Ex Parte Cheng et al

Patent Trials and Appeals Board

Feb 6, 2019

12845111 - (D) (P.T.A.B. Feb. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/845, 111 07/28/2010 Yuan Cheng
46320 7590 02/08/2019
Shutts & Bowen LLP
STEVEN M. GREENBERG
525 Okeechobee Blvd
# 1100
West Palm Beach, FL 33401
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.
CN920090036US1 (657) 9346
EXAMINER
SWEARINGEN, JEFFREY R
ART UNIT PAPER NUMBER
2445
NOTIFICATION DATE DELIVERY MODE
02/08/2019 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@crgolaw.com
sgreenberg@shutts.com
aschneider@shutts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUAN CHENG, YUE MA, SHU ANG QIN,
and MIN QU, 1
Appeal2017-004040
Application 12/845, 111
Technology Center 2400
Before JOHN G. NEW, DANIEL J. GALLIGAN, and
JESSICA C. KAISER, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants state that the real party-in-interest is the International Business
Machines Corporation. App. Br. 2.
Appeal2017-004040
Application 12/845, 111
SUMMARY
Appellants file this appeal under 35 U.S.C. § I34(a) from the
Examiner's Final Rejection of claims 1-25. Specifically, claims 14--25
stand rejected as unpatentable under 35 U.S.C. § 112, second and sixth
paragraphs, as indefinite for failing to particularly point out and distinctly
claim the subject matter in a "means plus function" -type claim.
Claims 1-25 stand rejected as unpatentable under 35 U.S.C. §I03(a)
as being obvious over the combination of Chandhok et al. (US 6,662,212
Bl, December 9, 2003) ("Chandhok"), Wong et al. (US 6,654,746 Bl,
November 25, 2003) ("Wong"), and Basin et al. (US 2002/0120639 Al,
August 29, 2002) ("Basin"). 2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to a method and system for
processing email attachments. Abstr.
REPRESENTATIVE CLAIMS
Claims 1 and 14 are representative of the claims on appeal. Claim 1
recites:
1. A method for processmg email attachment,
compnsmg:
2 The Examiner also rejected claims 1-25 as unpatentable under 35 U.S.C.
§ 101 as being directed to nonstatutory subject matter. Final Act. 3--4.
That rejection has been withdrawn by the Examiner. See Ans. 2.
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composing in an e-mail system executing in memory by at
least one processor of a computer, an email;
determining in the e-mail system that a local file 1s
attached as an email attachment to the email;
creating a corresponding relationship record of the email
attachment and the local file;
receiving an operation in the e-mail system of sending the
email; and,
in response to the sending operation, determining that the
email attachment is modified and replacing the local file with the
modified email attachment according to the corresponding
relationship record automatically prior to sending the email.
App. Br. 21. Claim 14 recites:
14. A system for processing email attachment,
compnsmg:
a computer with memory and at least one processor;
an e-mail system executing in the memory by the at least
one processor of the computer in which an email is composed;
determining attachment means coupled to the e-mail
system and configured to determine that a local file is attached
as an email attachment in the email;
creating means coupled to the e-mail system and
configured to create a corresponding relationship record of the
email attachment and the local file;
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Application 12/845, 111
determining modification means coupled to the e-mail
system and configured to determine that the email attachment is
modified;
determining sending means coupled to the e-mail system
and configured to determined that the email is directed to be sent
by a sending operation in the e-mail system; and
synchronizing means coupled to the e-mail system and
configured to respond to the determining sending means by
replacing the local file with the modified email attachment
according to the corresponding relationship record automatically
before sending the email in accordance with the sending
operation.
Id. at 26.
ISSUES AND ANALYSES
We are persuaded by, and expressly adopt, the Examiner's findings,
reasoning, and conclusions that the claims on appeal are, respectively: ( 1)
indefinite; and that (2) claims 1-13 are prima facie obvious over the
combined cited prior art. We address Appellants' arguments below.
A. Rejection of claims 14--25 as indefinite
Issue
Appellants argue that the Examiner erred in finding that, with respect
to the claim terms "determining attachment means," "creating means,"
"determining modification means," "determining sending means," and
"synchronizing means," the claim fails to recite sufficient structure, material,
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or acts within the claim itself to entirely perform the recited function. App.
Br. 5---6; see also Final Act. 5.
Analysis
Appellants argue that paragraphs [0035] through [0039] and Figures 5
and 6 (to which they refer) of Appellants' Specification disclose the specific
structures that a person of ordinary skill in the art would readily recognize as
being able to perform the determining attachment, creating, determining
modification, determining sending, and synchronizing means elements of
claim 14. App. Br. 6.
Appellants point to paragraph [0042] of the Specification as
disclosing: "The system for processing email attachments according to the
above embodiments of the present invention could be implemented in the
email system of the client as a plug-in." App. Br. 6. According to
Appellants, this disclosure indicates that the elements in question are
implemented in an e-mail system as a plug-in. Id.
Appellants further point to paragraph [0035] of the Specification as
disclosing:
The method for processing email attachments according to the
embodiments of the present invention could be implemented in
the email system of the client, according to an embodiment, a
corresponding relationship record in embodiments of the present
could be uploaded to the mail server from the client in advance,
and the user could download the corresponding relationship
record to a geographically different computer from the mail
server while working in a geographically different location, as
well as the local file that is required to synchronize is copied onto
another computer, thereby matching the path of the local file that
is required to synchronize with the path of the local file in the
corresponding relationship record, and holding the
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synchronization of the email attachment and the local file on
another computer working in a geographically different location.
App. Br. 6. Appellants contend that this disclosure provides sufficient
specific structure to meet the requirements of the second and sixth
paragraphs of Section 112.
In response, the Examiner points to The Supplemental Examination
Guidelines for Determining Compliance with 35 U.S.C. 112 andfor
Treatment of Related Issues in Patent Applications, 76 Fed. Reg. 7162
(February 9, 2011) (the "Guidelines"). Ans. 3. The Guidelines state, in
relevant part:
For a computer-implemented means-plus function claim
limitation invoking § 112, ,r 6, the corresponding structure is
required to be more than simply a general purpose computer or
microprocessor. To claim a means for performing a particular
computer-implemented function and then to disclose only a
general purpose computer as the structure designed to perform
that function amounts to pure functional claiming.
The structure corresponding to a § 112, ,r 6 claim
limitation for a computer-implemented function must include the
algorithm needed to transform the general purpose computer or
microprocessor disclosed in the specification. The
corresponding structure is not simply a general purpose
computer by itself but the special purpose computer as
programmed to perform the disclosed algorithm. Thus, the
specification must sufficiently disclose an algorithm to transform
a general purpose microprocessor to the special purpose
computer. An algorithm is defined, for example, as "a finite
sequence of steps for solving a logical or mathematical problem
or performing a task." Applicant may express the algorithm in
any understandable terms including as a mathematical formula,
in prose, in a flow chart, or "in any other manner that provides
sufficient structure."
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Application 12/845, 111
A rejection under § 112, ,r 2 is appropriate if the
specification discloses no corresponding algorithm associated
with a computer or microprocessor. For example, mere
reference to a general purpose computer with appropriate
programming without providing an explanation of the
appropriate programming, or simply reciting "software"
without providing detail about the means to accomplish the
software function, would not be an adequate disclosure of the
corresponding structure to satisfy the requirements of§ 112, f 2.
In addition, merely referencing a specialized computer (e.g., a
"bank computer''), some undefined component of a computer
system (e.g., "access control manager''), "logic, " "code," or
elements that are essentially a black box designed to perform the
recited function, will not be sufficient because there must be
some explanation of how the computer or the computer
component performs the claimed function.
Guidelines 7168 ( emphasis added).
The Examiner finds that Appellants have not shown any
corresponding algorithm to the claimed functional limitations. Ans. 4. The
Examiner finds that Appellants have not provided an explanation of the
appropriate programming of the claimed functional limitations. Id. The
Examiner finds that Appellants' Specification recites "software" (i.e., a
"plug-in") without providing detail about the means to accomplish the
claimed software functions. Id.
The Examiner finds further that paragraph [0035] of Appellants'
Specification does not provide an adequate algorithm or description of the
programming of the claimed functional limitations, either individually or in
combination. Ans. 4. By way of example, the Examiner finds that the
claimed "determining the attachment is modified and replacing the local file
with the modified email attachment according to the corresponding
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Application 12/845, 111
relationship record automatically prior to sending the email" is not addressed
in paragraph [0035]. Id. Furthermore, the Examiner finds, the claimed
"creating a corresponding relationship record of the email attachment and
the local file" is similarly not addressed in paragraph [0035]. Id.
Consequently, the Examiner concludes, Appellants have not provided
an adequate disclosure of the corresponding structure to satisfy the
requirements of the second paragraph of Section 112 because the recitation
of a "plug-in" is "essentially a black box designed to perform the related
function." Ans. 5.
We agree with the Examiner. Our reviewing court has held that:
In cases ... involving a special purpose computer-implemented
means-plus-function limitation, "this court has consistently
required that the structure disclosed in the specification be more
than simply a general purpose computer or microprocessor." We
require that the specification "disclose an algorithm for
performing the claimed function." The specification can express
the algorithm "in any understandable terms including as a
mathematical formula, in prose, or as a flow chart, or in any other
manner that provides sufficient structure." Simply disclosing
software, however, "without providing some detail about the
means to accomplish the function[,] is not enough."
Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012)
(internal citations and quotations omitted).
Appellants rely upon paragraph [0042] of Appellants' Specification as
disclosing that the "means" limitations of the claim can be a "plug-in," i.e., a
software module. We find that this disclosure is insufficient to meet the
requirements of Section 112, as it describes no more than a "black box" by
which the functions are performed, without providing any sort of algorithm
or other specific recitation of the steps by which the functions may be
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performed. Similarly, Figures 5 and 6 of the Specification provide no
further illumination, or structure, of how the function associated with each
means is accomplished beyond what is provided in paragraph [0042]. By
way of example, Figure 5 of the Specification is reproduced below:
/
c,re1ifa,g I ! dcid:erl,:;lining s,·n.::tnxmi~ng!
uwn,~ t ......... ~ mn · 1 1catwn ......... • tireims · · !
. ''' j i t!H1tUlS .
, ••••••••••••••••••••••••••• $ ~............ ························································ 1
Figure 5 of Appellants' Specification depicts a block diagram
of the system for processing email attachments according to an
embodiment of the Appellants' invention
Furthermore, we agree with the Examiner that paragraph [0035], upon
which Appellants similarly rely, does not provide an adequate algorithm,
detailed description, or other structure of the programming means of the
claimed functional limitations, either individually or in combination. We
consequently affirm the Examiner's rejection of claims 14--25 upon this
ground.
A. Rejection of claims 1-25 as obvious over Chandhok, Wong, and
Basin
Issue
Appellants argue that the Examiner erred in finding that the combined
cited prior art references teach or suggest determining that either the email
attachment or related local file is modified and replacing the local file with
the modified email attachment or the email attachment with the modified
local file, as the case may be according to the corresponding relationship
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Application 12/845, 111
record automatically prior to sending the email, as required by the claims.
App. Br. 17-18.
Analysis
The Examiner finds that Chandhok teaches creating digests of the file
and monitoring the last modified date and time of the file but fails to either
teach or suggest creating a corresponding relationship record of the email
attachment and the local file. Final Act. 9. The Examiner finds that Wong
teaches a database system that monitors which users need their files updated
and the time of the last update of that file. Id. (citing Wong col. 8, 11. 30-35,
59---63, Fig. 6). The Examiner concludes that, because Chandhok teaches
monitoring the time of a file's last modification and Wong teaches a
centralized database for monitoring the time of a file's last modification, it
would have been obvious to a person of ordinary skill in the art to store the
time and date of the last modification of a file, as taught by Chandhok, in the
database file taught by Wong. Id. (citing Chandhok col. 5, 11. 14--16; Wong
Fig. 6).
However, the Examiner finds neither Chandhok nor Wong teach or
suggest modifications to an email in response to receiving an operation for
sending the email and that such modifications occur prior to sending it.
Final Act. 9. The Examiner finds that Basin teaches that a user can have
email attachments compressed automatically (i.e., modifying the email
message) prior to sending the message when the standard "send" button is
used to send the message. Id. (citing Basin ,r,r 53-54). The Examiner
concludes that it would have been obvious to a skilled artisan that any
modifications performed by the combined teachings of Chandhok and Wong
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Application 12/845, 111
could be scheduled either before or after receipt of a send operation
command, as long as the modifications were performed prior to the actual
send operation. Id. The Examiner finds a person of ordinary skill in the art
would be motivated to combine the references so as to provide the sender
with maximum flexibility to change the sent message prior to transmission.
Id.
Appellants argue that the Examiner relies upon Chandhok as teaching
the limitation reciting "determining that the e-mail attachment is modified
and replacing the local file with the modified e-mail attachment according to
the corresponding relationship record." App. Br. 18-19 (citing Chandhok
col. 3, 11. 19-21; col. 4, 11. 27--49). According to Appellants, the passages of
Chandhok relied upon by the Examiner teach that, in response to an add or
update command, it is determined if a local copy of a workgroup file exists
and, if not, a backup copy of the existing local copy is created and an e-mail
attachment is saved as the local workgroup file. Id. at 19. Appellants assert
that this teaching is not equivalent to "replacing the local file with the
modified e-mail attachment according to the corresponding relationship
record." Id.
Appellants argue further that the Examiner's reliance upon Basin as
teaching the limitation reciting "in response to the sending operation,
determining that the email attachment is modified and replacing the local file
with the modified email attachment according to the corresponding
relationship record automatically prior to sending the email," is likewise
misplaced. App. Br. 20. Appellants contend that Basin teaches a computer
program for managing and manipulating archived zip files on a computer.
Id. Appellants assert that the program in Basin provides for opening,
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Application 12/845, 111
creating, modifying, and extracting archived zip files. Id. Appellants
therefore argue that Basin provides only for the automatic compression of an
attachment in response to an email send command. Id.
We are not persuaded by Appellants' arguments. Chandhok teaches,
in relevant part:
A preferred embodiment of the present invention synchronizes
files shared by members of a workgroup automatically and in the
background.
Synchronization commands include . . . update commands,
corresponding to the creation of a new version of a workgroup
file.
If an embedded synchronization command is detected in step
105, the computer determines in step 106 whether the recipient
of that e-mail is a member of the workgroup with which the
command is associated.
If the computer determines in step 106 that the recipient is a
member of the workgroup, the computer determines in step 107,
referring now to FIG. IA, whether the embedded
synchronization command is an add or update command. If the
computer detects an add or update command, the computer
determines in step 108 whether a local copy of the particular
workgroup file exists in the local workgroup files of the recipient
workgroup member. If a local copy of the workgroup file does
exist, the computer creates a backup copy of the existing local
copy of the workgroup file in step 109, and saves in step 110 the
MIME file attached to the e-mail as the local workgroup file of
the recipient workgroup member. The computer will typically
store the backup copy in a specially designated file or storage
location which can be pre-selected by the computer or system of
the invention. In an alternative embodiment of the present
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invention, the workgroup member can set or select the number
of generations of backup copies that will be kept. If the computer
determines in step 108 that no local copy of the work group file
exists, the computer skips to step 10 and saves the MIME file
attached to the e-mail as the local copy of the workgroup file of
the recipient workgroup member.
Chandhok col. 3, 11. 19-21; col. 4, 11. 1--49. Chandhok also teaches:
[E]ach local copy of a workgroup file typically has two
associated digests, a local-copy.digest and an ancestor.digest, as
well as a record of the last modification time of the local copy.
[W]henever a local copy is revised by a workgroup member in
step 101 of the process noted above, the computer updates the
last modification time record for the local copy to accurately
reflect the time and date when the file was revised. In step 102
of the process above, the computer also creates a new local-
copy.digest using a hashing algorithm and saves the existing
local-copy.digest as the ancestor.digest, before generating thee-
mail message containing the embedded synchronization
command.
Id. at col. 5, 11. 8-20. Chandhok further teaches:
Having created the new local-copy.digest and saved the previous
local-copy.digest as the ancestor.digest, the computer completes
step 102 by generating an e-mail message in MIME format with
an embedded synchronization command as before, with one
exception. The computer includes as part of the embedded
synchronization command the ancestor.digest of the revised
local copy ....
Id. at col. 5, 11. 45-51. Finally, Chandhok teaches:
[T]he computer determines whether the digest of the workgroup
file attached to the email is identical to the digest of the local
copy. If the digests are identical, the add or update command is
valid, a backup copy of the existing local copy is created, and the
workgroup file attached to the e-mail is saved as the local copy
of the workgroup file. If the digests are not identical there is a
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conflict, indicating that the existing local copy and the copy of
the workgroup file attached to the e-mail do not have the same
ancestry.
Id. at cols. 5---6, 11. 59--4.
Chandhok thus teaches a computer system that creates a relationship
between a modified local file (i.e., a local copy of the particular workgroup
file) and the prior version of that local file (i.e., creating a backup copy of
the unmodified local file). Chandhok also teaches an e-mail synchronization
command to replace the local file (i.e., the local copy) with the modified file
(i.e., the attached workgroup file) according to the established corresponding
relationship (i.e., the digest of the workgroup file and digest of the local
copy). Finally, Chandhok teaches using the digest of a file and comparing it
to the archived version in order to determine whether the local copy of the
workgroup file should be updated with the modified email attachment. We
consequently agree with the Examiner that Chandhok teaches determining
that the email attachment or the local file is modified and replacing the local
file or the email attachment with the modified file according to the
corresponding relationship record automatically prior to sending the email,
as variously recited in the claims on appeal.
Wong is directed to: "A server computer updates client computers'
copies of subscription files stored on a network." Wong Abstr. Wong
teaches that:
The server computer checks the subscription file stored on the
network for any changes which may have occurred to the file
since the previous checking of the subscription file preferably by
comparing the last save time stamp to a time stamp on the
subscription file stored on the network. If changes have
occurred, the server computer creates an update file for the client
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computer and transmits the update file to the client computer,
preferably by electronic mail.
Wong Abstr. We agree with the Examiner that the combination of
Chandhok and Wong teaches: "composing in an e-mail system executing in
memory by at least one processor of a computer, an email," "determining in
the e-mail system that a local file is attached as an email attachment to the
email," and "creating a corresponding relationship record of the email
attachment and the local file."
With respect to the teachings of Basin, we agree with Appellants that
Basin teaches a computer program for managing and manipulating archived
zip files on a computer. Basin teaches:
After installing the program of the present invention, the mail
form of Microsoft Outlook will have two additional buttons in its
"standard" toolbar. These buttons include a Toggle Compression
button and an Options button. If the Toggle Compression button
is not depressed (the default state), all mail attachments will be
compressed automatically when the standard "send" button is
used to send the message. Attachments already compressed
when attached will be left as is, while attachments that are not
compressed will be compressed into a single .ZIP file that will
replace the original uncompressed attachments.
Basin ,r 53. The Examiner thus relies upon Basin as teaching that a function
will be performed on the email attachment automatically when the standard
"send" button is used to send the message, and thus teaching performing a
function on an email attachment after using a "send" button (in response to
the sending operation) and before sending the email. See Ans. 8-9. We
consequently agree with the Examiner that Basin, in combination with
Chanhok and Wong, teaches: "replacing the local file with the modified
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email attachment ... automatically prior to sending the email," as recited in
the claims.
Appellants reply that Basin teaches only that an attachment
compression feature is enabled and attachments are compressed when the
message is sent using the send button. Reply Br. 7. Appellants assert that
there is no teaching or suggestion in Basin paragraphs [0054] through [0056]
of compression of an attachment prior to the selection of a send button as
found by the Examiner.
We disagree. Basin is relied upon by the Examiner as teaching
"receiving an operation in the e-mail system of sending the email," and a
"synchronizing means coupled to the e-mail system and configured to
respond to the determining sending means by replacing the local file with
the modified email attachment according to the corresponding relationship
record automatically before sending the email in accordance with the
sending operation," (emphasis added) and not, as Appellants argue, prior to
the selection of a send button. The passage of Basin quoted supra teaches
that the compression of the uncompressed file occurs automatically prior
sending the email in accordance with the sending operation, as recited in
claim 1.
We agree with the Examiner that the combination of Chandhok,
Wong, and Basin teaches or suggests all of the limitations of claims 1-13 on
appeal, and we affirm the Examiner's rejection.
However, the Examiner has determined, and we agree, that the
Specification does not disclose structure corresponding to the means-plus-
function limitations recited in claims 14--25. Final Act. 5---6. Our reviewing
court has stated that we must "engage[] in a comparison of the asserted prior
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art's disclosure to the 'structure' disclosed in the" Specification to assess
patentability of means-plus-function limitations over prior art. IPCom
GmbH & Co. v. HTC Corp., 861 F.3d 1362, 1371 (Fed. Cir. 2017), as
corrected (Aug. 21, 2017) (citing In re Donaldson Co., Inc., 16 F.3d 1189,
1195 (Fed. Cir. 1994) (en bane)). In this case, neither the Examiner nor
Appellants have identified the structure corresponding to the means-plus-
function limitations that we would compare with the disclosure of the prior
art to assess the obviousness rejection. We consequently reverse, proforma,
the Examiner's rejection of claims 14--25.
DECISION
The Examiner's rejection of claims 14--25 under 35 U.S.C. § 112,
second and sixth paragraphs, is affirmed.
The Examiner's rejection of claims 1-13 under 35 U.S.C. § 103(a) is
affirmed.
The Examiner's rejection of claims 14--25 under 35 U.S.C. § 103(a) is
reversed.
AFFIRMED
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