Ex Parte Banatwala et al

Patent Trial and Appeal BoardMay 17, 2017

14523130 (P.T.A.B. May. 17, 2017)

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. 14/523,130 10/24/2014 Mustansir Banatwala CAM920120103US2_8150-0479 9058 52021 7590 05/19/2017 Cuenot, Forsythe & Kim, LLC 20283 State Road 7 Ste. 300 Boca Raton, EL 33498 EXAMINER LI, MICHAEL J ART UNIT PAPER NUMBER 2457 NOTIFICATION DATE DELIVERY MODE 05/19/2017 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): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MUSTANSIR BANATWALA, DAVID A. BROOKS, and JOSEPH A. RUSSO1 Appeal 2017-002155 Application 14/523,130 Technology Center 2400 Before CARL W. WHITEHEAD JR., IRVIN E. BRANCH, and DAVID J. CUTITTAII, Administrative Patent Judges. CUTITTA, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1—7, all pending claims of the application. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the real party in interest is the applicant, IBM Corporation. Appeal Br. 1. Appeal 2017-002155 Application 14/523,130 STATEMENT OF THE CASE According to Appellants, the application relates to grouping a plurality of electronic messages having a common identifier into a single electronic message to the message recipient. Spec. 22, 35.2 Claim 1 is independent and is reproduced below with disputed limitations italicized'. 1. A method of grouping electronic messages by a messaging client, the method comprising: receiving a plurality of electronic messages to a message recipient from a sender electronic messaging system, each of the electronic messages including a container specification including an identifier assigned by the sender electronic messaging system; comparing the identifiers of the received electronic messages; grouping a plurality of the received electronic messages having the same identifier; and presenting the grouped electronic messages as a single electronic message to the message recipient. Appeal Br. 16 (Claims App.’x). REJECTIONS Claims 1—7 stand rejected under 35 U.S.C. § 102(e) as anticipated by Oliver (US 2007/0043817 Al; Feb. 22, 2007). Final Act. 6-9. 2 Throughout this Opinion, we refer to the following documents for their respective details: (1) Appellants’ Specification filed October 24, 2014 (“Spec. ”); (2) the Final Office Action (“Final Act. ”) mailed December 7, 2015; (3) the Appeal Brief (“Appeal Br. ”) filed March 21, 2016; (4) the Examiner’s Answer (“Ans.”) mailed September 30, 2016; and (5) the Reply Brief (“Reply Br.”) filed November 30, 2016. 2 Appeal 2017-002155 Application 14/523,130 Claims 1—7 stand rejected for obviousness-type double patenting based on claims 8—14 of U.S. Patent Application No. 13/831,156. Final Act. 3—5. Our review in this appeal is limited only to the above rejections and the issues raised by Appellants. We have not considered other possible issues that have not been raised by Appellants and which are, therefore, not before us. See 37 C.F.R. § 41.37(c)(l)(iv) (2014). ISSUE Based on Appellants’ arguments, the dispositive issue presented on appeal is whether the Examiner errs in finding Oliver discloses “receiving a plurality of electronic messages . . ., each of the electronic messages including a container specification including an identifier assigned by the sender electronic messaging system,” as recited in representative claim 1. CONTENTIONS AND ANALYSIS Appellants argue Oliver fails to disclose the limitation “each of the electronic messages including a container specification including an identifier assigned by the sender electronic messaging system,” as recited in claim 1. Appeal Br. 8. Specifically, Appellants argue the Examiner does not specifically map the claimed “container specification” to any particular teachings within Oliver. Appeal Br. 9; Reply Br. 2—3. Regarding the claimed identifier, Appellants argue “[wjhile the Examiner’s cited passage refers to a user-identifier and document identifier, these are not described as being within a container specification that is included within each of the electronic messages” and therefore Oliver fails to disclose “the other 3 Appeal 2017-002155 Application 14/523,130 limitations associated with the claimed ‘container specification’” such as the claimed “identifier assigned by the sender electronic messaging system.” Reply Br. 3^4. Appellants further argue Oliver’s keywords fail to disclose the claimed identifier. Reply Br. 6. We find Appellants’ arguments persuasive. As an initial matter, we agree with Appellants that the Examiner fails to clearly map the claimed “container specification” to any specific teaching of Oliver. Next, the Examiner appears to rely on one or more of Oliver’s document ID, filter, or keyword to disclose “an identifier,” as recited in claim 1. Final Act. 6—7; Ans. 3—5 (citing Oliver || 22—27, 43—47). We agree with the Examiner’s finding that Oliver discloses “utilizing a filter to identify content of the incoming electronic-mail messages” through identification of one or more keywords. Ans. 3, see also Oliver 124. We also agree with the Examiner’s finding that “the tracking module generates and sends ... a document identifier (document ID), associated with a document, to the recommendation software of the system which processes the received information” and provides the user a list of recommended documents. Ans. 3, see also Oliver 140. We agree with Appellants, however, that the Examiner has not demonstrated that any of the potential identifiers including Oliver’s document ID, filter, or keyword are both included in a “container specification” and are “assigned by the sender electronic messaging system,” as recited in claim 1. “Anticipation requires that all of the claim elements and their limitations are shown in a single prior art reference.” In re Skvorecz, 580 F.3d 1262, 1266 (Fed. Cir. 2009) (citation omitted). Here, the Examiner fails to demonstrate that Oliver discloses every limitation of claim 1. 4 Appeal 2017-002155 Application 14/523,130 We are, therefore, constrained by the record to find the Examiner errs in rejecting independent claim 1 and dependent claims 2—7 for similar reasons. Obviousness-type Double Patenting Rejection The Examiner provisionally rejects all of the claims on appeal for obviousness-type double patenting based on claims 8—14 of U.S. Patent Application No. 13/831,156. Final Act. 3—5. Appellants do not provide arguments disputing this rejection in the Appeal Brief. Appeal Br. 3; see also Reply Br. 2—7. However, we do not reach the merits of the Examiner’s provisional double patenting rejection because the issue is not ripe for decision at this time, consistent with the holding of Ex Parte Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential). DECISION We reverse the Examiner’s decision rejecting claims 1-17 under 35U.S.C. § 102(e). REVERSED 5