Ex Parte Maimon et al

Patent Trial and Appeal Board

Feb 21, 2017

13418610 (P.T.A.B. Feb. 21, 2017)

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.
13/418,610 03/13/2012 Amit Maimon 13913-0533001 1015
32864 7590 02/23/2017
FISH & RICHARDSON, P.C. (SAP)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
PATEL, HITESHKUMAR R
ART UNIT PAPER NUMBER
2441
NOTIFICATION DATE DELIVERY MODE
02/23/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMIT MAIMON and NATI ARI
Appeal 2016-006417
Application 13/418,610
Technology Center 2400
Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and
JON M. JURGOVAN, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify SAP SE as the real party in interest (Br. 4).
Appeal 2016-006417
Application 13/418,610
STATEMENT OF THE CASE
Invention
Appellants’ invention relates to a self-managed internal notification
system for an internal network of an organization (Spec. 119). Exemplary
claim 1 under appeal reads as follows:
1. A computer-implemented method for delivering
notifications in an internal network of an organization, the
method comprising:
receiving, by a notifications server in the internal
network and from a user, an electronic message formulated
using a message format, the electronic message comprising a
first set of recipients;
reading, by the notifications server, a setting of an
importance parameter for the electronic message, the setting
being provided by the user and indicating a user-determined
importance of the electronic message;
determining, by the notifications server, a second set of
recipients for the electronic message by comparing the setting
of the importance parameter to a labeling threshold, wherein if
the setting of the importance parameter is above the labeling
threshold, the second set of recipients is different than the first
set of recipients and comprises all users of the internal network
regardless of addressee specification, and if the setting of the
importance parameter is below the labeling threshold, the
second set of recipients is determined based on one of the
addressee specification and the first set of recipients; and
sending, by the notifications server, a notification having
a markup-language format to the second set of recipients for
presentation in a client, wherein the client has no function for
responding to the notification.
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The Examiner’s Rejections
Claims 1, 5—7, 11—13, 17, and 18 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Niebuhr (US 2009/0019116 Al; pub. Jan. 15,
2009), Ramesh et al. (US 2009/0292780 Al; pub. Nov. 26, 2009), and
Gandhi et al. (US 2008/0086530 Al; pub. Apr. 10, 2008) (Final Act. 3—9).
Claims 2, 3, 8, 9, 14, and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Niebuhr, Ramesh, Gandhi, and Marcellino (US
2011/0289172 Al; pub. Nov. 24, 2011) (Final Act. 9-11).
Claims 4, 10, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Niebuhr, Ramesh, Gandhi, and O’Brien et al. (US
2005/0074098 Al; pub. Apr. 7, 2005) (Final Act. 11-13).
Issue on Appeal
Did the Examiner err in rejecting independent claims 1, 7, and 13 as
obvious over Niebuhr, Ramesh, and Gandhi?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own the findings and reasons set forth by the
Examiner in the action from which this appeal is taken, and the reasons set
forth by the Examiner in the Examiner’s Answer in response to Appellants’
Appeal Brief. We highlight and address specific findings and arguments for
emphasis as follows.
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Appellants did not challenge the Examiner’s factual findings
regarding Gandhi, and, thus, we take those findings as being conceded by
Appellants.
Independent Claims 1, 7, and 13
1. Setting of an Importance Parameter
Appellants contend the combination of Niebuhr, Ramesh, and Gandhi
does not teach “reading, by the notifications server, a setting of an
importance parameter for the electronic message, the setting being provided
by the user and indicating a user-determined importance of the electronic
message,” because Niebuhr’s flag merely indicates whether a message is
intended to be sent to a distribution list and is not an “importance parameter”
that indicates an importance of the message (Br. 14). We are not persuaded
of Examiner error in the rejection. The broadest reasonable interpretation of
“importance parameter,” consistent with Appellants’ disclosure, does not
preclude Niebuhr’s mass distribution flag that is set by a user and that
indicates a message will require special processing, such as batch processing
or suppressing an auto-reply, based on the load the message will impose on
the network, i.e., the flag is a network “importance parameter” (Ans. 4—6
(citing Niebuhr H 18, 27—28, 33—37)). See In re Am. Acad, of Sci. Tech.
Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“[T]he PTO is obligated to give
claims their broadest reasonable interpretation during examination.”).
Further, regarding the limitation “indicating a user-determined
importance of the electronic message,” Appellants attack the Niebuhr
reference individually where the rejection is based on the combination of
Niebuhr, Ramesh, and Gandhi. See In re Keller, 642 F.2d 413, 426 (CCPA
1981) (“[Ojne cannot show non-obviousness by attacking references
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individually where ... the rejections are based on combinations of
references.”). The Examiner relied on Ramesh to teach the concept of
“indicating a user-determined importance of the electronic message” (see
Final Act. 6—7; Ans. 8—9). Although Appellants generally argue that
Ramesh does not teach the features for which it is asserted (Br. 17—18),
Appellants have not presented a specific argument regarding the Examiner’s
reliance on Ramesh for “user-determined importance,” and nakedly asserting
that Ramesh does not teach or suggest such features does not amount to a
separate patentability argument. See 37 C.F.R. § 41.37(c)(l)(iv); In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
2. Comparing the Setting of the Importance Parameter to a Labeling
Threshold
Appellants contend Niebuhr’s mass distribution flag is set based on a
determination that the intended recipient list constitutes a large distribution
list, which is different than the claimed “comparing the setting of the
importance parameter to a labeling threshold” (Br. 14—15). We are
unpersuaded of error, and we agree with the Examiner’s finding that the
broadest reasonable interpretation of “comparing the importance parameter
to a labeling threshold,” consistent with Appellants’ Specification, does not
preclude Niebuhr’s comparison of the mass distribution flag setting to an
“on/off ’ threshold, i.e., the importance parameter flag is set to “on” when
the intended recipient list is above a threshold number of recipients, and the
flag is set to “off’ below the threshold number (Ans. 6—7 (citing Niebuhr
1142, 45—48; see also 149: value of 1 indicates flag is set, value of 0
indicates flag is not set)). See Am. Acad, of Sci. Tech. Ctr., 367 F.3d at 1369
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(“[T]he PTO is obligated to give claims their broadest reasonable
interpretation during examination.”).
3. If the Setting of the Importance Parameter is Above the Labeling
Threshold
Appellants contend setting Niebuhr’s mass distribution flag when the
number of recipients is above a threshold number does not teach “if the
setting of the importance parameter is above the labeling threshold, the
second set of recipients is different than the first set of recipients and
comprises all users of the internal network regardless of addressee
specification” (Br. 15—17). Appellants cite to their Specification, stating “if
the message is found to have high importance at 212 (e.g., because the
message was flagged or otherwise labeled with a particular indicator), then it
can be sent to all users regardless of registration” (Br. 16—17 (citing Spec
33—34)). Thus, Appellants argue, the “setting of the importance
parameter is above the labeling threshold” requires a message that has been
labeled as “high importance” as described in the Specification (id.).
Appellants’ contentions do not persuade us of Examiner error.
Although the claims are interpreted in light of the specification, an
“importance parameter [that] is above the labeling threshold” does not
require a message that has been labeled as high importance, or any specific
importance level. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993); see also In re Self 671 F.2d 1344, 1348 (CCPA 1982) (limitations
not appearing in the claims cannot be relied upon for patentability). Thus,
we agree with the Examiner’s finding that, if Niebuhr’s importance
parameter flag is set to “on” (i.e., above the labeling threshold, as discussed
with respect to the labeling threshold comparison supra), the message is sent
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via special processing to a second set of recipients (i.e., batch processing to a
subset of all recipients, such as five recipients every minute) that is different
than the first set of recipients, and comprises all users of the internal network
(i.e., addressed to “all-offices-all-employees”) regardless of addressee
specification (Ans. 6—8 (citing Niebuhr || 37, 42, 45)).
4. If the Setting of the Importance Parameter is Below the Labeling
Threshold
Appellants contend Ramesh’s email system allows a user to designate
each recipient address that will receive an email message with an attachment
and each address that will receive the email without the attachment, which is
different from the claimed “second set of recipients is determined based on
one of the addressee specification and the first set of recipients” (Br. 17—18).
We are unpersuaded of error in the rejection. We note that the claim
language requires the second set of recipients to be determined based on one
of the addressee specification and the first set of recipients, meaning the
second set of recipients is based on either the addressee specification or the
first set of recipients. We agree with the Examiner’s finding that Niebuhr
teaches, if the importance parameter is below the labeling threshold (i.e., the
mass distribution flag is set to 0 or “off’ when the number of recipients is
below the threshold), the second set of recipients is determined to be the
same as the original addressee list specified in the message (Ans. 7—8 (citing
Niebuhr || 43, 49)). Accordingly, any teaching in Ramesh that is cited
regarding the second set of recipients being based on the addressee
specification or the first set of recipients is considered cumulative to the
teachings of Niebuhr.
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CONCLUSION
For the reasons stated herein, we sustain the Examiner’s rejection of
independent claims 1, 7, and 13 under 35 U.S.C. § 103(a) as unpatentable
over Niebuhr, Ramesh, and Gandhi. We also sustain the Examiner’s
rejections of dependent claims 2—6, 8—12, and 14—18 under 35 U.S.C.
§ 103(a), which are not argued separately (see Br. 18).
DECISION
We affirm the Examiner’s rejections of claims 1—18 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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