
Grouping of Claims
Based upon Appellant’s arguments, we decide the appeal of all claims
rejected under rejection A on the basis of representative claim 1. In the
Briefs, Appellant advances no separate arguments regarding cumulative
rejection B of claim 26. To the extent Appellant has not advanced separate,
substantive arguments for particular rejected claims or issues, such
arguments are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We find Appellant’s arguments unpersuasive for the reasons
discussed infra. We adopt as our own: (1) the findings and legal conclusions
set forth by the Examiner in the Final Office Action from which this appeal
is taken, and (2) the findings, legal conclusions, and explanations set forth in
the Answer in response to Appellant’s arguments (Ans. 11—21). We
highlight and address specific findings and arguments for emphasis in our
analysis below.
Rejection of Representative Claim 1
Issues: Under 35 U.S.C. § 103, did the Examiner err by finding the
cited combination of Matsuzawa, Baude, Friedman, and Van Dok would
have taught or suggested contested limitations LI and L2, within the
meaning of representative claim 1? * * * 4 Further, did the Examiner erred in
combining the cited references under § 103?
on Tilden (| 44) in the detailed statement of rejection (Final Act. 10—11) for
teaching the “bill information” recited in claim 26.
4 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 F.3d
4
Appeal 2016-003018
Application 12/766,484
Contested Limitation LI
Regarding limitation LI, Appellant contends, inter alia:
the Office cites Matsuzawa as disclosing "metadata that
describes the one or more types of content" (see Final Office
Action, p. 2). Applicant respectfully disagrees. Matsuzawa Fig.
3 lists the metadata being handled regarding email messages.
Nowhere does Matsuzawa list the message body/composed
content as part of the metadata being handled. While the table
in Fig. 3 shows the headings "Received e-mail contents" and
"Transmitted e-mail contents", it is clear from the
corresponding list that these email "contents" do not include
composed content, i.e. content from the message body of the
email. Rather, the "Received e-mail contents" and "Transmitted
e-mail contents" include: whether the email was sent or
received, time at which the email was sent/received, to whom or
from whom the email was sent/received (names, addresses,
images), whether or not the email had an attachment, and the
subject line of the email. The types of metadata listed in
Matsuzawa Fig. 3 include information that may be found in the
header of an email, which is not equivalent to the message
body of an email that includes composed content.
(App. Br. 12). (Emphasis added).
However, we note claim 1 is silent regarding the argued “message
body.” (Id.). Our reviewing court guides: “[tjhough understanding the claim
language may be aided by the explanations contained in the written
description, it is important not to import into a claim limitations that are not
a part of the claim.” SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d
1048, 1054 (Fed. Cir. 1997). Cf. Spec. 145 (“Although the invention has
been described in language specific to structural features and/or
methodological acts, it is to be understood that the invention defined in the
appended claims is not necessarily limited to the specific features or
acts described. Rather, the specific features and acts are disclosed as
example forms of implementing the claimed invention.”) (Emphasis added).
5
Appeal 2016-003018
Application 12/766,484
870, 875 (Fed. Cir. 2004). “We have cautioned against reading limitations
into a claim from the preferred embodiment described in the specification,
even if it is the only embodiment described, absent clear disclaimer in the
specification.” In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed.
Cir. 2004).
This reasoning is applicable here. Therefore, we decline Appellant’s
invitation to read limitations from the Specification into the claims.5
Moreover, to the extent that the argued “message body” (App. Br. 12) is
supported in the Specification, we find email message “content” is described
broadly using exemplary, non-limiting language: e.g., “The content 114
may be representative of a variety of different types of content that may
be included in the email 110.” (Spec. 121) (Emphasis added).
Accordingly, on this record, we are not persuaded the Examiner’s
reading of contested limitation LI on the cited portions of Matsuzawa and
Baude (in combination with Friedman and Van Dok) is overly broad, or
unreasonable.6 See Final Act. 3^4; App. Br. 11—14.
5 We find Baude (123) evidences it was well known in the art at the time of
Appellant’s invention that “Email content within each folder may be
represented as a set of email messages, each of which comprises header
information, a message body, and transmission-related information.
The header information identifies the message sender, the message
recipient(s), a message date, a message title, and possibly a message size.
The message body contains the content of the message. The
transmission-related information contains routing information, information
about the sender's software environment, and other information, (emphasis
added). See Ans. 12, citing Baude (123).
6 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
6
Appeal 2016-003018
Application 12/766,484
Contested Limitation L2
Regarding limitation L2, Appellant contends, inter alia:
Regarding Friedman, the Office alleges Friedman to disclose
"outputting the composed content of the email in a user
interface by the computing device using the chosen one of the
preconfigured views" (see Final Office Action, p. 4). Applicant
respectfully disagrees. Friedman is directed to email
attachments, of which "[a] thumbnail graphic of a portion of the
contents" is displayed (see Friedman, Abstract). Friedman
1 [0005] clearly distinguishes between an attachment and
message body of an email by stating "[t]he attachment can often
be of any file format. . . often not simply text, but binary code.
Otherwise, the attachment text could simply be added in the
body of the message by the user creating the message."
Consequently, Friedman's output/display of the contents of an
email attachment does not correspond to the subject matter of
claim 1, particularly "outputting the composed textual or non­
textual content of the email in a user interface by the
computing device using the chosen one of the preconfigured
views."
(App. Br. 13).
We find a user may “compose” textual content and non-textual
content (e.g., attached photo files) by selecting, for example, which
particular photo files to attach (and thus include) in an email message,
whereupon the attached files become part of the “composed” and transmitted
email message. As would have been known to an artisan at the time of
Appellant’s invention, Friedman (| 48) broadly describes attachments as
being “any object that is transported inside, outside, and/or along with, an
electronic message.” (Emphasis added). Further, Friedman (| 49)
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (internal citation omitted).
7
Appeal 2016-003018
Application 12/766,484
describes “Examples of ‘objects’ include, but are not limited to a text file, an
image file, a video file, an audio file, and a fax, individually or in
combination.” Thus, we find Friedman 48—49) contemplates, for
example, photos included in the body of an email message, or included as
attachments. See also Friedman Figure 4, which the Examiner finds (Final
Act. 4) teaches or suggests “one of the preconfigured views.” (Claim 1).
Therefore, on this record, we are not persuaded of error regarding the
Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness, which is based on a broader interpretation of limitation F2:
Friedman, in analogous art, further discloses the outputting the
composed content of the email in a user interface by the
computing device using the chosen one of the preconfigured
views (refer to Fig 4 and par 0008 and 0051).
It would have been obvious for one of ordinary skill in the art to
combine the teaching of Matsuzawa, Baude and Friedman
because Friedman's teaching would allow user defined
information to displayed in the unified view (refer to Fig 4, and
also supported by Van Dok, Van Dok, in analogous art, further
emphasize that it is well known for the composed content to
include at least one of a variety of textual or non-textual content
or a combination thereof, refer to par 0027 and the output
composed textual or non-textual content of the email in a user
interface, refer to par 0027).
(Final Act. 4).
However, Appellant further asserts the cited references were
improperly combined by the Examiner:
Moreover, Friedman, in fact, teaches away from the subject
matter of this claim by handling email attachments "irrespective
of type" (see Friedman if [0051 ]), which is supported by the
fact that Friedman is altogether silent concerning use of
8
Appeal 2016-003018
Application 12/766,484
metadata to describe types of content in an email. This lack of
metadata utilization precludes Friedman from disclosing
"outputting the composed textual or non-textual content of the
email in a user interface by the computing device using the
chosen one of the preconfigured views" as recited by
claims 1, considering since the preconfigured views are based
on a determination made through examination of metadata.
(App. Br. 13—14). (Emphasis added).
Regarding Appellant’s “teaching away” argument, our reviewing
court guides that a prior art reference does not teach away from the claimed
subject matter unless the prior art reference criticizes, discredits, or
otherwise discourages the solution claimed. See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004); DePuy Spine, Inc. v. Medtronic Sofamor
Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not
teach away, however, if it merely expresses a general preference for an
alternative invention but does not ‘criticize, discredit, or otherwise
discourage’ investigation into the invention claimed”) (citing Fulton).
Here, we find Appellant is attacking Friedman in isolation, because
the Examiner relies on the combination of Matsuzawa (e.g., 1 66 describing
Fig. 3; Ans. 11) and Baude (e.g., 26, 28, 31; Final Act. 3) for teaching or
suggesting the use of metadata, as recited in claim 1. Moreover, Appellant
has not shown that Friedman discredits or discourages investigation into the
invention claimed. (App. Br. 13—14). The Supreme Court guides: “if a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.” KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 417
9
Appeal 2016-003018
Application 12/766,484
(2007) (citation omitted). When combining references to establish
obviousness, the appropriate consideration is whether the proposed
combination would work for its intended purpose, not whether the
combination is inconsistent with the stated goal of one of the references, as
Appellant argues (App. Br. 13—14). See DePuy Spine, Inc., 567 F.3d at
1326-27.
Further, Appellant does not provide evidence sufficient to
demonstrate that combining the teachings of the cited references, in the
manner proffered by the Examiner (Final Act. 3—4, would have been
“uniquely challenging or difficult for one of ordinary skill in the art,”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007).
Given the evidence cited by the Examiner (Final Act. 3^4; App. Br.
11—14), we find the proffered combination of Matsuzawa, Baude, Friedman,
and Van Dok would have taught or suggested contested limitations LI and
L2, within the meaning of representative claim l.7 For the reasons discussed
above, we are also not persuaded the Friedman reference “teaches away”
from Appellant’s claimed invention, or that the Examiner has improperly
combined the cited references under §103.
Therefore, on this record, we find the Examiner’s proffered
combination of the respective teachings of Matsuzawa, Baude, Friedman,
and Van Dok would have merely yielded predictable results, and thus would
7 “[T]he question under 35 U.S.C. § 103 is not merely what the references
expressly teach but what they would have suggested to one of ordinary skill
in the art at the time the invention was made.” Merck & Co., Inc. v. Biocraft
Laboratories, Inc., 874 F. 2d 804, 807—808 (Fed. Cir. 1989) (citation
omitted); see also MPEP § 2123.
10
Appeal 2016-003018
Application 12/766,484
have been obvious to an artisan possessing an ordinary level of skill in the
art at the time of Appellant’s invention. See KSR, 550 U.S. at 416 (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”).
Because Appellant has not persuaded us the Examiner erred, we
sustain the §103 rejection of representative independent claim 1, and the
rejection of the associated grouped claims, which fall with claim l.8 See
Grouping of Claims, supra.
Reply Brief
To the extent Appellant advances new arguments in the Reply Brief
not in response to a shift in the Examiner's position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner’s Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
Conclusion
For at least the aforementioned reasons, on this record, Appellant has
not persuaded us the Examiner erred. We find a preponderance of the
evidence supports the Examiner’s underlying factual findings and ultimate
legal conclusion of obviousness for all contested claims on appeal.
8 We note Appellant essentially restates the same arguments advanced for
claim 1 for independent claims 10 and 24. (App. Br. 15—23).
11
Appeal 2016-003018
Application 12/766,484
DECISION
We affirm the Examiner’s decision rejecting claims 1—15 and 21—27
under § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
12