Ex Parte Gruen

Patent Trial and Appeal Board

Jan 28, 2014

10323106 (P.T.A.B. Jan. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DANIEL M. GRUEN1
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Appeal 2011-009959
Application 10/323,106
Technology Center 2100
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Before DONALD E. ADAMS, ERIC GRIMES, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method,
system, and program product for transmitting an electronic communication.
The Examiner has rejected the claims as anticipated. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.

1 Appellant identifies the real party in interest as International Business
Machines Corporation (App. Br. 1).
Appeal 2011-009959
Application 10/323,106

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STATEMENT OF THE CASE
Claims 1, 3-13, 15-21, and 23-28 are pending and on appeal (App.
Br. 2). Claim 1 is illustrative and reads as follows (emphasis added):
1. A method for transmitting an electronic communication from a
sender to a plurality of contacts using automatically formed contact groups,
comprising:
first, identifying using a processor a set of recipients to which the
sender will send a current electronic communication;
second, using the processor, identifying based on the identified set of
recipients, a group of contacts to which the sender has sent communications,
the group of contacts including at least one recipient of the identified set of
recipients, wherein the group of contacts is automatically formed and
updated based on a predefined standard and a history of electronic
communications that involve the contacts and the at least one recipient of the
current electronic communication, such that the group of contacts is
automatically formed if the history of electronic communications meets the
predefined standard, wherein the history of electronic communications is
stored in a database;
selecting the group to add the contacts to the set of recipients of the
current electronic communication; and
after adding the contacts to the set of recipients, transmitting the
current electronic communication to the set of recipients.
Claims 1, 3-13, 15-21, and 23-28 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Horvitz et al. (US 2004/0002932 A1, Jan. 1, 2004)
(Ans. 3).
Appellant argues that Horvitz does not teach:
using the processor, identifying based on the identified set of
recipients, a group of contacts to which the sender has sent
communications, the group of contacts including at least one
recipient of the identified set of recipients, wherein the group of
contacts is automatically formed and updated based on a
predefined standard and a history of electronic communications.
Appeal 2011-009959
Application 10/323,106

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(App. Br. 9-10.) Appellant also argues “that Horvitz fails to expressly or
inherently describe . . . ‘after adding the contacts to the set of recipients,
transmitting the current electronic communication to the set of recipients’”
(id. at 11).
ANALYSIS
Horvitz “relates to a system and methodology to facilitate guiding
communications in conjunction with automated systems and in accordance
with user preferences that can adjust, tune, and/or equalize such systems”
(Horvitz ¶ [0007]). In particular, Horvitz discloses that a “plurality of
attributes can be associated with an item such as e-mail or other type
message that affects how and when a respective item is delivered or
presented to a user” (id.). Horvitz also discloses that its “communications
items . . . are directed to a user via automated learning systems” (id. at
¶ [0026]). As noted by Appellant, “Horvitz’s system acts on incoming
communications to a message recipient, and is substantially recipient-
focused, rather than sender-focused” (App. Br. 11).
Horvitz discloses that “a plurality of relationships or groupings can be
established and defined by the user such as organizational relationships,
dynamic relationships, static relationships, trust relationships and/or
temporal relationships that further qualify how and when the items are
delivered to the user” (Horvitz ¶ [0007]). In particular, Horvitz discloses “a
user preference identification tool [that] . . . provides capability to access and
encode dynamic groupings of people and/or aliases based on non-
organizational structural similarities such as history, recent/past activities,
schedule, privacy desires, authorizations, personal attributes, and/or other
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Application 10/323,106

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distinct relationships between people” (id. at ¶ [0008]). However, we agree
with Appellant that the Examiner has not adequately shown that Horvitz
discloses transmitting an electronic communication after adding the contacts
in one of these groupings to the set of recipients (App. Br. 11).
The Examiner responds that, “even though Horvitz may be recipient-
focused[,] . . . users can send out emails to any recipients either to one or
more recipients or a group that was formed by the learning algorithms
specified above” (Ans. 18). However, the question in an anticipation
rejection is not whether a person can send out emails to a group that was
formed by Horvitz’s learning algorithm. The question is whether Horvitz
teaches to do so. We conclude that the Examiner has not set forth a prima
facie case that Horvitz teaches this.
CONCLUSION
The Examiner has not set forth a prima facie case that Horvitz
anticipates independent claim 1. For substantially the same reasons, we
conclude that the Examiner has not set forth a prima facie case that Horvitz
anticipates independent claims 9, 13, and 21, as well as dependent claims 3-
8, 10-12, 15-20, and 23-28. We therefore reverse the anticipation rejection.

REVERSED

cdc