Ex Parte Kowalski

Patent Trial and Appeal Board

Feb 22, 2016

09928599 (P.T.A.B. Feb. 22, 2016)

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.
09/928,599 08/13/2001 Lee Anne Kowalski SVL920010049US1 7529
45729 7590 02/22/2016
GATES & COOPER LLP - IBM
6701 CENTER DRIVE WEST
SUITE 1050
LOS ANGELES, CA 90045
EXAMINER
ORR, HENRY W
ART UNIT PAPER NUMBER
2175
MAIL DATE DELIVERY MODE
02/22/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LEE ANNE KOWALSKI
____________

Appeal 2014-001764
Application 09/928,599
Technology Center 2100
____________

Before ALLEN R. MacDONALD, ERIC S. FRAHM, and
BRUCE R. WINSOR, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the final rejection
of claims 1, 4–23, 26–45 and 48–66, which constitute all the claims pending
in this application. (Final Act. 1.) We have jurisdiction under 35 U.S.C.
§ 6(b). Claims 2, 3, 24, 25, 46, and 47 are cancelled. (Final Act. 2.)
We affirm.

RELATED APPEALS
Appellant identifies a prior appeal related to the instant patent
application. (App. Br. 1.) The identified appeal was docketed as Appeal

1 The real party in interest identified by Appellant is I.B.M. Corp. (App. Br.
1.)
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2009-014400 and a decision (hereinafter the “’400 Dec’n”) reversing the
Examiner’s rejections was mailed April 2, 2012. Appellant explains the
Examiner subsequently re-opened prosecution, entering new grounds of
rejection, from which the instant appeal is taken. (App. Br. 1–2.).

STATEMENT OF THE CASE
Appellant’s disclosed invention relates to “electronic message
management and processing, and particularly to . . . creating and reading
electronic messages.” (Spec. 2:3–5). Words contained within an electronic
message are identified and distinguished by scanning and comparing
message terms in an electronic message to significant terms from an online
registry. Matched significant message terms are identified and made distinct
to indicate significance to a reader. (Spec 4:17–21). Claim 1, which is
illustrative of the invention, reads as follows:
1. A computer-implemented method for identifying
and distinguishing words contained within an electronic
message, comprising the steps of:
(a) creating and reading electronic messages in an
electronic messaging application, executed by a computer,
wherein the electronic messaging application sends an
electronic message from an originator to a recipient via a
network, and the electronic messaging application identifies and
distinguishes certain words that are contained within the
electronic message by performing the steps of:
(1) comparing message terms in an electronic
message to significant terms stored by the computer in an
online registry to identify any of the message terms in the
electronic message that match the significant terms stored in the
online registry; and
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(2) making alterations to the electronic message
to identify the matched message terms and to indicate their
significance to a reader, wherein the alterations are made by the
electronic messaging application when the electronic message
is authored by its originator or received by its recipient.

The Examiner relies on the following prior art in rejecting the claims:
Cohen US 5,796,948 Aug. 18, 1998
Larson US 5,825,854 Oct. 20, 1998
Gordon Padwick, et al., Special Edition Using Microsoft® Outlook®
2000, Chapter 22, pp. 1–19 (Que Publishing, May 12, 1999)
(“Padwick”).
Dick Oliver, Netscape 2 Unleashed, pp. 163–64 (1st Ed., Sams.net
Publishing, 1996) (“Netscape”).

Claims 1, 23, and 45 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Cohen. (See Final Act. 2–4.)
Claims 1, 4–9, 14–17, 19–23, 26–31, 36–39, 41–45, 48–53, 58–61,
and 63–66 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Cohen and Netscape. (See Final Act. 4–11.)
Claims 10–13, 32–35, and 54–57 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Cohen, Netscape, and Padwick. (See
Final Act. 11–14.)
Claims 18, 40 and 62 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cohen, Netscape, Padwick, and Larson. (See Final Act.
14–15.)
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed [date]; “Reply Br.” filed [date]) and the Specification (“Spec.”
filed [date] for the positions of Appellant and the Final Office Action (“Final
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Act.” mailed [date]) and Answer (“Ans.” mailed [date]) for the reasoning,
findings, and conclusions of the Examiner. Only those arguments actually
made by Appellant have been considered in this decision. Arguments that
Appellant did not make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2012).

ISSUE
Based on Appellant’s arguments we discuss the appeal by reference to
claim 1. The salient issue presented by Appellant’s contention is as follows:
Does Cohen disclose “making alterations to the electronic message to
identify the matched message terms and to indicate their significance to a
reader, wherein the alterations are made by the electronic messaging
application when the electronic message is authored by its originator or
received by its recipient,” as recited in claim 1?

ANALYSIS
Rejection of Claim 1 under 35 U.S.C. § 102(b)
During prosecution
[the USPTO] applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). However, although
claims are interpreted in light of the Specification, “limitations are not to be
read into the claims from the specification.” In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993).
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Claim 1 recites that the “alterations are made by the electronic
messaging application when the electronic message is authored by its
originator or received by its recipient.” (Emphasis added.) The limitations
“authored by its originator” and “received by its recipient” are connected by
“or,” i.e., are recited in the alternative. Accordingly, the broadest reasonable
interpretation of claim 1 only requires one of the two alternatives be met to
infringe or anticipate the claim. “[I]t is axiomatic that that which would
literally infringe if later anticipates if earlier.” Bristol-Myers Squibb Co. v.
Ben Venue Labs, Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001). Therefore, to
show anticipation of claim 1 by Cohen the Examiner need only demonstrate
that Cohen discloses that “alterations are made by the electronic messaging
application when the electronic message is authored by its originator.” It is
not necessary for the Examiner to demonstrate that Cohen also discloses
“alterations are made by the electronic messaging application when the
electronic message is . . . received by its recipient.”
The Examiner finds Cohen discloses “making alterations to the
electronic message to identify the matched message terms and to indicate
their significance to a reader, wherein the alterations are made by the
electronic messaging application when the electronic message is authored by
its originator,” as recited in claim 1. (Final Act. 4 (citing Cohen col. 2, ll.
46–64).) The Examiner explains Cohen’s “program places brackets around
each profane word or phrase that satisfies a definition, and places the file in
the user's inbox.” (Id.)
Appellant contends the passages of Cohen relied on by the Examiner
“only describe making alterations to the message when it is being sent, after
the message has been authored and saved to a file. However, the above
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portions of Cohen do not teach or suggest making alterations to the
electronic message to identify the matched message terms when the message
is authored or when the message is received.” (App. Br. 17.) As we
concluded in the ’004 Decision, we agree with Appellant that “the use of the
word ‘when’ in Appellant's claims requires that alterations be made to the
electronic message when (‘at the time’) the electronic message is authored
by its originator or received by its recipient” (id.; see also Reply Br. 2–3).
(See ’004 Dec’n 6.) We do not, however, agree that Cohen does not
disclose making alterations to the electronic message at the time the message
is authored by its originator.
Appellant’s Specification explains that “[a] composed message is
scanned and the terms contained are compared with the terms in the registry
. . . .” (Spec. 11:8–9 (emphasis added) (cited at App. Br. 2).) The
Specification further elaborates as follows: “1, The author composes the
message. 2. The author runs a tool that is an embodiment of the present
invention. . . . 6. At finish, the author sends message.” (Spec. 21:13–22:4.)
In view of the Specification, we conclude that the phrase “when the
electronic message is authored by its originator” cannot be read so narrowly
as to exclude scanning the message for terms in the registry after it is
initially composed and before it is sent to the intended recipient. A claim
construction that excludes a preferred embodiment is “a result that is rarely,
if ever, correct.” On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer
GmbH, 386 F.3d 1133, 1138 (Fed. Cir. 2004).
Cohen discloses that after a message is initially created (Cohen Fig. 1
(items 40, 70, 80, 90, 110), col. 3, ll. 38–57) the author directs that the
message be sent (id. Fig. 1 (item 120). col. 3, ll. 57–58). The instruction to
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send the message invokes a network profanity interception tool (NPIT) (id.
Fig. 1 (items 140, 150), col. 3, ll. 58–61) which scans the message for
profanity (i.e., “significant terms” in a “registry”) before it is sent to the
intended recipient (id. Fig. 1 (item 160), col. 3, ll. 61–65). If profanity is
identified the profanity is flagged (id. Figs. 2–3) and the message is returned
to the author for further editing (id. Fig. 1 (items 170, 180), col. 3, l. 65–col.
4, l. 13, col. 4, l. 66–col. 5, l. 16). Thus, Cohen discloses scanning the
message and marking significant terms after the message is initially
composed (id. Fig. 1 (items 40, 70, 80, 90, 110)), but before it is sent (id.
Fig. 1 (item 160)). If significant terms are identified, Cohen discloses that
the process of composing the message continues. Accordingly. we find the
process disclosed by Cohen is encompassed within the broadest reasonable
interpretation of “making alterations to the electronic message to identify the
matched message terms and to indicate their significance to a reader,
wherein the alterations are made by the electronic messaging application
when the electronic message is authored by its originator or received by its
recipient” (emphasis added), as recited in claim 1.
As a result, on this record we find no error in the rejection of claim 1
as anticipated by Cohen.
Rejection of Claim 1 under 35 U.S.C. § 103(a)
As discussed supra, after considering Appellant’s arguments, we find
no error in the Examiner’s rejection of claim 1 as anticipated by Cohen.
“[A] disclosure that anticipates under § 102 also renders the claim invalid
under § 103, for ‘anticipation is the epitome of obviousness.’” Connell v.
Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir.1983) (quoting In re
Fracalossi, 681 F.2d 792, 794 (CCPA 1982)). Accordingly, and for the
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same reasons, we find no error in the Examiner’s rejection of claim 1 as
obvious over Cohen, with or without Netscape.
Summary
On this record, we find no error in the rejections of claim 1.
Appellant argues independent claims 23 and 45 together with claim 1. (App.
Br. 15–20.) Appellant relies solely on the arguments made for claims 1, 23,
and 45, to argue claims 4–22, 26–44 and 48–66, which depend from claims
1, 23, and 45, respectively. Accordingly, and for the reasons set forth supra,
we sustain the rejection of claim 1, 23 and 45 as anticipated by Cohen and
the rejections of claims 1, 4–23, 26–45 and 48–66 as unpatentable over
various combinations of Cohen, Netscape, Padwick, and Larson.

DECISION
The decision of the Examiner to reject claims 1, 4–23, 26–45 and 48–
66 is affirmed.
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)(1)(iv).

AFFIRMED