Ex Parte Bombacino et al

Patent Trial and Appeal Board

Mar 16, 2016

13172176 (P.T.A.B. Mar. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/172, 176 06/29/2011 VINICIO BOMBACINO
52021 7590 03/18/2016
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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.
FR920110020US1_8150-0093 6809
EXAMINER
CELANI, NICHOLAS P
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
03/18/2016 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VINICIO BOMBACINO, CLAUDIO FALCONE,
LEONARDO LANNI, and ANDREA TORTOSA
Appeal2014-001953
Application 13/172,176
Technology Center 2400
Before BETH Z. SHAW, WILLIAM M. FINK, and
DANIEL J. GALLIGAN, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-24, which represent all the pending
claims in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention is for "logical thread management through email
infrastructure." Spec. i-f 3.
Claim 1 is illustrative and is reproduced below:
1. A method of logical thread management, the method comprising:
via a processor, receiving at least one user input within an
electronic mail (email) client associating a first email with a logical
Appeal2014-001953
Application 13/172,176
thread, wherein the first email specifies a task assigned to at least one
recipient of the first email;
sending the first email to the at least one recipient;
adding the first email to a logical thread list associated with the
logical thread;
receiving a task response from the recipient; and
within the logical thread list, automatically updating a task
status associated with the first email based upon the task response.
REJECTIONS
The Examiner rejected claims 1-3, 11-15, and 23-24 under
35 U.S.C. § 103(a) as unpatentable over Tonnison (US 2008/0046518 Al;
published Feb. 21, 2008) and Keating (GB 2447279 A; published Sept. 10,
2008). Ans. 4--10.
The Examiner rejected claims 4--6 and 16-18 under 35 U.S.C.
§ 103(a) as unpatentable over Tonnison, Keating, and Hammer (US
2010/0017194 Al; published Jan. 21, 2010). Ans. 10-13.
The Examiner rejected claims 7-9 and 19-21under35 U.S.C.
§ 103(a) as unpatentable over Tonnison, Keating, and Wisniewski (US
2005/0120108 Al; published June 2, 2005). Ans. 13-17.
The Examiner rejected claims 10 and 22 under 35 U.S.C. § 103(a) as
unpatentable over Tonnison, Keating, Bhatawdekar (US 2006/0241997 Al;
published Oct. 26, 2006), and Polimeni (US 2008/0250084 Al; published
Oct. 9, 2008). Ans. 17-19.
ISSUES
Appellants present multiple arguments as to why the Examiner has
erred. We focus our discussion below on the following issues:
2
Appeal2014-001953
Application 13/172,176
1. Did the Examiner err in finding the combination ofTonnison
and Keating teaches or suggests "receiving at least one user
input within an electronic mail (email) client associating a first
email with a logical thread" and "adding the first email to a
logical thread list associated with the logical thread" as recited
in claim 1?
2. Did the Examiner err in finding the combination of Tonnison,
Keating, and Hammer teaches or suggests "wherein identifying
the task response in the second email comprises performing a
semantic analysis on content of the second email," as recited in
dependent claim 4?
ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejections, and the Examiner's response to Appellants'
arguments. We adopt as our own the findings and reasons set forth in the
rejection from which appeal is taken and the Examiner's Answer in response
to Appellants' Appeal Brief. See Ans. 4--28. We highlight and address
specific arguments and findings for emphasis as follows.
At the outset, we remind Appellants that:
[The USPTO] applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art,
taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
3
Appeal2014-001953
Application 13/172,176
Issue 1 : Claim 1
Appellants argue that the Examiner improperly construed "logical
thread" and that it should be construed as "a group of events that are related
to a common subject" as defined in Appellants' Specification. App. Br. 11;
Reply Br. 1--4. The Examiner finds, however, that "even assuming"
Appellants' definition of "logical thread," the limitation is taught in
Tonnison by the concept of email replies because the second email is
associated with the first, and furthermore the limitation is also taught by
Tonnison's "creation of projects and the association of all emails with the
project into [a] central folder." Ans. 21. We agree with the Examiner's
findings that Tonnison's teachings of email replies and of grouping of emails
into project folders teaches or suggests receiving at least one user input
within an electronic mail (email) client associating a first email with a
logical thread. Id. (citing Tonnison Fig. 14; Fig. 27, i-fi-f 17, 121). Appellants
further argue that associating an email to an email thread is "not based on a
user input received within the email." App. Br. 12. However, we agree with
the Examiner's finding that Appellants' argument is not commensurate with
the scope of claim 1. Ans. 21-22. We decline to import the argued
limitations into the claim.
We are also not persuaded by Appellants' arguments that T onnison
fails to teach a logical thread list associated with the logical thread, or that a
database "does not necessarily refer to a list." App. Br. 15; Reply Br. 9. We
agree with the Examiner's finding that Tonnison teaches the recited "adding
the first email to a logical thread list associated with the logical thread" for
example by Tonnison's teaching of logging email information in a database.
See Ans. 23-24 (citing Tonnison i-fi-f 109, 123, 140, 142, Fig. 14).
4
Appeal2014-001953
Application 13/172,176
Appellants argue the combination of Tonnison and Keating is based
on "speculative reasoning." App. Br. 17-18. Upon reviewing the record
before us, we find that the Examiner's rationale for the proposed
modification in the prior art suffices as an articulated reason with some
rational underpinning to establish a prima facie case of obviousness. See
Ans. 24--25; see also KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). In summary, we find that an ordinarily skilled artisan at the time of
the claimed invention would have combined Tonnison's teaching of emails
and grouping of emails (see Tonnison i-fi-f 109, 123, 140, 142, Fig. 14), with
Keating's teaching of automated task updates (see Keating, pp. 10, 11. 9-17)
"to improve communication by allowing information to be shared without
requiring manually typing [it] out." Ans. 24--25. In the absence of sufficient
evidence or line of technical reasoning to the contrary, the Examiner's
findings are reasonable and we find no reversible error. Accordingly, we
sustain the rejection of claim 1.
Issue 2: Claim 4
The Examiner finds that the combination of Tonnison, Keating, and
Hammer teaches or suggests "wherein identifying the task response in the
second email comprises performing a semantic analysis on content of the
second email," as recited in dependent claim 4. Ans. 25-26; Final Act. 9.
Appellants argue that Hammer merely describes performing semantic
analysis on an email field and not on the "content" as claimed. App. Br. 19;
Reply Br. 12-14. We are not persuaded by this argument because, as the
Examiner finds, "[t]he text entered into the subject field is content of the
email" (Ans. 25), as the claim requires. Appellants' argument presumes the
subject field is not "content," but Appellants do not point to any portion of
5
Appeal2014-001953
Application 13/172,176
the claim or Specification to support their argument, and we decline to read
the argued limitation into claim 4.
Moreover, we are not persuaded by Appellants' arguments that the
semantic analysis of Hammer is performed to determine if a pattern exists
and not "to identify[] the task response in the second email." App. Br. 19;
Reply Br. 15-16. We agree with the Examiner that the combination of
Keating and Hammer teaches the disputed limitation of claim 4. See Ans.
26-27. Keating teaches parsing a message to determine task categories such
as job complete, and Hammer teaches semantic analysis to determine if a
pattern exists. Ans. 27-28 (citing Keating, p. 8 1. 31-p. 9 1. 19).
Moreover, the Examiner rejects claim 4 over the combined teachings
of Tonnison, Hammer, and Keating, and what the combined teachings would
have suggested to one of ordinary skill in the art. One cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See In re Merck & Co., Inc., 800 F .2d
1091, 1097 (Fed. Cir. 1986).
Accordingly, absent persuasive rebuttal evidence or technical
reasoning to the contrary, we are not persuaded that the Examiner erred in
finding the combination of cited references teaches or suggests the elements
of claim 4. Therefore, we sustain the rejection of dependent claim 4.
Because Appellants do not present separate patentability arguments or
reiterate substantially the same arguments as those previously discussed for
patentability of claims 1 and 4 above, the remaining pending claims fall
therewith. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We affirm the rejection of claims 1-24.
6
Appeal2014-001953
Application 13/172,176
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
7