Ex Parte Kaneshiro et al

Patent Trial and Appeal Board

May 21, 2015

12131083 (P.T.A.B. May. 21, 2015)

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.
12/131,083 05/31/2008 Kelii Justin Tsuyoshi Kaneshiro RSW920080239US1 5153
58139 7590 05/21/2015
IBM CORP. (WSM)
c/o WINSTEAD P.C.
P.O. BOX 131851
DALLAS, TX 75313
EXAMINER
BADAWI, ANGIE M
ART UNIT PAPER NUMBER
2172
MAIL DATE DELIVERY MODE
05/21/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KELII JUSTIN TSUYOSHI KANESHIRO and
ARTHUR JOHN MELOY
____________

Appeal 2012-009355
Application 12/131,083
1

Technology Center 2100
____________

Before DEMETRA J. MILLS, KENNETH G. SCHOPFER, and
ELIZABETH A. LaVIER, Administrative Patent Judges.

LaVIER, Administrative Patent Judge.

DECISION ON APPEAL

The Examiner finally rejected claims 1–19. Appellants seek reversal
of the Examiner’s rejections, pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
BACKGROUND
The Specification relates to providing email senders with “control
over which historical messages are to be included in a forwarded or replied
electronic mail message.” (Spec. 1, ll. 6–7.)

1
Appellants state the real party in interest is International Business
Machines Corporation. (Appeal Br. 1.)
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Application 12/131,083

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Claim 1 is representative:
1. A computer program product embodied in a computer
readable storage medium for controlling which historical
messages are to be included in a forwarded or a replied
electronic mail message, the computer program product
comprising the programming instructions for:
receiving input to one of forward and reply to an electronic mail
message containing a chain of historical electronic mail
messages;
determining a number of electronic mail messages in said chain
of historical electronic mail messages;
generating a graphical user interface containing an option to
select one or more historical messages in said chain of
historical electronic mail messages to be included in said one of
forwarded and replied electronic mail message; and
receiving input selecting one or more historical messages in
said chain of historical electronic mail messages to be included
in said one of forwarded and replied electronic mail message.
(Appeal Br. 33 (Claims App.).)
REJECTIONS
The Examiner maintains the following rejections on appeal:
1. Claims 1, 5, 6, 10, 11, 15, 16, 18, and 19 are rejected under 35 U.S.C.
§ 103(a) as obvious over Marston
2
and Moody I.
3
(Ans. 2.)
2. Claims 2–4, 7–9, 12–14, and 17 are rejected under 35 U.S.C. § 103(a)
as obvious over Marston, Moody I, and Moody II.
4
(Ans. 14.)

2
US Patent Application Pub. No. US 2004/0260710 A1, published Dec. 23,
2004.
3
US Patent No. US 7,818,680 B2, issued Oct. 19, 2010.
4
US Patent Application Pub. No. US 2003/0177190 A1, published Sept. 18,
2003.
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Application 12/131,083

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FINDINGS OF FACT
We adopt the Examiner’s findings, set forth on pages 4–17 of the
Answer, and summarize as follows for context and emphasis.
The primary reference, Marston, describes a relational model for
representing messages exchanged among users of a messaging system.
(Marston, Abstract.) Marston calls the electronic messages exchanged in its
system “S-Mail” messages. (Marston, ¶ 18.) With respect to replying to or
forwarding an S-Mail, Marston states:
Before replying to an S-Mail, or forwarding it, the system 110
may allow the end-user to purge from the S-Mail the oldest of
the history submessages. This does not affect the content of the
submessages themselves (which remain in the database 114),
but it allows the end-user to forward for example the final
agreed version of a document without necessarily allowing the
recipient to see any earlier draft versions. Depending upon the
application, in some embodiments the end-user may be able to
choose to forward some, but not all, of the history submessages.
In other embodiments, to prevent “selective quotation,” the end-
user may be forced to forward all history submessages or all
history submessages older than a particular chosen submessage.
In the latter case, the end-user can choose to omit the oldest
history submessage or submessages, but cannot selectively send
some of the older submessages while at the same time omitting
some of the more recent ones.
(Marston, ¶ 50.)
The Examiner relies on Marston to teach most of the limitations of
claim 1, except that the Examiner finds that Marston does not expressly
teach “determining a number of electronic mail messages in said chain of
historical electronic mail messages” or the limitations referring to selecting
“one or more historical messages in said chain of historical electronic mail
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messages to be included” in the forwarded or replied-to message. (See Ans.
5.) For these limitations, the Examiner turns to Moody I (see Ans. 5–6)
which teaches a “delete module” for selectively deleting messages in a set of
related email messages (see Moody I, Abstract). The Examiner “interprets
allowing the user the mentioned delete option to be allowing the selection of
one message and removal of the rest of the related messages.” (Ans. 6.)
Finally, the Examiner concludes that combining Marston and Moody I to
arrive at claim 1 would have been obvious “to improve message reply and
forward function in electronic devices,” and notes that the two references
come from the same field of endeavor of “methods to manipulate electronic
mail messages.” (Id.)
As to claim 2 and the other claims rejected therewith, the Examiner
relies on Moody II (see Ans. 14–15), which describes a mail agent for
categorizing email and tracking data (see Moody II, Abstract). Moody II’s
user interface includes a conversation tree combined with a list of email
messages. (See Moody II, ¶ 77.)
DISCUSSION
A. Rejection 1
As to claim 1, which Appellants argue together with claims 6, 11, and
16 (Appeal Br. 5), Appellants make two principal arguments: (1) Moody I’s
delete module does not teach “determining a number” of email messages in
the chain of historical emails (id.), and (2) Marston and Moody I both fail to
teach “select[ing] one or more historical messages.” (id. at 9, 11; see also
Reply Br. 2–5.) Neither argument is persuasive. Regarding the first, the
Examiner explains:
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[T]he return of [the] list of related messages requires rendering
the list using its size that is determined to be a finite number in
the process of creating the list. . . . If the list size of messages
returned is not finite . . . then the process would not complete
and will end in an infinite loop.
(Ans. 17–18 (citing Moody I, col. 2, ll. 5–15).) We find the Examiner’s
reasoning to be sufficient to support the finding that Moody I inherently
teaches “determining a number” of email messages, as claimed. Although a
finding of inherency in the context of obviousness must meet a “high
standard,” PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 773 F.3d
1186, 1195 (Fed. Cir. 2014), the Examiner has satisfied it here, as “the
limitation at issue necessarily must be present,” id. at 1196. As to
Appellants’ second argument, we agree with the Examiner that Moody I’s
delete module, which includes a “Delete All Except Selected Message”
option, allows the user “to select one message out of a chain of messages
and reply to that message making the message a historical message.” (Ans.
19 (citing Moody I, Fig. 3, col. 5 ll. 3–15, 40–50).) Also, as noted by the
Examiner (see Ans. 19), and as evident from the passage from Marston
quoted supra, Marston teaches that the user may “choose to forward some,
but not all, of the history submessages” when composing a new message
(Marston ¶ 50). Thus, Marston further bolsters the Examiner’s rationale.
Appellants’ arguments regarding most of the other claims subject to
Rejection 1 ultimately rely on the same alleged deficiencies in the references
Appellants identify with respect to claim 1. (See Appeal Br. 13 (claim 16),
14 (claims 5, 10, 15, 18–19), 15 (claims 5 and 15), 17 (claim 10), 18 (claim
18).) The only potentially distinct argument we discern among these is for
claim 19, with respect to the requirement of a “consecutive” number of
recent messages. (See Appeal Br. 19–20.) However, we agree with the
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Examiner that Marston also teaches this limitation. (See Ans. 14 (citing
Marston Fig. 3, ¶¶ 36, 45–46).) Appellants’ motivation to combine
argument also relies on the allegedly missing limitations (see Appeal Br. 22–
23), but in any event we find the Examiner’s rationale (as discussed supra)
to be sufficient to support the combination of Marston and Moody I.
B. Rejection 2
For the claims subject to Rejection 2, Appellants reiterate arguments
similar to those made for Rejection 1 (see Appeal Br. 24–25 (claims 3, 8,
and 13), 25–26 (claim 17)), which we find similarly unpersuasive.
Additionally, Appellants argue that the Examiner failed to provide an
adequate rationale for the combination of the three cited references. (See
Appeal Br. 26–31.) We disagree. As discussed above with respect to
Rejection 1, we see no error in the Examiner’s combination of Marston and
Moody I. The addition of Moody II is equally well-supported. (See, e.g.,
Ans. 15 (explaining Moody II is related to the same field of endeavor as
Marston and that improving Marston with the teachings of Moody II to
arrive at claim 2 would have been obvious).)
CONCLUSION
The Examiner’s final rejections of claims 1–19 under 35 U.S.C.
§ 103(a) are affirmed for the reasons of record.
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No time period for taking

5
Should there be further prosecution of these claims, the Examiner should
consider whether claim 1 is directed to statutory subject matter under 35
U.S.C. § 101. See Ex parte Mewherter, 107 USPQ2d 1857, 2013 WL
4477509 (PTAB 2013) (precedential) (broadest reasonable interpretation of
“machine-readable storage medium” included signals per se, and thus
rendered the claim at issue to encompass non-statutory subject matter); U.S.
Patent & Trademark Office, Evaluating Subject Matter Eligibility Under 35
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any subsequent action in connection with this appeal may be extended under
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
lp

USC § 101 (August 2012 Update); pp. 11–14, available at
http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf.