Ex Parte Maresh

Patent Trial and Appeal Board

Mar 26, 2013

10917810 (P.T.A.B. Mar. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/917,810 08/13/2004 Mark Edmund Maresh RPS920040085US1 3904
80783 7590 03/27/2013
Lieberman & Brandsdorfer, LLC
802 Still Creek Lane
Gaithersburg, MD 20878
EXAMINER
IBRAHIM, MOHAMED
ART UNIT PAPER NUMBER
2444
MAIL DATE DELIVERY MODE
03/27/2013 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 MARK EDMUND MARESH
____________________

Appeal 2010-011593
Application 10/917,810
Technology Center 2400
____________________

Before: JEAN R. HOMERE, BRYAN F. MOORE, and TREVOR M.
JEFFERSON Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/917,810

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-16 and 18-20. Br. 1. Claim 17 is cancelled. Id. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

The claims are directed to email communication and more particularly
managing a series of related email communications. Spec., 1:6-7. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A computer program product comprising computer
executable instructions, stored on a computer readable medium, for
managing email communication, the instructions comprising
instructions for:
determining whether an email communication is an original
email or a responsive email responsive to the creation of an email
communication;
generating an original email tag to be associated with the
email responsive to determining that the email is an original email
and including the tag in the email wherein the original email tag
uniquely identifies the corresponding email;
retrieving said email tag from a parent email and including
said tag in each responsive email, wherein the parent email is the
immediate direct ancestor of the responsive email;
appending an automatically generated index portion to said
original tag in said responsive email, said index portion uniquely
identifying said responsive email and all direct ancestors of the
responsive email; and
modifying said appended index portion each time a new
responsive email is created.

REFERENCES
Durham US 5,832,502 Nov. 3, 1998
Ahmed US 6,704,772 B1 Mar. 9, 2004
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O’Hagan US 2003/0110227A1 Jun. 12, 2003

REJECTIONS
Claims 1-2, 7-10, 16, and 18-20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ahmed and Durham. Ans. 3-7.
Claims 3-6, and 11-15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ahmed, Durham, and O’Hagan. Ans. 7-8.

Issues
The first issue before us is whether the Examiner erred in finding that
the combination of Ahmed and Durham collectively teaches or suggests
“retrieving said email tag from a parent email and including said tag in each
responsive email,” recited in claim 1, thereby rendering obvious claim 1
under 35 U.S.C. § 103(a).
The second issue before us is whether the Examiner’s alleged
modification to Ahmed changes the underlying principle of Ahmed.
The third issue before us is whether the Examiner erred in finding that
the combination of Ahmed and Durham collectively teaches or suggests
“responsive to a user submitting a trim branch request via the user interface,
instructions for using the emails tags to determine all emails in an email
branch of which the selected email is a part and deleting all emails in the
branch except a last generation email of the branch,” recited in claim 8,
thereby rendering obvious claim 1 under 35 U.S.C. § 103(a).
The fourth issue before us is whether the Examiner erred in finding
that the combination of Ahmed, Durham, and O’Hagan collectively teaches
or suggests “the instructions for modifying the retrieved tag includes
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instructions for appending a character string to the retrieved tag, wherein the
content of the retrieved tag is retained in the modified tag,” recited in claim
3, thereby rendering obvious claim 1 under 35 U.S.C. § 103(a).

Analysis
Claim 1 recites “retrieving said email tag from a parent email and
including said tag in each responsive email.” Appellant argues that “not each
reply message of Ahmed is associated with the initial message through the
message identifier of the initial message. Some of the reply messages are
associated with a fork message through a new message identifier.” Br. 5.
This argument is not persuasive of Examiner error.
Ahmed teaches:
Replies may be associated with an earlier message by assigning
an identifier to the initial electronic message. This association
enhances a client's ability to establish the context of a reply. For
example, assigning an identifier allows for the automated
creation of a message-specific storage mechanism to hold the
original message as well as all subsequent replies to that initial
message.

Ahmed, 3:51-58. In other words, Ahmed contemplates that a replies may be
associated with a parent via an identifier and that all subsequent replies will
be treated the same way. Appellant’s arguments are directed to the specifics
of a particular embodiment but don’t take into account the general teaching
cited above. Therefore, we find ample support for the Examiner’s finding
that Ahmed teaches “retrieving said email tag from a parent email and
including said tag in each responsive email.” See Ans. 8.
Appellant further argues that assigning a parent identifier to each
reply email would change the underlying principle of Ahmed because
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Ahmed is directed only to associating email based on groupings by topic.
Ans. 8. Given our finding above that Ahmed itself teaches generally that
each reply may be given an identifier, that argument is not persuasive of
Examiner error.
Claim 1 also recites “modifying said appended index portion
[uniquely identifying said responsive email and all direct ancestors of the
responsive email] each time a new responsive email is created.” We note
that Appellant states: “Applicant's claims pertain to modification of the
appended index portion, and are not directed to modification of the original
tag. Accordingly, Applicant claims each responsive email includes the
original tag identifying the initial parent message.” Br. 7 (emphasis added).
We find that Appellant’s reading of the claim requires that each responsive
email include the original tag. As discussed above, we find that Ahmed
discloses that limitation.
Appellant does not make any separate arguments regarding claims 1-
2, 7,10, and 16, and do not make new arguments regarding claims 11 and 12
which contain essentially the same limitation as claim 8, thus those claims
fall with claim 1.
Claim 8
Claim 8 recites “responsive to a user submitting a trim branch request
via the user interface, instructions for using the emails tags to determine all
emails in an email branch of which the selected email is a part and deleting
all emails in the branch except a last generation email of the branch.”
Appellant argues that “[a]lthough Ahmed does teach a graphical display of a
tree structure, Ahmed fails to address the claim limitations of modifying the
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graphical display itself.” Br. 9. This argument is not persuasive of Examiner
error.
Appellant asserts that “Ahmed’s modification of the tree structure is
limited to deleting a copy of a message from data storage.” Br. 10. However,
Ahmed teaches that the graphical display of a tree structure represents the
stored message replies. See Ahmed, 5:9-20; Fig. 5. Thus, when a message is
deleted, it follows that the corresponding message on the graphical display
of a tree structure will be removed. In other words, we find that one of
ordinary skill in the art would recognize that, given a graphical display of
reply messages, an addition or deletion of a message or messages would
result in updating the graphical display to reflect those changes. See KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary
skill is also a person of ordinary creativity, not an automaton.”); In re ICON
Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007) (“But we do
not ignore the modifications that one skilled in the art would make to a
device borrowed from the prior art…. One skilled in the art would size the
components from Teague appropriately for Icon's application, therefore
producing an embodiment meeting Icon's claims.”); see, also Ans. 9. Thus,
we find that Ahmed suggests “responsive to a user submitting a trim branch
request via the user interface, instructions for using the emails tags to
determine all emails in an email branch of which the selected email is a part
and deleting all emails in the branch except a last generation email of the
branch.”
Appellant does not make any separate arguments regarding claim 9
which depends from claim 8, and claims 18-20 which contain essentially the
same limitation as claim 8, thus those claims fall with claim 8.
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Claim 3
Claim 3 recites “the instructions for modifying the retrieved tag
includes instructions for appending a character string to the retrieved tag,
wherein the content of the retrieved tag is retained in the modified tag.”
Appellant argues that O’Hagan does not teach this limitation. Br. 15. We
note that Appellant's arguments amount to no more than reciting the claim
features and generally alleging that O’Hagan is deficient. Merely pointing
out certain claim features recited in independent claim 1 and nakedly
asserting that O’Hagan fails to disclose such features does not amount to a
separate patentability argument. See Ex parte Belinne, No. 2009-004693,
2009 WL 2477843 at *3-4 (BPAI Aug. 10, 2009) (informative); see also 37
C.F.R. § 41.37(c)(iv) (“A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e
hold that the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.”); cf. In re Baxter Travenol Labs., 952 F.2d 388, 391
(Fed. Cir. 1991) (“It is not the function of this court to examine the claims in
greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art.”).
Except as noted above, Appellant does not make any separate
arguments regarding claims 3-6 and 13-15, thus those claims fall with their
associated independent claims 1 and 11.

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DECISION
The decision of the Examiner to reject claims 1-16 and 18-20 under
35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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