Ex Parte Nguyen

Patent Trial and Appeal Board

Feb 17, 2017

13673408 (P.T.A.B. Feb. 17, 2017)

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.
13/673,408 11/09/2012 Nam Nguyen 31234-0330001 9694
94149 7590 02/21/2017
Fish & Richardson P.C. (Blackberry)
P.O.Box 1022
Minneapolis, MN 55440
EXAMINER
HACKENBERG, RACHEL J
ART UNIT PAPER NUMBER
2454
MAIL DATE DELIVERY MODE
02/21/2017 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 NAM NGUYEN
____________

Appeal 2016-001561
Application 13/673,408
Technology Center 2400
____________

Before JUSTIN BUSCH, SCOTT E. BAIN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1, 2, 4–12, and 14–20, i.e., all pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellant, the real party in interest is BlackBerry
Corporation. Br. 3.
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STATEMENT OF THE CASE
The Invention
The Specification indicates that the invention relates to “smart
notifications” for messages. Spec. ¶ 1.2 The Specification explains that
“[w]hen a new message is received for a unified mailbox, a relevance level
associated with the new message is determined . . . [and] a notification
device . . . provide[s] a notification based on the relevance level, the
notification being one of a plurality of multi-level notifications, each
associated with different relevance levels.” Abstract.
Exemplary Claim
Independent claim 1 exemplifies the subject matter of the claims
under consideration and reads as follows:
1. A device comprising:
a processor, a communication interface, and a
notification device, the processor configured to:
when a new message is received for a unified
mailbox, determine a relevance level associated with the
new message, the unified mailbox providing messages
received via the communication interface from a plurality
of accounts, and distinguish the relevance level from an
importance level associated with the new message, the
importance level originating at a sender device that sent
the new message; and
control the notification device to provide a
notification based on the relevance level, the notification
being one of a plurality of multi-level notifications, each

2 This Decision uses the following abbreviations: “Spec.” for the
Specification, filed November 9, 2012; “Final Act.” for the Final Office
Action, mailed November 20, 2014; “Br.” for the Appeal Brief, filed
May 12, 2015; and “Ans.” for the Examiner’s Answer, mailed September 8,
2015.
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associated with different relevance levels, the notification
device including a display, and the notification based on
the relevance level comprising a visual indicator of the
relevance level provided at the display concurrently with
a respective visual indicator of the importance level in
association with the new message in a visual
representation of the unified inbox.
Br. 16 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
The Rejections on Appeal
Claims 1, 2, 4–8, 10–12, 14–17, 19, and 20 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Cohen, Arnold, and Guy. Final
Act. 2–7; Br. 11.
Claims 9 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cohen, Arnold, Guy, and Major. Final Act. 7–8; Br. 11.

ANALYSIS
We have reviewed the rejections of claims 1, 2, 4–12, and 14–20 in
light of Appellant’s arguments that the Examiner erred. For the reasons
explained below, we disagree with Appellant’s assertions regarding error by
the Examiner. We adopt the Examiner’s findings in the Final Office Action
and Answer and add the following primarily for emphasis.
Arnold et al. (“Arnold”) US 6,965,918 B1 Nov. 15, 2005
Major et al. (“Major”) US 7,779,151 B2 Aug. 17, 2010
Guy US 7,890,596 B2 Feb. 15, 2011
Cohen US 8,346,881 B1 Jan. 1, 2013
(filed May 18, 2012)
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The Rejections of Claims 1, 2, 4–12,
and 14–20 Under 35 U.S.C. § 103(a)
CONCURRENT DISPLAY OF VISUAL INDICATORS
OF RELEVANCE LEVEL AND IMPORTANCE LEVEL
Appellant argues that the Examiner erred in rejecting claims 1, 11,
and 20 because “none of the Cohen, Arnold or Guy [references] disclose,
either alone [or] in combination, at least the presently claimed,
CONCURRENT display of visual indicators of the relevance level AND the
importance level in association with a new message . . . .” Br. 12. In
particular, Appellant contends that Cohen “discloses generating a
prioritization score of a telephonic message” but “makes no mention of the
‘importance level of message’ as set by a sender.” Id. Appellant contends
that Guy discloses “the feature of ‘[a] sender may assign a priority to the
email’” but “makes no mention of a ‘relevance level’ associated with a new
message as determined by a processor of a device where the new message
was received.” Id. In addition, Appellant asserts that Arnold “is cited
merely for the feature of a unified inbox.” Id.
We are not persuaded by Appellant’s arguments because they attack
the references individually. See Ans. 4. Where a rejection rests on a
combination of references, an appellant cannot establish nonobviousness by
attacking the references individually. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Here, the rejection rests on the combination of
disclosures in Cohen, Arnold, and Guy. Final Act. 2–5; Ans. 2–3. “[T]he
test for combining references is not what the individual references
themselves suggest but rather what the combination of disclosures taken as a
whole would suggest to one of ordinary skill in the art.” In re McLaughlin,
443 F.2d 1392, 1395 (CCPA 1971); see In re Keller, 642 F.2d 413, 425
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(CCPA 1981). Appellant does not address what the Cohen-Arnold-Guy
combination “taken as a whole would suggest to one of ordinary skill in the
art” and, therefore, has not persuasively argued that the Examiner erred.
Br. 11–13.
The Examiner finds that Guy teaches (1) an importance level
“assigned by a sender (high, medium, low)” and (2) “a listing of a batch of
emails presented to [a] recipient” on a display “showing concurrent levels of
chosen prioritized order [relevance level] along with sender set importance.”
Ans. 2 (citing Guy 3:60–62, 5:26–32, Figs. 4–5); see Final Act. 4 (citing
Guy 3:60–62, 5:26–32, Fig. 5); see also Ans. 3.
Guy Figure 5 is reproduced below:

Guy Figure 5 shows a second or subsequent batch of emails having ID
numbers 11 through 23 arranged according to a “characterizing parameter,”
in particular, the recipient’s order of viewing by sender in a first or initial
batch of emails having ID numbers 1 through 10. Guy 5:26–54, Figs. 4–5;
see Ans. 4. The emails in the subsequent batch “include some emails from
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the same senders as the senders of the initial batch of emails: A. Alfa,
C. Charlie, D. Delta, G. Golf, H. Hotel, I. India, and J. Juliet.” Id. at
5:36–39. For the emails from the same senders (denoted by reference
numeral 82), the email from D. Delta (ID number 15) appears first in the
display of new emails because the recipient viewed an email from that
sender first in the initial batch; the email from G. Golf (ID number 18)
appears second in the display of new emails because the recipient viewed an
email from that sender second in the initial batch; the email from J. Juliet
(ID number 22) appears third in the display of new emails because the
recipient viewed an email from that sender third in the initial batch, etc. Id.
at 5:40–54; see id. at 2:9–23. Further, for each email, Figure 5 shows in the
Priority field a sender-set importance level, i.e., H (high), M (medium), or
L (low). See id. at 3:60–62 (Table 3), Fig. 5.
As the Examiner points out, claims are given their broadest reasonable
interpretation consistent with an applicant’s disclosure. Ans. 3; see In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). Here, the Specification
explains that “[t]he relevance level can be based on . . . a sender of the new
message . . . .” Spec. ¶¶ 15, 22. Moreover, claim 4 recites “the relevance
level is based on . . . a sender of the new message . . . .” Br. 16 (Claims
App.). Accordingly, the limitation in claim 1 concerning “a visual indicator
of the relevance level provided at the display” corresponds to Guy’s ordered
arrangement of new emails by sender based on the recipient’s order of
viewing earlier emails by sender. Thus, Guy teaches the concurrent display
of “a visual indicator of the relevance level” and “a respective visual
indicator of the importance level.”
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In addition, the Examiner finds that Cohen teaches determining a
relevance level associated with a new communication and providing a
notification including a visual indicator based on the relevance level. Final
Act. 3–4 (citing Cohen 2:18–23, 4:51–55, 6:9–13, 7:1–3, 8:50–57, 10:10–13,
14:65–15:4, Figs. 1–2); see Ans. 2 (citing Cohen 6:9–14, Fig. 3). More
particularly, a prioritization module in Cohen determines a prioritization
score (relevance level) for a new communication, e.g., a number from
1 through 10. Cohen 2:18–23, 4:51–55, 6:9–13, 8:50–57, Figs. 1, 3. The
prioritization score (relevance level) then appears on a display. Id. at
5:48–53, 6:9–13, Fig. 1 (priority field 24 in display 6), Fig. 3 (priority
field 24 in graphical user interface 18); see App. Br. 13. Cohen explains that
“[t]he prioritization score may indicate to a user how important the incoming
communication is.” Id. at 6:9–13.
Appellant argues that Cohen relates only to telephonic
communications. Br. 13. That argument overlooks Cohen’s disclosure that
relevant communications include a “telephonic message, a voice or digitized
voice message, or video transmission as well as text based messaging, such
as short message service (SMS) text, instant messaging, and other
examples.” Cohen 3:36–40; see id. at 1:12–13 (discussing “telephonic,
email, and short messaging service (SMS) communications”). Thus,
Cohen’s teaching applies to text-based communications, such as emails.
Appellant argues that Cohen, Guy, and Arnold lack a figure similar to
Specification Figure 9, which shows a display with separate symbols
signifying relevance level (numbers from 1 through 10) and sender-set
importance level (the characters ! and ↓). Br. 12. Appellant misplaces its
reliance on Figure 9. Although the claims are interpreted in light of the
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specification, limitations from the specification are not read into the claims.
In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Limitations not
appearing in the claims cannot be relied upon for patentability. See In re
Self, 671 F.2d 1344, 1348, 1350 (CCPA 1982).
THE PROPRIETY OF COMBINING THE REFERENCES
Appellant argues that the Examiner’s rationale for combining the
references “is too general” and “has CLEARLY been taken from the
Applicant’s own disclosure.” Br. 14. The Examiner finds, however, that the
references “are within the same invention class” because (1) “Arnold teaches
a unified mailbox,” (2) Cohen teaches a system for prioritizing incoming
communications, and (3) Guy teaches an email system that “allows the user
to see [the] importance level and relevant level of those communications.”
Ans. 3–4. Generally, a person of ordinary skill in the art would have been
motivated to combine analogous art. In re Ethicon, Inc., 844 F.3d 1344,
1349 (Fed. Cir. 2017). Appellant did not file a Reply Brief and did not
dispute the Examiner’s finding concerning analogous art.
Further, the Examiner finds that a person of ordinary skill in the art
would have been motivated to combine Cohen and Arnold because
“[r]eceiving mail into one mailbox for viewing would benefit the user by
allowing them to only open one [messaging] application,” thus providing
“a complete and easy access messaging system.” Final Act. 5; see Ans. 4.
The Examiner also finds that a person of ordinary skill would have been
motivated to combine Guy with the other references because displaying
details regarding “relevance levels and importance levels would give the
user (in a glance) information” allowing the “user to decide individually
whether to look at the higher relevance level messages or the higher
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importance” messages. Final Act. 5; see Ans. 3–4. Because displaying
details regarding relevance levels and importance levels gives the user
various options, the Examiner determines that “[t]he combination of Cohen
and Guy would not only be obvious but expected.” Ans. 4.
Accordingly, the Examiner has articulated reasoning with a rational
underpinning for why a person of ordinary skill in the art would have
combined the references, including identifying advantages achieved with the
combination. Final Act. 5; Ans. 3–4. “[T]he desire to enhance commercial
opportunities by improving a product or process is universal . . . .” DyStar
Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir.
2006). “[A]n implicit motivation to combine” may result from a desire to
make a product or process “stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient.” Id. Further, contrary to
Appellant’s contention, the Examiner has “clearly and particularly”
described the motivation to combine the references. Final Act. 5; see
Ans. 3–4; see also Br. 14.
SUMMARY FOR INDEPENDENT CLAIMS 1, 11, AND 20
For the reasons discussed above, Appellant’s arguments have not
persuaded us that the Examiner erred in rejecting claims 1, 11, and 20 for
obviousness based on Cohen, Arnold, and Guy. Hence, we sustain the
rejection.
DEPENDENT CLAIMS 2, 4–10, 12, AND 14–19
Appellant does not make a separate patentability argument for any
dependent claim. Br. 11–15. Because Appellant does not argue the
dependent claims separately, they stand or fall with the independent claims.
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See 37 C.F.R. § 41.37(c)(1)(iv). Hence, we sustain the rejections of
claims 2, 4–10, 12, and 14–19.

DECISION
We affirm the Examiner’s decision to reject claims 1, 2, 4–12, and
14–20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED