13913720 (P.T.A.B. Dec. 18, 2017)

Ex Parte Cudak et al

Patent Trial and Appeal BoardDec 18, 2017

13913720 (P.T.A.B. Dec. 18, 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. 13/913,720 06/10/2013 Gary D. Cudak RPS920130010US2 (160CON) 8740 50594 7590 CRGO LAW STEVEN M. GREENBERG 7900 Glades Road SUITE 520 BOCA RATON, EL 33487 EXAMINER HENDERSON, ESTHER BENOIT ART UNIT PAPER NUMBER 2458 NOTIFICATION DATE DELIVERY MODE 12/20/2017 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): docketing@crgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GARY D. CUDAK, LYDIA M. DO, CHRISTOPHER J. HARDEE, and ADAM ROBERTS Appeal 2017-0059731 Application 13/913,720 Technology Center 2400 Before ERIC B. CHEN, IRVIN E. BRANCH, and ADAM J. PYONIN, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1—15, which are all of the pending claims. See App. Br. 7. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Lenovo Enterprise Solutions (Singapore) Pte. Ltd. is identified as the real party in interest. See App. Br. 2. Appeal 2017-005973 Application 13/913,720 STATEMENT OF THE CASE Introduction The Application is directed to file transfer operations during a messaging session using, e.g., electronic mail, instant messaging, or text messaging. Spec. 2, 4. Claims 1, 6, and 11 are independent. Claim 1 is reproduced below for reference, with emphasis on the disputed limitation: 1. A method for message attachment modification based upon determined context, the method comprising: loading into memory a message referencing a file to be transmitted to a recipient; determining a context for transmitting the message based upon a reference in the message or in a prior message to a characteristic of the file referenced by the message; modifying the file according to the determined context by identifying a portion of the file contextually relevant to the determined context and modifying the file to remove other portions of the file not contextually relevant to the determined context; and, transmitting the message with modified file to the recipient. The Examiner’s Rejection2 Claims 1—15 stand rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Malik (US 7,895,271; Feb. 22, 2011). Final Act. 5. 2 A provisional obviousness-type double patenting rejection of claims 1—5 and 11—15 over claims 6—15 of then co-pending Application No. 13/905,084 (see Final Act. 5) is moot, because the co-pending application has been abandoned for failure to file a reply to the Office Action, mailed September 4, 2015. 2 Appeal 2017-005973 Application 13/913,720 ANALYSIS The Examiner finds “Malik teaches using a screening criteria such as a ‘mandated message size’ to identify any messages which exceed a predetermined size,” which is tantamount to the “determining a context” limitation of claim 1. Ans. 3. The Examiner further finds Malik discloses the determined context based upon a reference in the message, as claimed, because Malik’s message size “is the symbol or number found in the message which correlates to appellant(s) [claimed] ‘reference.’” Id. Appellants argue the Examiner’s rejection is in error, because Malik’s “message size is not a characteristic of a file referenced by the message.” App. Br. 7. Particularly, Appellants contend the message size disclosed in “Malik is not a reference ‘in the message or in a prior message’ from which a context of the message is determined” as claimed, because “there is no indication in Malik that ‘ 1.2 M bytes’ is ‘in the message or in a prior message’ as claimed by Appellants.” Reply Br. 5 (emphasis omitted). We are persuaded by Appellants arguments. “[A]n invention is anticipated if the same device, including all the claim limitations, is shown in a single prior art reference. Every element of the claimed invention must be literally present, arranged as in the claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989) (citations omitted). Here, claim 1 requires that the context is determined based on a reference that is “in the message.” Malik, in contrast, discloses the computer system uses “a screening criteria to identity all e-mail messages greater than” a given size; that is, Malik reviews the size of the message, not a reference in the message. Thus, we agree with Appellants that Malik does not disclose “determining a context for transmitting the message based upon 3 Appeal 2017-005973 Application 13/913,720 a reference in the message or in a prior message to a characteristic of the file referenced by the message” as recited by claim 1. See Reply Br. 5. Accordingly, we do not sustain the Examiner’s rejection of independent claim 1, as well as independent claims 6 and 11, which recite similar limitations, and the claims dependent thereon. DECISION The Examiner’s decision rejecting claims 1—15 is reversed. REVERSED 4