Ex Parte Santamaria et al

Patent Trial and Appeal Board

Nov 30, 2016

12831983 (P.T.A.B. Nov. 30, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/831,983 07/07/2010 Justin Edward Santamaria 772.335US1 3522
45833 7590 12/02/2016
smwfPtMan t ttndrf.ro & wofssnfr/appt f EXAMINER
PO BOX 2938 SINGH, AMRESH
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MINNEAPOLIS, MN 55402 ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
12/02/2016 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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUSTIN EDWARD SANT AM ARIA,
BRYAN PRUSHA, and MARCEL VAN OS1
Appeal 2015-004729
Application 12/831,983
Technology Center 2100
Before CAROLYN D. THOMAS, MICHAEL M. BARRY, and
AARON W. MOORE, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 4—6, 13—15, 18—20, 22—24, and 26—30, which constitute all of
the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and, pursuant to 37 C.F.R. § 41.50(b), designate a
portion of our affirmance as a new ground of rejection.
1 Appellants identify the real party in interest as Apple Inc. (App. Br. 2.)
Appeal 2015-004729
Application 12/831,983
Introduction
Appellants state the invention pertains to “searching for text messages
on a handheld device.” (Spec 11.) Claim 1 is illustrative:
1. A method performed on a handheld device, comprising:
storing multiple text messages received by the handheld
device in a plurality of files on the device, each file of the
plurality of files containing a string of messages corresponding
to a conversation between the handheld device and another
device;
generating, on the handheld device, an index of the
multiple text messages in the plurality of files;
storing the index on the handheld device;
receiving a search term though a user interface of said
handheld device;
searching through stored text message information in the
index of the multiple text messages stored on said handheld
device for said search term;
displaying, in response to the searching, a listing of text
message conversations on a display, each conversation having at
least one text message whose text message information was
found to include said search term;
in response to a user selection of one of said conversations,
displaying a sequence of text messages within said one selected
conversation on the display;
highlighting a text message within said sequence of text
messages, said highlighted text message containing the search
term; and
providing an option to initiate a next text message through
said user interface;
wherein the multiple text messages are received by the
handheld device through a short messaging service protocol or a
multi media messaging protocol.
(App. Br. 19 (Claims App’x).)
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Rejections
Claims 1, 2, 4, 13—15, 18—20, 22—24, and 26—30 stand rejected under
35 U.S.C. § 103(a) as obvious over Fox et al. (US 2006/0075044 Al; Apr. 6,
2006) and Carey et al. (US 6,714,793 Bl; Mar. 30, 2004). (Final Act. 2—8.)
Claims 5, 6, and 23 stand rejected under 35 U.S.C. § 103(a) as
obvious over Fox, Carey, and Rodriguez (US 2011/0099584 Al; Apr. 28,
2011). (Final Act. 8-9.)
ANALYSIS
Claim 1
Appellants argue the Examiner errs in rejecting claim 1 by relying on
functionality from both the “conversaton assistant” of Fox’s client device
and Fox’s “conversation management system” (which is coupled to the
client device through a communication network) for teaching or suggesting
the recited “handheld device” requirement, contending that “whatever
functionality Fox discloses is achieved through the use of at least two
separate devices.” (App. Br. 10.) This does not persuade us. As the
Examiner finds, and we agree, Fox broadly teaches that functionality
between its conversation management system and conversation assistant can
be apportioned in various ways, and that the conversation assistant on a
client device can perform the functionality relevant to claim 1. (See Ans. 2—
3 (citing Fox | 54).)
Appellants also contend “[njeither Fox, nor Carey disclose, teach or
suggest the concept of storing ‘a string of messages’ in a plurality of files
where each file corresponds to ‘a conversation between the handheld device
and another device,’ as recited in claim 1.” (App. Br. 10.) Appellants argue
the Examiner’s findings disregard “the fact that claim 1 requires ‘storing
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Application 12/831,983
multiple text messages received by the handheld device in a plurality of files
on the device, each file of the plurality of files containing a string of
messages corresponding to a conversation between the handheld device
and another device.’ Fox does not teach, and the Examiner fails to even
allege that, the storage of messages in a plurality of files . . . .”2 (Reply Br.
3.)
We agree with Appellants that the Examiner does not identify a
disclosure in Fox that teaches the claimed “plurality of files” that each
contain a “string of messages.” We disagree, however, that Fox fails to
teach or suggest this requirement. Although not specifically cited by the
Examiner, we find Fox’s disclosure of “[i]n an alternate embodiment, all the
messages for each conversation are stored as a single record, document or
data structure in the message database” (1 1433 (emphasis added)) teaches or
suggests this requirement.
Appellants further contend the Examiner errs because “Fox does not
disclose the recitation of ‘generating, on the handheld device, an index of the
multiple text messages in the plurality of files,’” arguing the Examiner
erroneously asserts “that the ‘forms’ of Fox are ‘indexes’ generated by the
client device.” (App. Br. 11 (citing Fox || 70, 85, 93—94).) Appellants
2 The Examiner finds that “Fox, figure 3A, explicitly 3A:312 and 314,
Paragraphs [0062]-[0063], teach generation of a list of conversations, where
each conversation can contain multiple messages (string of messages). Fig
3B, displays the list of conversations, teaching conversation containing ‘a
string of messages’ [sic] . . . .” (Ans. 3; see also Final Act. 3 (citing Fox
Fig. 3A, 149).)
3 Fox also states, and we agree, that “[t]hose of ordinary skill in the art
would recognize other ways to store the message information.” (| 142.)
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Application 12/831,983
argue that “[a]s stated in Fox, ‘forms [are] for displaying the
conversations,’0 or to allow for ‘composing and sending a message.’” (Id.)
The Examiner finds, however, and we agree, that Fox’s forms include
information that provides an index to the conversations. (See Ans. 3 (citing
Fox 149).) This finding is consistent with the relevant dictionary meanings
of “index” (see, e.g., www.merriam-webster.com/dictionary/index (last
visited Nov. 28, 2016) (relevantly defining an index as “something . . . that
leads one to a particular fact...” or “a list... of some specified datum
. . .”)) and is consistent with the use of the term in Appellants’ Specification
(see, e.g., H 48-50).
Fox also discloses, for processing text messages, that “[a] message is
received, assigned to a conversation, indexed, assigned one or more
attributes and stored” (198), and that the messages are “indexed for
searching” (| 102). Accordingly, we agree with the Examiner that Fox
teaches generating and storing an index for subsequent use in searching of
received text messages as required by claim 1. Thus, we also find
unpersuasive Appellants’ contentions that Fox fails to teach the recited
“storing the index on the handheld device” and “searching through stored
text message information in the index of the multiple text messages stored
on said handheld device for said search term” (see App. Br. 11—12).
Appellants also contend the Examiner engages in impermissible
hindsight in combining the teachings of Fox and Carey. (App. Br. 12—13.)
The Examiner answers by finding it would have been obvious to combine
the related disclosures of Fox and Carey “to allow usage of SMS protocols
in Fox to deliver the instant messaging communication client devices as
taught by Carey, thus allowing Fox to include cellular devices,” which
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predictably “would allow [a] user’s handheld device, such as, [a] smart
phone, to browse email, as well as, use instant message on a cellular device.”
(Ans. 6.) Appellants reply (inter alia) that “[t]he Examiner fails to define or
provide evidence of what features, capabilities, or structures are embodied in
this hypothetical ‘smart phone,’ or show that such a device existed prior to
Appellants’] Application.” (Reply Br. 5.)
Appellants do not persuade us.
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and
does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.
In re McLaughlin, 433 F.2d 1392, 1395 (CCPA 1971). “[A]n analysis of
obviousness . . . may include recourse to logic, judgment, and common sense
available to the person of ordinary skill that do not necessarily require
explication in any reference or expert opinion.” Perfect Web Techs., Inc. v.
InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). We find the Examiner
sets forth sufficient “articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness.”4 In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006).
4 We note smartphones were well known well before to the filing date of
Appellants’ application. The Examiner “may take notice of facts . . . capable
of such instant and unquestionable demonstration as to defy dispute.” In re
Ahlert, 424 F.2d 1088, 1091 (CCPA 1970). To adequately traverse the
Examiner’s finding, Appellant must specifically point out the supposed
errors in the Examiner’s action, which would include stating why the noticed
fact is not considered to be common knowledge or well-known in the art.
See MPEP § 2144.03.
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Accordingly, we sustain the rejection of claim 1. Because our
analysis relies in part on disclosure from Fox not cited by the Examiner, we
designate our affirmance of the rejection of claim 1 as a new ground of
rejection pursuant to 37 C.F.R. § 41.50(b). Except as discussed above, this
new ground of rejection incorporates the findings and reasons of the
Examiner in the rejection of claim 1 (see Final Act. 3—5; Ans. 2—6). We also
sustain the rejection of dependent claims 4, 5, and 26, for which Appellants
provide no separate arguments.
Claims 2, 20, and 29
Appellants contend the Examiner errs in rejecting claims 2, 20, and 29
because Fox does not teach or suggest “displaying the most recent text
message in the selected conversation having the search term, and thereafter
displaying, automatically without user input after displaying the most recent
text message . . ., the most recent text message in the selected conversation”
as recited. (App. Br. 14.) The Examiner answers by finding the display of
snippets described in Fox teaches this requirement. (Ans. 7 (citing Fox | 65,
which refers to Fig. 3A).) We agree with Appellants. The cited portion of
Fox discloses that a snippet may be “generated from the most recent
message” but is silent as to automatic display of such a snippet after the
display of the most recent text message that includes a search term as part of
displaying a sequence of text messages, as recited. Accordingly, we do not
sustain the rejection of claims 2, 20, and 29.
Claim 6
Claim 6 depends from claim 5, which requires displaying “next” and
“previous” buttons for navigating to immediately preceding or following text
messages in a string. Claim 6 requires loading those adjacent text messages
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into a cache. (See App. Br. 20 (Claims App’x).) Appellants contend the
Examiner errs in finding Fox teaches this requirement5 because “the ‘cache’
discussed in Fox is a history of previous queries entered by a user, not
messages.” (App. Br. 15.) The Examiner answers by finding that the “query
cache” disclosure of Fox, in view of Fox’s teaching that functionality can be
divided flexibly between the conversation management system and
conversation assistant, teaches the requirements of claim 6. (Ans. 8 (citing
Fox Fig. 7A, || 54, 145).) We agree with Appellants. The cited disclosure
of Fox relates to caching of queries, but is silent as to the recited caching of
text messages. Accordingly, we do not sustain the rejection of claim 6.
Claim 13
The Examiner’s analysis in rejecting independent claim 13 consists
of: “Claim 13 is similar to claim 1 hence rejected similarly.” (Final Act. 6
(emphasis omitted).) Claim 13 includes several requirements with no
counterparts in claim 1, with one example being requirements for “meta data
of text messages.” (See App. Br. 19-21 (Claims App’x).) Appellants
contend the final rejection “failed to establish aprima facie case for
obviousness under § 103.” (App. Br. 16.) We agree.
The Examiner answers by finding “meta data, as defined by [the]
instant application ... is taught by Fox in Paragraphs [0057]-[0066] and
Fig[.] 3A, manipulation and creation of conversations, based on sender,
receiver, content (search terms) and dat[e]/time.” (Ans. 9.) Appellants reply
that “the cited references fail to disclose, teach or suggest ‘searching through
meta data of text messages for said search term, the meta data of text
5 See Final Act. 9 (citing Fox 1145, Figs. 3B, 6B—E).
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messages being stored separately from the text messages, the text messages
being stored in a plurality of files on the handheld electronic device,’” as
recited. (Reply Br. 6.) We again agree with Appellants. Accordingly, on
this record, we do not sustain the rejection of claim 13, or of its dependent
claims 14, 15, 18, 27, 28, and 29.
We note, in an ex parte appeal, the Board “is basically a board of
review—we review . . . rejections made by patent examiners.” Ex parte
Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001). Review pursuant to 35
U.S.C. § 134 “is not a process whereby the examiner . . . invite[s] the
[Bjoard to examine the application and resolve patentability in the first
instance.” Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999). The
Board’s primary role is to make our decision based on the findings and
conclusions presented by the Examiner. See 37 C.F.R. § 41.50(a)(1).
We express no opinion as to the validity of claim 13 in view of
additional explanation and/or references. Although we have authority to
designate a new ground of rejection under 37 C.F.R. § 41.50(b), which we
do for certain claims, no inference should be drawn when we elect not to do
so. See Manual of Patent Examining Procedure (MPEP) § 1213.02 (9th Ed.,
Rev. 07.2015, Nov. 2015).
Claim 19
Claim 19 recites a “tangible machine readable storage medium having
stored thereon program code” that, when processed, causes a method to be
performed, where the method comprises steps that correspond to steps also
recited in claim 1. (See App. Br. 19, 21—22 (Claims App’x).) The Examiner
rejects claim 13 as “similar to claim 1 hence rejected similarly.” (Final Act.
7 (emphasis omitted).) Appellants contend the Examiner errs in rejecting
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claim 19 for the same reasons as claim 1. We sustain the rejection of claim
19 for the same reasons discussed supra for claim 1,6 As with claim 1, we
designate this as a new ground of rejection. We also sustain the rejection of
dependent claims 22—24 and 30, for which Appellants provide no separate
arguments.
DECISION
For the above reasons, we affirm the rejections of claims 1, 4, 5, 19,
22—24, 26, and 30, and we reverse the rejections of claims 2, 6, 13—15, 18,
20, and 27—29. Pursuant to our authority under 37 C.F.R. § 41.50(b), we
enter new grounds of rejection for claims 1 and 19 as obvious under 35
U.S.C. § 103(a).
Section 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the prosecution will be
remanded to the examiner. The new ground of
6 Claim 19’s recited “searching through stored text message information”
requirement does not include index-related requirements as in claim 1. In
this regard, claim 19 is broader. We find that Fox’s disclosure that teaches
or suggests claim 1 ’s searching requirement also teaches or suggests claim
19’s searching requirement.
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rejection is binding upon the examiner unless an
amendment or new Evidence not previously of
Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner
reject the claims, appellant may again appeal to the
Board pursuant to this subpart.
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same Record. The request for rehearing
must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b)
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