International Business Machines Corporation

Patent Trials and Appeals Board

Jan 20, 2022

2020005785 (P.T.A.B. Jan. 20, 2022)

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. 16/110,262 08/23/2018 Jonathan F. Brunn RSW920150068US03 4881 75949 7590 01/20/2022 IBM CORPORATION C/O: Fabian Vancott 215 South State Street Suite 1200 Salt Lake City, UT 84111 EXAMINER PATEL, HARESH N ART UNIT PAPER NUMBER 2496 NOTIFICATION DATE DELIVERY MODE 01/20/2022 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): patents@fabianvancott.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JONATHAN F. BRUNN, JENNIFER E. HEINS, MARC D. LABRECQUE, and AMY WIDMER Appeal 2020-005785 Application 16/110,262 Technology Center 2400 Before JOSEPH L. DIXON, BETH Z. SHAW, and JOYCE CRAIG, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision rejecting claims 1-20, which are all of the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a) (2019). Appellant identifies International Business Machines Corporation as the real party in interest. Appeal Br. 2. Appeal 2020-005785 Application 16/110,262 2 CLAIMED SUBJECT MATTER According to Appellant, the claims are directed to controlling access to categorized messages. See Spec. ¶ 2. Claim 1, reproduced below, illustrates the claimed subject matter: 1. A method for controlling access to categorized messages, the method comprising: accessing a message objective field of an electronic message; extracting from the message objective field, a message objective for the electronic message, wherein the message objective is received as part of the electronic message; categorizing the electronic message into a number of categories according to the message objective, the message objective informing user association, message association, and message access rules for each of the number of categories; grouping the electronic message with other electronic messages; determining, based on the message objective, a number of users allowed access to the electronic message; and allowing the number of users to access the electronic message according to the message objective. Appeal Br. 31 (Claims App.). Appeal 2020-005785 Application 16/110,262 3 REFERENCES The Examiner relied on the following prior art as evidence: Name Reference Date Kirrmann et al. (“Kirrmann”) US 2007/0223533 A1 Sept. 27, 2007 Billsus et al. (“Billsus”) US 2007/0266095 A1 Nov. 15, 2007 Graff et al. (“Graff”) US 2013/0024524 A1 Jan. 24, 2013 Kang et al. (“Kang”) US 2013/0054720 A1 Feb. 28, 2013 Boberg et al. (“Boberg”) US 2014/0019605 A1 Jan. 16, 2014 Luo et al. (“Luo”) US 2014/0089430 A1 Mar. 27, 2014 Wetherell et al.(“Wetherell”) US 2014/0115495 A1 Apr. 24, 2014 Bayraktar el al. (“Bayraktar”) US 2014/0287786 A1 Sept. 25, 2014 Chandrasekaran et al. (“Chandrasekaran”) US 2015/0163182 A1 June 11, 2015 Proctor et al. (“Proctor”) US 2015/0163189 A1 June 11, 2015 Pappula US 2015/0261828 A1 Sept. 17, 2015 Feurtey et al. (“Feurtey”) US 2016/0050206 A1 Feb. 18, 2016 Lukács et al. (“Lukács”) US 2016/0149849 A1 May 26, 2016 REJECTIONS Claims 1-20 stand rejected on the ground of nonstatutory double patenting as unpatentable over claims 1-7 of U.S. Patent No. 9,705,924. Final Act. 3-5. Claims 1-20 stand rejected on the ground of nonstatutory double patenting as unpatentable over claims 1-15 of U.S. Patent No. 10,116,606. Final Act. 5-7. Claims 1 and 4 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Billsus, Proctor, and Graff. Final Act. 8-12. Claims 6-8 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Billsus in view of Proctor, Graff, and Kang. Final Act. 12-13. Appeal 2020-005785 Application 16/110,262 4 Claim 2 stands rejected under 35 U.S.C. § 103 as unpatentable over the combination of Billsus, Proctor, Graff, and Luo. Final Act. 13-14. Claim 3 stands rejected under 35 U.S.C. § 103 as unpatentable over the combination of Billsus, Proctor, Graff, and Chandrasekaran. Final Act. 14. Claim 5 stands rejected under 35 U.S.C. § 103 as unpatentable over the combination of Billsus, Proctor, Graff, and Bayraktar. Final Act. 14. Claims 9, 12, and 13 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Billsus, Proctor, Graff, and Kang. Final Act. 15-18. Claim 10 stands rejected under 35 U.S.C. § 103 as unpatentable over the combination of Billsus, Proctor, Graff, and Feurtey. Final Act. 18. Claim 11 stands rejected under 35 U.S.C. 103 as unpatentable over the combination of Billsus, Proctor, Graff, and Pappula. Final Act. 18. Claim 14 stands rejected under 35 U.S.C. § 103 as unpatentable over the combination of Billsus, Proctor, Graff, and Lukács. Final Act. 19. Claim 15 stands rejected under 35 U.S.C. § 103 as unpatentable over the combination of Billsus, Proctor, Graff, and Wetherell. Final Act. 20-22. Claims 16 and 17 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Billsus, Proctor, Graff, Wetherell, and Lukács. Final Act. 22. Claim 18 stands rejected under 35 U.S.C. § 103 as unpatentable over the combination of Billsus, Proctor, Graff, Wetherell, and Feurtey. Final Act. 23. Appeal 2020-005785 Application 16/110,262 5 Claim 19 stands rejected under 35 U.S.C. § 103 as unpatentable over the combination of Billsus, Proctor, Graff, Wetherell, and Kirrmann. Final Act. 23. Claim 20 stands rejected under 35 U.S.C. § 103 as unpatentable over the combination of Billsus, Proctor, Graff, Wetherell, and Boberg. Final Act. 24. OPINION Nonstatutory Double Patenting Rejection With regard to the Examiner’s rejections of claims 1-20 on the grounds of nonstatutory double patenting, Appellant states that “[w]hen given leave to do so, Appellant will address the terminal disclaimer following resolution of the above-noted rejections.” Appeal Br. 13. Because Appellant advances no arguments on appeal traversing the nonstatutory double patenting rejections, we pro forma sustain the Examiner’s rejections of claims 1-20 as unpatentable over claims 1-7 of U.S. Patent No. 9,705,924 and claims 1-15 of U.S. Patent No. 10,116,606. Obviousness Rejections Appellant argues that claim 1 is patentable because Billsus, Proctor, and Graff, in any combination, fail to teach or suggest the limitation categorizing the electronic message into a number of categories according to the message objective, the message objective informing user association, message association, and message access rules for each of the number of categories, as recited in claim 1. Appeal Br. 14.2 2 In its argument, Appellant appended “wherein each category comprises a number of electronic messages, a number of message objectives, and a number of users associated with the category” to the “categorizing” Appeal 2020-005785 Application 16/110,262 6 The Examiner found that Billsus teaches the disputed “categorizing” limitation, as recited in claim 1. Final Act. 8-10 (citing Billsus ¶ 6). In the Answer, the Examiner constructed examples of categorizing from teachings in Billsus that do not expressly teach or suggest categorizing. Ans. 5-6 (citing Billsus ¶¶ 6, 25-27). For the claim term “message objective,” the Examiner relied on teachings in Billsus that “portions of a message is tagged as shared,” (Billsus ¶ 27) and of “sharing by allowing users to express message sharing permissions to share content on demand, the granted permissions are communicated to all original message recipients and authors to enhance awareness of sharing decisions made by individual employees.” Ans. 5. The Examiner found that Billsus teaches that sharing “is accomplished through email author’s express sharing permissions via labeling messages before they are sent” (Billsus ¶ 6). Id. Appellant has persuaded us that the Examiner erred in finding that Billsus teaches or suggests “categorizing the electronic message into a number of categories according to the message objective,” as claim 1 requires. See Reply Br. 6-7. We agree with Appellant that the Examiner has not sufficiently identified where the prior art teaches or suggests categorization of messages based on a message objective extracted from the message itself. We are also persuaded that the Examiner’s examples of assigning access rights to email messages in Billsus are insufficient to teach or suggest the categorization of an electronic message into a number of categories limitation as recited in claim 1. See Appeal Br. 14. The “wherein” clause is recited in the “categorizing engine” limitation in claim 15. See id. at 34 (Claims App.). Appeal 2020-005785 Application 16/110,262 7 according to the message objective, as claim 1 requires. See id. Specifically, the Examiner has not identified a teaching of “categories” in the prior art. Instead, the Examiner relies on Billsus’s teaching of labeling messages by cc:ing a virtual e-mail address that represents a group of employees allowed to access the message. Ans. 5-6; Billsus ¶ 25. We agree with Appellant that this teaching of labeling messages is insufficient to teach or suggest the disputed limitation to an artisan of ordinary skill. See Reply Br. 6-7. For these reasons, we are persuaded that the Examiner erred in finding that the combination of Billsus, Proctor, and Graff teaches or suggests the disputed “categorizing” limitation, as recited in claim 1. Accordingly, on the record before us, we reverse the Examiner’s obviousness rejection of independent claim 1. We also reverse the Examiner’s obviousness rejections of independent claims 9 and 15, which recite “categorizing” limitations of similar scope. We also reverse the Examiner’s obviousness rejections of dependent claims 4, 12, and 13, rejected with and depending from independent claims 1 and/or 9. The obviousness rejections of dependent claims 2, 3, 5-8, 10, 11, 14, and 16-20 are also reversed because the Examiner did not rely on any of the additional prior art references to teach the limitation missing from the combination of Billsus, Proctor, and Graff. See Final Act. 12-15, 18-19, 22- 24. Because we agree with at least one of the dispositive arguments advanced by Appellant, we need not reach the merits of Appellant’s other contentions. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. Appeal 2020-005785 Application 16/110,262 8 1984) (finding an administrative agency is at liberty to reach a decision based on “a single dispositive issue”). CONCLUSION We affirm the Examiner’s nonstatutory double patenting rejections of claims 1-20. We reverse the Examiner’s § 103 rejections of claims 1-20.3 Because we affirm at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision rejecting claims 1-20 is affirmed. See 37 C.F.R. § 41.50(a)(1). DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-20 Nonstatutory Double Patenting, US 9,705,924 1-20 1-20 Nonstatutory Double Patenting, US 10,116,606 1-20 1, 4 103 Billsus, Proctor, Graff 1, 4 6-8 103 Billsus, Proctor, Graff, Kang 6-8 2 103 Billsus, Proctor, Graff, Luo 2 3 In the event of further prosecution, we leave it to the Examiner to determine whether the claims are directed to a judicial exception to patent eligible subject matter (e.g., a mental process) without significantly more under 35 U.S.C. § 101. See Manual of Patent Examining Procedure § 2106. Appeal 2020-005785 Application 16/110,262 9 3 103 Billsus, Proctor, Graff, Chandrasekaran 3 5 103 Billsus, Proctor, Graff, Bayraktar 5 9, 12, 13 103 Billsus, Proctor, Graff, Kang 9, 12, 13 10 103 Billsus, Proctor, Graff, Feurtey 10 11 103 Billsus, Proctor, Graff, Pappula 11 14 103 Billsus, Proctor, Graff, Lukács 14 15 Billsus, Proctor, Graff, Wetherell 15 16, 17 103 Billsus, Proctor, Graff, Wetherell, Lukács 16, 17 18 103 Billsus, Proctor, Graff, Wetherell, Feurtey 18 19 103 Billsus, Proctor, Graff, Wetherell, Kirrmann 19 20 103 Billsus, Proctor, Graff, Wetherell, Boberg 20 Overall Outcome 1-20 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED