Ex Parte Moody et al

Board of Patent Appeals and Interferences

May 19, 2010

10745500 (B.P.A.I. May. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PAUL B. MOODY, CYNTHIA L. ICE, DOUGLAS W. CONMY,
MARY ELIZABETH RAVEN, JODI L. COPPINGER, FRANCIS D.
BERMINGHAM, and RAM KRISHNAMURTHY
____________________

Appeal 2009-015167
Application 10/745,5001
Technology Center 2100
____________________

Decided: May 19, 2010
____________________

Before JOSEPH L. DIXON, JAY P. LUCAS, AND CAROLYN D.
THOMAS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed December 29, 2003. The real party in interest is
International Business Machines Corporation.
Appeal 2009-015167
Application 10/745,500
STATEMENT OF THE CASE
Appellants appeal from a twice rejection of claims 1 to 8 under
authority of 35 U.S.C. § 134(a). Claims 9 to 20 are cancelled. The Board of
Patent Appeals and Interferences (BPAI) has jurisdiction under
35 U.S.C. § 6(b). Oral hearing of May 12, 2010 was waived.

We affirm the rejection.

Appellants’ invention relates to a method of presenting electronic
messages having relationships to a selected message. In the words of
Appellants:
In another example, sighted users may be
able to view a list of email messages and quickly
identify which of the list of email messages are
replies to an email message that originated from a
particular user. In contrast, non-sighted users may
be presented with a listing of received email
messages, wherein the email messages are
provided in order of receipt. As a result, non-
sighted users are not able to identify which of the
list of email messages are replies to an email
message that originated from a particular user.
Various other drawbacks exist.
. . . .
A system and method are provided for
generating one or more menus having options that
display insights from visualizations. The options
presented in the menus enable users to determine
relationships between elements of the
visualization. The relationships may be displayed
textually to enable user to navigate the menus
using a keyboard, a text-to-voice converter, and/or
pointers.

(Spec. 2 ¶ [006]; Spec. 31, Abstract).
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Claim 1 is exemplary and is reproduced below:
1. A method of generating for presentation on a display at
least one menu having options that enable representations of
visualizations associated with a computer application, the
method comprising:

in response to a user selecting an electronic message
from a list of electronic messages,

analyzing criteria associated with the selected electronic
message;

determining one or more relationships between the
selected electronic message and the list of electronic messages,
and one or more statuses of the electronic messages in the list
of electronic messages; and

generating, for presentation on a display, one or more
menus that display options that represent individual ones of the
other electronic messages from the list of electronic messages
by descriptively identifying (i) the relationships between the
selected electronic message and individual ones of other
electronic messages from the list of electronic messages, and
(ii) one or more statuses of electronic messages from the list of
electronic messages, such that selection by the user of an option
from the one or more menus opens the individual electronic
message from the list of electronic messages having (i) the
relationship to the selected electronic message that is
descriptively identified in the selected option, and (ii) the one or
more statuses that are descriptively identified in the selected
option,

wherein the presented options of the menus are separate
from the presentation of any of the electronic messages or any
electronic message portions thereof, and

wherein the one or more statuses of the electronic
messages in the list of electronic messages includes a status
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related to whether the user has previously accessed individual
ones of the electronic messages.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Baldonado US 7,035,903 B1 Apr. 25, 2006
Meek US 6,732,155 B2 May 04, 2004
Kudoh US 5,948,058 Sep. 07, 1999

REJECTIONS
The Examiner rejects the claims as follows:

[R0]: Claims 1 to 8 were rejected under 35 U.S.C. § 112. This rejection was
rescinded in view of Appellants’ amendment dated 10/29/08.
[R1]: Claims 1 to 8 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Baldonado in view of Meek and Kudoh.

Appellants contend that Baldonado alone, or in combination with
Meek and Kudoh, do not render the claimed subject matter unpatentable as
the references fail to teach claimed limitations. The Examiner contends that
each of the claims is properly rejected.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments that Appellants could have made but chose
not to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii).

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ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a). The issue specifically turns
on whether, in a list of e-mail messages found to be related to one selected
message, does the “sender” of each e-mail in the list descriptively identify a
relationship between the one message and the others.
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants have invented a method of generating a menu of options for
viewing e-mail related to a particular electronic message of interest
(Spec. 18, ¶ [059]). The menu indicates information about other
messages in the thread of the selected message, allowing those related
messages to be easily recalled for viewing (Spec. 19, ¶ [060]). The
options may include the status of the other messages, such as indicating if
the messages have been read or not (Spec. 19, ¶ [061]). The menu is
especially helpful for non-sighted users (Spec. 1, ¶ [004]).
2. The ACCESS dropdown menu 300 contains options concerning
messages with a relationship to a selected message:
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Appellants’ Figure 3
3. The patent reference Baldonado teaches automatically creating a window
containing all messages related to a selected message (Col. 1. l. 65). The
related messages contain those of the same conversation, meaning those
sent to or received from the user (Col. 2, l. 14).
4. Baldonado teaches a window 330 containing messages that the system
automatically discovered to be related to the selected message 320 (Col.
6, ll. 6 and 7). Each of the messages in 330 may be activated to be
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viewed in full. (Col. 6, l. 20).

Baldonado Figure 3.

PRINCIPLES OF LAW

Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
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indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
ANALYSIS
From our review of the administrative record, we find that the
Examiner presents his conclusions of unpatentability on pages 3 to 7 of the
Examiner’s Answer. In opposition, Appellants present a number of
arguments.

Arguments with respect to the rejection
of claims 1 to 8
under 35 U.S.C. § 103(a) [R1]

The Examiner has rejected the noted claims for being obvious over
Baldonado in view of Meek and Kudoh. The Examiner has indicated that
“related message interface 330 corresponds to a type of menu, further
wherein it has been interpreted that, for instance, attributes in a “From”
column sufficiently correspond to a type of relationship that is descriptively
identified.” (Ans. 5, middle).
Appellants take issue with this rejection. “While information such as
authorship may enable a user to infer relationships between messages, (e.g.,
groups of messages having common authors), this information is merely the
foundation of these relationships and does not ‘descriptively identify’ the
relationships.” (App. Br. 7, bottom).
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Claim 1 requires “one or more menus that display options that
represent individual ones of the other electronic messages from the list of
electronic messages by descriptively identifying (i) the relationships
between the selected electronic messages and individual ones of other
electronic messages.” (Claim 1) (Board’s emphasis). The “From” column
in Baldonado tops a column in a list of electronic messages (e-mails) that the
system of that patent has found to be conversationally related to a selected
message (Col. 2, l. 13; see also Fig. 3 above). The messages in that list can
all be individually activated for full display of the e-mail, thus qualifying the
list to be called a menu (Col. 6, ll. 19-22). One relationship of the e-mails in
the menu to the selected e-mail 320 is the relationship of sender or recipient
of previous or later messages in the thread. Appellants use the word
authorship in describing the noted column, but the essence of the
relationship is not who authored the e-mail, but rather who sent it or
received it. We find that the label “From” and the column contents can be
fairly said to be “descriptively identifying” that relationship, sender or
receiver, and we thus find no error in calling the “From” label descriptively
identifying the relationship.

CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1 to 8 under 35 U.S.C. § 103(a).

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Application 10/745,500
DECISION
We affirm the Examiner’s obviousness rejection of claims 1 to 8.
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).

AFFIRMED

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