Ex Parte McAfee

Patent Trial and Appeal Board

Jun 17, 2013

11479304 (P.T.A.B. Jun. 17, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte ROBERT K. McAFEE
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Appeal 2011-000150
Application 11/479,304
Technology Center 2100
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Before KALYAN K. DESHPANDE, BARBARA A. PARVIS, and
IRVIN E. BRANCH, Administrative Patent Judges.

PARVIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant seeks review under 35 U.S.C. § 134(a) of a final rejection
of claims 1, 2, 4-11, 17, 20, and 24, the only claims pending in the
application on appeal. We have jurisdiction under 35 U.S.C. § 6(b). We
AFFIRM.
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STATEMENT OF CASE
Appellant invented a software architecture and user interface for
collection presentation. Spec. ¶ [0001]. An understanding of the invention
can be derived from a reading of exemplary claim 1, which is reproduced
below:
1. A method, comprising:
a computer application on a computer performing:
in response to selection of a single file, displaying within
a collection display pane within a graphical user interface
window a plurality of selectable representations of attachments
to the selected single file, wherein each of the attachments to
the selected single file is itself a file included within the
selected single file, and is associated with a file type indicating
a native application for accessing the attachment to the selected
single file;
receiving selection input to the collection display pane to
select one of the plurality of selectable representations of the
attachments to the selected single file, and in response,
displaying within a preview display pane within the graphical
user interface window contents of the attachment represented
by the selected representation, while excluding from the
preview display pane contents of others of the attachments to
the selected single file, wherein the preview display pane and
the collection display pane are displayed simultaneously within
the graphical user interface window; and
in response to receiving modifying input to the displayed
contents of the attachment displayed within the preview display
pane, modifying the attachment whose contents are displayed
within the preview display pane, based on the received
modifying input;
wherein the computer application is not the native
application indicated by the file type associated with the
attachment whose contents are displayed within the preview
display pane.
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EVIDENCE CONSIDERED
The Examiner relies on the following prior art:
Yozell-Epstein US 2006/0069990 A1 Mar. 30, 2006

REJECTION
Claims 1, 2, 4-11, 17, 20, and 24 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Yozell-Epstein. Ans. 3-8.

ISSUE
The issue of whether the Examiner erred in rejecting claims 1, 2, 4-11,
17, 20, and 24 under 35 U.S.C. § 102(e) as being anticipated by Yozell-
Epstein turns on whether Yozell-Epstein describes a computer application
that performs the steps of “in response to selection of a single file,
displaying . . . a plurality of selectable representations of attachments to the
selected single file” and “in response to receiving modifying input to the
displayed contents of the attachment displayed within the preview display
pane, modifying the attachment . . . wherein the computer application is not
the native application indicated by the file type associated with the
attachment . . . ,” as recited in claim 1.

ANALYSIS

Appellant contends that, in contrast to the requirement of claim 1 of
displaying “in response to selection of a single file,” Yozell-Epstein’s e-mail
application displays the listing of indicators for attachments of e-mail
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messages without requiring selection of a single file. Br. 11-12. We
disagree with Appellant. As the Examiner correctly finds, Yozell-Epstein
shows that when a user selects a single file, the file is displayed and a user
may select one of the attachments 46A-46C. Ans. 9 (citing Yozell-
Epstein ¶ [0030], Fig. 2).
Appellant further contends that Yozell-Epstein fails to describe a
computer application that performs the step of receiving modifying input to
the displayed contents of the attachment displayed within the preview
display pane, as required by claim 1. Br. 12-13. Appellant contends that a
user cannot modify input to the displayed contents of an attachment
displayed within the preview display pane because the attachment is
displayed as a read-only rendering. Br. 13. We disagree with Appellant.
The Examiner finds that Yozell-Epstein describes that an e-mail client
application launches an application associated with the attachment that “may
also be launched in a state specifically designated for reviewing and
modifying documents.” Ans. 10 (citing Yozell-Epstein ¶ [0042]). Claim 1
requires “receiving modifying input” to the displayed document. Even if the
document in certain instances is displayed as a read-only rendering, we
agree with the Examiner’s findings showing that Yozell-Epstein describes
receiving modifying input, as recited in claim 1.
Appellant additionally contends that modifying attachments by
launching the native application is in stark contrast to Appellant’s claim 1,
which recites that the computer application that modifies the attachment is
not the native application indicated by the file type. Br. 13-15. We disagree
with the Appellant. The Examiner finds that the claims are not limited with
respect to how the modification is done. Ans. 10. This finding is both
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reasonable and consistent with Appellant’s Specification because neither the
claims, nor the Specification limit the scope of how a computer application
might perform a modification and do not prohibit launching additional
computer program logic. Indeed, Appellant’s Specification contemplates
varied techniques for implementing a collection system including, “[i]n
some examples, some, all, or none of system 100 and the above-listed
elements may be implemented as part of another application such as those
described herein or as a separate, standalone application.” Spec. ¶ [0017].
Thus, we agree with the Examiner’s finding that this disputed claim element
is satisfied by the e-mail client application of Yozell-Epstein, which is not
the native application indicated by the file type. Ans. 11 (citing Yozell-
Epstein Fig. 2).
Appellant does not provide any further rationale or evidence to
distinguish claims 2, 4-11, 17, 20, and 24 from the prior art. Thus, we agree
with the Examiner that Yozell-Epstein describes each of the limitations
recited in claims 1, 2, 4-11, 17, 20, and 24.

CONCLUSION

The Examiner did not err in rejecting claims 1, 2, 4-11, 17, 20, and 24
under 35 U.S.C. § 102(e) as anticipated by Yozell-Epstein.

DECISION

To summarize, our decision is as follows.
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 The rejection of claims 1, 2, 4-11, 17, 20, and 24 under
35 U.S.C. § 102(e) as anticipated by Yozell-Epstein is
sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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