Ex Parte Moody et al

Patent Trial and Appeal Board

Feb 24, 2014

10745483 (P.T.A.B. Feb. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAUL B. MOODY,
DANIEL M. GRUEN,
STEVEN L. ROHALL,
BERNARD J. KERR, and
SEYMOUR KELLERMAN
____________

Appeal 2011-008676
Application 10/745,483
Technology Center 2400
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
NINA L. MEDLOCK, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Paul B. Moody, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 (2002) of the final rejection of claims 1-3, 7-9, 12, 13, and 15-17.
We have jurisdiction under 35 U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for automatically creating a new email
message in an email system comprising a threading service for
establishing relationships between related email messages, the
email system executing on a computer device, and wherein the
new email message does not include any information that, to
the threading service, would be indicative of a relationship
between the new email message and a selected email message,
the method comprising:
receiving a reply option selection to create a new email
message using one or more addresses from a selected email
message;
automatically determining, by the email system executing
on the computer device, an address for at least one of a
recipient or a sender of the selected email message, said address
determined from one or more address fields of the selected
email message;
automatically generating, by the email system executing
on the computer device, the new email message, the new email
message including at least one address field and a plurality of
other fields, the plurality of other fields including a body field
and at least one other field; and

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Dec. 29, 2010) and Reply Brief (“Reply Br.,” filed Apr. 27,
2011), and the Examiner’s Answer (“Ans.,” mailed Feb. 28, 2011).
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automatically populating, by the email system executing
on the computer device, the at least one address field of the new
email message with the automatically determined address,
wherein the email system refrains from populating any of the
plurality of other fields of the new email message, including the
at least one other field, with any information that, to the
threading service, would be indicative of a relationship between
the new email message and the selected email message.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Klein US 6,496,853 B1 Dec. 17, 2002

Jim Boyce, Microsoft® Office Outlook® 2003 Inside Out, 1-20
(Nov. 5, 2003) (Safari Books Online) (hereinafter “Boyce”).
The following rejection is before us for review:
1. Claims 1-3, 7-9, 12, 13, and 15-17 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Boyce and Klein.

ISSUE
Did the Examiner err in rejecting claims 1-3, 7-9, 12, 13, and 15-17
under § 103(a) over Boyce and Klein?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

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ANALYSIS
The Appellants argued claims 1-3, 7-9, 12, 13, and 15-17 as a group
(App. Br. 6-9). We select claim 1 as the representative claim for this group,
and the remaining claims 2, 3, 7-9, 12, 13, and 15-17 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The dispute is over the subject matter set forth in the last clause of the
claim, i.e.,
automatically populating . . . the at least one address field
of the new email message with the automatically determined
address [and] refrains from populating any of the plurality of
other fields of the new email message . . . with any information
that, to the threading service, would be indicative of a
relationship between the new email message and the selected
email message.
The Examiner argues that cited prior art combination would lead one of
ordinary skill to the claimed subject matter and the Appellants argue it does
not.
The Examiner takes the position that Boyce discloses all the claim
limitations but
does not explicitly to [sic] disclose the email system refrains
from populating any of the plurality of other fields of the new
email message, including the at least one other field, with any
information that, to the threading service, would be indicative
of a relationship between the new email message and the
selected email message
(Ans. 4) for which Klein is specifically relied upon.
According to the Examiner,
[i]t would have been obvious to one of ordinary skill in
the art at the time of invention to create the invention of Boyce
to include (or to use, etc.) the email system refrains from
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populating any of the plurality of other fields of the new email
message, including the at least one other field, with any
information that, to the threading service, would be indicative
of a relationship between the new email message and the
selected email message as taught by Klein in order to reduce
computer resources on message thread system.
Ans. 5.
The Appellants disagree arguing that
to the extent the [sic] Klein indicates generating a new message
in response to an existing message (or based on receiving a
reply option selection to create a new message), Klein describes
generating such new message having subject and contents
populated based on the subject and contents of the existing
message. Accordingly, in contrast to the claimed invention,
Klein appears to explicitly describe not refraining from
populating any of the plurality of other fields (i.e., fields other
than the at least one address field, e.g., body and subject) of the
new email message, including the at least one other field (e.g.,
subject) with any information that, to the threading service,
would be indicative of a relationship between the new email
message and the existing message (or a selected email
message).
App. Br. 7-8.
We have carefully reviewed the record. Although not expressly
mentioned by the Examiner, we draw attention to column 9, lines 16-29 of
Klein which explains more fully the different ways a response message can
be created that those of ordinary skill will appreciate. See In re Heck,
699 F.2d 1331, 1333 (Fed. Cir. 1983) (explaining that patents are "relevant
for all they contain"). Among the different ways, Klein mentions “a
response message may have an ID or subject that is independent of the ID
and subject of the message being responded to, and response messages may
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include only some or none of the contents of the message being responded
to.” Col. 9, ll. 20-25. Emphasis added. Accordingly, Klein appears to
provide a way to generate a response message that refrains from populating
any of the fields. We should also note that Boyce (Figs. 7-12) illustrates an
email dialog box that provides options for handling message replies that
includes “generat[ing] a clean reply without the current message text” (p.
18). Accordingly, Boyce, too, appears to provide a way to generate a
response message that refrains from populating any of the fields.
After careful review of the record, we find the preponderance of the
evidence weighs in favor of the Examiner’s position.
For the foregoing reasons, we sustain the rejection.

DECISION
The decision of the Examiner to reject claims 1-3, 7-9, 12, 13, and
15-17 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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