Ex Parte Malyshev et al

Patent Trial and Appeal BoardJul 28, 2016

13019295 (P.T.A.B. Jul. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/019,295 02/01/2011 29973 7590 08/01/2016 CRGOLAW ATTN: STEVEN M. GREENBERG, ESQ. 7900 Glades Road SUITE 520 BOCA RATON, FL 33434 FIRST NAMED INVENTOR Stanislav Malyshev 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. 1301-018U 1206 EXAMINER JOHNSON, JOHNESE T ART UNIT PAPER NUMBER 2168 NOTIFICATION DATE DELIVERY MODE 08/01/2016 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 PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STANISLA V MAL YSHEV, LILA TRETIKOV, CLINT ORAM, LARRY AUGUSTIN, MAJED ITANI, ANDREAS SANDBERG, and JENNY GONSALVES Appeal2015-004006 Application 13/019,295 Technology Center 2100 Before JASON V. MORGAN, JOSEPH P. LENTIVECH, and KARA L. SZPONDOWSKI, Administrative Patent Judges. SZPONDOWSKI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1--44, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. Appeal2015-004006 Application 13/019,295 STATEMENT OF THE CASE Appellants' invention is directed to a system and method to display in a first computer system relevant communications from a second computer system relating to a specific record in the first computer system. (Spec. 1- 3). Claim 32, reproduced below with the disputed limitations in italics, is illustrative of the claimed subject matter: 32. A method for intelligently detecting, importing and reconciling relevant electronic communications into data storage and retrieval system using two, loosely coupled network components, the method comprising: executing, on a first computer system, data detection, storage and retrieval processes for representing correlated information to an end user of a business system; capturing, on a second computer system, electronic communications data from one or more data sources wherein each data source is one of an external service and digitally captured conversations; extracting a user-supplied configuration and data from storage in the first computer system by the second computer system and automatically identifYing, by the second computer system, relevant communications relating to a selected record in the first computer system using the user-supplied configuration and the data; and automatically displaying, by the first computer system, the relevant communications identified by the second computer and relating to a specific record in the first computer system. REJECTIONS Claims 1--4, 7-35, and 38--44 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Taylor et al. (US 2008/ 0091774 Al; published Apr. 17, 2008) ("Taylor") and Bauchot et al. (US 2008/0091 734 A 1; published Apr. 17, 2008) ("Bauchot"). 2 Appeal2015-004006 Application 13/019,295 Claims 5, 6, 36, and 37 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Taylor, Bauchot, and Thrasher (US 2007 /0005590 Al; published Jan. 4, 2007). ANALYSIS Issue: Did the Examiner err in finding the combination of Taylor and Bauchot teaches or suggests automatically identifying, by the second computer system, relevant communications relating to a selected record in the first computer system using the user-supplied configuration and the data; and automatically displaying, by the first computer system, the relevant communications identified by the second computer and relating to a specific record in the first computer system, as recited in independent claim 32 and commensurately recited in independent claim 1? The Examiner relies on Bauchot to teach or suggest the disputed limitations. (Final Act. 3--4, citing Bauchot i-fi-f 18-22). The Examiner further identifies the client mail application (User Agent) and mail server (MT A) in Bauchot as the first computer system and second computer system, respectively. (Ans. 17-18, citing Bauchot Fig. 2). Appellants contend Bauchot does not teach or suggest "any interplay between two separate computers" and specifically provides that the actions identified in paragraphs 18 through 22 "occur[ s] in the 'mail client application' - obviously within a single computer." (App. Br. 7). Appellants further argue the Examiner has not identified where Bauchot describes that the mail server (second computer system) identifies relevant 3 Appeal2015-004006 Application 13/019,295 communications relating to a selected record in the client mail application (first computer system) and the display by the client mail application of those records identified by the mail server. (Reply Br. 6). We are persuaded by Appellants' arguments. Having considered the Examiner's findings with respect to the teachings in Bauchot, we find the Examiner has failed to provide sufficient findings that show that Bauchot teaches or suggests the disputed limitation. Absent the Examiner specifically addressing why the cited portion of Bauchot (Figure 2 and i-fi-f 18-22) discloses that the second computer system (mail server) automatically identifies relevant communications relating to a selected record in the first computer system (client mail application) using the user- supplied configuration and data, and the first computer system (client mail application) automatically displays the relevant communications identified by the second computer (mail server), we are left to speculate how and why the reference is being applied. Accordingly, we do not sustain the Examiner's 35 U.S.C. Â§ 103(a) rejection of independent claims 3 2 and 1, and dependent claims 2-31 and 33--44. DECISION For the above reasons, the Examiner's rejection of claims 1--44 is reversed. REVERSED 4