Ex Parte Raguillat et al

Patent Trial and Appeal Board

Feb 5, 2015

12500110 (P.T.A.B. Feb. 5, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FRED RAGUILLAT, COLM FARRELL, LIAM HARPUR,
PATRICK JOSEPH O’SULLIVAN, and HEMA SRIKANTH
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Appeal 2012-004707
Application 12/500,110
Technology Center 2100
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Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and
JOHNNY A. KUMAR, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
In papers filed January 20, 2015, Appellants request a rehearing under
37 C.F.R. § 41.52 from the Decision on Appeal (Decision) of the Patent
Trial and Appeal Board (Board), dated November 17, 2014. In the Decision,
we affirmed the Examiner’s rejection of claims 21-40. Dec. 7
ANALYSIS
In the Request for Rehearing (“Request”), Appellants allege the Board
erred by misapprehending or overlooking Appellants’ arguments concerning
claims 21-40. Req. Reh’g 2-9. First, Appellants dispute the Board’s holding
that because the combination of Bodapati and Gill teaches email addresses
being automatically populated in address fields in response to a users’
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Application 12/500,110

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selection of certain attributes in a CRM client, the combination also teaches
performing the functions of a messaging application. Id. at 2-3. According
to Appellants, the fact that email addresses are being automatically
populated does not necessarily imply the performance of a messaging
application function because the populated addresses pertain to fields in a
database system, as opposed to a messaging application. Id. at 3. We find
no merit in this argument because as it was sufficiently addressed in the
Decision. As discussed in significant details in the Decision, although Gill
is concerned with issuing a search request to retrieve matching entities in a
database system, Bodapati’s disclosure of retrieving a list of target email
addresses to thereby populate an information field would complement Gill’s
teaching to predictably result in e-mailing recipients with scores exceeding a
particular threshold. Dec. 5. That is, the Decision did not infer the
performance of a messaging application function solely from the Examiner’s
finding that Gill teaches automatically populating fields. The Decision also
cited to the Examiner’s finding that Bodapati’s teaching of a messaging
application would complement Gill to thereby teach the disputed limitations.
Id. Appellants are reminded that a request for rehearing is not an
opportunity for Appellants to reiterate arguments presented in the Briefs that
were fully addressed in the Decision. 37 C.F.R. § 41.52(f).
Second, Appellants argue that the Board overlooked or
misapprehended the argument that Gill does not teach the messaging
application. Req. Reh’g. 4-5. This argument is without merit because
Appellants continue to attach the references individually as opposed to the
combination proffered by the Examiner. As noted above, and in the
Decision, the Examiner also relied on Bodapati’s disclosure of retrieving
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from search engines target e-mail addresses of recipients, which are
subsequently sent e-mails to teach the disputed limitations. Dec. 5.
Consequently, Appellants’ attack over Gill’s teachings alone is unpersuasive
of error.
Third, Appellants argue the Board misapprehended Appellants’
arguments by relying upon the combination of Gill and Bodapati, whereas
the Examiner relied solely upon Gill. Consequently, Appellants submit that
the Board entered a new ground of rejection. Req. Reh’g 5-6. This
argument is without merit because the record before us supports our finding
that the Examiner rejected claim 21 over the combination of Gill and
Boadapati in the final action from which this appeal is taken. Final Action
3-6. Subsequently, in the Answer, the Examiner reiterates the same
rejection of claim 21 over the same combination of Gill and Bodapati, and
responds to Appellants’ arguments regarding the proffered combination.
Ans. 5-7, 11-14. Consequently, we properly treated Appellants’ arguments
as unpersuasive for failing to consider the combination of references.
Fourth, Appellants argue the Board overlooked the argument that Gill
and Bodapati are non-nonalogous art because Appellants were unable to
identify on this record any findings that the two references are within the
same field of endeavor. Req. Reh’g 6-7. We find no merit in this argument.
As noted in the Decision, because Gill and Bodapati disclose prior art
elements that perform their ordinary functions to [predictably] result in a
CRM system wherein a user of a client system running a CRM application
can select from an interface pre-defined attributes corresponding to certain
criteria to thereby retrieve from a remote server list of email addresses that
fit the user’s criteria, the proffered combination is analogous. Dec. 5-6.
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Further, the Examiner fully addresses this argument by indicating the
references are analogous because they are directed to the same field of
endeavor of identifying user contact information in a database. Ans. 15.
Consequently, the record before us fully supports our finding that the
references are analogous.
Fifth, Appellants argue that the Board misapprehended or overlooked
Appellants’ argument by finding that the Examiner’s reliance upon the
combination of Gill and Bodapati as disclosing complementary attributes.
Req. Reh’g 7-8. In particular, Appellants argue because the Examiner did
not use the phrase “complementary attributes” or “complementary
functions”, the Board’s characterization of the two different sets of attributes
disclosed by Gill and Bodapati as being complementary is tantamount to a
new ground of rejection. Id. at 8. Additionally, Appellants submit because
the Examiner has failed to explain how one of ordinary skill would combine
these two different sets of attributes, the Board’s affirmance is not supported
by the record before us. Id. We find no merits in these arguments. In
particular, we fail to comprehend how our characterization of findings made
by the Examiner could be tantamount to a new ground of rejection. As
noted in the Decision, “although the disclosed attributes are different, it is
the complementary functions that form the basis of the Examiner’s
rejection.” In other words, while the Examiner may not have expressly
characterized the two different sets of attributes as being complementary,
such characterization can be implied from the nature of the rejection, and as
supported with the fact that both references are concerned with using such
attributes to user contact information in a database. Accordingly, we find no
error in our affirmance of the Examiner’s rejection.
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DECISION
THEREFORE, we have granted Appellants’ Request to the extent that
we have reconsidered the original Decision but have DENIED it with respect
to making any changes to the Decision.
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).
REHEARING DENIED

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