Ex Parte Saund et al

Patent Trial and Appeal BoardMar 5, 2018

14062934 (P.T.A.B. Mar. 5, 2018)

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. 14/062,934 10/25/2013 Eric Saund 20130923US01-XER3068US01 1008 61962 7590 03/05/2018 FAY SHARPE LLP / XEROX - PARC 1228 EUCLID AVENUE, 5TH FLOOR THE HALLE BUILDING CLEVELAND, OH 44115 EXAMINER BLACKWELL, JAMES H ART UNIT PAPER NUMBER 2177 MAIL DATE DELIVERY MODE 03/05/2018 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 ERIC SAUND, JAMES V. MAHONEY, and WILLIAM C. JANSSEN, JR. ____________ Appeal 2017-008158 Application 14/062,934 Technology Center 2100 ____________ Before DENISE M. POTHIER, MATTHEW J. McNEILL, and JASON M. REPKO, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s rejections of claims 1–31. App. Br. 3–7.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part. 1 The real party in interest is listed as Palo Alto Research Center Incorporated. App. Br. 1. 2 Throughout this opinion, we refer to (1) the Final Action (Final Act.) mailed February 9, 2016, (2) the Appeal Brief (App. Br.) filed November 9, 2016, (3) the Examiner’s Answer (Ans.) mailed March 8, 2017, and (4) the Reply Brief (Reply Br.) filed May 8, 2017. Appeal 2017-008158 Application 14/062,934 2 Invention Appellants seek to overcome shortcomings related to electronic messages and documents. See Spec. ¶ 6. For example, problems arise when a user wishes (1) to include portions of documents directly in an email message, (2) to view both the email’s body and attached material, and (3) to generate messages with inline images. Id. ¶¶ 3–5. Claim 1 is illustrative and reproduced below with emphasis: 1. A method for composing a message the method comprising: generating a display window; configuring the display window to include at least one page viewing region configured to display multiple page images of a multi-page document; configuring the display window to include at least one message composition region, for composition of the message, and selecting and transferring, by use of a selection-transfer mechanism, material from the at least one page viewing region to the at least one message composition region for use in the composing of the message[,] wherein the generating, configuring and selecting are performed using a single application without a requirement of opening another separate application during composition of the message, and wherein the method is performed by use of an electronic computing device. The Examiner relies on the following as evidence of unpatentability: Lee US 6,061,696 May 9, 2000 Cody US 2004/0183830 A1 Sept. 23, 2004 Bienstock US 2006/0075033 A1 Apr. 6, 2006 Bogestam US 2009/0327864 A1 Dec. 31, 2009 Ayers US 2014/0289614 A1 Sept. 25, 2014 (filed May 16, 2005) Appeal 2017-008158 Application 14/062,934 3 The Rejections Claims 1, 2, 4–8, 10, 11, 13, 21–24, and 26–313 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Bienstock. Final Act. 3–12. Claims 3, 15–17, and 19 are rejected under 35 U.S.C. § 103 as unpatentable over Bienstock and Lee. Final Act. 12–17. Claims 9 and 18 are rejected under 35 U.S.C. § 103 as unpatentable over Bienstock and Ayers. Final Act. 17–18. Claims 12, 14, and 25 are rejected under 35 U.S.C. § 103 as unpatentable over Bienstock and Bogestam. Final Act. 18–20. Claim 20 is rejected under 35 U.S.C. § 103 as unpatentable over Bienstock and Cody. Final Act. 20. THE ANTICIPATION REJECTION OVER BIENSTOCK Regarding representative claim 1,4 the Examiner finds Bienstock discloses all its limitations (Final Act. 3–6), including the recited “selecting and transferring” step (id. at 5 (citing Bienstock ¶¶ 39–47, Figs. 6–8)). See also Ans. 5–8. Appellants argue Bienstock does not disclose “the user can generate multimedia message content integrated with the composed electronic message content, i.e. selecting and transferring material from the 3 Although including claims 12, 18, and 25 in the rejection’s heading (Final Act. 3), these claims are not discussed in the rejection’s body (id. at 10–12). Rather, claim 18 is rejected based on Bienstock and Ayers (id. at 17–18), and claims 12 and 25 are rejected based on Bienstock and Bogestam (id. at 18–20). 4 Appellants argue claims 1, 2, 21, 22, and 26–31 as a group. See App. Br. 10. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2017-008158 Application 14/062,934 4 at least one page viewing region to the at least one message composition region for composition of the message.” App. Br. 10 (citing Bienstock ¶¶ 5–7); Reply Br. 3. Appellants contend Bienstock sends multi-media files with an email message but this “does not provide for the inclusion of multimedia material into the composition region or body of the email.” App. Br. 9 (citing Bienstock ¶ 41). Regarding dependent claim 4, Appellants argue Bienstock does not disclose a drag and drop operation from one region to another region as recited and is silent regarding a cut and paste operation. App. Br. 11. As for dependent claim 5, Appellants assert Bienstock is silent concerning a message composition region having multimedia objects, such that Bienstock does not disclose “a selection of those objects.” App. Br. 11–12. ISSUES Under § 102, has the Examiner erred by finding Bienstock discloses (I) “selecting and transferring . . . material from the at least one page viewing region to the at least one message composition region for use in the composing of the message” as recited in claim 1; (II) “the selecting and transferring is performed as one of a drag and drop operation or a cut and paste operation” as recited in claim 4; and (III) “including selecting objects in the at least one message composition region” as recited in claim 5? Appeal 2017-008158 Application 14/062,934 5 ANALYSIS I. Claims 1, 2, 21, 22, and 26–31 Based on the record before us, we find no error in the rejection of representative claim 1. At the outset, we agree with the Examiner that claim 1 does not recite (1) the term “integrated,” (2) a multimedia message “integrated” with the composed electronic message content, or (2) sending an email message. Ans. 7–8. Instead, claim 1 recites “[a] method for composing a message” and “selecting and transferring . . . material from the at least one page viewing region to the at least one message composition region for use in the composing of the message.” App. Br. 15 (Claims App.) (emphasis added). As broadly recited, the material transferred from a page viewing region to a message composition region in claim 1 is used in composing the message but does not require integrating a multimedia message with an electronic message’s content as argued. Thus, some of Appellants’ arguments (see App. Br. 9–10), are unavailing because they do not address the limitations in claim 1. As for the disputed limitation, “selecting and transferring . . . material from the at least one page viewing region to the at least one message composition region for use in the composing of the message,” the Examiner maps (1) “the right-hand panel” or menu 150 in Bienstock’s Figures 6 and 7 to the recited “page viewing region” in claim 1 and (2) “the left-handed panel” in these same figures to the recited “message composition region.” Ans. 6 (citing Bienstock, Figs. 6–8). When the user selects thumbnail 180 in Figure 7, for example, as the desired greeting card, some selected “material” is transferred from the page viewing region located at the right-hand side to Appeal 2017-008158 Application 14/062,934 6 the message composition region located at the left-hand side. See id.; see also Bienstock ¶¶ 42–43, Fig. 7. Additionally, this process in Bienstock is “for use in the composing of the message” (e.g., multi-media message) as broadly recited. See Bienstock ¶¶ 29–30, 52–53, Fig. 3. Thus, attempts to draw a distinction between “the greeting card generation” used in composing a message and “the intended ‘message’ of the electronic mail message” as argued (Reply Br. 2), are unavailing. See also id. at 2–3. In particular, Bienstock describes customizing a message to include a multi-media file. Bienstock ¶ 30. Moreover, although not required by claim 1, Bienstock also describes email as “[a]n email message” (id. ¶ 4) and discusses “the attached file is delivered as part of the email” (id. ¶ 5 (emphasis added)), such that any file attached to an email is considered part of its email message. Accordingly, the above steps in Bienstock are used to compose a message as recited, despite Appellants’ assertions that “Bienstock considers the multi-media file and the email message separately, rather than as parts to a whole.” App. Br. 10. The Specification is also consistent with this understanding. Spec. ¶¶ 3–5. Here, the disclosure states “it is common for electronic messages, such as email message, to contain attachments.” Id. ¶ 3. Thus, according to the disclosure, an email’s attachments are part of an email message. Granted, the disclosure further states the “[e]mail attachments are separated from the body of email message text.” Id. ¶ 4. Yet, claim 1 fails to recite a message’s body or content or that the recited “material” transfers to a specific part of the message. App. Br. 15 (Claims App.). Also, claim 1 does not recite “[t]he ability to produce and edit multimedia content in the body of the message.” Id. at 9. Arguments related to Bienstock’s attachments Appeal 2017-008158 Application 14/062,934 7 “not [being] in the body of the message” thus fail to address a limitation in claim 1. Id. at 8 (underlining omitted); see also id. at 8–9. Moreover, as addressed above, we disagree Bienstock fails to disclose transferring “material from one region to another” as asserted. Id. at 9. As for paragraph 36, Bienstock discloses adding a text message to email by selecting “Message” button 120. Bienstock ¶ 36. To be sure, this feature permits adding text to an email message. Yet, claim 1 broadly recites a message composition region. App. Br. 15 (Claims App.). Bienstock’s Figure 7 and its left-side panel are used to compose the greeting card that is part of the recited “message” and thus, Bienstock discloses the recited “message composition region” as previously discussed.5 We therefore determine Bienstock’s left-side panel in Figure 7 is “a message composition region” as an ordinarily skilled artisan would have understood, contrary to Appellants’ arguments. Reply Br. 3. Lastly, regarding Bienstock’s Figure 10 (App. Br. 10; Reply Br. 3–4), we agree with the Examiner that this figure describes “a display of how a recipient, not a sender[,] views the message sent by the sender.” Ans. 7; see also Bienstock ¶¶ 19, 53–54, cited in part in Ans. 8. As such, Appellants’ discussion of how the multimedia content is displayed when the sender receives a message (e.g., a link in Fig. 10) does not address how Bienstock discloses transferring material from different regions “for use in the composing of the message” as claim 1 recites. App. Br. 10. 5 Bienstock further permits customizing text within a greeting card. Bienstock ¶¶ 45–46. Appeal 2017-008158 Application 14/062,934 8 For the foregoing reasons, Appellants have not persuaded us of error in the rejection of independent claim 1 and claims 2, 21, 22, and 26–31 not separately argued. II. Claim 4 Claim 4 depends from claim 1 and further recites “the selecting and transferring is performed as one of a drag and drop operation or a cut and paste operation.” App. Br. 16 (Claims App.). Based on the record before us, we find error in the Examiner’s rejection of dependent claim 4. Appellants argue Bienstock teaches thumbnails 270 through 288 that can be dragged and dropped around picture window 268 and does not teach dragging and dropping material from one region to another. App. Br. 11 (citing Bienstock ¶ 51). We agree Bienstock’s dragging and dropping of thumbnails in Figure 7 is confined to a single window or region (e.g., 268) and does not disclose transferring material from the mapped “page viewing region” (e.g., right-side panel in Figure 7) to the mapped “message composition region” (e.g., left-side panel in Figure 7) as recited. See Ans. 7. Additionally, the Examiner finds Bienstock discloses “a cut and paste operation” in Figure 7 where a selected card is copied and pasted into the left-hand panel (e.g., a message composition region) for customization. Ans. 9 (citing Bienstock, Fig. 7). In response, Appellants contend a copy and paste operation differs from “a cut and paste operation,” which involves “remov[ing] document material for later placement according to a ‘paste’ command” as understood by those skilled in the art. Reply Br. 5. We agree. The Microsoft Computer Dictionary defines “cut and paste” as A procedure in which the computer acts as an electronic combination of scissors and glue for reorganizing a document . . . . In cut and paste, the portion of a document to be moved is Appeal 2017-008158 Application 14/062,934 9 selected, removed to storage in memory or on disk, and then reinserted into the same or a different document. Microsoft Computer Dictionary, 5th Edition 137–38 (2002). As such, an ordinary understanding to those skilled in the art of “a cut and paste operation” involves removing a selected portion of document to storage and reinserting the document portion into the same or different document or application. Although its possible that Bienstock’s act of selecting a greeting card (e.g., element 180) involves removing a part of the card to storage and then reinserting this part into its application (see Bienstock ¶¶ 42–43, Fig. 7), such possibilities or probabilities are insufficient to demonstrate Bienstock necessarily performs the recited “cut and paste operation” in claim 4 required to anticipate the claim. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). For the foregoing reasons, Appellants have persuaded us of error in the rejection of claim 4. III. Claims 5–8 Claim 5 depends indirectly from claim 1 and further recites “including selecting objects in the at least one message composition region.” App. Br. 16 (Claims App.). Appellants argue “Bienstock is silent with regard to a message composition region containing multimedia objects” and thus cannot disclose selecting such objects. Id. at 11. We disagree. The Examiner relies on the same figures in Bienstock to disclose the features in claim 5. Final Act. 7 (citing Bienstock ¶¶ 39–47, Figs. 6–8). In particular, the Examiner discusses the text for the cover or inside page of a greeting card (e.g., objects) located in the message composition region of Appeal 2017-008158 Application 14/062,934 10 Figure 7 can be changed and thus involves selecting such text. See Bienstock ¶¶ 45–46; see App. Br. 7. The Specification states text are objects. Spec. ¶ 42. Bienstock thus is not “silent” (App. Br. 11), regarding the message composition region containing “objects” and is not incapable of the recited “selecting” as asserted. App. Br. 11. Bienstock further shows other objects (e.g., graphic image of cupid) in the message composition region. Bienstock, Fig. 7. For the foregoing reasons, Appellants have not persuaded us of error in the rejection of claim 5 and dependent claims 6–8, which are similarly or not separately argued. IV. Claims 10, 11, 13, 23, and 24 Claim 10 depends on claim 1 and recites “generating an outgoing message composed of at least two of:” different object types (e.g., text, image, or graphic) or clips (e.g., audio or video). App. Br. 16 (Claims App.). For this claim, Appellants assert Bienstock does not disclose multimedia content or objects within the electronic message. Id. at 12. We disagree. Bienstock discloses an outgoing electronic message can include various multimedia elements, including text, greeting cards, animation, video, and sound. Bienstock ¶¶ 29, 43–47. As explained above, whether or not these elements are attachments within a message, these elements are still part of the generated “outgoing message” as recited. Dependent claims 23 and 24 recite similar limitations to claim 10 (App. Br. 18–19 (Claims App.)) and are sustained for similar reasons. Accordingly, Appellants have not persuaded us of error in the rejection of claim 10 and dependent claims 11, 13, 23, and 24, which are not separately argued. Appeal 2017-008158 Application 14/062,934 11 THE OBVIOUSNESS REJECTIONS Claims 3, 9, 12, 14–20, and 25 are rejected as obvious based on Bienstock and another reference (e.g., Lee, Ayers, Bogestam, or Cody). Final Act. 12–20. Appellants rely on the arguments presented for claim 1 and further contend the additionally cited references do not cure the purported deficiencies. App. Br. 12–13. We are not persuaded for the above reasons. Accordingly, we sustain the rejections of claims DECISION We affirm the Examiner’s rejection of claims 1, 2, 5–8, 10, 11, 13, 21–24, and 26–31 under § 102 and claims 3, 9, 12, 14–20, and 25 under § 103. We reverse the Examiner’s rejection of claims 4 under § 102. 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-IN-PART Notice of References Cited Application/Control No. Applicant(s)/Patent Under Patent Appeal No. Examiner Art Unit Page 1 of 1 U.S. PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code DateMM-YYYY Name Classification A US- B US- C US- D US- E US- F US- G US- H US- I US- J US- K US- L US- M US- FOREIGN PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code DateMM-YYYY Country Name Classification N O P Q R S T NON-PATENT DOCUMENTS * Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages) U V W X *A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).) Dates in MM-YYYY format are publication dates. Classifications may be US or foreign. U.S. Patent and Trademark Office PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No. 14/062,934 2017-008158 2177 Microsoft Computer Dictionary, 5th Edition 137–38 (2002).