Microsoft Technology Licensing, LLCDownload PDFPatent Trials and Appeals BoardDec 21, 20212020005402 (P.T.A.B. Dec. 21, 2021) Copy Citation 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. 15/436,951 02/20/2017 Ethan J. Bernstein 400826-US-NP 4459 69316 7590 12/21/2021 MICROSOFT CORPORATION ONE MICROSOFT WAY REDMOND, WA 98052 EXAMINER IBRAHIM, MOHAMED ART UNIT PAPER NUMBER 2444 NOTIFICATION DATE DELIVERY MODE 12/21/2021 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): chriochs@microsoft.com ljohnson@microsoft.com usdocket@microsoft.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ETHAN J. BERNSTEIN, LUCIANA S. DANTAS, and MATTHEW D. WOOD ____________________ Appeal 2020-005402 Application 15/436,951 Technology Center 2400 ____________________ Before JOHN A. EVANS, JUSTIN BUSCH, and JOHN P. PINKERTON, Administrative Patent Judges. PINKERTON, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–20, which are all of the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Microsoft Technology Licensing, LLC, as the real party in interest. Appeal Br. 3. Appeal 2020-005402 Application 15/436,951 2 STATEMENT OF THE CASE Introduction Appellant generally describes the disclosed and claimed invention as relating to: an electronic mail (e-mail) computing system with “a smart reply system that . . . enables . . . a user to reply to an email message without downloading full content of the e-mail message to the user’s client computing system,” and “[a] draft roaming system [that] interacts with the client computing system to allow a plurality of different user devices to access a draft electronic mail message, and . . . with the smart reply system so a draft can be generated using the smart reply feature.” Spec. ¶ 10.2 Claims 1, 8, and 15 are independent. Independent claim 1, which is reproduced below, is illustrative of the subject matter on appeal: l. A computing system, comprising: at least one processor; and memory storing instructions executable by the at least one processor, wherein the instructions, when executed, configure the computing system to provide: electronic mail (email) functionality on an email service, the email functionality configured to receive an indication that a user is generating, on a first client device, a second email message comprising a response to a first email message in a mailbox for the user, the first email message including a first content portion and a second content portion; 2 Our Decision refers to the Final Rejection mailed Sept. 13, 2019 (“Final Act.”), Appellant’s Appeal Brief filed Mar. 4, 2020 (“Appeal Br.”) and Reply Brief filed July 15, 2020 (“Reply Br.”), the Examiner’s Answer mailed June 8, 2020 (“Ans.”), and the Specification filed Feb. 20, 2017 (“Spec.”). Appeal 2020-005402 Application 15/436,951 3 a smart reply system configured to: truncate the first email message, to obtain a truncated email message that includes the first content portion and omits the second content portion, and send, from the email service to the first client device, the truncated email message for generation of a draft of the second email message on the first client device; and a draft roaming system configured to: receive, from the first client device, an indication of a unique portion entered in the draft of the second email message by the user on the first client device; and save the draft of the second email message, including the unique portion, on the email service for access by the user from a second client device, wherein the smart reply system is configured to: in response to detection of the user accessing the draft of the second email message from the second client device, and before the second email message is sent to a recipient, send the truncated email message and the unique portion to the second client device, and wherein the email functionality is configured to: based on detection of actuation of a send actuator, send the second email message to the recipient. Appeal Br. 26–27 (Claims App.). Rejection on Appeal Claims 1–20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Bartlett (US 2009/0300121 A1; published Dec. 3, 2009) and Ferguson (US 2005/0193067 A1; published Sept. 1, 2005). Final Act. 4–11. ANALYSIS In rejecting claim 1 for obviousness based on the combination of Bartlett and Ferguson (see Final Act. 4–6), the Examiner finds Ferguson Appeal 2020-005402 Application 15/436,951 4 teaches a “smart reply system . . . configured to[,] . . . in response to detection of the user accessing the draft of the second email message from the second client device, and before the second email message is sent to a recipient, send the truncated email message and the unique portion to the second client device.” Id. at 5–6 (citing Ferguson ¶¶ 29, 33–36). Appellant contends the Examiner’s findings and reasoning are erroneous. See Appeal Br. 8–11; Reply Br. 2–6. For the reasons that follow, we determine that the Examiner erred. We begin our analysis with a brief overview of the prior art. Bartlett relates to a system for truncating incoming emails, forming responsive emails based on the truncated emails, and restoring the truncated portions before sending the messages to their destinations. Bartlett ¶ 23. Bartlett describes that truncating inbound email messages can allow an email client to preview and delete large, unwanted messages without having to download the messages first in their entirety. Id. ¶ 26. According to Bartlett, the truncator may be located on either the client or an email server, and original, un-truncated messages may be stored on the email server. Id. ¶¶ 27–28. In operation, the truncator processes the original message to produce a truncated message by copying the original message up to a predetermined message size, such that the truncated message may include a leading portion copied verbatim from the original message. Id. ¶ 29. “The truncator . . . may also add data to the truncated message 120 that defines where in the message the truncation occurred (e.g., a truncation index) and where the original, untruncated email . . . might be located (e.g., a unique message identifier),” and Bartlett describes that “this data can be used by an intermediary (e.g., server . . .) to later add the truncated data to Appeal 2020-005402 Application 15/436,951 5 any responsive emails sent by the client . . . that are formed based on the truncated message.” Id. ¶ 32. “After processing by the truncator component . . . , the truncated email . . . is sent to a client program . . . in [a] device . . . where it can be viewed by the user.” Id. ¶ 33. The user may edit the truncated message to form a response message, which may involve forwarding the message with additional data (e.g., date, original sender and recipients) prefixed to the message body, or using the original reduced message as a basis for a forward/reply, with comments added either at the top of the message or inserted into visible lines of the truncated message. Id. ¶ 34. Bartlett also describes that “[t]he edited message . . . may be expanded by the truncator . . . automatically or based on a user signal,” and “when creating the restored message, the truncator . . . may combine the stored message . . . with the truncated and edited message . . . in such a way that the resulting message . . . resembles what the original message . . . would have looked like if editing actions . . . were applied to the message . . . without truncation.” Id. ¶¶ 35–36. The restored message may be sent back to the original sender or routed to other destinations, including the targeted device itself. Id. ¶ 36. Ferguson relates to a system for synchronizing email drafts between a host system and a handheld device. Ferguson ¶¶ 6, 26. Ferguson describes that “[i]nstead of storing the user’s email drafts at the host system and then synchronizing the handheld device with the host system when the handheld device requests that such email drafts be communicated to it, the present invention employs a ‘push’ paradigm that continuously packages and Appeal 2020-005402 Application 15/436,951 6 retransmits the email drafts to the mobile data communication device in response to a triggering event detected at the host system.” Id. ¶ 7. In one embodiment, a user creates a draft of an email on the computer device . . . and saves it therein using the computer saving module . . . . Subsequently, the computer send trigger module . . . in the computer device . . . issues instructions that cause the computer sending module . . . to send the draft from the computer device . . . to the handheld device . . . . When the handheld device . . . receives the draft, the handheld drafts folder module . . . stores the draft in a drafts folder. The computer and handheld reconciliation modules . . . reconcile various versions of drafts. For example, due to delays associated with the wireless network . . . , the user may modify the draft on the handheld device . . . , and then modify the draft on the computer device . . . prior to the computer device . . . receiving the draft from the handheld device . . . . In this case, the computer reconciliation module . . . determines which draft is more recent, ignores the older version of the draft and saves the newer version. Id. ¶ 29. In operation, “[t]he user can write a draft of an email on the desktop,” “may then save the uncompleted draft thereon,” and the draft may be “sent to the handheld device.” Id. ¶ 33. “Subsequently, the user may log on to the handheld device,” “make modifications to the draft using a handheld editor,” and “save the modified draft on the handheld device.” Id. ¶¶ 33–34. Among other arguments, Appellant contends that the cited references do not teach or suggest “a smart reply system that ‘sends the truncated email message [sent to a first client device] and the unique portion [entered by the user on the first client device] to the second client device’, as recited in claim 1.” Reply Br. 2 (emphasis omitted); see id. at 4–5; Appeal Br. 9–11. For example, Appellant argues that “neither reference discusses identifying a truncated email message (a truncation of a first message that the user is Appeal 2020-005402 Application 15/436,951 7 replying to) that was sent to a first device, for use in sending a draft to a second device.” Appeal Br. 10. Appellant also argues that “Ferguson describes sending the draft email from the handheld device . . . to the recipient,” but “does not suggest, and cannot be said to teach, sending a truncated email message to the second client device.” Reply Br. 5. In addition, Appellant submits that there is no suggestion to one skilled in the art from the proposed combination of Bartlett and Ferguson of how to identify a truncated email message, sent to a first client device, to send to a second client device, or to identify a unique portion entered in a draft response on the first client device and send it to another client device along with the truncated email message. Appeal Br. 10. Having reviewed Appellant’s arguments in view of the Examiner’s findings and explanations, we determine the Examiner erred. In particular, the Examiner has not adequately shown that Bartlett or Ferguson, alone or in combination, teaches or suggests a smart reply system configured to send the truncated email message and the unique portion to the second client device “in response to detection of the user accessing the draft of the second email message from the second client device.” Bartlett describes sending a restored message (which combines a stored message with the truncated and edited message) to the original sender or another destination. See, e.g., Bartlett ¶¶ 35–36. But we find no evidence that Bartlett sends its restored message—or its edited message for that matter—in response to detecting a user accessing the message from a second device. Ferguson describes that a revised draft is sent or “pushed” from a computer device to a handheld device, but this is done subsequently to the user saving the draft—not in response to detecting the user has accessed the draft. See, e.g., Ferguson Appeal 2020-005402 Application 15/436,951 8 ¶¶ 9, 29. Ferguson also describes that each of its devices has a draft trigger module that “can detect changes to a draft folder either by constantly polling or through the use of notification events,” and “[w]hen a change is detected . . ., the change is then sent to the respective sending modules to be packaged and sent across the wireless network.” See id. ¶ 37. But this description is silent on whether the detectable changes would include an indication that the draft has been accessed by the user. Moreover, a first client device sending a change in a draft folder to a sending module within the same device is not the same as sending a draft (including truncated and unique portions) to a second client device in response to detecting the user accessing the draft from the second client device. Nor does the Examiner provide another finding or reasoning that adequately fills this gap in the rejection. See, e.g. Final Act. 2–3 (additionally citing Bartlett ¶¶ 26, 27, 29; Ferguson ¶ 26), 6 (reasoning without further explanation that the proposed combination would have been obvious “in order to [effect] synchronization of email draft across different devices”). Accordingly, we are constrained by this record to reverse the rejection of independent claim 1 under 35 U.S.C. § 103 for obviousness based on Bartlett and Ferguson. For similar reasons, we reverse the rejection of independent claims 8 and 15, and dependent claims 2–7, 9–14, and 16–20 under 35 U.S.C. § 103 for obviousness based on Bartlett and Ferguson. Each of these claims recites a limitation similar to the one at issue in claim 1, and the Examiner does not provide any other finding or reasoning that cures the deficiency discussed above. See Appeal Br. 28–29, 30–31 (Claims App.); Final Act. 8–11 (additionally citing Bartlett ¶¶ 14, 23, 28, 33, 39, 49; Ferguson ¶ 21). Appeal 2020-005402 Application 15/436,951 9 CONCLUSION We reverse the Examiner’s rejection of claims 1–20 under 35 U.S.C. § 103. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 103 Bartlett, Ferguson 1–20 Overall Outcome 1–20 REVERSED Copy with citationCopy as parenthetical citation