Ex Parte Menadue

Patent Trial and Appeal BoardDec 4, 2014

12431159 (P.T.A.B. Dec. 4, 2014)

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. 12/431,159 04/28/2009 Andrew J. Menadue GB920080018US1 4627 54858 7590 12/05/2014 IBM CORP. (WIP) c/o WALDER INTELLECTUAL PROPERTY LAW, P.C. 17304 PRESTON ROAD SUITE 200 DALLAS, TX 75252 EXAMINER TIV, BACKHEAN ART UNIT PAPER NUMBER 2451 MAIL DATE DELIVERY MODE 12/05/2014 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 ANDREW J. MENADUE ____________________ Appeal 2012-007359 Application 12/431,159 Technology Center 2400 ____________________ Before CARLA M. KRIVAK, MICHAEL J. STRAUSS, and TERRENCE W. McMILLIN, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-007359 Application 12/431,159 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims 1–15. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE INVENTION The claims are directed to message handling responsive to a ruleset generated by a recipient of the message. Abst. Claim 1, reproduced below, is representative of the claimed subject matter: 1. A method, in a processing component of a server, for handling a message being transmitted from a sender to a recipient, the method comprising: receiving, by the processing component, a message from the sender, receiving, by the processing component, information identifying the recipient, accessing, by the processing component, a first predefined ruleset for the identified recipient, wherein the first predefined ruleset for the identified recipient is a ruleset generated by the recipient, applying, by the processing component, the first predefined ruleset to the message, identifying, by the processing component, infringements of the first predefined ruleset within the message and, based on identifying a set of identified infringements of the first predefined ruleset within the message, presenting, by the processing component, the identified infringements of the first predefined ruleset within the message to the sender, receiving, by the processing component, either a corrected message for the recipient or an ignore command from the sender, and responsive to receiving the corrected message for the recipient, transmitting, by the processing component, the corrected message for the recipient to the recipient. Appeal 2012-007359 Application 12/431,159 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Yam Lunati Lopez-Barquilla Blagsvedt Becker US 2003/0236658 A1 US 2005/0283726 A1 US 2006/0282266 A1 US 2007/0208813 A1 US 2008/0249763 A1 Dec. 25, 2003 Dec. 22, 2005 Dec. 14, 2006 Sept. 6, 2007 Oct. 9, 2008 REJECTIONS1 The Examiner made the following rejections: Claims 1, 2, 4, 6, 7, 9, 11, 12, and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Blagsvedt, Becker, and Lunati. Ans. 4– 7. Claims 3, 8, and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Blagsvedt, Becker, Lunati, and Lopez-Barquilla. Ans. 7– 9. Claims 5, 10, and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Blagsvedt, Becker, Lunati, and Yam. Ans. 9–11. 1 Appellant argues the rejection of independent claims 1, 6, and 11 collectively. Separate patentability is not argued for claims 2–5, 7–10, and 12–15. “A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.” 37 C.F.R. § 41.37(c)(1)(vii) (last sentence). Further, merely restating with respect to a second claim an argument, previously presented with respect to a first claim, is not an argument for separate patentability of the two claims. Therefore, based on Appellant’s arguments, we decide the appeal of claims 1–15 based on claim 1 alone. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2012-007359 Application 12/431,159 4 APPELLANT’S CONTENTION “[The prior art], taken alone or in combination, fail to teach or render obvious accessing, by the processing component, a first predefined ruleset for the identified recipient, where the first predefined ruleset for the identified recipient is a ruleset generated by the recipient.” App. Br. 9. ISSUE ON APPEAL Based on Appellant’s arguments in the Appeal Brief (App. Br. 6–24) and Reply Brief (Reply Br. 2–12), the issue presented on appeal is whether the Examiner erred in finding Becker teaches or suggests a ruleset generated by the recipient. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments the Examiner has erred. We disagree with Appellant’s conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Ans. 4–11) and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief (Ans. 11–12) and concur with the conclusions reached by the Examiner. We highlight the following for emphasis. Appellant’s arguments focus on the limitation of a ruleset generated by the recipient. When construing claim terminology during prosecution before the Office, claims are to be given their broadest reasonable interpretation consistent with the specification, reading claim language in light of the specification as it would be interpreted by one of ordinary skill in Appeal 2012-007359 Application 12/431,159 5 the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In this case, Appellant’s Specification does not expressly define the term “generated” or describe what is meant by “generated by the recipient.” Instead, the Specification discloses a “ruleset 26 for the identified recipient.” Spec. ¶ 22 (emphasis added). Therefore, in determining the ordinary and customary meaning of “generated” as viewed by a person of ordinary skill in the art, it is appropriate to consult a general dictionary definition for guidance. Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). An ordinary and customary meaning of “generate” is “to bring into existence; cause to be; produce.”2 Therefore, based on this definition and in light of Appellant’s Specification, one of ordinary skill in the art would understand the disputed ruleset generated by the recipient includes one or more rules of or “by” the recipient without regard to how those rules are obtained. We disagree with Appellant’s contention arguing Becker’s personalized spelling dictionary fails to teach a ruleset generated by a recipient. App. Br. 11. Because Becker’s user is also a recipient of the personalized output of Becker’s system, we agree with the Examiner Becker’s personalized spelling dictionary reflecting the user’s particular style includes and thereby teaches or suggests the disputed ruleset generated by the recipient. Furthermore, it is the combination of Blagsvedt and Becker that is relied upon by the Examiner for teaching or suggesting accessing a first predefined ruleset for the identified recipient, wherein the first predefined ruleset for the identified recipient is a ruleset generated by the 2 Morris, W., The American Heritage Dictionary of the English Language. Houghton Mifflin Company (1981) Appeal 2012-007359 Application 12/431,159 6 recipient as required by claim 1. In particular, the Examiner relies on Blagsvedt for teaching accessing a first predefined ruleset for the identified recipient. Becker is applied only for teaching that the ruleset is generated by the recipient, i.e., the origin of the ruleset. Because we agree Becker teaches or suggests the disputed limitation, we find Appellant’s arguments based on this contention unpersuasive of error. Although Appellant additionally contends “[o]ne of ordinary skill in the art . . . would not have found it obvious to combine and modify Blagsvedt, Becker, and Lunati to arrive at Appellant’s claimed invention” (App. Br. 16), no substantive argument in support of the contention is provided other than a naked allegation the claimed invention would not result. Furthermore, although Appellant includes separate headings for contentions of error in connection with claims 3, 8, and 13 (App. Br. 18–20) and claims 5, 10, and 15 (App. Br. 20–24), these contentions of error are substantially the same as argued in connection with claim 1 and are unpersuasive for the same reasons. In particular, under a broad but reasonable interpretation, a ruleset generated by a recipient includes and is taught or suggested by a ruleset of the recipient. Therefore, we are not persuaded of error in connection with the rejection of claims 3, 5, 8, 10, 13, and 15. For the reasons supra, we are unpersuaded of Examiner error. Accordingly, we sustain the rejections of independent claim 1 and, for the same reasons, independent claims 6 and 11 under 35 U.S.C. § 103(a) over Blagsvedt, Becker, and Lunati together with the rejections of dependent claims 2, 4, 7, 9, 12, and 14 that are not separately argued. We further sustain the rejection of claims 3, 8, and 13 under 35 U.S.C. § 103(a) over Appeal 2012-007359 Application 12/431,159 7 Blagsvedt, Becker, Lunati, and Lopez-Barquilla, and claims 5, 10, and 15 over Blagsvedt, Becker, Lunati, and Yam, these dependent claims also not separately argued. CONCLUSION The Examiner did not err in finding Becker teaches or suggests a ruleset generated by the recipient. DECISION The Examiner’s decision to reject claims 1–15 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)(iv). AFFIRMED msc