Ex Parte Cheng et alDownload PDFPatent Trial and Appeal BoardFeb 6, 201912845111 (P.T.A.B. Feb. 6, 2019) Copy Citation 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. 2 Appeal2017-004040 Application 12/845, 111 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; 3 Appeal2017-004040 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, 4 Appeal2017-004040 Application 12/845, 111 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 5 Appeal2017-004040 Application 12/845, 111 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." 6 Appeal2017-004040 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 7 Appeal2017-004040 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 8 Appeal2017-004040 Application 12/845, 111 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 9 Appeal2017-004040 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 10 Appeal2017-004040 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, 11 Appeal2017-004040 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 12 Appeal2017-004040 Application 12/845, 111 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 13 Appeal2017-004040 Application 12/845, 111 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 14 Appeal2017-004040 Application 12/845, 111 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 15 Appeal2017-004040 Application 12/845, 111 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 16 Appeal2017-004040 Application 12/845, 111 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 17 Copy with citationCopy as parenthetical citation