Ex Parte OHWA et al

Patent Trial and Appeal Board

Sep 15, 2016

12693979 (P.T.A.B. Sep. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/693,979 01/26/2010 Tsunayuki OHW A
22850 7590 09/19/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
40073 5129
EXAMINER
CHU,DAVIDH
ART UNIT PAPER NUMBER
2616
NOTIFICATION DATE DELIVERY MODE
09/19/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TSUNA YUKI OHWA, SATORU INOUE,
NARIAKI SATOH, SHINJI YUHARA, DAIKI ITO, and
TAKA YUKI USAMI 1
Appeal2015-005020
Application 12/693,979
Technology Center 2600
Before JEAN R. HOMERE, KARA L. SZPONDOWSKI, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Technology
The application relates to the display of templates and image data for
communication messages. See Spec. 1, Abstract. Claim 1 is illustrative and
reproduced below with the limitations at issue emphasized:
1 According to Appellants, the real parties in interest are Sony Corporation
and Sony Mobile Communications Japan, Inc. App. Br. 1. However, a
Statement Under 37 CPR 3.73(c) dated July 1, 2015, lists the latter as "Sony
Mobile Communications Inc."
Appeal2015-005020
Application 12/693,979
1. An information processing apparatus, comprising:
a storage section configured to store a plurality of
templates with template attribute information, each template
configured to be capable of being applied to a display of a content
of a message with the content being laid out on the template, and
each template being displayed in a form of a post card on a
display device; and
a control section configured to cause the display device to
display, for an unopened message, only at least one of message
transmission destination or source information on the post card;
perform an opening process, in response to a user's
selection of the unopened message, to cause the display device
to switch from displaying only at least one of message
transmission destination or source information to displaying the
content of the message on the post card; and
cause the display device to display, in response to the
user's selection of a previously read message that has been
subjected to the opening process, the post card showing the
content of the previously read message and without showing the
message transmission destination or source information, to
enable the user to view the content of the previously opened
message without performing the opening process again.
Rejections
Claims 1-3 and 6-8 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Logue et al. (US 2007 /0271347 Al; Nov.
22, 2007); Anne Troy, Column Headings in Microsoft Outlook,
http://www.officearticles.com/ outlook/ co lumn_headings_in_microsoft_outlo
ok.htm; Yoshinobu et al. (US 5,777,605; July 7, 1998); and Corbin et al.
(US 2009/0094668 Al; Apr. 9, 2009). Final Act. 2.
Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Logue, Troy, Y oshinobu, Corbin, and Boerries et al.
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Appeal2015-005020
Application 12/693,979
(US 2006/0259511 Al; Nov. 16, 2006).2 See Final Act. 6, 2.
Claims 9-20 stand rejected under 35 U.S.C. § 103(a) as obvious over
the combination of Logue, Troy, Y oshinobu, Corbin, and Bulgin et al. (US
2009/0061827 Al; Mar. 5, 2009). 3 See Final Act. 8, 2.
ISSUE
Did the Examiner err finding either Corbin or Troy teaches or
suggests "to display, in response to the user's selection of a previously read
message that has been subjected to the opening process, the post card
showing the content of the previously read message and without showing the
message transmission destination or source information," as recited in
claims 1, 7, and 8?
ANALYSIS
Claims 1-20
The Examiner relies upon two references as separately teaching the
disputed limitation: Corbin and Troy. Ans. 3--4.
Corbin teaches the sender of an email can "request to preserve identity
privacy." Corbin i-f 26, FIG. 2. If someone chooses to "Reply All" to a
message with such a privacy request, "the software 121 is responsive to the
privacy selection 220 to automatically protect the identity privacy of the
recipient 250 [i.e., the sender of the original message] by inserting the email
address of the recipient within a bee address field 255." Id. i-f 31, FIG. 5.
2 Although the statement of rejection does not expressly list Y oshinobu or
Corbin for claims 4 or 5 (Final Act. 6-8), those claims ultimately depend
from claim 1, which was rejected over a combination including Y oshinobu
and Corbin. Id. 2--4. Accordingly, we treat the rejection of claims 4 and 5
as including all references relied upon for claim 1.
3 As with claims 4 and 5, we treat the rejection of claims 9-20 as including
all references used for any base claims, including Y oshinobu and Corbin.
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Application 12/693,979
Thus, whereas the sender of the original message would normally be listed
in the "To" field of any reply, the system instead moves the original sender
to the "bee" field. In this way, Corbin teaches avoiding the disclosure of the
email address of the original sender within any subsequent email messages
that originate from an original recipient. Id. i-f 26.
Appellants contend Corbin's message "always displays either the
source email address in the 'From' field, or the destination email address in
the 'To' field, even if the original sender's email address may be hidden by
including it in the bee field." App. Br. 10. We agree with Appellants
regarding Corbin. The Examiner finds that "if everyone in the group (group
email) requests to hide their email address, then no destination or source
information will be shown." Ans. 3. However, the disclosure of Corbin
does not support that finding. For example, in Figures 2 and 5, the original
sender John Doe has requested privacy. Corbin i-f 26. Despite this request,
John Doe's name and email address (source information) is still shown to
the recipient. See id. at FIGs. 4--5. The privacy setting, which moves John
Doe's name and email address from the "To" field to the "bee" field in a
subsequent reply email message initiated by the recipient, does not affect the
recipient being shown John Doe's name and email address in both the
original message (i.e., as "source information") and in the reply (i.e., as
"destination ... information"). In other words, John Doe's name and email
address will only be hidden in a subsequent message to other individuals.
The Examiner also has not shown Corbin displays different content for an
unopened message as opposed to a previously read message. Thus, we find
the Examiner erred in finding Corbin teaches or suggests "to display, in
response to the user's selection of a previously read message that has been
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Application 12/693,979
subjected to the opening process, the post card showing the content of the
previously read message and without showing the message transmission
destination or source information."
The Examiner separately relies on Troy as teaching how to delete
columns in Outlook. Ans. 4. For example, "the user of the Microsoft
Outlook program of Troy is able to delete the 'From' field ('source
information')." Id. "Thus, the Examiner believes that one of an ordinary
skill in the art would have been able to selectively hide certain fields within
an email according to user preference." Id.
Appellants concede that Troy teaches "users can add or remove
columns (fields) in [an] Outlook mailbox" but contend this "does not
constitute a teaching of adding or deleting columns within an email." Reply
Br. 4--5 (emphasis added). This argument, however, is not commensurate
with the scope of the claims as written. Claim 1 does not recite displaying
an "email" as opposed to a "mailbox." Instead, claim 1 recites displaying "a
post card," and the Federal Circuit "has repeatedly emphasized that an
indefinite article 'a' or 'an' in patent parlance carries the meaning of 'one or
more' in open-ended claims containing the transitional phrase 'comprising.'"
Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir.
2008) (quotation omitted). The Specification also teaches displaying
multiple post cards at the same time, similar to an email mailbox. E.g.,
Spec. FIGs. 4--5. Thus, Appellants have not sufficiently explained how their
"mailbox" argument against Troy relates to the claim as currently written.
Nevertheless, we find the Examiner has not shown that Troy, alone or
in combination with Corbin, teaches or suggests the full limitation. While
we agree with the Examiner that "one of an ordinary skill in the art would
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Application 12/693,979
have been able to selectively hide certain fields" (Ans. 4 (emphasis added)),
the Examiner has provided no reason why a person of ordinary skill would
remove the "To" and "From" field from an Outlook mailbox or email, let
alone why do so for a "previously read message" but not an "unopened
message." The Supreme Court and Federal Circuit have warned that "it is
improper to pick and choose the claimed elements from among the various
prior art references using the patent as a blueprint." Intra Corp. v. Hamar
Laser Instruments, Inc., 862 F.2d 320 (Fed. Cir. 1988); Dennison Mfg. Co.
v. Panduit Corp., 475 U.S. 809, 810 (1986) ("in addressing the question of
obviousness a judge must not pick and choose isolated elements from the
prior art and combine them so as to yield the invention in question if such a
combination would not have been obvious at the time of the invention").
Here, without using the claims as a blueprint, the Examiner has not provided
sufficient explanation for us to find that Troy teaches or suggests "to display,
in response to the user's selection of a previously read message that has been
subjected to the opening process, the post card showing the content of the
previously read message and without showing the message transmission
destination or source information."
Accordingly, we do not sustain the Examiner's rejection of
independent claims 1, 7, and 8. Dependent claims 2---6 and 9-20 stand with
their respective independent claims.
DECISION
For the reasons above, we reverse the Examiner's decision rejecting
claims 1-2 0.
REVERSED
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