Microsoft Technology Licensing, LLC

Patent Trials and Appeals Board

Dec 21, 2021

2020005402 (P.T.A.B. Dec. 21, 2021)

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