AIRWATCH LLC

Patent Trials and Appeals BoardApr 15, 2021

2020000647 (P.T.A.B. Apr. 15, 2021)

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. 15/406,807 01/16/2017 SUPRITHA H. NAGESHA W359 9516 152690 7590 04/15/2021 Clayton, McKay & Bailey, PC 800 Battery Ave. SE, Suite 100 Atlanta, GA 30339 EXAMINER NDIAYE, CHEIKH T ART UNIT PAPER NUMBER 2447 NOTIFICATION DATE DELIVERY MODE 04/15/2021 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): docketing@cmblaw.com ipadmin@vmware.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SUPRITHA H. NAGESHA, SIJO PANTHALOOKARAN POULOSE, RWITHU RAMESH MENON, PONNIE ROHITH, and SACHIN VAS ____________ Appeal 2020-000647 Application 15/406,807 Technology Center 2400 ____________ Before JOSEPH L. DIXON, ROBERT E. NAPPI, and JOHN P. PINKERTON, Administrative Patent Judges. PINKERTON, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–20, which are all of the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies AirWatch, LLC as the real party in interest. Appeal Br. 3. Appeal 2020-000647 Application 15/406,807 2 STATEMENT OF THE CASE Introduction Appellant states that the disclosed and claimed invention relates to “assisting with email composition based on distribution lists having out-of- office users.” Appeal Br. 7 (citing Spec. ¶¶ 6, 22).2 Illustrative Claim Claims 1, 8, and 15 are independent. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A system for assisting with email composition based on distribution lists having out-of-office users, the system comprising: an email application on a non-transitory, computer- readable medium, the email application being executed on the first user device; a server that securely communicates with the email application, wherein the server includes a memory store and a hardware processor that performs stages including: receiving, from the email application, identification of a distribution list in a draft email, the distribution list comprising a plurality of recipients; determining, at the server, the plurality of recipients in the distribution list; determining, at the server, an out-of-office status for each of the plurality of email recipients associated with the distribution list; and prior to the email application sending the email, sending a notification to the email application indicating that a 2 Our Decision refers to the Final Office Action mailed Feb. 5, 2019 (“Final Act.”); Appellant’s Appeal Brief filed June 28, 2019 (“Appeal Br.”) and Reply Brief filed Nov. 5, 2019 (“Reply Br.”); the Examiner’s Answer mailed Sept. 13, 2019 (“Ans.”); and the original Specification filed Jan. 16, 2017 (“Spec.”). Appeal 2020-000647 Application 15/406,807 3 first email recipient in the distribution list is out of office and causing the email application, to display an out-of-office alert on the first user device. Appeal Br. 17 (Claims App.). Rejection on Appeal Claims 1–20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Manning et al. (US 2013/0339462 A1; published Dec. 19, 2013) (“Manning”) and Roic et al. (US 2009/0259723 A1; published Oct. 15, 2009) (“Roic”). Final Act. 2–6. ANALYSIS Based on Appellant’s arguments in the Briefs, the dispositive issue before us is whether the combined disclosures of Manning and Roic teach or suggest “determining, at the server, an out-of-office status for each of the plurality of email recipients associated with the distribution list” (“the disputed limitation”), as recited in claims 1, 8, and 15. Examiner’s Findings, and Appellant’s Arguments In the Final Office Action, the Examiner finds that Manning discloses a server that communicates with the email application and that performs stages, including “determining an out-of-office status for each of the plurality of email recipients associated with the distribution list.” Final Act. 3 (citing Manning ¶¶ 23–24, 51–56). The Examiner also finds that “Roic teaches the distribution list comprising a plurality of recipients” “to efficiently provide recipient mail tips for each recipient.” Id. (citing Roic ¶¶ 37–39, 50, Abstract, Fig. 7). In the Answer, the Examiner finds that Manning discloses the disputed limitation. Ans. 7. In particular, the Examiner finds that Manning discloses an email compose event, such as adding recipients individually or Appeal 2020-000647 Application 15/406,807 4 via a distribution list, which generates a communication to server 120. Id. (citing Manning ¶ 23). The Examiner also finds Manning discloses that server 120, upon receiving the email compose event, “accesses information sources 130 to obtain information regarding each recipient including whether the recipient is in or out of the office (e.g., whether or not the recipient has set an out of office indicator).” Id. (citing Manning ¶ 24). The Examiner further finds that server 120 performs “one or more checks,” and obtains information about the out of office status of each recipient, regardless of whether each recipient is added individually or via a distribution list. Id. In the Appeal Brief and Reply Brief, Appellant argues that the Examiner’s rejection is based on a fundamental misinterpretation of Manning and, therefore, the Examiner erred because Manning does not teach or suggest the disputed limitation. Appeal Br. 10–13; Reply 2–5. Specifically, Appellant argues the Examiner misinterprets Manning because Manning discloses that when an individual recipient or distribution list is added during composition of an email message, the server can ‘“perform one or more checks’ based on whether the input is a recipient or a distribution list,” and “Manning never describes checking the out-of-office status of users within a distribution list.” Appeal Br. 10–11 (citing Manning ¶¶ 3, 23); Reply 3–4 (citing Manning ¶¶ 23–24, 51). Applicable Law “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) Appeal 2020-000647 Application 15/406,807 5 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner’s burden of proving non-patentability is by a preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“[P]reponderance of the evidence is the standard that must be met by the PTO in making rejections.”). “A rejection based on section 103 clearly must rest on a factual basis.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” Id. Claims 1–203 We agree with Appellant’s argument that the Examiner misinterpreted Manning and erred in determining that Manning teaches or suggests the disputed limitation. Contrary to the Examiner’s finding that the server performs checks or obtains information regardless of whether “recipients are added individually or via a distribution list,” we agree with Appellant that Manning specifically teaches the server performs different checks or obtains different information based on whether the name of the recipient or the distribution list is provided to the server. In that regard, Appellant argues, and we agree, that paragraph 23 of Manning explains that “when an individual recipient or a distribution list is added to the e-mail message, the name of the recipient or the distribution list is communicated to the server.” Reply 3 (citing Manning ¶ 23). Appellant also argues, and we agree, 3 Appellant argues independent claims 1, 8, and 15, which all recite the disputed limitation, together, focusing on claim 1. Appeal Br. 10–13. Accordingly, we select claim 1 as representative, and the remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2018). Appeal 2020-000647 Application 15/406,807 6 Manning further explains that “server 120 is ‘programmed to perform one or more checks based on the recipient or distribution list,’ such as ‘check[ing] to see if the recipient has created an out of office notification, or [checking] to see how many users are defined for a particular distribution list.’” Id. (italics added). Moreover, Appellant argues, and we agree: In other words, Manning explains that two types of information can be communicated to the server (recipient or a distribution list), and that two different actions can be taken based on the received information (for a recipient, checking out of office; for a distribution list, checking a number of defined users). Id. The reference does not describe obtaining individual recipients from a distribution list and checking statuses for those recipients. Id. Appellant also argues, and we agree, that paragraph 24 of Manning, which the Examiner cites in the Answer, “does not cure these deficiencies, as it relates only to recipient-specific actions.” Reply 3 (citing Manning ¶ 24). As Appellant correctly argues, paragraph 24 of Manning “does not mention distribution lists at all, instead describing six actions that can be taken with respect to individual recipients.” Id. at 4. Appellant further argues, and we agree, as follows: Manning never describes obtaining individual recipients from a distribution list or checking recipients within a distribution list. As a result, the disclosure of Manning does not support the conclusion that “information about the out of office status for each recipient are obtained whether the recipients are added individually or via a distribution list,” as asserted in the Examiner’s Answer. Id. Appeal 2020-000647 Application 15/406,807 7 In regard to Roic, Appellant notes that the Examiner only relies on Roic for disclosing a “distribution list comprising a plurality of recipients,” and Appellant argues that “this disclosure fails to remedy the deficiencies identified above and merely describes a commonly recognized aspect of distribution lists.” Reply 5 (citing Final Act. 3). We agree with Appellant’s argument regarding Roic, and the Examiner’s limited reliance thereon.4 Accordingly, on this record, we are constrained to find the Examiner erred because the Examiner has not shown that the combination of Manning and Roic teaches or suggests the disputed limitation of claim 1 by a preponderance of the evidence. See Caveney, 761 F.2d at 674. Thus, we do not sustain the Examiner’s rejection of claims 1, 8, and 15, and dependent claims 2–7, 9–14, and 16–20, for obviousness under § 103. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 103 Manning, Roic 1–20 REVERSED 4 The Examiner generally identifies paragraphs 37–39 and 50 of Roic (Final Act. 3), and the Examiner does not provide further factual findings with regard to resolving email recipient data with respect to “mail tips” as described in Figure 3 and paragraph 36, as related to distribution lists. As a result, the Examiner has not presented an issue regarding the obviousness of the combination of Manning and Roic regarding processing of distribution lists and resolving recipients to apply the mail tips to recipients in a distribution list. We make no findings regarding Roic because the Examiner has made no factual findings that apply to distribution lists, resolving recipient data, and the selective mail tips options in Figure 8 of Roic.