Ex Parte Kariya

Board of Patent Appeals and Interferences

Feb 25, 2010

09938485 (B.P.A.I. Feb. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHIKAKO KARIYA
____________

Appeal 2009-000631
Application 09/938,485
Technology Center 2100
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Decided: February 25, 2010
____________

Before HOWARD B. BLANKENSHIP, DEBRA K. STEPHENS, and
JAMES R. HUGHES, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-8, 10-18, 20-27, 29-37, 39-46, and 48-56, which are all
the claims remaining in the application. We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.
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Representative Claim
1. A related documents processing device, associating
relevance among at least separately created documents, comprising:
a detector detecting relevance among the separately created
documents; and
a locator locating a timewise latest document related to a
document selected based on detected relevance information,
wherein the documents are electronic mail (emails), and the
relevance information detected by the detector includes an email
exchange history of a branching of separate emails from a first email,
with the branching of emails including at least two distinct time-wise
non-sequential emails branching from the first email on a same branch
of the branching of emails and/or at least two distinct time-wise
sequential emails branching from the first email on different branches
of the branching of emails.

Prior Art
Moody 5,890,177 Mar. 30, 1999
Microsoft Corp., Getting Results with Microsoft Office 97, pp. 365-94,
396-401 (1997) (“Office”).

Examiner’s Rejections
Claims 1-8, 10-18, 20-27, 29-37, 39-46, and 48-56 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Moody and Office.

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DISCUSSION
Appellant’s Contention
Appellant argues, inter alia, that the applied references do not
demonstrate the obviousness of a “detector” and a “locator” as recited in
claim 1 that use “relevance information” as specified in the “wherein” clause
of the claim.

Claim Interpretation
Unfortunately, Appellant does not tell us where the “wherein” clause
of claim 1 might be described (i.e., supported) in the Specification, beyond a
mere reference to instant Figures 3 and 6. See App. Br. 8. Cf. 37 C.F.R.
§ 41.37(c)(1)(v)(“Summary of claimed subject matter. A concise
explanation of the subject matter defined in each of the independent claims
involved in the appeal, which shall refer to the specification by page and line
number, and to the drawing, if any, by reference characters.”).
We assume that Figure 6 must depict “an email exchange history of a
branching of separate emails from a first email.” The “first email” appears
to refer to “Mail Document” 1. The “branching” of emails is claimed as
including “at least two distinct time-wise non-sequential emails branching
from the first email on a same branch of the branching of emails” and/or “at
least two distinct time-wise sequential emails branching from the first email
on different branches of the branching of emails” (emphasis added).
Figure 6 does not indicate what might be considered a “same branch”
and what may be considered “different branches” of the “branching of
emails.” However, in view of the Specification (24:19 - 25:21), the claimed
two “distinct time-wise sequential emails” may refer to Mail Document 4
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and Mail Document 5. Two “distinct time-wise non-sequential emails” may
refer to Mail Document 3 and Mail Document 7, which may be considered
on a different “branch” from Mail Document 4 and Mail Document 5. In
view of the Specification text bridging pages 24 and 25, a user selecting
(clicking on) Mail Document 2 on a display device results in the display unit
displaying “the contents of the latest mail document” to respond as Mail
Document 6. If the user clicks on Mail Document 3, the display unit
“displays the contents” of Mail Document 7 (i.e., the last document to
respond to Mail Document 3, or the “timewise latest document” 7 “related to
a document selected” 3 “based on detected relevance information” -- as
claimed).
The claimed “relevance information” might also be considered to read
on Figure 3, as Appellant contends in the Appeal Brief. The “and/or”
language of claim 1 means that the “relevance information” might include
no more than, for example, “two distinct time-wise sequential emails” (Mail
Document 2 and Mail Document 3), although Appellant has not identified
where each (or any) of the multiple “branches” of claim 1 are shown in
Figure 3.
In any event, Appellant asserts that the “relevance information” as
claimed means a relevance between separately created documents, with the
information including an email exchange history of a “branching” of
separate emails from a first email. App. Br. 10.

Claim Interpretation/The Rejection
In view of the position set out in the Answer, the Examiner appears to
accept, in general, Appellant’s statement of what claim 1 requires (that we
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have reproduced supra from App. Br. 10), although disagreeing with
Appellant’s view of what makes a document an “email” document.1
However, the rejection of claim 1 (Ans. 4) relies on Office for the
“branching of separate emails,” and the reference clearly describes “emails”
consistent with Appellant’s view of “emails.” For purposes of this appeal,
we will therefore interpret claim 1 as requiring, at the least, locating “a
timewise latest document [email] related to a document [email] selected” --
or locating the latest email in a chain of related emails -- based on detected
“relevance information.” The “relevance information” includes an email
exchange history that includes at least two emails that were produced later in
time than a reference (“first”) email.
The rejection of claim 1 (Ans. 4) submits that Moody teaches, in
material at columns 4 and 10, a timewise order of documents based on a
timestamp indicating when the document was created or edited. As
Appellant argues, however, Moody is directed to collaborative editing of a
document by an author providing editors with separate copies of the
authored document (see, e.g., Moody Abstract; Figs. 2A, 3). The
“timestamp” taught by Moody is linked with a creator ID for the creator of
the document. The “timestamp” is used to determine if there is a time match
between the original document and the edited copy, thus to ensure that the
edited copy derived from the original document. See Moody col. 10, ll. 10-

1 The Examiner, improperly, refers to evidence in the Response to
Arguments section of the Answer (e.g., Ans. 12-13) that is not contained in
the statement of the rejection. Cf. In re Hoch, 428 F.2d 1341, 1342 n.3
(CCPA 1970) (“Where a reference is relied on to support a rejection,
whether or not in a ‘minor capacity,’ there would appear to be no excuse for
not positively including the reference in the statement of rejection.”).
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34, and in particular lines 23-25: “If both the creator ID and the timestamp
match for the original document and the edited copy, then the documents are
checked for embedded objects.” Moody thus teaches matching two
documents based on an identical timestamp in the two documents. The
rejection fails to demonstrate that Moody contains any teaching directed to
temporal ordering of documents based on timestamps in the documents.
Moreover, an email document (as described by Office) was known to
contain header information that identifies when the email was sent (i.e., its
effective time of production). The timestamp taught by Moody appears to
represent no more than what prior art email documents already contained.
We agree with Appellant to the extent that the rejection fails to show how
the combination of Moody and Office might be deemed to teach, or
otherwise demonstrate the obviousness of, a method or system for locating a
“timewise latest” email by means of an email exchange history that includes
at least two emails that were produced later in time than a “selected” email.
Each of independent claims 20 and 39 contains language similar to
that of claim 1, but are rejected on substantially the same basis as claim 1
over Moody and Office. Independent claims 11, 30, and 49 recite parsing
and merging (email) documents that are determined to be related by
detecting “relevance information,” with the “relevance information” defined
as in claim 1. Of claims 11, 30, and 49, the rejection treats claim 11
separately (Ans. 6-7) from claim 1, but fails to demonstrate that the prior art
teaches, or otherwise renders obvious, determining that emails are related by
detecting an email exchange history that includes at least two emails that
were produced later in time than a reference (“first”) email.
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We therefore cannot sustain the § 103(a) rejection of any of the claims
over Moody and Office.

DECISION
The rejection of claims 1-8, 10-18, 20-27, 29-37, 39-46, and 48-56
under 35 U.S.C. § 103(a) as being unpatentable over Moody and Office is
reversed.

REVERSED

msc

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