Ex Parte Park et al

Patent Trial and Appeal Board

Nov 15, 2013

11396286 (P.T.A.B. Nov. 15, 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.
11/396,286 03/31/2006 Joseph C. Park 120137.531 1408
500 7590 11/18/2013
SEED INTELLECTUAL PROPERTY LAW GROUP PLLC
701 FIFTH AVE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
MYHRE, JAMES W
ART UNIT PAPER NUMBER
3682
MAIL DATE DELIVERY MODE
11/18/2013 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)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSEPH C. PARK and KIAN FAI LEONG
____________

Appeal 2011-011917
Application 11/396,286
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-011917
Application 11/396,286

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1, 3 to 5, 7 to 23, 26 to 40, and 42 to 45. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1 is illustrative:
1. A computer-implemented method for an answer-
providing service to interact with third-party users who submit
questions to be answered based on responses from other third-
party users, the interacting using email messages based on a
defined messaging interface of the answer-providing service,
the method comprising:
receiving multiple questions to be answered that are each
submitted by one of multiple third-party requester users in an
email message received from the one requester user, each email
message specifying information in a manner in accordance with
the defined messaging interface of the answer-providing
service;
for each question specified by a requester user via an
email message,
obtaining one or more responses provided to the
question from each of multiple third-party response provider
users;
identifying one or more of the obtained responses
to be used as an answer to the question;
generating one or more response email messages
that provide the answer to the question, each of the generated
response email messages including a tracking identifier that is
generated by the answer-providing service and associated with
the requester user from whom the request was received; and
sending the generated response email messages to
the requester user from whom the request was received;
receiving one or more command email messages that
each indicate an action to be performed on behalf of an
indicated requester user, wherein at least some of the received
Appeal 2011-011917
Application 11/396,286

3
command email messages from indicated requester users are
each to request performance of a command that is unrelated to
any prior answer to any question; and
for each of the received command email messages,
automatically determining to perform the action indicated by
the message on behalf of the indicated requester user only if the
received command email message includes a tracking identifier
that was previously generated by the answer-providing service
and associated with the indicated requester user for a generated
response email message sent to the indicated requester user, the
automatic determining being performed by one or more
programmed computing systems of the answer-providing
service.
Appellants appeal the following rejections:
1. Claims 1, 3 to 5, 7, 9 to 11, 14 to 17, 21 to 23, 26, 27, 32 to 40, and 42 to
45 under 35 U.S.C. § 103(a) as unpatentable over Kraft (U.S. 6,938,068
B1; iss. Aug. 30, 2005) and Stephanou (U.S. 6,505,166 B1; iss. Jan. 7,
2003).
2. Claims 28 to 31 under 35 U.S.C. § 103(a) as unpatentable over Kraft,
Stephanou, and Official Notice.
3. Claims 8, 12, 13, and 18 to 20 under 35 U.S.C. § 103(a) as unpatentable
over Kraft, Stephanou, and Lauffer (U.S. 6,223,165 B1; iss. Apr. 24,
2001).

ISSUE
Did the Examiner err in rejecting the claims because Stephanou does
not describe receiving one or more command email messages from requester
users?

Appeal 2011-011917
Application 11/396,286

4
ANALYSIS
The Appellants argue that Stephanou does not disclose receiving
command email messages, at least some of which being from indicated
requester users. We agree.
We find that Stephanou discloses a system and method for obtaining
assistance via network notification to experts (col. 1, ll. 13 to 15). Upon
request for advice, a ticket is opened for the user (col. 5, ll. 13 to 16). After
the receipt of expert advice, the user is asked to submit a survey regarding
the quality of the advice received from the expert (col. 5, ll. 19-25). After
the user submits the survey, the ticket is closed and billing for services is
accomplished (col. 5, ll. 25 to 28).
The Examiner appears to rely on the teaching in Stephanou of
receiving the survey as a command email message to disclose “at least some
of the received command email messages from users request the
performance of a command” (Ans. 5).
We do not agree with the Examiner that the receiving of the survey
from the user in Stephanou is a command email message. The user does not
command anything in the submission of the email, and in fact, the
submission of the survey automatically causes the ticket to be closed and the
user to be billed. The Examiner has not cited any disclosure in Stephanou
that the survey includes any indication that billing should commence, and
thus the submission of the survey cannot be considered to include a
command.
In view of the foregoing, we will not sustain the rejection of claim 1.
We will likewise not sustain the rejection of any of claims 3-5, 7, 9-11, 14-
17, 21-23, 26, 27, 32-40, and 42 because these claims require receiving a
Appeal 2011-011917
Application 11/396,286

5
command email message from a user. We will also not sustain this rejection
as it is directed to claim 43, and claims 44 and 45 dependent thereon,
because each of the claims requires a computing device with a third
component configured to respond to a command supplied by a requester via
an email message, which we find is not taught be Stephanou’s submission of
a survey.
We will also not sustain the rejection of claims 28 to 31 under 35
U.S.C. § 103(a) as unpatentable over Kraft, Stephanou, and Official Notice,
and claims 8, 12, 13, and 18 to 20 under 35 U.S.C. § 103(a) as unpatentable
over Kraft, Stephanou, and Lauffer. Each of these claims requires a
command email from the user or similar subject matter, and as in the earlier
rejection, the Examiner relies on Stephanou for teaching this subject matter.

DECISION
The decision of the Examiner is reversed.

REVERSED

hh