Ex Parte Ju et alDownload PDFPatent Trial and Appeal BoardFeb 28, 201713516499 (P.T.A.B. Feb. 28, 2017) Copy Citation 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. 13/516,499 07/19/2012 LinJu GB920090057US1_8150-0221 8099 52021 7590 03/02/2017 Cuenot, Forsythe & Kim, LLC 20283 State Road 7 Ste. 300 Boca Raton, EL 33498 EXAMINER DYER, ANDREW R ART UNIT PAPER NUMBER 2176 NOTIFICATION DATE DELIVERY MODE 03/02/2017 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): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LIN JU, PATRICK J. O’SULLIVAN, and FRED RAGUILLAT Appeal 2016-0028121 Application 13/516,499 Technology Center 2100 Before JOHN A. EVANS, JOYCE CRAIG, and ALEX S. YAP, Administrative Patent Judges. YAP, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of claims 18 and 42-59, which are all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b) We reverse. 1 According to Appellants, the real party in interest is IBM Corporation. (App. Br. 1.) Appeal 2016-002812 Application 13/516,499 STATEMENT OF THE CASE Introduction Appellants’ invention “relates to an apparatus and method for the processing of electronic documents. In particular, the [] invention relates to an apparatus and method for collaborative annotation to electronic documents.” (June 15, 2012 Specification (“Spec.”) 1.) Claims 18 and 42 are illustrative, and are reproduced below (with minor reformatting): 18. A method comprising: receiving, within a data processing system, a request to annotate a document, wherein the request comprises an annotation, and an identification of a document to annotate; responsive to receiving the request, analysing the request to identify the annotation, and the document to which the annotation is related, wherein the document comprises a first content section and a data structure; responsive to identifying the annotation, creating a second content section comprising the annotation; and responsive to identifying the document using the identification, updating the data structure with a reference to the second content section thereby making the second content section available in association with the document. 42. A method performed by a computer hardware system, comprising: sending, to second and third client computer systems, an electronic message having a first content section and a data structure; receiving, after the sending and from the second client computer system, a request including an annotation and an identification of the electronic document; creating, within the electronic document and based upon the identification and the annotation, a second content section; 2 Appeal 2016-002812 Application 13/516,499 updating the data structure of the electronic message to include a reference to the second content section; and propagating the second content section and the updated data structure to the third client computer system without including the first content section. Prior Art and Rejections on Appeal The following table lists the prior art relied upon by the Examiner as evidence in rejecting the claims on appeal: Anderson et al. (“Anderson”) Koshak et al. (“Koshak”) US 5,581,682 US 2008/0165207 Al Dec. 3, 1996 July 10, 2008 Carr et al. (“Carr”) US 2009/0125597 Al May 14, 2009 DayCom Solutions, Multiple Email Access, 1—2 (July 5, 2009). Claim 182 stands rejected under 35 U.S.C. § 102(b) as being anticipated by Anderson. (See Feb. 27, 2015 Final Action (“Final Act.”) 5- 6.) Claims 42, 43, 45—52, and 54—59 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Carr in view of DayCom. (See Final Act. 7-12.) 2 The Examiner also listed claims 19, 22—24, 26, 27, 30-32, 34, 35, and 38— 40 under this rejection but did not discuss these claims in the rejection. (See Final Act. 5 6.) 3 Appeal 2016-002812 Application 13/516,499 Claims 44 and 53 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Carr, in view of DayCom, and further in view of Koshak. (See Final Act. 12-13.) Claims 44, 47, 53, and 56 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We agree with Appellants’ that the Examiner erred in rejecting claims 18 and 42-59. Anticipation Rejection of Claim 18 The Examiner finds that Anderson anticipates claim 18. Specifically, the Examiner finds that claim 18 discloses “receiving, within a data processing system, a request to annotate a document, wherein the request comprises an annotation, and an identification of a document to annotate.” (Final Act. 5-6.) Appellants contend that Anderson does not disclose this limitation because the Examiner’s finding is based on an erroneous construction of this limitation. (App. Br. 14—16.) Specifically, Appellants contend that the limitation at issue should be interpreted to require receiving a request comprising an annotation and an identification of a document to annotate. (Id.) The Examiner interprets the limitation to require receiving a request and an identification of a document to annotate. (Ans. 9-10.) In 4 Appeal 2016-002812 Application 13/516,499 other words, according to the Examiner, the limitation does not require the received request to contain an identification of a document to annotate. Appellants have persuaded us of Examiner error because we do not find the Examiner’s interpretation to be reasonable. In reviewing the claim as a whole in light of the Specification, we agree with Appellants that the limitation requires receiving a request and that request comprises: an annotation and an identification of a document to annotate. For example, we agree with Appellants that the next limitation (i.e., “responsive to receiving the request. . . ,” emphasis added) “clearly requires that the [received request in the] receiving step includes both the annotation and the identification of the document to annotate.” (Reply 11.) In view of this construction, we further agree with Appellants that the portions of Anderson cited by the Examiner do not teach a received request containing an annotation and an identification of a document to annotate because the portions do not disclose a request containing both items. (See Anderson 6:1—31; Figs. 2A, 2B, 3A, 3B, 4.) For the foregoing reasons, we are persuaded of Examiner error in the rejection of claim 18 and do not sustain the 35 U.S.C. § 102 rejection of claim 18. Obviousness Rejections of Claims 42—59 The Examiner rejected claims 42-59 as unpatentable over Carr, in view of DayCom, or further in view of Koshak. (Final Act. 5-12.) Independent claims 42 and 51 both contain the “sending, to second and third client computer systems, an electronic message ...” limitation. According to, the Examiner Carr in view of DayCom meets this limitation: 5 Appeal 2016-002812 Application 13/516,499 Carr discloses a method performed by a computer hardware system, comprising sending, to second and third users, an electronic message having a first content section and a data structure (See Carr Pages 2-3, Paragraphs 26-27) by disclosing an email being sent to multiple users of a shared inbox where the content of the email is the content section and emails have a known and widely understood data structure. Carr does not appear to explicitly disclose whether the shared mailbox is accessedfrom the same or different computers, and thus, does not appear to explicitly disclose “sending, to second and third client computer systems, an electronic message having a first content section and a data structure . . . However, DayCom discloses that it is widely known in the art of email that a mailbox can be accessed from multiple client computers (See DayCom Page 1). Thus, one of ordinary skill in the art at the time of invention would have recognized that when DayCom was combined with Carr, that the shared mailbox of Carr would be accessed from different computers as taught by DayCom. Therefore, the claimed limitations “sending, to second and third client computer systems, an electronic message having a first content section and a data structure ...” are obvious. (Final Act. 7-9, emphasis omitted, italics added.) Appellants contend that the Examiner erred because Carr teaches or suggests sending a single email to a shared inbox. (App. Br. 17-18.) The Examiner explains that because the email is received in a shared inbox that is accessible by multiple users (e.g., second and third user), an email addressed to multiple users is, therefore, sent to every user. (Ans. 13-14.) In addition, according to the Examiner, because DayCom teaches that a mailbox can be accessed from different client computers, the combination of the references, therefore, teaches “sending, to second and third client computer systems, an electronic message . . . .” (Ans. 13; Final Act. 7-9.) 6 Appeal 2016-002812 Application 13/516,499 We agree with Appellants that the Examiner erred. We interpret the limitation at issue to require sending an electronic message to two computer systems (i.e., second and third client computer systems). Even assuming arguendo that users accessing the shared inbox from different client computers can be considered “client computer systems,” we do not find, from the portions of Carr cited by the Examiner, that the electronic message was sent to two “client computer systems.” At most, the combination teaches or suggests that two “client computer systems” can access a shared inbox (i.e., receiving an electronic message). Koshak, cited by the Examiner to reject dependent claims 44 and 53, also does not cure this deficiency. For the foregoing reasons, we are persuaded of Examiner error in the rejection of independent claims 42 and 51 and do not sustain the 35 U.S.C. § 103 rejections of claims 42 and 51, as well as claims 43-50 and 52-59, which depend on either claim 42 or 51. Indefiniteness Rejection of Claims 44, 47, 53, and 56 Claims 44 and 53 further recite “wherein the request is an Ajax request.” The Examiner finds these claims indefinite because the acronym Ajax, Asynchronous JavaScript and XML, contains the term JavaScript, which is trademarked. (Final Act. 4.) According to the Examiner, the term is indefinite because “the trademark/trade name is used to identify/describe a particular type of programming language with multiple, varying versions”. (Id.: Ans. 4—6.) We agree with Appellants that the use of a trademark is not per se indefinite and in this instance, one of ordinary skill in the art would 7 Appeal 2016-002812 Application 13/516,499 recognize the reference to Ajax in these claims to be referring to a particular technology and not a particular product.3 (App. Br. 11-12.) Claims 47 and 56 further recite “wherein the second content section is at least one level deeper than the first content section.” The Examiner finds these claims indefinite because the term “one level deeper” is not a “term of art.” (Final Act. 4.) According to the Examiner, “the term is relative terminology, which is generally considered indefinite if no framework can be established by one of ordinary skill in the art” and that Appellants’ proposed construction (i.e., referring to the relative location between two layers) also does not clarify “the metes and bounds of the invention because there are no levels compared.” (Ans. 7.) Paradoxically, even though the Examiner finds that the “Specification provides no further detail as to . . . what the level of depth is,” the Examiner is able to construe the term to include “annotations saved as metadata” in view of the Specification. (Final Act. 4—5.) We agree with Appellants that the Examiner erred. We find that one of ordinary skill in the art, at the time of the invention, would have understood the term “one level deeper” to be a relative term referring to a level below whatever is the current level.4 For the foregoing reasons, we are persuaded of Examiner error in the rejection of claims 44, 47, 53, and 56 and do not sustain the 35 U.S.C. § 112, paragraph 2 rejection of these claims. 3 We note that our finding is not based on Appellants’ citations to Wikipedia. 4 We do not, however, opine on whether annotations saved as metadata is considered “one level deeper.” (Final Act. 4-5.) 8 Appeal 2016-002812 Application 13/516,499 DECISION We reverse the decision of the Examiner to reject claims 18 and 42- 59.5 REVERSED 5 Because we do not sustain the Examiner’s rejections for the reasons discussed herein, we need not address Appellants’ other arguments relating to the rejections. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an administrative agency is at liberty to reach a decision based on “a single dispositive issue”). 9 Copy with citationCopy as parenthetical citation