Ex Parte Meisels et alDownload PDFPatent Trials and Appeals BoardMay 30, 201913096880 - (D) (P.T.A.B. May. 30, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/096,880 04/28/2011 27488 7590 06/03/2019 MERCHANT & GOULD (MICROSOFT) P.O. BOX 2903 MINNEAPOLIS, MN 55402-0903 FIRST NAMED INVENTOR Joshua Adam Meisels 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 14917.1794US01/331886USNP 5443 EXAMINER BLAIR, DOUGLAS B ART UNIT PAPER NUMBER 2442 NOTIFICATION DATE DELIVERY MODE 06/03/2019 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): USPT027 488@merchantgould.com usdocket@microsoft.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSHUA ADAM MEISELS, DANIEL PAUL COSTENARO, JEDIDIAH BROWN, and MARTA REY-BABARR0 1 Appeal2018-008435 Application 13/096,880 Technology Center 2400 Before CAROLYN D. THOMAS, JOSEPH P. LENTIVECH, and SCOTT RAEVSKY, Administrative Patent Judges. RAEVSKY, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner's Final Rejection of claims 1-10, 12-17, 19, and 20, all the pending claims in the present application (see Claims Appendix). Claims 11 and 18 are cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. 1 Appellants name Microsoft Technology Licensing, LLC as the real party in interest (App. Br. 3). Appeal2018-008435 Application 13/096,880 STATEMENT OF THE CASE Appellants' invention generally relates to automatically uploading an attachment to an electronic message. See Abstract. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method comprising: detecting an attachment that is added to an electronic message that is being composed; displaying an upload option to upload the attachment to a shared location before receiving a selection to send the electronic message and during a time that the electronic message is being composed, wherein displaying the upload option includes enabling the upload option to: display a first menu option that enables changing of the shared location; display a second menu option that enables changing of one or more sharing permissions; and display a third menu option that, if selected, enables the attachment already included in the electronic message to continue to be kept in the electronic message while sending the message; and in response to receiving a selection of at least one of either the first or second menus of the upload option, uploading the attachment to the shared location and automatically setting permissions for sharing the uploaded attachment at the shared location, and if the third message option to keep the attachment in the electronic message is not selected, removing the attachment from the electronic message and inserting a link into the electronic message to the uploaded attachment at the shared location. App. Br. 19 (Claims Appendix). Appellants seek our review of the following rejections: 2 Appeal2018-008435 Application 13/096,880 Claims 1-10, 12-17, 19, and 20 are rejected under pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 4. Claims 1-10, 12-15, 17, and 19 are rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Danasekaran (US 2007/0271344 Al, pub. Nov. 22, 2007), Friedman et al. (US 2010/0306330 Al, pub. Dec. 2, 2010), and Kikuchi et al. (US 2006/0224679 Al, pub. Oct. 5, 2006). Id. at 7. Claims 16 and 20 are rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Danasekaran, Friedman, Kikuchi, and Phillips (US 2009/0210721 Al, pub. Aug. 20, 2009). Id. at 9-10. We review the appealed rejections for error based upon the issues identified by Appellants and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential). ANALYSIS Rejection under§ 112, first paragraph The Examiner rejected the claims as lacking written description support for "display a third menu option that, if selected, enables the attachment already included in the electronic message to continue to be kept in the electronic message while sending the message" in claims 1, 10, and 17. Final Act. 4--5. Appellants contend support for this limitation may be found in the Specification in Fig. 6 and paragraph 51. App. Br. 7; Reply Br. 3. Figure 6 is reproduced below: 3 Appeal2018-008435 Application 13/096,880 !DlXI EJ • ·._I T_o._ . ___.! I ,!01,h, [)13:1. j~,cl •.. I Cc... 11:::.T=,i"='· _T_o=t"-'_ -~ __ -~ __ -~ __ -~ __ -~ __ -~ __ -~ __ -~ __ -~ __ -~ __ -~ __ ..... ~I I Subject: ! I.._U""-pl_oe_c'>tl<>n 1 Ch...-:ang.a ·P-arml-ss __ _ FIG.6 Figure 6 illustrates "an exemplary message that includes different upload options and menus." Spec. ,r 50. For example, these options include a "keep attachment option." Id. ,r 51. Appellants argue the keep attachment option supports the disputed limitation, which the Specification describes as "used to indicate when an attachment is not to be removed before the message is sent and the attachment has been uploaded to the shared location." Id.; App. Br. 7. We agree with Appellants. The Examiner finds the disputed limitation "create[ s] a relationship with how the attachment is continuously 'kept in the message before and after the message is sent." Ans. 4. The Examiner then finds the Specification "provide[ s] no indication of how the attachment is 'kept in the message' before it is sent, as required by the claim." Id. at 5. However, we agree with Appellant that the menu of Fig. 6, illustrated above, "includes a 4 Appeal2018-008435 Application 13/096,880 'keep attachment' option," which "when ... selected, [causes] the attachment to the electronic message [ to be] kept as an attachment in the electronic message while sending the message." App. Br. 7; Reply Br. 3. Furthermore, Appellants' specification indicates that "[fJor example, the upload option may be displayed in the attachment area, to the side of [the] message, within the message, below the message, and the like." Spec. ,r 42. Thus, we disagree with the Examiner's finding that the Specification "provide[s] no indication of how the attachment is 'kept in the message' before it is sent." See Ans. 5. Accordingly, we reverse the Examiner's § 112 rejection. Rejections under§ 103(a) Claims 1, 2, 7-10, 15, and 17 Appellants contend Danasekaran, Friedman, and Kikuchi fail to teach or suggest three separate limitations in claim 1. First, Appellants contend the cited references fail to teach or suggest claim 1 's "if the third message option to keep the attachment in the electronic message is not selected, removing the attachment from the electronic message and inserting a link into the electronic message to the uploaded attachment at the shared location." App. Br. 9-10, 12-13; Reply Br. 4--5. Appellants contend "the Examiner did not provide a detailed analysis of the rejection of claim 1" because "the Examiner did not cite the section or sections of Danasekaran that disclose the aspect of the claim." App. Br. 9. Appellants also contend "[n]othing found in Kikuchi discloses or suggests that when the first mode is not selected, the attachment is 5 Appeal2018-008435 Application 13/096,880 removed from the electronic message and a link is inserted into the electronic message." Id. at 13. Neither argument is persuasive because the disputed limitation is a conditional limitation in a method claim, which in this case, is not limiting. See Ex parte Schulhauser, No. 2013-007847, 2016 WL 6277792, at *4--5 (PTAB Apr. 28, 2016) (precedential) (holding certain conditional limitations in a method claim not limiting under a broadest reasonable interpretation, and thus the Examiner need not apply prior art for those limitations). Claim 1 recites "if the third message option to keep the attachment in the electronic message is not selected, removing the attachment ... and inserting a link[.]" The "if' clause is a conditional phrase, and under the broadest reasonable interpretation, the "removing ... and inserting" clause following the conditional phrase will not occur if the conditional phrase is not satisfied. Thus, we find the disputed limitation not limiting and Appellants' related patentability argument unavailing. Nevertheless, for the reasons that follow, we find the cited references teach or suggest the disputed limitation. We agree with Appellants that the Examiner fails to identify any portion of Danasekaran that discloses the disputed limitation. However, the Examiner also finds, and we agree, that "Kikuchi explicitly teaches 'if the third message option to keep the attachment in the electronic message is not selected (if mode 2 in Kikuchi is selected, mode 1 is not selected), removing the attachment from the electronic message and inserting a link." Ans. 13. Kikuchi Figure 4 is reproduced below: 6 Appeal2018-008435 Application 13/096,880 410 /,) ' ,_s_ub~Je_ct __ ,._IT_e:_,t ________ --,-----.--.---;"'--400 Recipient address 421 .---.._ To· aaaa@xxx.com 422~, cc: bbbb@yyy.com ,__ ___ _ 423 ,..___ -Bee.ccc:c@22z.com 430'' Att;ichment file ! lmage 1 j 4-40"'- Fig. 4 )Vi'." W-.tltoLJ~ ,u,,:s~ URL e~\110:kl © 0 0 ,._,4z1a c I e o -- ~422a 0 0 @ ·r-~ 423a Figure 4 of Kikuchi shows a "mail edit screen." Kikuchi ,r 49. Kikuchi' s mail edit screen includes "an attachment file specifying field 430." Id. ,r 50. Fig. 4 further includes "attachment buttons 42Ia, 422a, and 423a for specifying one of three attachment modes (mode 1: the attachment file is attached, mode 2: the address on the Web server ... at which the attachment file is stored is attached, and mode 3: neither the attachment file nor the storage address is attached)." Id. In other words, Kikuchi teaches or suggests including an attachment in an e-mail and then attaching a URL instead when the URL option (mode 2) is selected. As shown in Figure 4 of Kikuchi, when the URL option 422a is selected, one of ordinary skill in the art would understand the attached file 430 is removed prior to sending the email to "bbbb@yyy.com." We, therefore, agree with the Examiner that Kikuchi teaches or suggests "if the third message option to keep the attachment in the electronic message is not selected, removing the 7 Appeal2018-008435 Application 13/096,880 attachment from the electronic message and inserting a link into the electronic message to the uploaded attachment at the shared location." The second limitation of claim 1 Appellants rely on is "display a second menu option that enables changing of one or more sharing permissions." App. Br. 10. Appellants contend "[a]s described in the present application, the sharing permissions can include read/write, read, and write permissions that may be associated with one or more of the recipients. (See e.g., paragraphs [0035], [0043], and [0047])." Id. Appellants then argue "nothing found in paragraph [0040] [of Danasekaran], or in Danasekaran in general, teaches or suggests 'display a second menu option that enables changing of one or more sharing permissions.'" Id. The Examiner finds, and we agree, Danasekaran discloses "security features includ[ing] options for specifying passwords, access domain restrictions, the number of times the documents can be downloaded, and the times during which the document can be downloaded." Ans. 11 ( quoting Danasekaran ,r 40). The Examiner further finds, and we agree, The appellant is arguing that these security features are not "sharing permissions" but the appellant has failed to explain what the appellant believes sharing permissions to describe or how they are different from the security features taught by Danasekaran. The appellant cited paragraphs 35, 43, and 47 of their specification for a description of sharing parameters but none of these paragraphs provide a limiting definition of the term "sharing permissions[.]" Id. at 12. Accordingly, we agree with the Examiner that Appellants have failed to persuasively distinguish claim 1 's "sharing permissions" from Danasekaran' s "security features." 8 Appeal2018-008435 Application 13/096,880 The final limitation Appellants rely upon to distinguish the cited references is claim 1 's "display a first menu option that enables changing of the shared location." App. Br. 11. Specifically, Appellants quote paragraph 77 of Friedman and state, "[n]othing found in paragraph [0077], or in Friedman in general, discloses displaying a first menu option that enables changing of the shared location." Id. This conclusory argument is unpersuasive. The Examiner finds, and we agree, "appellant[ s] ha[ ve] not provide[ d] any explanation of how allowing a sender multiple choices of storage locations is not an option that allows a sender to change a shared storage location." Ans. 12. Friedman states, "if a location has been selected from multiple choices by the sender, a directory is created at the storage location and the attachment file is uploaded 408 to the storage location." Friedman ,r 77. Friedman further discloses, "a list of the possible storage locations is provided ... to the email sender." Id. ,r 76. Thus, Appellants have not persuasively distinguished the claimed "first menu option that enables changing of the shared location" from Friedman's "location ... selected from multiple choices" and "list of the possible storage locations." Accordingly, we sustain the Examiner's rejection of claim 1. Appellants' arguments regarding the rejection of independent claims 10 and 17 rely on the same arguments as for claim 1. 2 Further, Appellants do not argue separate patentability for dependent claims 2, 7-9, and 15. See App. Br. 13-17. We therefore also sustain the Examiner's rejection of claims 2, 7-10, 15, and 17. See 37 C.F.R. § 4I.37(c)(l)(iv). 2 Appellants only argue claims 10 and 1 7 with respect to the first of Appellants' three arguments discussed supra. See App. Br. 13. 9 Appeal2018-008435 Application 13/096,880 Claims 3-6, 12-14, 16, 19, and 20 For dependent claims 3 and 12, Appellants contend "the Examiner admits that 'Danasekaran does not explicitly teach or suggest default permissions."' App. Br. 13 (emphasis added). This is not correct. While the Examiner finds with respect to claim 6, "Danasekaran does not explicitly teach default permissions," the Examiner does not find that Danasekaran does not suggest default permissions. See Final Act. 9 ( emphasis added). To the contrary, the Examiner cites paragraph 44 of Danasekaran for claim 3, which states: In addition, access control information for the document(s) can be sent to the online storage system at 840. This access control information can include various restrictions on access, such as described above. Moreover, this access control information can differentiate among specific email recipients, or groups of recipients. Id.; Danasekaran ,r 44. By disclosing "various restrictions on access," Danasekaran inherently teaches or at least suggests a default restriction on access would be available, even if that default restriction is no access ( or full access). Accordingly, we disagree with Appellants that Danasekaran fails to teach or suggest claim 3 's and claim 12 's "wherein automatically setting permissions for the uploaded attachment comprises setting default permissions for each recipient of the electronic message." For dependent claims 4 and 13, Appellants assert, based on their previous arguments discussed above, that "Danasekaran does not teach or suggest custom sharing permissions or receiving custom sharing permissions for one or more recipients." App. Br. 14. Appellants, therefore, conclude 10 Appeal2018-008435 Application 13/096,880 that Danasekaran fails to teach or suggest claim 4' s and claim 13 's "wherein automatically setting permissions for the uploaded attachment comprises receiving a custom permission for at least one of the recipients." Id. However, as we explained above with respect to claim 1, Appellants do not persuade us that Danasekaran' s security features fail to teach or suggest "sharing permissions." Thus, Appellants' arguments fail to persuasively distinguish claims 4 and 13 over Danasekaran. For dependent claims 5, 14, and 19, Appellants contend, "[a]s previously argued, Danasekaran does not disclose sharing permissions, or setting sharing permissions for an uploaded attachment." Id. at 15. As we explained above, however, we do not find Appellants' contention that Danasekaran does not disclose sharing permissions persuasive. Accordingly, we also sustain the Examiner's rejection of claims 5, 14, and 19. For dependent claim 6, Appellants contend nothing in Danasekaran "teach[ es] or suggest[ s] ... providing a warning when the default permissions are unable to be set." Id. at 16. We agree with Appellants. The Examiner finds, "[c]laim 6 merely states that a warning is communicated in the condition 'when the default permissions are unable to be set' [and] does not preclude a warning from being sent in any other condition." Ans. 15. Consequently, the Examiner finds, "[i]f the appellant had intended the claim to cover a determination that default permissions were unable to be set and the warning is sent in direct response to this determination, then the Examiner would agree that Danasekaran does not teach such a limitation." Id. The Examiner appears to take the position that the phrase "when the default permissions are unable to be set" is not limiting. The Examiner 11 Appeal2018-008435 Application 13/096,880 accordingly finds that as "[ c ]laim 6 does not define the warning in any particular manner ... , [t]he user interface in paragraph 40 of Danasekaran can be considered a warning." Id. We do not agree with the Examiner's interpretation of claim 6. The phrase "when the default permissions are unable to be set" is limiting because it defines a condition for "providing a warning." It was error for the Examiner to read this limitation out of the claim. The Examiner essentially concedes that if this phrase were limiting that Danasekaran does not teach such a limitation. See id. Indeed, we are unpersuaded that Danasekaran' s mere disclosure of a user interface for specifying security features, including access domain restrictions, constitutes providing a warning "when the default permissions are unable to be set." See Danasekaran ,r 40. Accordingly, we reverse the Examiner's rejection of claim 6. For dependent claims 16 and 20, Appellants quote paragraph 20 of Phillips and assert this paragraph "discusses a security means to administer the data store of application permissions for access file types. However, nothing found in paragraph [0020], or in Phillips in general, discloses or suggests [ claim 16' s] 'wherein automatically setting permissions for the uploaded attachment comprises selecting the permissions based on a type of attachment."' App. Br. 16-17. Although Appellants nominally argue the rejection of dependent claims 16 and 20 separately, the arguments presented do not point out with particularity or explain why the limitations of these dependent claims are separately patentable. These conclusory arguments are unpersuasive. Accordingly, we sustain this rejection. 12 Appeal2018-008435 Application 13/096,880 DECISION We reverse the Examiner's§ 112 rejection. We reverse the Examiner's§ 103(a) rejection of claim 6. We sustain the Examiner's§ 103(a) rejection of claims 1-5, 7-10, 12-17, 19, and 20. 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-IN-PART 13 Copy with citationCopy as parenthetical citation