Ex Parte Wolf et al

Patent Trial and Appeal BoardNov 9, 2012

10909380 (P.T.A.B. Nov. 9, 2012)

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. 10/909,380 08/03/2004 Werner G. Wolf 11884/425001 8058 23838 7590 11/09/2012 KENYON & KENYON LLP 1500 K STREET N.W. SUITE 700 WASHINGTON, DC 20005 EXAMINER LY, CHEYNE D ART UNIT PAPER NUMBER 2168 MAIL DATE DELIVERY MODE 11/09/2012 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 WERNER G. WOLF and DAVID L. SACKS ____________________ Appeal 2010-006028 Application 10/909,380 Technology Center 2100 ____________________ Before DEBRA K. STEPHENS, KALYAN DESHPANDE and HUNG H. BUI, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 1, 2, 4-10, 12-15, 17-23, 25, 26, and 40.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Real Party in Interest is SAP Aktiengesellschaft (SAP). Appeal Brief filed July 20, 2009 (“App. Br.”). 2 Claims 3, 11, 16, 24 and 27-39 are cancelled and are not on appeal. Appeal 2010-006028 Application 10/909,380 2 I. STATEMENT OF THE CASE Appellants’ Invention Appellants’ claims are generally directed to a method and apparatus for creating an activity record in a customer relationship management system from an email message. See generally Spec. ¶¶0018-0019. Claims on Appeal Claims 1, 14 and 40 are independent. Claims 1 and 40 are representative and are reproduced below with disputed limitations emphasized: 1. A method comprising: responsive to a request entered at an email application program while managing a private email account, exporting from the email application program content of an email message identified by the request to a business management system, wherein the business management system manages activity records for a plurality of business partner accounts; creating a first activity record in the business management system storing content of the identified email message therein; displaying email addresses of a sender and one or more recipients of the email message as a list; receiving a selection from the displayed list of email addresses; identifying a business partner account from the selected email address; Appeal 2010-006028 Application 10/909,380 3 storing the first activity record in a database of the business management system identified as pertaining to the identified business partner account; creating a second activity record identified as a follow up activity of the first activity record; and storing the second activity record in the database of the business management system. 40. An enterprise computer system, comprising: an email system providing email services for a plurality of enterprise system members via private member accounts; a business management system, managing activity records for business partner accounts of the enterprise system; and software, executing on the computer system, to export content of an email received at a private member account to the business management system according to a process that comprises: identifying, from address information in the received email, a business partner account to which the received email pertains; storing a first new activity record in the business management system that contains content of the received email; and storing a second new activity record in the business management system identified as a follow up activity for the first new activity record. Appeal 2010-006028 Application 10/909,380 4 Evidence Considered The prior art relied upon by the Examiner in rejecting the claims on appeal is: Allen U.S. 2003/0093483 A1 May 15, 2003 Adams U.S. 2004/0139163 A1 July 15, 2004 Madsen EP 1315106 A1 May 28, 2003 Examiner’s Rejections (1) Claims 1, 2, 4, 6, 9, 10, 12-15, 17, 19, 22, 23, 25, 26 and 40 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the Examiner’s combination of Madsen and Allen (Ans. 3-6); and (2) Claims 5, 7, 8, 18, 20 and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the Examiner’s combination of Madsen, Allen and Adams (Ans. 6-7). II. ISSUES Under § 103(a), the dispositive issue on appeal is whether the Examiner has erred in rejecting claims 1, 2, 4, 6, 9, 10, 12-15, 17, 19, 22, 23, 25, 26 and 40 as being obvious over Madsen and Allen. In particular, the issue turns on whether: (a) Madsen discloses the claimed features “creating a second activity record identified as a follow up activity of the first activity record” and “storing the second activity record in the database of the business management system,” as recited in independent claims 1 and 14; and (b) Madsen discloses the claimed feature “storing a second new activity record in the business management system identified as a follow up activity of the first new activity record,” as recited in independent claim 40? Appeal 2010-006028 Application 10/909,380 5 III. ANALYSIS We have reviewed Appellants’ arguments in the Briefs, the Examiner’s rejections and the Examiner’s responses to Appellants’ arguments. §103 Rejection of Claims 1, 2, 4, 6, 9, 10, 12-15, 17, 19, 22, 23, 25, 26 and 40 over Madsen and Allen With respect to independent claims 1 and 14, Appellants contend that Madsen does not disclose the claimed features “creating a second activity record identified as a follow up activity of the first activity record” and “storing the second activity record in the database of the business management system.” App. Br. 7-9. In response thereto, the Examiner has broadly construed the limitation “creating a second activity record identified as a follow up activity of the first activity record” as a second record that has been created after the first record has been created. Ans. 8. The Examiner then asserts that FIG. 1B of Madsen shows Activity X followed up by Activity Y and argues that the identification of Activity X and Activity Y reasonably supports that the second activity record (Y) identified as a follow up activity of the first activity record (X) because Y is a follow up to X alphabetically. Ans. 8. While claim terms are given their “broadest reasonable construction,” any such construction must be “consistent with the specification, … and that claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) (quoting In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983) (emphasis added). Appeal 2010-006028 Application 10/909,380 6 The Examiner’s construction here, though certainly broad, is unreasonably broad. The broadest-construction rubric does not give the Examiner a license to ignore or misinterpret claim terms, i.e., the relationship between the “first activity record” and the “second activity record” relative to the email message exported to the business management system. Rather, claims should always be read in light of the specification and teachings in the underlying patent. See Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217, 61 S.Ct. 235 (1940) (“The claims of a patent are always to be read or interpreted in light of its specifications.”). According to Appellants’ Specification, Appellants’ invention relates to a method and system, shown in FIG. 1, for creating and managing activity records in a customer-relationship business management system 140 based on an email message 115 between an email sender system 110 and an email receiver system 120. FIG. 1 of Appellants’ Specification is reproduced below: FIG. 1 shows a network in which an email message 115 is received and new activity record 155 is created in a business management system 140 based on the email message 115 Appeal 2010-006028 Application 10/909,380 7 As shown in FIG. 1, new activity record 155 may contain the content of the email message and may be associated to a business partner record and may reference any relevant sales opportunities, service calls, items, and transactional documents (e.g. invoices, orders, quotations, purchase orders, etc.). Spec ¶¶18-19. In addition, a second activity record is further created, shown in FIG. 5 below, as a follow-up of the first activity record, which may define future actions that should be taken regarding the email message. Spec ¶20, ¶35, ¶44, ¶50, ¶58 and ¶59. FIG. 5 of Appellants’ Specification is reproduced below: FIG. 5 shows how a user selects a follow-up action, via window, that creates a second activity record that may define future actions that should be taken regarding the email message When read in the appropriate context of independent claims 1 and 14 and Appellants’ Specification including FIG. 1 and FIG. 5, the broadest reasonable construction of the argued limitation is clear: The “first activity Appeal 2010-006028 Application 10/909,380 8 record” is created in the business management system storing content of the identified email message [exported from the email application program]. The “second activity record” is a follow-up activity of the “first activity record” and is created and stored in the same business management system. In addition, both the “first activity record” and the “second activity record” are created in response to the exportation of the single email message to the business management system. See App. Br. 8. In contrast to Appellants’ independent claims 1 and 14, Madsen simply discloses a method for transferring an email from a 1st computer system using an email organizer MS Outlook® to a 2nd computer system using a Siebel management program. See ¶0001 of Madsen. FIG. 1B of Madsen shows a sequence of how an email is transferred (or copied) from a MS Outlook® at the 1st computer system to a Siebel management program at the 2nd computer system. See ¶0035 of Madsen. FIG. 1B of Madsen is reproduced below: FIG. 1B shows the transfer of an email message between MS Outlook® and Siebel As shown in FIG. 1B of Madsen, at MS Outlook®, a list of received emails (e.g., Name 1, Mail 1; Name 2, Mail 2; and Name N, Mail N) is Appeal 2010-006028 Application 10/909,380 9 provided via Outlook window 101. At Siebel, a list of names (e.g., Name X and Name Y) 108 each with an associated activity (e.g., Activity X and Activity Y) 109 is provided via Siebel user interface 107. An email from MS Outlook® may be transferred when a function 103 or macro 104 is activated in the upper bar 102 of the Outlook window 101. For example, when function 103 or macro 104 is activated, an email 105 with Name N and its associated data Mail N is highlighted 106, and the highlighted email 105 is transferred or copied 110 as a new activity element in the Siebel program. See ¶0037 of Madsen. In other words, FIG. 1B of Madsen only shows a list of names (e.g., Name X and Name Y) 108 each with an associated activity (e.g., Activity X and Activity Y) 109 at Siebel user interface 107. “X” and “Y” at Siebel are used to depict the different type of email messages that were transferred or copied from MS Outlook®. As correctly noted by Appellants, “Activity X” and “Activity Y”, shown in FIG. 1B of Madsen, are not related, and “Activity Y” of Madsen is not a follow up to “Activity X” as incorrectly characterized by the Examiner. Rep. Br. 5. Thus, we do not find Madsen teaches or even suggests the disputed limitation “creating a second activity record identified as a follow up activity of the first activity record,” as recited in Appellants’ independent claims 1 and 14. In view of the Examiner’s incorrect claim construction and misreading of FIG. 1B of Madsen, we will not sustain the Examiner’s obviousness rejection of independent claims 1 and 14 and their respective claims 2, 4, 6, 9, 10, 12, 13, 15, 17, 19, 22, 23, 25 and 26. Appeal 2010-006028 Application 10/909,380 10 With respect to independent claim 40, Appellants further contend that Madsen does not disclose the claimed feature “storing a second new activity record in the business management system identified as a follow up activity for the first new activity record.” App. Br. 10-12; Rep. Br. 4-5. Again, we agree with Appellants’ contention regarding the Examiner’s incorrect claim construction and misreading of FIG. 1B of Madsen. App. Br. 10-12; Rep. Br. 4-5. Absence of the disclosure of the claimed feature “storing a second new activity record in the business management system identified as a follow up activity for the first new activity record” from Madsen, we will not sustain the Examiner’s obviousness rejection of claim 40 under 35 U.S.C. § 103(a) as well. §103 Rejection of Claims 5, 7, 8, 18, 20 and 21 over Madsen, Allen and Adams With respect to dependent claims 5, 7, 8, 18, 20 and 21, Appellants present no separate arguments for patentability of these claims. App. Br. 12. However, these claims depend on independent claims 1 and 14. As such, we will also not sustain the Examiner’s obviousness rejection of dependent claims 5, 7, 8, 18, 20 and 21 for the same reasons as discussed supra. V. CONCLUSION On the record before us, we conclude that the Examiner erred in rejecting (1) claims 1, 2, 4, 6, 9, 10, 12-15, 17, 19, 22, 23, 25, 26 and 40 under 35 U.S.C. § 103(a) as being unpatentable over Madsen and Allen, and (2) claims 5, 7, 8, 18, 20 and 21 under 35 U.S.C. § 103(a) as being unpatentable over Madsen, Allen and Adams. Appeal 2010-006028 Application 10/909,380 11 VI. DECISION As such, we reverse the Examiner’s rejections of claims 1, 2, 4-10, 12-15, 17-23, 25, 26 and 40 under 35 U.S.C. § 103(a). 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) (2010). REVERSED tj