Ex Parte Mohit et al

Patent Trial and Appeal Board

Nov 13, 2017

13527625 (P.T.A.B. Nov. 13, 2017)

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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/527,625 06/20/2012 Sharma Mohit 82961963 2478
22879
HP Tnr
7590 11/15/2017 EXAMINER
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HABTEMARIAM, MELAKU Y
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2447
NOTIFICATION DATE DELIVERY MODE
11/15/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHARMA MOHIT and NARASIMHA, REDDY
Appeal 2017-002048
Application 13/527,6251
Technology Center 2400
Before ROBERT E. NAPPI, MARC S. HOFF, and
CARL L. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—20, which constitute all the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 The real party in interest is identified as Hewlett-Packard Development
Company, LP. App. Br. 2.
Appeal 2017-002048
Application 13/527,625
STATEMENT OF THE CASE
Appellants’ invention relates to extracting data from email attachments.
Abstract. Claim 1, set forth below, is exemplary of the subject matter on
appeal (emphasis added):
1. A method of extracting data from email attachments
comprising:
receiving an email in which the email comprises a data file
attached thereto;
receiving a keyword from a sender of the email, in which the
keyword describes at least a portion of the data file\ and
extracting from the data file portions of the data file that contain
the keyword.
App. Br. 19 (Claims Appendix).
REJECTIONS
Claims 1—4 and 6—12 are rejected under pre-AIA 35 U.S.C. § 102(b)
as being anticipated by Shinohara et al. (US 2002/0046222 Al; pub. April
18, 2002) (“Shinohara”). Final Act. 3-5.
Claim 5 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Shinohara and Johnson et al. (US 7,283,272 B2; iss. Oct.
16, 2007) (“Johnson”). Final Act. 6.
Claim 13 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Shinohara and Evans (US 8,179,549 Bl; iss. May 15,
2012). Final Act. 6—7.
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Application 13/527,625
Claims 14—20 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Shinohara, Kawakami et al. (US 2007/0083598 Al; pub.
April 12, 2007) (“Kawakami”), and Evans. Final Act. 7—11.
ANALYSIS
The §102 Rejection of claims 1—4 and 6—12
Appellants argue that the Examiner errs in finding that
Shinohara describes the claim 1 limitations
receiving an email in which the email comprises a data file
attached thereto;
receiving a keyword from a sender of the email, in which the
keyword describes at least a portion of the data fde.
App. Br. 10-14.
According to Appellants, Shinohara does not describe the claim 1
limitation “receiving a keyword from a sender of the email, in which the
keyword describes at least a portion of the data file" where the data file was
included in a sent email.” Id. at 10 (citing Final Act. 3; Shinohara 141:1—3,
50, Figs. 5, and 6). Instead, Shinohara describes “the keyword is received
from a sender of the email and data file: both having been sent prior to the
receipt of the email and data file.” Id. at 10. According to Appellants,
Shinohara describes dragging an icon of a file to be attached to an email
message, inputting a key word, editing the file with the key word, attaching
the extracted data to an email message, and then sending the email with the
extracted data. Id. at 10-11 (citing Shinohara 39, 40, 41, 71, 75—83, Figs.
4, and 5).
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Appeal 2017-002048
Application 13/527,625
Appellants argue:
At best Shinohara describes receiving keywords from a user of the
sender device to search for that keyword in a selected file and return
data to include with an email to be sent. Thus, Shinohara fails to
describe or suggest the receipt of "an email in which the email
comprises a data file attached thereto" and further the receipt of "a
keyword from a sender of the email, in which the keyword describes
at least a portion of the data file." (Claim 1) (emphasis added).
Further, having not sent an email until after the data is extracted by
the sending device using the keyword, Shinohara cannot describe that
a keyword used to extract that data is also sent. For these reasons, the
rejection of claim 1 should not be sustained.
Id. at 11.
Appellants further argue the Examiner errs in finding “from the
system point of view [in Shinohara], the extraction system is receiving an
email message and attachment file(s) ([0039], lines 1-7, [0039]-[0041],
[0009] & [0033], and Fig. 3—6). (Action, p. 2) (emphasis added).” Id. at
11—12. According to Appellants, at no point during the extraction process
(while using the keyword) does the email sending device send an email to
the extraction system because the personal computer includes the attached
file editing software, extracts the data, attaches the extracted data to an email
message wherein the extraction process is completed by the sender side
software using that keyboard. Id. at 12.
We are persuaded by Appellants’ arguments because the Examiner
provides insufficient evidence to meet the requirement for anticipation for
the claim as broadly, and reasonably, interpreted. In particular, the
Examiner presents insufficient finding that Shinohara discloses the claimed
receiving an email in which the email comprises a data file attached thereto
as would be understood by one of ordinary skill in the art. A claim is
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Appeal 2017-002048
Application 13/527,625
anticipated only if each and every element as set forth in the claims is found,
either expressly or inherently described in a single prior art reference, and
arranged as required by the claim. Verdegaal Bros., Inc. v. Union Oil Co. of
California, 814 F.2d 628, 631 (Fed. Cir. 1987). See also In re Crish, 393
F.3d 1253, 1256 (Fed. Cir. 2004).
In view of the above, we do not sustain the rejection of claim 1, and
independent claim 8 which recites the disputed limitation. We also do not
sustain the rejection of dependent claims 2—4, 6, 7, and 9-12. Because our
decision is dispositive of the rejection of these claims, we do not address
additional arguments raised by Appellants.
The § 103 Rejection of claims 5 and 13—20
Regarding the rejection of claims 5 and 13 which depend from claims
1 and 8, Appellants rely on claim 1 arguments, discussed supra. App. Br.
14; Reply Br. 9. The Examiner provides no persuasive findings that the
additional references cure the deficiency of Shinohara discussed supra.
Therefore, we do not sustain the rejection of claims 5 and 13.
Appellants contend arguments made regarding the deficiency of
Shinohara regarding claim 1 apply to the independent claim 14 limitation
“receive an email in which the email comprises . . . and a data file attached
thereto” and further argue Kawakami does not cure the deficiency and does
not teach a file attached to the email. App. Br. 14—17; Reply Br. 9—13. We
are persuaded by these arguments as Kawakami does not cure the deficiency
of Shinohara, discussed supra, and the Examiner provides insufficient
findings that Kawakami teaches a file attached to the email.
On this record, we do not sustain the rejection of claim 14 and
dependent claims 15—20 which depend from independent claims 1 and 14.
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Because our decision is dispositive of the rejection of these claims, we do
not address additional arguments raised by Appellants.
DECISION
We reverse the Examiner’s decision rejecting claims 1—20.
REVERSED
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