Ex Parte Harpur et alDownload PDFPatent Trial and Appeal BoardMar 17, 201713270422 (P.T.A.B. Mar. 17, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/270,422 10/11/2011 LIAM HARPUR GB920100026US1_8150-0120 4232 52021 7590 03/21/2017 Cuenot, Forsythe & Kim, LLC 20283 State Road 7 Ste. 300 Boca Raton, EL 33498 EXAMINER LIN, SHERMAN L ART UNIT PAPER NUMBER 2447 NOTIFICATION DATE DELIVERY MODE 03/21/2017 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 LIAM HARPUR, MARK KELLY, and JOHN RICE Appeal 2016-004354 Application 13/270,422 Technology Center 2400 Before BRADLEY W. BAUMEISTER, SHARON FENICK, and MICHAEL J. ENGLE, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2016-004354 Application 13/270,422 STATEMENT OF CASE Summary Pursuant to 37 C.F.R. § 41.52(a), Appellants request rehearing of our January 6, 2017 Decision on Appeal (“Decision”). See generally Request for Rehearing Under 37 C.F.R. § 41.52(a) filed Mar. 6, 2017 (“Request”). In that Decision, we affirmed the Examiner’s rejections under 35 U.S.C. § 103(a) of all of the appealed claims. Decision 9. Appellants now request only that we modify our Decision with respect to the rejection of dependent claim 22. Request 2. Claim 22 stands rejected as unpatentable over the combination of Cheung (US 2006/0167992 Al; published July 27, 2006), Mache (US 2001/0003202 Al; published June 7, 2001), and Lentz (US 2006/0080614 Al; published April 13, 2006). App. Br. 14. Appellants’ request is DENIED. The Claimed Invention Claim 22, as well as claim 1 from which claim 22 depends, are reproduced below: 1. A method of handling a message comprising: receiving the message, sent by a composer, to a plurality of recipients, receiving a selection by a recipient for the message, identifying, using a processor, that the recipient is unfamiliar with a portion of the message, and notifying, with a notification, the composer of the message of the portion of the message, wherein the notification does not indicate, to the composer, an identity of the recipient who is unfamiliar with the portion of the message. 2 Appeal 2016-004354 Application 13/270,422 22. The method according to claim 1, wherein the notification indicates a percentage of the plurality of recipients who are unfamiliar with the portion of the message. CONTENTIONS “Appellants . . . request that the Board clarify whether the Board has found that (i) Appellants’ arguments are unpersuasive because the arguments did not address the teachings of Lentz along with Cheung and Mache or (ii) the combination of Lentz, Cheung, and Mache teaches the limitations at issue.” Request 2—3. Appellants also contend that “Lentz alone [was] relied upon to teach [the language of claim 22], and for the reasons set forth within [Appellants’] Appeal Brief, Lentz fails to teach those limitations.” Request 4. Appellants urge “that the Board misapprehended Appellants’ arguments that Lentz fails to teach the limitations at issue by assuming that the other cited references were being used [by the Examiner] to teach the limitations at issue.” Id. at ^N5. In support of this position, Appellants reproduce what they allege to constitute the entirety of the Examiner’s analysis regarding claim 22: [Claim 22] Cheung further discloses: the method according to claim 1, wherein the notification indicates a recipient who is unfamiliar with the portion of the message (i.e., see at least where chats or dialogs relate to multiple-recipient chat sessions in section 12; and the notification of a recipient that doesn’t understand a subculture term in section 33). However, Cheung does not disclose a percentage of a plurality of recipients who are unfamiliar with a term in a message. Lentz, in order to improve feedback to a presenter of a meeting by summarizing the feedback from a large audience and avoid overwhelming the presenter [see section 43), discloses: feedback pertaining to a percentage of the plurality of recipients [i.e., see at least 3 Appeal 2016-004354 Application 13/270,422 displaying data indicating the ratio or percentage of number of attendees to number of participants for display as a status of the audience in section 52). Based on Cheung in view of Mache, and further in view of Lentz, it would have been obvious to one having ordinary skill in the art at the time the invention was made to utilize summarizing aggregated feedback from a large audience (Lentz) to improve upon feedback regarding a user’s understanding of a message (Cheung). Such a modification [would] have yielded predictable results since one of ordinary skill in the art would be motivated to do so in order to improve feedback to a presenter of a meeting by summarizing the feedback from a large audience and avoid overwhelming the presenter, (underline added, Examiner’s holding omitted) Request 3 (quoting Final Office Action 11—12 (mailed Mar. 4, 2015) (“Final Act.”)). Based on this excerpt, Appellants also assert that “the Examiner’s findings as to the difference between Cheung and the limitations at issue are ‘Cheung does not disclose a percentage of a plurality of recipients who are unfamiliar with a term in a message.’” Request 4. ANAFYSIS /. We first address Appellants’ inquiry regarding the particulars of the Board’s prior holding. Request 2—3. To clarify, the Board takes no position on whether the combination of Fentz, Cheung, and Mache teaches all of the limitations of claim 22. This is because the Board does not act as an examiner, reviewing appealed rejections de novo. Rather, we review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). 4 Appeal 2016-004354 Application 13/270,422 In the present case, we held that Appellants have not established that the Examiner erred in rejecting dependent claim 22 under 35 U.S.C. § 103. Decision 8—9. We reached this conclusion based on Appellants only arguing that Lentz, alone, does not teach the language of claim 22. App. Br. 14—15; Reply Br. 4—7. As such, Appellants’ arguments—both then and now—do not address the actual basis of the Examiner’s rejection, much less reasonably demonstrate error therein. II The record reasonably indicates that the Examiner relied upon the combination of Cheung, Mache, and Lentz to teach the language of dependent claim 22. To be sure, the Examiner does state that “Cheung does not disclose a percentage of a plurality of recipients who are unfamiliar with a term in a message”—the majority of the language of claim 22. Final Act. 11, cited in Request 4. However, that statement must be read in the context of the entire Office Action. The Examiner additionally states the following specifically in relation to claim 22: [Claim 22] Cheung further discloses: the method according to claim 1, wherein the notification indicates a recipient who is unfamiliar with the portion of the message (i.e., see at least where chats or dialogs relate to multiple-recipient chat sessions in section 12; and the notification of a recipient that doesn’t understand a subculture term in section 33). Final Act. 11. This statement reasonably indicates that the Examiner is relying upon Cheung for teaching claim 22’s recitation of a notification of recipients who are unfamiliar with the portion of the message and is relying 5 Appeal 2016-004354 Application 13/270,422 upon Lentz to teach one potential format that such a notification may take, specifically aggregated feedback. This is not the only evidence that the Examiner is relying on the combination of all three cited references in teaching the language of claim 22. For example, claim 22 depends from independent claim 1, and in the rejection of that independent claim, the Examiner explained that Mache suggests that Cheung’s notifications could take the form of anonymous responses from message recipients. E.g., Final Act. 5—6. Moreover, the language the Examiner uses in addressing claim 22 makes clear that additional disclosures of Cheung are being used for the rejection, not on their own, but in addition to the disclosures of Cheung and Mache, discussed before: “Cheung further discloses . . .” Final Act. 11 (emphasis added). Furthermore, the Examiner expressly states in relation to claim 22 that the rejection is based upon the combination of all three references: Based on Cheung in view of Mache, and further in view of Fentz, it would have been obvious to one having ordinary skill in the art at the time the invention was made to utilize summarizing aggregated feedback from a large audience (Fentz) to improve upon feedback regarding a user’s understanding of a message (Cheung). Final Act. 12, cited in Request 3 (emphasis added). If the Examiner had alternatively intended to rely upon only Fentz to teach the anonymous notifications of claim 22, the Examiner would not have stated that claim 22 is rejected over the combination of Cheung, Mache, and Fentz. See Final Act. 11. The Examiner would not have stated that it would have been obvious to improve messages “[bjased on Cheung in view of Mache, and further in view of Fentz.” Final Act. 12 (emphasis added). If the Examiner had alternatively intended to rely upon only Fentz alone to 6 Appeal 2016-004354 Application 13/270,422 suggest the anonymous notification of claim 1 that is further described in claim 22, the Examiner would have set forth a separate rejection, stating that claim 22 was rejected over only Lentz. Read in context, it is reasonably clear that the rejection of claim 22 is based upon the proposition that anonymous notifications from message recipients, which are suggested by the combination of Cheung and Mache, could be presented to composer of the message more specifically in the format of a percentage (summarized aggregated feedback), as taught by Lentz. DECISION Appellants’ Request for Rehearing is DENIED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(l)(iv). DENIED 7 Copy with citationCopy as parenthetical citation