MICROSOFT TECHNOLOGY LICENSING, LLC

Patent Trials and Appeals Board

Jan 20, 2022

2020005662 (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. 14/865,346 09/25/2015 Sree Hari Nagaralu 356668-US-NP 2653 69316 7590 01/20/2022 MICROSOFT CORPORATION ONE MICROSOFT WAY REDMOND, WA 98052 EXAMINER WOLDEMARIAM, AYELE F ART UNIT PAPER NUMBER 2447 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): 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 SREE HARI NAGARALU, VENKATA SAI RAVALI BUSETTY, RANGANATH KONDAPALLY, KARTHIKEYAN RAMAN, NAVEEN KUMAR SETHIA, PAVAN KUMAR DASARI, and VIJAYENDRA GOPALRAO VASU Appeal 2020-005662 Application 14/865,346 Technology Center 2400 Before ELENI MANTIS MERCADER, JAMES R. HUGHES, and LARRY J. HUME, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Claims 1, 2, and 4-20 are pending, stand rejected, are appealed by Appellant, and are the subject of our decision under 35 U.S.C. § 134(a).1 See Final Act. 1-2; Appeal Br. 2.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 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. See Appeal Br. 2. 2 We refer to Appellant’s Specification (“Spec.”), filed Sept. 25, 2015; Appeal Brief (“Appeal Br.”), filed Mar. 27, 2020; and Reply Brief (“Reply Br.”), filed July 29, 2020. We also refer to the Examiner’s Final Office Appeal 2020-005662 Application 14/865,346 2 CLAIMED SUBJECT MATTER The claimed subject matter, according to Appellant, generally relates to “notifications or alerts” (Spec. ¶ 1) and, more specifically, to “generating notifications . . . according to user-defined notification templates” (Spec. ¶ 4). Still more specifically, Appellant’s claims are directed to computer- readable media, devices, and methods for generating user notifications according to user-defined notification templates. An exemplary method presents a user with an email message that is generated by a user defined template stored in a template store. The system receives a signal of a user to view a first email message (i.e., a user selecting a first email message), determines that a user-defined template in the template store applies to the first email message, and generates a representation of the first email message according to the first user-defined template that includes “a user actionable control to conduct [a] user action based on the content of the email message,” “and includes at least some content of the first email message and excludes at least some content of the first email message” (claim 1). The method then presents the generated representation (of the first email message) on a user’s computing device. See Spec. ¶¶ 4-7, 24, 25, Abstr. Claim 1 (directed to a method), claim 11 (directed to a computer-readable medium, and claim 18 (directed to a device) are independent. Action (“Final Act.”), mailed Nov. 18, 2019; and Answer (“Ans.”) mailed May 29, 2020. Appeal 2020-005662 Application 14/865,346 3 Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A computer implemented method for presenting an email message to a user on a computing device, the method comprising each of the following as implemented on a computing device comprising at least a processor and a memory: providing a template store, the template store including one or more user defined templates for presenting content of an email message, including a first user defined template defined by a first user; receiving a signal of the first user to view a first email message; determining that the first user defined template in the template store is applicable to the first email message; upon determining the first user defined template is applicable to the first email message, generating a presentation of the first email message according to the first user defined template, wherein the presentation of the first email message includes a user actionable control to conduct at least one user action based on the content of the email message and defined by the first user-defined template, and includes at least some content of the first email message and excludes at least some content of the first email message; and presenting the generated presentation of the first email message on the computing device. Appeal Br. 19 (Claims App.) (emphasis added). Appeal 2020-005662 Application 14/865,346 4 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Butler et al. (“Butler”) US 2014/0067497 A1 Mar. 6, 2014 Brune et al. (“Brune”) US 2016/0294964 A1 Oct. 6, 2016 REJECTION3 The Examiner rejects claims 1, 2, and 4-20 under 35 U.S.C. § 103 as being unpatentable over Brune and Butler. See Final Act. 3-7. ANALYSIS The Examiner rejects independent claim 1 (as well as independent claims 12 and 18, and dependent claims 2, 4-11, 13-17, 19, and 20) as being obvious over Brune and Butler. See Final Act. 3-5; Ans. 10-13. The Examiner relies on Brune for teaching most of the features of Appellant’s claim 1, including user-defined templates and generating a representation (a presentation) of the (first) email message. See Final Act. 3-5; Ans. 10-13 (citing Brune ¶¶ 26, 29, 30, 31, 34, 78, 79). The Examiner relies on Butler for teaching generating a representation of the email that includes “a user actionable control to conduct at least one user action” (claim 1) and also includes some content of the email message and excludes some content of the email message. See Final Act. 4-5; Ans. 10-11 (citing Butler ¶¶ 44-46). In the Answer, the Examiner explains that “sending the generated email to 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103. Because the present application has an effective filing date after the AIA’s effective date (March 16, 2013), this decision refers to 35 U.S.C. § 103. Appeal 2020-005662 Application 14/865,346 5 the user,” as described in Butler, “is similar to presenting the generated presentation of the first email message” because “sending the generated email” (which “contains . . . advertisements which corresponds [to] presenting the content of the [first] email [message)]” and, similar to “the presentation of a user actionable control,” Butler describes a “link provided in an email that a user can . . . click on [which] clearly corresponds to a user actionable control to conduct at least one user action.” Ans. 11. Appellant contends that Brune and Butler do not teach the disputed limitations of claim 1. See Appeal Br. 6-15; Reply Br. 1-4. Specifically, Appellant contends, inter alia, that “[t]he purported templates of Brune are merely ‘extraction templates,’” which are not user-defined templates as recited in claim 1. Appeal Br. 11. Appellant also contends “[s]ending a targeted email, as described in Butler, is a function of a third-party database that merely transmits ‘targeted emails to appropriate users,’” but “[s]ending a targeted email to targeted users does not necessarily include presenting any content as recited by the present claims.” Appeal Br. 12. Appellant further contends “Butler is silent with regard to the personalized emails including ‘a user actionable control to conduct at least one user action based on the content of the email message and defined by the first user-defined template.’” Appeal Br. 13; see Appeal Br. 11-15; Reply Br. 2-5. We find Appellant’s arguments persuasive of Examiner error. Although Brune describes custom templates in a custom template database and a template engine generating a notification (see Brune ¶¶ 19, 26, 29, 30, 31), Brune is silent with respect to the content of the notification. The Examiner relies on Butler to teach the content of the notification (supra). The Examiner interprets the target emails described in Butler as being Appeal 2020-005662 Application 14/865,346 6 equivalent to Brune’s notifications (and claim 1’s presentation of the first email message). See Ans. 11 (supra). In particular, the Examiner interprets the targeted emails as including (as well as excluding) some content from an original email message (the recited first email message) and that the targeted emails include “links” or user selectable (clickable) actions. See Final Act. 4-5; Ans. 10-12. In the Examiner-cited portions of Butler, however, as explained by Appellant (see Appeal Br. 11-15; Reply Br. 2-5), the targeted emails do not include or exclude information from a separate (original or first) email message, and do not include links or other user-selectable actions. See Butler ¶¶ 44-46. The only mention of any user interaction or user-selectable actions (that a user may click on) are website navigation links (see Butler ¶ 44). These links are not included in the target emails. Accordingly, Butler does not disclose, teach, or suggest digesting an email message into a notification (presentation) and does not suggest including links in a targeted email. Consequently, we are constrained by the record before us to find that the Examiner erred in finding that the combination of Brune and Butler renders obvious Appellant’s claim 1. Independent claims 12 and 18 include limitations of commensurate scope. Claims 2, 4-11, 13-17, 19, and 20 depend from and stand with their respective base claims. Thus, we do not sustain the Examiner’s obviousness rejection of claims 1, 2, and 4-20. CONCLUSION Appellant has persuasively shown that the Examiner erred in rejecting claims 1, 2, and 4-20 under 35 U.S.C. § 103. We, therefore, do not sustain the Examiner’s rejections of claims 1, 2, and 4-20. Appeal 2020-005662 Application 14/865,346 7 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4-20 103 Brune, Butler 1, 2, 4-20 REVERSED