Krishna Vitaldevara et al.

Patent Trials and Appeals BoardMar 25, 2020

15203449 - (D) (P.T.A.B. Mar. 25, 2020)

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. 15/203,449 07/06/2016 Krishna Vitaldevara 329931-US- CNT/170101-234C 1084 145266 7590 03/25/2020 NovoTechIP International PLLC 1717 Pennsylvania Ave. NW Suite #1025 Washington, DC 20006 EXAMINER TRAN, JIMMY H ART UNIT PAPER NUMBER 2456 NOTIFICATION DATE DELIVERY MODE 03/25/2020 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): akhlaghi@novotechip.com docketing@novotechip.com usdocket@microsoft.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KRISHNA VITALDEVARA, SANCHAN SAHAI SAXENA, ELIOT C. GILLUM, REBECCA PING ZHU, and TYLER J. SCHNOEBELEN Appeal 2018-006878 Application 15/203,449 Technology Center 2400 Before JOSEPH L. DIXON, CHARLES J. BOUDREAU, and CARL L. SILVERMAN, Administrative Patent Judges. DIXON, 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 to reject Claims 21–40 in the Final Rejection. Claims 1–20 are canceled. 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) (2017). Appellant identifies the real party in interest as Microsoft Technology Licensing, LLC. Appeal Br. 2. Appeal 2018-006878 Application 15/203,449 2 CLAIMED SUBJECT MATTER The claims are directed to displaying tagged email messages, selectable information, and textual descriptions. Claim 21, reproduced below, is illustrative of the claimed subject matter: 21. A computing device, comprising: one or more processors; and a memory comprising instructions stored thereon that, responsive to execution by the one or more processors, implement an email application, the email application configured to: cause display of a tagged email message and a selectable information control that correlates to an email tag for the tagged email message; and in response to an initiation of the selectable information control, cause display of a textual description that indicates that an email filter was applied to the tagged email message. REFERENCES The prior art relied upon by the Examiner is: Purcell et al. US 2005/0204006 A1 Sept. 15, 2005 Tokuda et al. US 2007/0005702 A1 Jan. 4, 2007 Costea et al. US 2007/0143411 A1 June 21, 2007 Rounthwaite et al. US 2008/0010353 A1 Jan. 10, 2008 REJECTIONS Claims 21, 22, 24, 25, 29, 30, 36, and 37 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Tokuda. Claims 23, 26, 27, 31–33, and 38 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Tokuda in view of Costea. Appeal 2018-006878 Application 15/203,449 3 Claims 28, 35, and 40 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Tokuda in view of Costea in further view of Rounthwaite. Claims 34 and 39 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Tokuda in view of Costea in further view of Purcell. OPINION I. 35 U.S.C. § 102(b) Appellant argues Claims 21, 22, 24, 25, 29, 30, 36, and 37 as a group. Accordingly, we select independent Claim 21 as representative of the group. See 37 C.F.R. § 41.37(c)(1)(iv). This Appeal concerns whether Tokuda discloses the display of a tagged email message and what the term “email filter was applied” means in the context of the disclosed invention. a. Legal Principles It is well settled that, during patent examination, claims must be given their broadest reasonable interpretation consistent with the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc). The broadest reasonable interpretation standard requires the words of the claims to be given their “broadest reasonable meaning . . . in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). However, although we interpret claims broadly but reasonably in light of the Specification, we nonetheless must not import limitations from the Specification into the claims. See Phillips, 415 F.3d at 1323 (citations Appeal 2018-006878 Application 15/203,449 4 omitted). Furthermore, “[a]lthough an inventor is indeed free to define the specific terms used to describe his or her invention, this must be done with reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing Intellicall, Inc. v. Phonometrics, 952 F.2d 1384, 1387–88 (Fed. Cir. 1992) (“Where an inventor chooses to be his own lexicographer and to give terms uncommon meanings, he must set out his uncommon definition in some manner within the patent disclosure”)). However, the “prosecution history” should also be consulted. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). “Even under the broadest reasonable interpretation, the Board’s construction ‘cannot be divorced from the specification and the record evidence.’” Id. (citing In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011)). Nevertheless, [t]hough understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). b. Tagged Email Message Display With respect to the display of a tagged email message, the Examiner finds that Tokuda’s Figures 2 and 11 show the display of “a known fraudulent email . . . at line 42.” Final Act. 7. In response, Appellant argues that Tokuda does not show the display of “the actual fraudulent email.” Appeal Br. 19. Instead, Appellant argues, Appeal 2018-006878 Application 15/203,449 5 “[t]he email being moused over is a placeholder.” Appeal Br. 20; Reply Br. 20. We find Appellant’s argument unpersuasive because the broadest reasonable interpretation of the limitation “cause display of a tagged email message” does not require for the email message to be opened and the contents of the email message to be displayed. Indeed, Figures 2 and 3 of Appellant’s disclosure show the display of an opened email message. However, Claim 21 does not require for the contents of the tagged email message to be displayed and we can import this feature from the disclosure into the claim. Thus, the broadest reasonable interpretation of this limitation allows for email messages to be displayed in a list format. Tokuda discloses this limitation at least in Figures 2 and 11. Figures 2 and 11 show a listing of received email messages. Line 42 in Figures 2 and 11 is an example of a tagged email message that is displayed. Even though the tagged email message at line 42 is not opened such that its contents are displayed, the displayed tagged email message displayed at line 42 is consistent with the broadest reasonable interpretation of the limitation. Therefore, we agree with the Examiner’s findings. c. Email Filter With respect to the term “email filter was applied,” the Examiner determines that routing and/or sending fraudulent email away from an email inbox is not required by the claims. Final Act. 3; Ans. 11. The Examiner also finds that the claims do not require “any routing of the tagged email” and “do not specify how the email filter is applied to the tagged email.” Final Act. 3, 4. Instead, the Examiner finds that the claims only require “that an email filter was applied.” Id. The Examiner also finds that “the Appeal 2018-006878 Application 15/203,449 6 limitations does [sic] not require the email to be routed/send [sic] to a particular inbox. The limitation as ‘… an email filter was applied…’ is broad and does not specify how the emails are filtered but only requires emails being filtering [sic].” Ans. 11 (emphasis removed). Based on these findings, the Examiner concludes that classifying and/or identifying email messages as fraudulent, corresponding to spam, or neither fraudulent nor spam (i.e., safe) “is a form of” email filtering. Ans. 15 (emphasis omitted). The Examiner further concludes that Tokuda demonstrates that an email message has been filtered by displaying, in a pop-up box adjacent to a selected email message, a note that indicates that the selected email message has failed a fraud check (i.e., an indication that the selected email message has been filtered). See Final Act. 4; see also Ans. 13, 14. In response, Appellant generally argues that Tokuda does not disclose email filtering or emails that have been filtered. See Appeal Br. 18; see also Reply Br. 18. In support thereof, Appellant argues, Tokuda does not disclose technology capable of filtering tagged fraudulent emails, and, at best, is capable of filtering only untagged SPAM emails. Therefore, in Tokuda, an email filter was not applied to the fraudulent emails. To those skilled in the art, an email filter is applied by filtering an email from an inbox. Appeal Br. 18; see also Reply Br. 16, 17. Appellant notes that Tokuda displays information that an email message failed a fraud check, but that Tokuda still “does not route/send that fraudulent email away from the email inbox.” Appeal Br. 18. Appellant adds, “[o]ther emails, such as SPAM, may be moved to another folder but those emails do not have a logo or information to display regarding the reasons for being suspected as SPAM.” Id. Thus, Appellant concludes that Tokuda’s displayed note cannot indicate Appeal 2018-006878 Application 15/203,449 7 that an email filter was applied to an email message because fraudulent and spam emails are not routed away from the email inbox. See Appeal Br. 19. Appellant additionally concludes that Tokuda does not disclose “‘email filtering’ of any kind,” but instead simply is “directed to ‘call attention to the fraudulent email.’” Reply Br. 18. We have reviewed Appellant’s arguments in the Appeal Brief and Reply Brief, the Examiner’s rejections, and the Examiner’s responses to Appellant’s arguments. For at least the reasons discussed below, we agree with and adopt the Examiner’s factual findings and legal conclusions, as set forth in the Final Action and Examiner’s Answer. In our analysis below, we highlight and address specific findings and arguments for emphasis. We adopt the Examiner’s finding that the classification and/or identification of emails as being safe (i.e., not fraudulent) corresponds to the broadest reasonable interpretation consistent with the Specification of email filtering. Likewise, we agree with the Examiner that the broadest reasonable interpretation consistent with the Specification of classifying and/or identifying emails as fraudulent and/or spam corresponds to a form of “email filtering.” Ans. 11, 12, and 15. The Specification discloses that system 100 of Figure 1 includes an email distribution service 106 and an email routing service 120 as part of the email distribution service. Spec. ¶ 13. The email routing service 120 routes email messages 108 “to an email folder for a recipient of the email message, such as a user that is associated with the client device 102.” Spec. ¶ 14. According to the Specification, “[t]he email routing decisions may include any one of combination of user-created rules 122, email filters 124, and email lists 126 (e.g., safe sender list, contact list, safe domain list, safe mailing list, and the like).” Id. The email routing service 120 then tags “an Appeal 2018-006878 Application 15/203,449 8 email message 108 that has been routed to a particular email folder with an email tag 118 to generate a tagged email message 128.” Id. The email tags include “a routing description that indicates why an email message was routed to a particular email folder for a recipient of the email message.” Spec. ¶ 15. Thus, “[a] recipient of an email message can then determine, from the routing description, why an email message has been routed to a particular email folder” and can also “modify or adjust email filters, email lists, and/or user-defined rules so that subsequent email messages from the particular sender are routed to the email inbox as expected.” Id. Appellant has not identified any specific definition of the term “email filter.” Although the term “email filter” is not specifically defined by the disclosure, the disclosure provides two examples of tagged email messages being filtered. The first example pertains to a tagged email message 146 that has been received at the client device 102. See Fig. 2. According to the Specification, “the tagged email message 202 includes a selectable information control 204 that correlates to the email tag of the email message.” Spec. ¶ 19. As shown in Figure 2, “the routing description 208 indicates why the tagged email message 202 was routed to a particular email folder, such as the email inbox.” Spec. ¶ 20. In this example, “[t]he routing description 208 includes a selectable link 210, which may be a selectable link to a user- created rule, an email filter, or an email list.” Spec. ¶ 21. Hence, this example shows the display of an email message that has been routed to an inbox on a client device and the display of selectable information control with information indicating why the email message was routed to the inbox. The second example pertains to an email message that has been routed to a junk folder on a client device. See Fig. 3. Like the first example, Figure Appeal 2018-006878 Application 15/203,449 9 3 shows a tagged email message 302 with “selectable information control 304 that correlates to the email tag of the email message.” Spec. ¶ 22. As with the first example, this example shows the display of an email message that has been routed, but this example shows the email having been routed to a junk folder on a client device and the display of selectable information control with information indicating why the email message was routed to the junk folder. From our review of the two examples, we agree with the Examiner that Appellant has not identified any specific definition of the claimed “email filter.” Moreover, Appellant merely identified paragraphs 22–23, 27, and 30 in the Summary of Claimed Subject Matter, but has not cited to the Specification otherwise to identify a definition of the claim terminology. (Appeal Br. 3–15; Reply Br. 3–15.) The pertinent portion of Claim 21 recites in-part “email filter was applied to the tagged email message,” but as the Examiner points out, and with which we agree, Claim 21 does not require emails to be filtered away from an inbox and, in the case of Tokuda, fraudulent emails are filtered away from the inbox. Final Act. 3; Ans. 11. In other words, we determine that “email filter was applied to the tagged email message” is not specifically limited to either the first example or the second example and does not require “filtering an email from an inbox” as Appellant has argued. Appeal Br. 18; see also Reply Br. 16, 17. Accordingly, we are not persuaded the Examiner’s interpretation of the claimed “cause display of a textual description that indicates that an email filter was applied to the tagged email message” is overly broad or unreasonable or that the Examiner erred in finding that the Tokuda reference Appeal 2018-006878 Application 15/203,449 10 discloses “display of a textual description that indicates that an email filter was applied to the tagged email message.” Therefore, as a matter of claim interpretation, Appellant’s general argument is not commensurate in scope with the express language of representative independent claim 21 and is unpersuasive of error in the Examiner’s finding of anticipation. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”); In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“[The] proffered facts . . . are not commensurate with the claim scope and are therefore unpersuasive.”). For these reasons, we affirm the Examiner’s rejection under 35 U.S.C. § 102(b) of Claim 21, as well as the rejection of Claims 22, 24, 25, 29, 30, 36, and 37, which are not separately argued. II. 35 U.S.C. § 103 Appellant does not make separate arguments for dependent Claims 23, 26–28, 31–35, and 38–40. (Appeal Br. 20–21; Reply Br. 20–21.) Instead, Appellant requests withdrawal of the obviousness rejection on the same basis as Appellant’s arguments for independent Claims 21, 29, and 36, which are included in the group of Claims 21, 22, 24, 25, 29, 30, 36, and 37 addressed in the previous section. Appeal Br. 21, 22. Therefore, because Appellant does not separately argue for Claims 23, 26–28, 31–35, and 38–40 on any basis besides their respective dependencies from independent Claims 21, 29, and 36, we affirm the Examiner’s rejections under 35 U.S.C. § 103 of Claims 23, 26–28, 31–35, and 38–40 based upon the same line of reasoning above. Appeal 2018-006878 Application 15/203,449 11 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21, 22, 24, 25, 29, 30, 36, 37 102(b) Tokuda 21, 22, 24, 25, 29, 30, 36, 37 23, 26, 27, 31–33, 38 103 Tokuda, Costea 23, 26, 27, 31–33, 38 28, 35, 40 103 Tokuda, Costea, Rounthwaite 28, 35, 40 34, 39 103 Tokuda, Costea, Purcell 34, 39 Overall Outcome 21–40 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