Ex Parte McCaffrey et alDownload PDFPatent Trial and Appeal BoardSep 11, 201512239771 (P.T.A.B. Sep. 11, 2015) Copy Citation 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. 12/239,771 09/27/2008 Corey S. McCaffrey CAM920080076US1/1174-019 4086 44185 7590 09/11/2015 BAINWOOD HUANG & ASSOCIATES LLC c/o LOTUS AND RATIONAL SOFTWARE 2 Connector Road Westborough, MA 01581 EXAMINER SONG, DAEHO D ART UNIT PAPER NUMBER 2141 MAIL DATE DELIVERY MODE 09/11/2015 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 COREY S. McCAFFREY, FANG LU, ELAINE I. KUO, and KIMILEE S. GILE ____________ Appeal 2012-012199 Application 12/239,771 Technology Center 2100 ____________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-012199 Application 12/239,771 2 STATEMENT OF CASE Appellants appeals under 35 U.S.C. § 134(a) from the Examiner’s rejections of claims 1–18. App. Br. 2. Claim 19 is canceled. Id. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. REJECTIONS The Examiner rejects claims 1–14 and 16–18 under 35 U.S.C. § 102(e) as anticipated by Lee et al. (US 2008/0162649 A1; July 3, 2008). Ans. 4–9. The Examiner rejects claim 15 under 35 U.S.C. § 103(a) as unpatentable over Lee and Steuer et al. (US 2010/0070591 A1; Mar. 18, 2010). Id. at 9–10. DISCLOSED INVENTION Appellants’ invention encourages continuing of email threads (instead of starting of new threads for old subjects) by permitting a user to selectively display the most recent email threads of another user. Spec. p. 2, l. 12–p. 3, l. 20. “In one embodiment,” the selective display of a desired email thread is achieved by (i) clicking a “Reply to Most Recent” button (Fig. 3) and then, when accordingly prompted to do so, (ii) identifying the other user (Figs. 4– 6) and (iii) selecting an email thread thereof from a chronological list of different threads (Fig. 8). Id. at p. 3, l. 20–p. 4, l. 6. And, “[i]n one embodiment, in direct response to the user’s specification of the user name, the disclosed system immediately generates a reply message user interface display object pre-loaded with message contents and addressees obtained from the most recent message[.]” Id. at p. 4, ll. 6–10. Appeal 2012-012199 Application 12/239,771 3 ANTICIPATION REJECTION Claims 1–14 and 16–18 are rejected for anticipation over Lee. Appellants address these claims collectively (i.e., as a group). App. Br. 9, 12. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2008). Claim 1 is reproduced below with emphasis on at-issue subject matter. 1. A method comprising: generating a first user interface object; detecting user selection of said first user interface object; displaying, responsive to said detection of said user selection of said first user interface object, a second user interface object through which a local user can specify a user name; inputting, through said second user interface object, a user name specified by said local user through said second user interface object; and displaying, responsive to said inputting of said user name, a third user interface object for composing a reply message to a most recent message associated with said user name. The Examiner finds the at-issue subject matter is taught by Lee’s Figure 3 embodiment. Ans. 12. As shown by Lee’s Figure 3, reproduced below, the user’s selection of another user (Bob 18B) from a most recent sender list prompts a window displaying that sender’s most recent email threads. Lee ¶¶ 42–43. Appeal 2012-012199 Application 12/239,771 4 Lee’s Figure 3, reproduced above, illustrates Lee’s at-issue interface. Appellants argue that Lee’s Figure 3 embodiment does not teach claim 1’s “inputting . . . a user name specified by said local user.” App. Br. Appeal 2012-012199 Application 12/239,771 5 11. According to Appellants, Lee rather at best teaches merely selecting of another user denoted within the “most recent sender” window 16. Id. The argument is not persuasive; particularly insofar as being incommensurate with claim 1’s scope. Contrary to the argument, claim 1’s “inputting . . . a user name specified by said local user” does not restrict how the user name is input or specified. Thus, Appellants have not shown claim 1’s “inputting . . . a user name specified by said local user” distinguishes over Lee’s cited inputting of a name (Bob) via selection of a respective icon button (18B). Also, Appellants’ disclosure contemplates various mechanisms for inputting a user name; none of which are presented to disclaim inputting of a user name via selection of a respective icon button. See, e.g., Appellants’ Figs. 4–6; see also supra “Disclosed Invention” section. In fact, Appellants’ disclosure expressly contemplates inputting of a user name via selection of a respective icon button. See, e.g., Appellants’ Fig. 5 (inputting of “Miriam Kugler”). Appellants also argue that Lee’s Figure 3 embodiment does not teach claim 1’s “displaying, responsive to said inputting of said user name, a third user interface object for composing a reply message.” Reply Br. 4–5. According to Appellants: Appellants respectfully disagree with the Examiner’s assertion that that the Reply button of Fig. 3 provides the presently claimed user interface object for composing a reply message. In contrast, the Reply button of Fig. 3 in Lee appears to enable the user to cause another user interface to be generated that would then allow the user to compose a message. While this use of a Reply button option in the user interface of Fig. 3 in Lee allows the user to select between multiple message Appeal 2012-012199 Application 12/239,771 6 processing operations (i.e. Reply, Forward, and Delete options), it does not enable the user to compose a reply message to a most recently received message of the non-filtered messages. Id. at 5. The argument is not persuasive; particularly insofar as being incommensurate with claim 1’s scope. Contrary to the argument, claim 1’s “displaying . . . interface object for composing a reply message” does not restrict how the interface object is used “for composing” a reply message. Thus, Appellants have not shown claim 1’s “interface object for composing a reply message” distinguishes over Lee’s Figure 3 interface that opens a reply message — and is thereby “for composing a reply message” — when the reply button is clicked along with highlighting of an email within the message list 20. See Lee ¶ 27 (explaining reply function). For the foregoing reasons, Appellants’ arguments for claims 1–14 and 16–18 are not persuasive. Accordingly, their rejection is sustained. OBVIOUSNESS REJECTION Claim 15 is rejected as obvious over Lee and Steuer. Appellants do not present arguments for separate patentability. App. Br. 12–13. Accordingly, the rejection is sustained for the same reasons discussed above. DECISION The Examiner’s rejections of claims 1–18 are 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). Appeal 2012-012199 Application 12/239,771 7 AFFIRMED ACP Copy with citationCopy as parenthetical citation