Ex Parte Green et al

Patent Trial and Appeal Board

May 25, 2018

13161193 (P.T.A.B. May. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/161,193 06/15/2011
25871 7590 05/30/2018
SWANSON & BRATSCHUN, L.L.C.
8210 SOUTHPARK TERRACE
LITTLETON, CO 80120
FIRST NAMED INVENTOR
Greg Green
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.
0442.01 4940
EXAMINER
SWEARINGEN, JEFFREY R
ART UNIT PAPER NUMBER
2445
NOTIFICATION DATE DELIVERY MODE
05/30/2018 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):
efspatents@sbiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREG GREEN, KEVIN S. DIBBLE, and
CONOR McCLUSKEY
Appeal2017-011738
Application 13/161, 193 1
Technology Center 2400
Before BRADLEY W. BAUMEISTER, MICHAEL M. BARRY, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's final
rejection of claims 1-21 and 23-28. Claims 22 and 29 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants' Brief ("App. Br.") identifies BombBomb, LLC as the real
party in interest. App. Br. 1.
Appeal2017-011738
Application 13/161,193
CLAIMED SUBJECT MATTER
The claims are directed to real-time electronic mail having dynamic
content. Spec. ,r 3. Claim 1, reproduced below with the key limitations
emphasized, is illustrative of the claimed subject matter:
1. A method of providing a dynamic electronic mail
message, the method comprising:
transmitting an electronic message from a mail server
computer system, the electronic message comprising:
a hypertext markup language ("HTML") image
("IMG") tag comprising a first uniform resource locator
("URL") that references a first resource at a resource
server computer system;
an HTML anchor ("A") tag comprising a second
URL; and
a dynamic subject field;
receiving the electronic message at an electronic mail
client on a recipient computer system wherein the electronic mail
client does not support dynamic content;
loading the electronic message for display at the recipient
computer system, wherein loading the electronic message for
display comprises transmitting a request for a first resource
referenced by the first URL;
receiving, at the resource server computer system, the
request for the first resource referenced by the first URL;
executing a first executable script at the resource server
computing system, based on the request for the first resource,
wherein executing the first executable script comprises:
recording an indication that the recipient opened the
electronic message;
identifying a set of characteristics about the
circumstances under which the electronic message was
loaded for display, the set of characteristics comprising:
an identification of the electronic message,
based at least in part on the request for the first
resource;
a recipient of the electronic message, based at
least in part on the request for the first resource;
2
Appeal2017-011738
Application 13/161,193
an Internet Protocol ("IP") address of the
recipient computer system that loaded the electronic
message for display, based at least in part on the
request for the first resource;
a device type of the recipient computer
system that loaded the electronic message for
display, based at least in part on the request for the
first resource;
a physical location of the recipient computer
system that loaded the electronic message for
display, based at least in part on the IP address of
the recipient computer system; and
a timestamp indicating a time at which the
electronic message was loaded for display;
identifying a set of demographic information about
the recipient, based at least in part on one or more
characteristics about the circumstances under which the
message was loaded for display, the set of demographic
information comprising one or more values from the group
consisting of:
an address of the recipient;
an age of the recipient;
an education level of the recipient;
the gender of the recipient;
a marital status of the recipient;
a set of one or more interests of the recipient;
an income level of the recipient; and
past online behavior of the recipient;
obtaining a first set of content to be provided in
response to the first request, based at least in part on one
or more characteristics about the circumstances under
which the electronic message was loaded for display and
at least a portion of the set of demographic information
about the recipient;
generating a set of one or more images comprising
the first set of content to be provided in response to the
first request; and
3
Appeal2017-011738
Application 13/161,193
transmitting the set of one or more images as the
first resource, for reception by the recipient computer
system, in response to the first request;
receiving, at the recipient computer system, the set of one
or more images;
displaying, at the recipient computer system, the set of one
or more images within the body of the electronic message;
displaying, at the recipient computer system, at least a
portion of the set of one or more images obtained by the
resource server in the dynamic subject field of the electronic
message;
receiving, at the recipient computer system, a selection by
a user of the second URL;
transmitting, from the recipient computer system, a
request for a second resource referenced by the second URL;
receiving, at a web server computer system, the request for
the second resource referenced by the second URL;
executing a second executable script at the Web server
computer system, based on the request for the second resource,
wherein executing the second executable script comprises:
recording an indication that the recipient selected
the second URL;
determining whether the request for the second
resource referenced by the second URL should be directed
to a different URL that is separate from the second URL;
based on a determination that the request should be
directed to the different URL, correlating the second URL
with a third URL that is associated with the second
resource, the third URL being different from the second
URL, and redirecting the request for the second resource
referenced by the second URL to a third set of content
referenced by the third URL; and
displaying the third set of content in a web browser at the
recipient computer system.
App. Br. 47--49 (Claims Appendix).
4
Appeal2017-011738
Application 13/161,193
REJECTIONS
Claims 1-21 and 23-28 stand rejected under 35 U.S.C. § 112(a) or
35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement.
ISSUE
Has the Examiner erred in finding the limitations "transmitting an
electronic message from a mail server computer system, an electronic
message comprising ... a dynamic subject field" and "displaying ... one or
more images obtained by the resource server in the dynamic subject field of
the electronic message," lack written description support in Appellants'
Specification?
ANALYSIS
The Examiner rejects claim 1 for lack of written description because
the Specification does not adequately disclose the recited "electronic
message comprising ... a dynamic subject field." The Examiner
acknowledges that paragraph 53 of Appellants' Specification provides some
description of the use of a dynamic subject field, but finds this description
insufficient because the limitations involving the "dynamic subject field" are
used in connection with computer-implemented functional limitations,
which requires disclosure of how the invention achieves the claimed
functions of "transmitting an electronic message comprising ... a dynamic
subject field" "displaying ... one or more images obtained by the resource
server in the dynamic subject field of the electronic message". Final Act. 5
(citing MPEP §§ 2161, 2161.01, and 2163).
5
Appeal2017-011738
Application 13/161,193
Finding that "Applicant's specification states that the dynamic subject
field can only be implemented if the email client supports images in the
subject field," the Examiner determines that "[t]here is no description of an
email client in Applicant's specification that does support images in the
subject field, or a description of how an email client would support a
dynamic subject field." Final Act. 5. The Examiner reasons that "[g]iven
the minimal discussion of the above claimed features regarding the dynamic
subject field in the specification, it is clear that there is no discussion of how
the claimed features are achieved." Id.
Appellants contend the Examiner's rejection is deficient on its face
because "[t]he Examiner offers no evidence as to whether 'one skilled in the
art would know how to program the disclosed computer to perform the
necessary steps described in the specification to achieve the claimed
function and the inventor was in possession of that knowledge."' App.
Br. 41 ( citing MPEP § 2161.01 ). Appellants further argue the description at
paragraph 53 of the Specification "explicitly describes at least one example
of how the email client on the recipient system displays the content in the
dynamic subject field of the email message." App. Br. 43. According to
Appellants, "[t]his disclosure alone is more than sufficient to pass the low
threshold of establishing that the inventors were in possession of the claimed
invention when the application was filed." Id. Appellants argue the
Specification further discloses how the dynamic subject field can display
image content-via HTTP GET requests-and also how the content server
supplies the dynamic content to a resource server that responds to requests
from email clients. Id. ( citing Spec. ,r,r 49-50). We agree with Appellants.
6
Appeal2017-011738
Application 13/161,193
In order to satisfy the written description requirement, the disclosure
must convey with reasonable clarity to those skilled in the art that the
inventor was in possession of the invention. Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). Here, we agree with
Appellants that paragraphs 49-53 of the Specification support the recited
"transmitting" and "displaying" of the "dynamic subject field." In
particular, paragraph 51 discloses that a mail server generates and transmits
a mail message to a mail recipient, and that paragraph 53 discloses the
transmitted mail message can, in some cases, include content that is
"configured to be displayed in the subject field of the email message, such
that the email message can have a dynamic subject line." Taken together,
these disclosures convey to a person of ordinary skill in the art that the
inventor possessed "transmitting an electronic message from a mail server
computer system, the electronic message comprising ... a dynamic subject
field."
Similarly, we agree with Appellants that the recited "displaying ...
one or more images obtained by the resource server in the dynamic subject
field of the electronic message," finds support in the Specification.
Specifically, the disclosure in paragraph 53 that "the email message can
have a dynamic subject line" that displays image content, along with the
statement that the dynamic subject line "can be accomplished, for example,
if the email client supports images in the subject field," is sufficient to
support the limitation under§ 112(a). The Examiner finds this disclosure
insufficient because the algorithmic details of how to program an email
client supporting images in the subject field are not described with
7
Appeal2017-011738
Application 13/161,193
particularity. However, whether these details are provided goes more to
enablement, and not to written description.
We agree with Appellants, then, that Specification's disclosure of
receiving emails with dynamic subject lines using an email client that
"supports images in the subject field" demonstrates Appellants possessed
"displaying, at the recipient computer system, at least a portion of the set of
one or more images obtained by the resource server in the dynamic subject
field of the electronic message." We, therefore, do not sustain the rejection
under 35 U.S.C. § 112(a).
DECISION
We reverse the Examiner's rejection of claims 1-21 and 23-28.
REVERSED
8