Ex Parte Harpur et al

Patent Trial and Appeal Board

Mar 17, 2017

13270422 (P.T.A.B. Mar. 17, 2017)

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.
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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
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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).
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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
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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
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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
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