11051551 (B.P.A.I. Mar. 15, 2011)

Ex Parte Edwards et al

Board of Patent Appeals and InterferencesMar 15, 2011

11051551 (B.P.A.I. Mar. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte GREGORY W. EDWARDS, GEORGE DANTE M. PINEDA, KEVIN L. FARMER, and KENNETH P. LASWELL ____________________ Appeal 2009-007817 Application 11/051,5511 Technology Center 2100 ____________________ Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE AND JAY P. LUCAS, Administrative Patent Judges. LUCAS, Administrative Patent Judge. DECISION ON APPEAL2 1 Application filed February 4, 2005. The real party in interest is SBC Knowledge Ventures. 2 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-007817 Application 11/051,551 STATEMENT OF THE CASE Appellants appeal from a final rejection of claims 1 to 20 under authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b). We affirm the rejections. Appellants’ invention relates to a method and system for presenting Frequently Asked Questions (FAQs) to a user while writing an e-mail (e.g., while writing an inquiry to a company.) In the words of Appellants: As Web sites become more popular for consumers to research and buy products and services, a number of support and information- querying e-mails to companies is also increasing. This results in increased customer support demands on companies and may create slower response times to their customers. Some Web sites, in response to receiving an e-mail message, create an automatic e-mail response that contains answers to one or more frequently-asked questions (FAQs). . . . . Disclosed herein are embodiments of presenting relevant previously asked questions and answers while a user is filling in an e-mail form. This reduces a number of e-mails to which a company must respond while still providing useful and timely information to its customers. (Spec. ¶¶ [0002], [0008]). 2 Appeal 2009-007817 Application 11/051,551 The following illustrates the claims on appeal: Claim 1: 1. A method comprising: during a task of composing a current e-mail which comprises a message, outputting a display page having one or more previously-asked questions relevant to the message, in which at least one of the displayed previously-asked questions is displayed at least in part based on a search of a previously-asked questions database and at least in part based on an analysis of existing e-mails to determine that the at least one displayed previously-asked question is relevant to the message in the current e-mail. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Machiraju US 6,028,601 Feb. 22, 2000 “Send a message to Raymond W. Kelly, Commissioner Police Department,” Internet printout (June 2002) (hereinafter “Kelly”) REJECTIONS The Examiner rejects the claims as follows: R1: Claims 1, 2, 7, 9, 10, 15, 17 and 18 stand rejected under 35 U.S.C. § 102(b) for being anticipated by Machiraju. R2: Claims 3 to 6, 8, 11 to 14, 16, 19, and 20 stand rejected under 35 U.S.C. § 103(a) for being obvious over Machiraju in view of Kelly. 3 Appeal 2009-007817 Application 11/051,551 We have only considered those arguments that Appellants actually raised in the Briefs. Arguments Appellants could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). ISSUE The principal issue before us is whether Appellants have shown that the Examiner erred in rejecting the claims under 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a). The issue specifically turns on whether Machiraju and Kelly teach or render obvious Appellants’ claimed display of FAQs while the user is entering a question. FINDINGS OF FACT The record supports the following findings of fact (FF) by a preponderance of the evidence. 1. Appellants have invented a method and system for displaying relevant FAQs to a user while that user is filling in an e-mail form (Spec. 1, ¶ [0004]). Parameters such as the length of the e-mail and its subject matter are evaluated by experts for relevance and for inclusion in the FAQs (Spec. ¶¶ [0014], [0015]). 4 Appeal 2009-007817 Application 11/051,551 2. Appellant’s Figure 4 is reproduced below. Appellants’ Figure 4 shows presenting relevant FAQs to a user’s input. 3. The Machiraju reference teaches a method and system for retrieving relevant information (FAQs) to a user’s question (col. 2, l. 59 to col. 3, l. 6). “As the user types the question 250, questions list 215 is retrieved 5 Appeal 2009-007817 Application 11/051,551 from questions database 220 and displayed in output field 217, preferably in real time.” (Col. 5, ll. 8 to 11). 4. Figure 5 of Machiraju is reproduced below Figure 5 of Machiraju shows a display of relevant FAQs being shown to a user while he was entering a question in an e-mail box. PRINCIPLES OF LAW Appellants have the burden on appeal to the Board to demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a rejection [under § 103] by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). 6 Appeal 2009-007817 Application 11/051,551 In rejecting claims under 35 U.S.C. § 102, “[a] single prior art reference that discloses, either expressly or inherently, each limitation of a claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted). Anticipation of a patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference. In other words, if granting patent protection on the disputed claim would allow the patentee to exclude the public from practicing the prior art, then that claim is anticipated, regardless of whether it also covers subject matter not in the prior art. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999) (internal citations omitted). ANALYSIS Arguments with respect to the rejection of claims 1 to 20 under 35 U.S.C. § 102(b) [R1] and 35 U.S.C. § 103(a) [R2] The Examiner has rejected the noted claims for being anticipated by Machiraju and rendered obvious over Machiraju in view of Kelly. Appellants have raised a number of issues in the Brief, pages 5 to 19, which have all been addressed by the Examiner in a detailed and thorough manner (Ans. 3 to 24). We endorse and adopt the Examiner’s response. Additionally, we emphasize a point or two. One of Appellants’ main contentions is that the Machiraju reference “fails to disclose a method, during a task of composing a current e-mail which includes a message, of outputting a display page having one or more previously-asked questions 7 Appeal 2009-007817 Application 11/051,551 relevant to the message as in claim 1.” (Brief 5, bottom) (Appellants’ emphasis). As the Examiner points out in his response to arguments, Machiraju plainly teaches the retrieval of the previously stored FAQs while the user is typing the question (Machiraju, col. 5, l. 8; Ans. 18, bottom). Further, in the reference, the presented FAQs are clearly analyzed for relevance to the message being typed by the user (Machiraju, col. 5, l. 35). Appellants’ arguments, especially those emphasized by the underlining, seem to have been crafted in spite of a clear expression in the reference to the contrary. We find Appellants’ arguments inexplicable and unconvincing. The Examiner is commended for his clear responses and logic. CONCLUSIONS OF LAW Based on the findings of facts and analysis above, we conclude that Appellants have not shown that the Examiner erred in rejecting claims 1 to 20. DECISION We affirm the Examiner’s rejections R1 and R2 respectively of claims 1 to 20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED 8 Appeal 2009-007817 Application 11/051,551 peb AT & T LEGAL DEPARTMENT - Toler ATTN: PATENT DOCKETING ROOM 2A-207 ONE AT & T WAY BEDMINISTER, NJ 07921 9