Ex Parte O et al

Patent Trial and Appeal Board

Apr 29, 2013

11557556 (P.T.A.B. Apr. 29, 2013)

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.
11/557,556 11/08/2006 Patrick O'Sullivan CAM920060073US1 (148) 1720
46321 7590 04/29/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
DESROSIERS, EVANS
ART UNIT PAPER NUMBER
2491
MAIL DATE DELIVERY MODE
04/29/2013 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)
1

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PATRICK O’SULLIVAN, GARY DENNER, RUTHIE D. LYLE,
CYNTHIA E. BARBER-MINGO, and CAROL S. ZIMMET
____________

Appeal 2010-011481
Application 11/557,556
Technology Center 2400
____________

Before SCOTT R. BOALICK, JOHN A. JEFFERY, and
GREGG I. ANDERSON, Administrative Patent Judges.

ANDERSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

STATEMENT OF THE CASE
Appellants’ claim a method, system, and computer program product
for motivating and de-motivating messaging responses in a messaging
system. In accordance with an embodiment of Appellants’ invention,
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composed messages can be associated with a reply preference. The reply
preference can range from no reply permitted to a required reply, and can
include selected reply preferences for individual addressees amongst a group
of addressees. Consequently, when viewing a message associated with a
reply preference, the reply preference can be applied and a reply can be
motivated or de-motivated as the case may be, including expressly soliciting
a reply from a designated addressee. See generally Spec. ¶ [0023]; Fig. 3B.
Claim 1 is illustrative:
1. A message reply motivation and de-motivation method comprising:
composing a message in a messaging client of a messaging client
computing platform;
addressing the message to at least one addressee;
associating a reply preference specifying whether or not a recipient is
to reply to the message; and,
forwarding the reply preference to the addressee from the messaging
client over a computer communications network for visual presentation to
the addressee in a message viewer of a mail messaging client of the
addressee.
THE REJECTION
The Examiner rejected claims 1 through 20 under 35 U.S.C. §103(a)
as obvious over Bates (US Patent No. 6,618,748 B1; Sep. 9, 2003) in view
of Brown (US 2005/0193145; published Sept. 1, 2005). Ans. 3-12.

ISSUE
Under 35 U.S.C. §103(a), has the Examiner erred in rejecting claim 1
by finding that Bates and Brown teach forwarding a “reply preference”
specifying whether or not a recipient is to reply to a message addressed to an
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addressee for visual presentation in a message viewer of the addressee’s mail
messaging client?

ANALYSIS
Claims 1, 10, and 12
Claims 1, 10, and 12 are independent claims. Without specifying any
given claim, Appellants argue claim terminology common to all three claims
is not present in the prior art. See, e.g., App. Br. 9; Reply Br. 3. We will
address the language at issue by reference to the specific language used in
claim 1. At issue are two clauses from claim 1, the first of which recites, in
pertinent part, “associating a reply preference specifying whether or not a
recipient is to reply to the message.”
The Examiner finds that Bates teaches composing a message in a
messaging client of a messaging client computing platform. Ans. 3 (citing
Bates, col. 2, ll. 59-65). The Examiner notes Bates is a conventional e-mail
messages system. Id. The Bates system teaches addressing the message to
at least one addressee and sending an email to at least one recipient email
terminal. Id. (citing Bates, col. 1, ll. 43-44). In sending the email, an
associated “reply preference,” denominated a “control message” in Bates,
specifies whether or not a recipient is to reply to the message. Id. (citing
Bates, col.1, ll. 44-48). The Examiner further finds Bates teaches
forwarding the reply preference to the addressee from the messaging client
over a computer communications network, which routes the control
messages, to the user terminal. Id. (citing Bates, col. 2, ll. 59-67).
Appellants’ counter argument focuses on Bates, column 2, lines 59
through 65. Appellants agree Bates sends “control messages” to a terminal
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that “restricts whether OTHER terminals may send a delegate reply message
to a previously sent message.” Reply Br. 3. Appellants contend this is not
the same as a reply preference for an addressee of a message indicating
whether or not the addressee upon receipt of the message is to reply to the
message. Id.
We first consider whether the Examiner reasonably found the control
messages of Bates are “reply preferences” within the scope of claim 1.
There is no particular meaning assigned to “reply preferences” in the
specification.
The Examiner points to Bates, column 2, lines 43-48, as showing
“control messages” are a “reply preference.” Ans. 3. Bates teaches, in
relevant part, a “method for restricting the receipt of delegate reply messages
comprising configuring a control message for an electronic mail (e-mail)
message addressed to at least one recipient terminal or computer, and
sending the e-mail and control messages to the at least one recipient
terminal.” Bates, col. 1, ll. 41-45. Upon receipt of the control message, the
terminal may or may not reply with a delegate reply message. Bates, col. 1,
ll. 45-48. A “delegate reply message” is an automatically created and sent
response to an email message. Bates, col. 1, ll. 16-18.
We find the Examiner reasonably found that the control messages of
Bates, which determines whether a delegate reply message will be sent, is
the same as the reply preference determining whether or not a reply will be
sent. The argument that Bates is directed to “other” terminals, presumably
other than the message sender’s terminal, is neither compelling nor
persuasive. The terminal of Bates receives a control message and may then
send a response to other terminals which, depending on the control
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message’s delegate flag, may restrict whether certain terminals may send a
delegate reply message. See Bates, col. 2, ll. 60-63. But nothing in the
teaching of Bates prohibits sending a message to the terminal where the
message originated, i.e., the sender of the control message. Indeed, that is
suggested. See Bates, col. 1, ll. 40-48; col. 3, ll. 46-58 (noting that a
recipient terminal determines whether to reply to a received email message
with an automatic delegate reply message upon processing the received
control message delegate flag). Appellants do not persuasively point to any
difference between the control message of Bates and the claimed reply
preference feature.
We now turn to the second clause at issue in claim 1. Did the
Examiner act reasonably in finding the combination of Bates and Brown
teaches or suggests forwarding the reply preference for visual presentation in
a message viewer of the addressee? There is no particular meaning assigned
“message viewer module.” See Spec. 7-8. Notably, the term “for visual
presentation” merely recites an intended use of the forwarded reply
preference; no affirmative visual presentation is recited in claim 1. We give
the language its broadest reasonable interpretation consistent with the
specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004).
The Examiner notes Bates fails to teach “for visual presentation to the
addressee in a message viewer of a mail messaging client of the addressee.”
Ans. 4.1 However, the Examiner finds that the combination of Bates and

1 We note the Examiner also asserts Bates, the primary reference, teaches
visual presentation, presumably in the form of a delegate flag carried with
the control message. Ans. 13 (citing Bates, col. 2, ll. 59-65). Appellants
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Brown teaches the “for visual presentation” limitation, noting Brown is in an
analogous art -- email systems. Brown discloses “for visual presentation” to
the addressee in a message viewer of a mail messaging client of the
addressee. Ans. 4 (citing Brown ¶¶ [0059]-[0060]). The cited portion of
Brown contains multiple references to email being “displayed in the dialog
box.”
Appellants’ sole argument with respect to Brown is it “does not
establish . . . the visual presentation of a reply preference to a recipient nor . .
. the visual presentation of a reply preference.” App. Br. 9. This argument
is unpersuasive. The Examiner specifically found “visual presentation” in
the email content in Brown’s display in a dialog box, including portions of
email, attachments to email, and highlighted portions of email. See Brown
¶¶ [0059]-[0060]. Further, the display is controllable based on user profile,
the device profile, the file size, the connection speed, the estimated
download time, and the like. Id. This finding is not contested by Appellants
and the language of claim 1, given its broadest reasonable interpretation in
light of the Specification, does not patentably distinguish over what Bates
and Brown collectively teach. The Examiner therefore did not err by finding
that Brown and Bates collectively teach “for visual presentation” as claimed.
For the reasons set forth above, the Examiner’s rejection of claims 1,
10, and 12 is affirmed.

criticize the Examiner’s “inherently contradictory” position. Reply Br. 3.
The Examiner’s rejection, however,(which is the subject of this appeal)relies
on Bates and Brown, not just Bates. Ans. 3-4. Accordingly, our focus is the
collective teachings of Bates and Brown; therefore, neither the Examiner’s
citation to Bates alone nor Appellants’ corresponding criticism is relevant to
our analysis.
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Claims 2-9, 11, and 13-20
With respect to the remaining rejection of claims 2-9, 11, and 13-20,
Appellants provide no separate argument to their patentability. These claims
all depend directly or indirectly from claims where we have affirmed the
Examiner’s rejection. Accordingly for the reasons discussed above, we also
sustain the rejection of claims 2-9, 11, and 13-20.

CONCLUSION
The Examiner did not err in rejecting claims 1-20 under 35 U.S.C.
§ 103(a).

ORDER
The Examiner’s decision rejecting claims 1-20 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)(1)(iv).

AFFIRMED

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