Microsoft Technology Licensing, LLC

Patent Trials and Appeals Board

Jan 12, 2022

2021000143 (P.T.A.B. Jan. 12, 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. 15/958,553 04/20/2018 Jason C. Buckingham 404099-US-NP/329916 6166 45809 7590 01/12/2022 MICROSOFT TECHNOLOGY LICENSING, LLC SHOOK, HARDY & BACON LLP INTELLECTUAL PROPERTY DEPARTMENT 2555 GRAND BOULEVARD KANSAS CITY, MO 64108-2613 EXAMINER WOLDEMARIAM, AYELE F ART UNIT PAPER NUMBER 2447 NOTIFICATION DATE DELIVERY MODE 01/12/2022 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): shbdocketing@shb.com usdocket@microsoft.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JASON C. BUCKINGHAM and BRANDON JAMES LEE HAIST Appeal 2021-000143 Application 15/958,553 Technology Center 2400 Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision rejecting claims 1-20, which are all claims pending in the application. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Microsoft Technology Licensing, LLC. Appeal Br. 1. Appeal 2021-000143 Application 15/958,553 2 STATEMENT OF THE CASE2 The claimed subject matter is directed to “Customized Controls for Handling Communication Content.” See Spec. (Title). Appellant’s disclosed embodiments and claimed invention “provide users with more control over the flow of messages into or out of their email mailbox, thus reducing the mis-delivery of automatically filtered messages.” Spec. ¶ 30. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on Appeal (emphasis added to contested prior-art limitation): 1. A method of filtering electronic messages, comprising: identifying a creation of a customized rule, wherein the customized rule comprises at least one criterion for filtering electronic messages, at least one mailbox management action to be executed upon (i) satisfaction of the at least one criterion and (ii) user approval subsequent to creation of the customized rule, and a notification to be presented prior to execution of the at least one mailbox management action upon satisfaction of the at least one criterion; receiving an electronic message; determining that the electronic message satisfies the at least one criterion of the customized rule; in response to determining that the electronic message satisfies the at least one criterion of the customized rule, issuing a notification, subsequent to the creation of the customized rule, corresponding to a satisfied criterion, the notification including at least one graphical user interface (GUI) input element 2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed Apr. 21, 2020); Examiner’s Answer (“Ans.,” mailed July 9, 2020); Final Office Action (“Final Act.,” mailed Jan. 10, 2020); and the original Specification (“Spec.,” filed Apr. 20, 2018). No Reply Brief was filed. Appeal 2021-000143 Application 15/958,553 3 prompting a user to provide an input via the at least one GUI input element to select a mailbox management action from at least one mailbox management action presented in the notification; receiving a user input via the at least one GUI input element selecting a mailbox management action from the at least one mailbox management action presented in the notification subsequent to the creation of the customized rule; and responsive to the user input, executing the selected mailbox management action on the electronic message. Appeal Br. 13 (Claims App.). REFERENCES The Examiner relies upon the following prior art as evidence: Name Reference Date Post et al. (“Post”) US 2013/0041958 A1 Feb. 14, 2013 Beausoleil et al. (“Beausoleil”) US 2015/0281156 A1 Oct. 1, 2015 REJECTION Claims 1-20 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Post and Beausoleil. Final Act. 4. CLAIM GROUPING Based on Appellant’s arguments (Appeal Br. 7-11) and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the obviousness rejection of claims 1-20 on the basis of representative claim 1.3 3 “Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the Appeal 2021-000143 Application 15/958,553 4 ISSUE Appellant argues (Appeal Br. 7-10) the Examiner’s rejection of claim 1 under 35 U.S.C. § 103 as being obvious over the combination of Post and Beausoleil is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests”[a] method of filtering electronic messages” that includes, inter alia, the step of “receiving a user input via the at least one GUI input element selecting a mailbox management action from the at least one mailbox management action presented in the notification subsequent to the creation of the customized rule,” as recited in claim 1? PRINCIPLES OF LAW “[O]ne cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” Id. at 425. In KSR, the Court stated “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv). In addition, when Appellant does not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). Appeal 2021-000143 Application 15/958,553 5 than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. . . . [A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. Id. at 417. Further, the relevant inquiry is whether the Examiner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellant. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv). We disagree with Appellant’s arguments with respect to claim 1 and, unless otherwise noted, we incorporate by reference herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in Appeal 2021-000143 Application 15/958,553 6 the Examiner’s Answer in response to Appellant’s arguments.4 We highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. Appellant contends Beausoleil does not teach or suggest the disputed limitation “receiving a user input via the at least one GUI input element selecting a mailbox management action from the at least one mailbox management action presented in the notification subsequent to the creation of the customized rule.” Appeal Br. 10. With reference to paragraphs 7 and 102 of Beausoleil, Appellant argues, Beausoleil, at best, can be said to provide a suggested rule notification to a user for acceptance or rejection. Beausoleil explicitly states that upon acceptance, the rules are automatically triggered and applied to received messages, which is completely contrary to the claimed element providing for the notification subsequent to the creation of the rule such that a user decides whether or not the already-created rule is applied to received messages, rather than an automatic application as described in Beausoleil. Appeal Br. 10. In response, the Examiner clarifies the findings relating to the disputed limitation: In response to the appellant's argument Beausoleil teaches receiving a user input via the at least one GUI input 4 See Icon Health and Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1042 (Fed. Cir. 2017) (“As an initial matter, the PTAB was authorized to incorporate the Examiner’s findings.”); see also In re Brana, 51 F.3d 1560, 1564 n.13 (Fed. Cir. 1995) (upholding the PTAB’s findings, although it “did not expressly make any independent factual determinations or legal conclusions,” because it had expressly adopted the examiner’s findings). Appeal 2021-000143 Application 15/958,553 7 element selecting a mailbox management action from the at least one mailbox management action presented in the notification (i.e. client can receive user input responsive to the prompt, [0102]) subsequent to the creation of the customized rule (i.e. after generating the suggested rule, [0007]). To clarify more, on Fig. 4C, client presents a prompt regarding the suggested rule to the user and receives user input responsive to the prompt. Therefore, the suggested rule was generated first and presented to the user to receive the user input. Ans. 11. We note Appellant does not respond to the Examiner’s clarifications and additional findings in the Answer because no Reply Brief was filed. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). We are not persuaded by Appellant’s arguments. Appellant concedes Beausoleil provides a suggested rule notification to a user for acceptance or rejection. Appeal Br. 10. We do not find the Examiner erred in finding Beausoleil’s suggested rule, when accepted by the user, teaches or at least suggests the claimed user-created “customized rule.” We agree with the Examiner because Beausoleil’s suggested rule and prompt provided to the user to either accept or reject the suggested rule at least suggests the disputed “notification subsequent to the creation of the customized rule” of claim 1 (emphasis added). Beausoleil ¶¶ 7, 102, Final Act. 4-6; Ans. 11. Moreover, we are not persuaded by Appellant’s arguments because they focus on the individual teachings of Beausoleil, and not what the combination of Post and Beausoleil would have suggested to a person with skill in the art. In further support of the Examiner’s rejection, we note the Appeal 2021-000143 Application 15/958,553 8 Examiner finds Post’s user creation of customized rules teaches “a creation of a customized rule.” See Final Act. 4, citing Post ¶ 82, see also Id. ¶ 85. Accordingly, we find a preponderance of the evidence supports the Examiner’s finding that the combination of Post and Beausoleil teaches or at least suggests the disputed limitation of claim 1. Based upon the findings above, on this record, we are not persuaded of error in the Examiner’s reliance on the cited prior art combination to teach or suggest the disputed limitation of claim 1, nor do we find error in the Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain the Examiner’s obviousness rejection of independent claim 1, and grouped claims 2-20, which fall therewith. See Claim Grouping, supra. CONCLUSION We AFFIRM the Examiner’s rejection. More specifically, Appellant has not persuasively argued that the Examiner erred with respect to the obviousness rejection of claims 1-20 under 35 U.S.C. § 103 over the cited prior art combination of record, and we sustain the rejection. DECISION SUMMARY Claims Rejected 35 U.S.C. § References/ Basis Affirmed Reversed 1-20 103 Post, Beausoleil 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)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED