Ex Parte Chen et al

Patent Trial and Appeal Board

Apr 2, 2013

10955199 (P.T.A.B. Apr. 2, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte YEN-FU CHEN, JOHN HANS HANDY-BOSMA, and
KEITH RAYMOND WALKER1
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Appeal 2010-009050
Application 10/955,199
Technology Center 2400
____________

Before MICHAEL R. ZECHER, STANLEY M. WEINBERG, and
JAMES B. ARPIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 34, 39, 40, 44, 49, and 56-58. Claims 1-33, 35-38, 41-43,

1 International Business Machines Corporation is the real party in interest.
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45-48, and 50-55 are cancelled. App. Br. 4.2 We have jurisdiction under 35
U.S.C. § 6(b). We reverse.
INVENTION
Appellants’ invention relates to demand-based messaging systems and
processes that enable a sender to mark individual action items within a
message and set attributes for each action item. See generally Abstract.
Such systems and processes store the action items and associated attributes
in a database, send the message to one or more recipients, and update the
status of each action item in the database as recipients respond. Id. Claim
34 is illustrative and is reproduced below with disputed limitations
emphasized:
34. A demand-based messaging system for assigning and updating
a plurality of action items, comprising:
a first computer;
a first input device, and a first output device, coupled to the first
computer;
a storage device coupled to the first computer;
a second computer coupled to the first computer through a
communications medium;
a database coupled to the first computer, and to the second
computer, through the communications medium;
a second input device, and a second output device, coupled to
the second computer;
a first demand-based messaging program operable on the first
computer, the demand-based messaging program comprising
instructions for causing the first computer to perform a first plurality
of steps comprising:
displaying a first user interface on the first output device;

2 Throughout this opinion, we refer to: (1) the Appeal Brief (App. Br.) filed
September 2, 2009; (2) the Examiner’s Answer (Ans.) mailed March 18,
2010; and (3) the Reply Brief (Reply Br.) filed May 18, 2010.
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reading a message data, composed by a sender, from the first
input device, the message data comprising a plurality of action items;
displaying the message data to the sender in the first user
interface;
reading an attribute for each of the plurality of action items
from the first input device;
assigning each attribute to the corresponding action item;
storing the message data in the database;
transferring the message data to a plurality of recipients over
the communications medium to the second computer; and
a second demand-based messaging program operable on the
second computer, the second demand-based messaging program
comprising instructions for causing the second computer to perform a
second plurality of steps comprising:
linking the database to the second computer;
displaying the message data, to a first recipient, on the second
output device;
receiving a response from the first recipient, from the second
input device, wherein the response includes a status indication;
updating the message data, and the database, with the response;
and
displaying the updated message data to the plurality of
recipients;
wherein a single message may be used to assign action items,
assign attributes, and update responses, to a plurality of action items
for a plurality of recipients.

The Examiner relies on the following as evidence of unpatentability:
Grainger
Skladman
Mayraz
Devine
US 2002/0059076 A1
US 2002/0159575 A1
US 2003/0105826 A1
US 6,944,662 B2
May 16, 2002
Oct. 31, 2002
June 5, 2003
Sept. 13, 2005 (filed
May 4, 2001)

THE REJECTIONS
1. The Examiner rejected claims 34, 39, 44, and 56-58 under 35 U.S.C.
§ 103(a) as unpatentable over Mayraz and Skladman. Ans. 4-7.
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2. The Examiner rejected claim 40 under 35 U.S.C. § 103(a) as
unpatentable over Mayraz, Skladman, and Grainger. Id. at 8.
3. The Examiner rejected claim 49 under 35 U.S.C. § 103(a) as
unpatentable over Mayraz, Skladman, and Devine. Id. at 9-10.

OBVIOUSNESS REJECTION OVER MAYRAZ AND SKLADMAN
Regarding illustrative claim 34, the Examiner finds that Mayraz
discloses all of the limitations of this claim, except that Mayraz does not
explicitly disclose the assigning and updating of action items and attributes.
Ans. 6. Nevertheless, the Examiner finds that Skladman discloses these
missing limitations. Id.
Appellants argue that neither Mayraz nor Skladman, alone or in
combination, teaches or suggests “the message data comprising a plurality of
action items” (claim 34) (emphasis added). App. Br. 11-12; Reply Br. 2-3.
Consequently, Appellants argue that the Examiner fails to demonstrate that
the combined references teach or suggest assigning and updating of action
items and attributes. App. Br. 12
ISSUE
Under § 103(a), has the Examiner erred in rejecting claim 34 by
finding that Mayraz and Skladman, collectively, teach or suggest “the
message data comprising a plurality of action items” and “assigning each
attribute to the corresponding action item,” as recited in claim 34?

ANALYSIS
We begin by construing the disputed limitations of claim 34 which
calls for, in pertinent part, “the message data comprising a plurality of action
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items” (emphasis added) and “assigning each attribute to the corresponding
action item” (emphasis added). In construing these limitations, we apply the
broadest reasonable meaning of the words in their ordinary usage, as those
words would be understood by one of ordinary skill in the art, taking into
account any definitions supplied by Appellants’ Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
Appellants do not expressly define the term “a plurality of action
items” in the Specification. We are not aware of, and the Examiner does not
suggest, a definition of the term “action item” that was accepted in the
relevant art at the time of the filing of the present application. In the
Specification, however, Appellants describe “action items” as components
of an electronic mail message including, for example, one or more
“questions or tasks.” Spec. ¶ [0016].
Appellants also do not expressly define the term “attributes” in the
Specification. A pertinent definition of the term “attribute” is “a quality,
character, characteristic, or property attributed as belonging to a person,
thing, group, etc.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY 87
(2d Random House ed. 1999).3 Further, Appellants describe that attributes
include, but are not limited to “priority, deadline, abstract, and
responsibility.” Spec. ¶ [0017]; see also Claim 39 (attributes of Claim 34
are selected from the group consisting of priority attributes, deadline
attributes, abstract attributes, and responsibility attributes). Each of the four
exemplary attributes is described further in the Specification; for example,

3 It was also understood that “[t]he size of a field or the type of information
it contains would also be attributes of a database record.” MICROSOFT
COMPUTER DICTIONARY 41 (5th ed. 2002) (emphasis added).
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“[i]f an [action] item requires a detailed description in order to present a
question, a general abstract can be included to provide either an overview of
the question or subject-matter.” Spec. ¶ [0017](describing an “abstract
attribute”). Therefore, we construe the disputed limitations to recite message
data, i.e., an e-mail message, comprising two or more items requiring some
response or action by a recipient, e.g., questions or tasks, and a quality or
feature, such as a priority attribute, a deadline attribute, an abstract attribute,
or a responsibility attribute, assigned to each of the items.
As noted above, the Examiner acknowledges that “Mayraz does not
explicitly disclose the use of assigning/updating action items and attributes.”
Ans. 6. Nevertheless, the Examiner finds that:
Skladman disclosed on [sic] how the system assigns or updates action
items/and or attributes of the messages (Skladman, [0020], [0035],
[0042], Skladman discloses on how priority attributes are assigned to
the messages), Skladman disclosed on how attributes are assigned to
messages and how the attributes are transmitted when the messages
are sent to the user.

Id. (emphasis added). In addition, the Examiner finds that “Skladman
provides that specific feature of priority when it is incorporated to the
messages. Further support can be seen in Skaldman in paragraph [0025],
[0031], where a menu driven interface permits select email attributes and
notification priority flags to messages.” Id. at 11 (emphases added). Thus,
The Examiner finds only that Skladman attaches priority flags to messages.
The Examiner fails, however, to demonstrate that the combination of
Mayraz and Skladman teaches or suggests a single message assigns action
items, attributes, and/or update responses to a plurality of action items for a
plurality of recipients. Therefore, we agree with Appellants that Skladman
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discloses assigning attributes, such as priority flags, to messages, rather than
to action items within a message. See App. Br. 12; Reply Br. 2, 4.
Consequently, we conclude that the Examiner erred in finding that the
combination of Mayraz and Skladman teaches or suggests the disputed
limitations.
For the foregoing reasons, Appellants have persuaded us of error in
the rejection of: (1) independent claim 34; (2) independent claim 56 which
recites commensurate limitations to the disputed limitations of independent
claim 34; and (3) dependent claims 39, 44, 57, and 58, for similar reasons.
Therefore, we do not sustain the rejection of claims 34, 39, 44, and 56-58.

OBVIOUSNESS REJECTIONS OVER MAYRAZ, SKLADMAN AND
GRAINGER OR DEVINE
Although the Examiner rejects claim 404 under § 103(a) as
unpatentable over Mayraz, Skladman, and Grainger, and claim 49 under
§ 103(a) as unpatentable over Mayraz, Skladman, and Devine, each of these
claims depends, directly or indirectly, from independent claim 34. App. Br.
21-22. Appellants argue that each of claims 40 and 49 is distinguishable
over the combination of references in view of the arguments with respect to
claim 34. Id. at 14, 17. For the foregoing reasons, Appellants have
persuaded us of error in the rejection of independent claim 34. Therefore,

4 Appellants object to the Examiner’s introduction in the Answer of new
grounds for the rejection of claim 40. Reply Br. 3-4. Records from the
USPTO’s PATENT APPLICATION LOCATING AND MONITORING electronic
database contain no evidence that Appellants filed a petition under 37 C.F.R.
§ 1.181 to challenge the Examiner’s untimely introduction of new grounds
of rejection. Nevertheless, because we reverse the rejection for other
reasons, we do not address the merits of the Examiner’s amended rejection.
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we also are persuaded of error in the rejections of dependent claims 40 and
49; and we do not sustain the obviousness rejections of those claims.

CONCLUSION
The Examiner erred in rejecting claims 34, 39, 40, 44, 49, and 56-58
under § 103(a).

DECISION
The Examiner’s decision rejecting claims 34, 39, 40, 44, 49, and 56-
58 is reversed.

REVERSED

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