MICROSOFT TECHNOLOGY LICENSING, LLC

Patent Trials and Appeals Board

Jan 31, 2022

2020006789 (P.T.A.B. Jan. 31, 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. 14/846,293 09/04/2015 Misbah Uraizee 357324-US-NP 6138 143198 7590 01/31/2022 MICHAEL BEST & FRIEDRICH LLP (MS) 790 N WATER ST SUITE 2500 MILWAUKEE, WI 53202 EXAMINER GOODWIN, SCHQUITA D ART UNIT PAPER NUMBER 2459 NOTIFICATION DATE DELIVERY MODE 01/31/2022 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): mkeipdocket@michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MISBAH URAIZEE, GEORGE ARTHUR HERBERT III, STEVEN LEPOFSKY, AARON STOLARZ, and REBECCA LAWLER ____________ Appeal 2020-006789 Application 14/846,293 Technology Center 2400 ____________ Before JAMES B. ARPIN, AMBER L. HAGY, and DAVID J. CUTITTA II, Administrative Patent Judges. ARPIN, Administrative Patent Judge. DECISION ON APPEAL1 Appellant appeals under 35 U.S.C. § 134(a), the Examiner’s final rejection of claims 1, 4, 5, 8, 11, 12, and 14-19, all of the pending claims. Final Act. 2.2 Claims 2, 3, 6, 7, 9, 10, 13, and 20 are canceled. Id. 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 (2012). Appellant identifies the real party-in-interest as Microsoft Technology Licensing, LLC. Appeal Br. 2. 2 In this Decision, we refer to Appellant’s Appeal Brief (“Appeal Br.,” filed June 24, 2020) and Reply Brief (“Reply Br.,” filed September 29, 2020); the Final Office Action (“Final Act.,” mailed January 24, 2020) and the Examiner’s Answer (“Ans.,” mailed July 31, 2020); and the Specification Appeal 2020-006789 Application 14/846,293 2 STATEMENT OF THE CASE Appellant’s claimed devices and methods relate to smart attachment of cloud-based files to exchanged communications. Inclusion of a locally stored attachment in an outgoing communication may be detected and a determination made whether a cloud version of the attachment is available. If the cloud version is available, the locally stored version or the cloud version of the attachment may be selected to be transmitted to a recipient. The selected version of the attachment may then be transmitted to the recipient along with the outgoing communication. Spec. ¶ 4. As noted above, claims 1, 4, 5, 8, 11, 12, and 14-19 are pending. Claims 1, 12, and 19 are independent. Appeal Br. 10 (claim 1), 11 (claim 12), 12 (claim 19) (Claims App.). Claims 4, 5, 8, and 11 depend directly or indirectly from claim 1; and claims 14-18 depend directly or indirectly from claim 12. Id. at 10-12. Claim 1, reproduced below with disputed limitations emphasized, is representative. 1. A computing device to provide smart attachment of cloud-based files to exchanged communications, the computing device comprising: a memory configured to store instructions; and one or more processors coupled to the memory, the one or more processors configured, via execution of the instructions stored in the memory, to in response to detecting inclusion of a locally stored attachment in an outgoing communication, automatically select one of the locally stored attachment and a cloud version of the (“Spec.,” filed September 4, 2015). Rather than repeat the Examiner’s findings and Appellant’s contentions in their entirety, we refer to these documents. Appeal 2020-006789 Application 14/846,293 3 locally stored attachment as a selected version of an attachment based at least in part on whether the locally stored attachment includes dynamic content and transmit the selected version of the attachment along with the outgoing communication. Appeal Br. 10 (Claims App.) (emphasis added). Each of claims 12 and 19 recite limitations corresponding to the disputed limitations of claim 1. Id. at 11, 12; see Final Act. 8, 10, and 11 (rejecting claims 12 and 19 for the same reasons as claim 1). REFERENCES AND REJECTIONS The Examiner relies upon the following references: Name3 Reference Issued/Pub. Filed Periwal US 6,163,776 Dec. 19, 2000 Mar. 23, 1998 Frid-Nielsen US 2010/0082713 A1 Apr. 1, 2010 Sept. 30, 2008 Jackson US 2011/0196933 A1 Aug. 11, 2011 Feb. 8, 2010 Bhogal US 2013/0086001 A1 Apr. 4, 2013 Sept. 30, 2011 Chen US 2014/0359085 A1 Dec. 4, 2014 May 28, 2013 Litan Sever US 2014/0359465 A1 Dec. 4, 2014 June 2, 2014 Mutha US 2016/0142350 A1 May 19, 2016 Nov. 18, 2014 The Examiner rejects:4 a. claims 1, 8, 12, and 19 under 35 U.S.C. § 103 as obvious over the combined teachings of Mutha and Jackson (Final Act. 6-8); b. claims 1, 8, 11, 12, 16, and 19 under 35 U.S.C. § 103 as obvious over the combined teachings of Bhogal and Jackson (id. at 8-11); 3 All reference citations are to the first named inventor only. 4 The Examiner also withdraws the rejection of claims 1, 4, 5, 8, 11, 12, and 14-19 under 35 U.S.C. § 112(b) as indefinite. Ans. 5; see Final Act. 5-6. Appeal 2020-006789 Application 14/846,293 4 c. claims 4 and 5 under 35 U.S.C. § 103 as obvious over the combined teachings of Bhogal, Jackson, and Chen (id. at 11-13); d. claim 14 under 35 U.S.C. § 103 as obvious over the combined teachings of Bhogal, Jackson, and Mutha (id. at 13-14); e. claim 15 under 35 U.S.C. § 103 as obvious over the combined teachings of Bhogal, Jackson, and Litan Sever (id. at 14-15); and f. claims 17 and 18 under 35 U.S.C. § 103 as obvious over the combined teachings of Bhogal, Jackson, Frid-Nielsen, and Periwal (id. at 15- 17). The Examiner also objects to claims 1, 8, 11, 12, 16, and 19 as improperly describing a Markush group.5 Id. at 5. We review the appealed rejections for error based upon the issues identified by Appellant, and in light of the contentions and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Appellant and the Examiner focus their contentions and findings, respectively, on claim 1, so do we. See Appeal Br. 8; Ans. 10-11; Reply Br. 3. Because we determine that reversal of the rejection of independent claim 1, as well as of independent claims 12 and 19, is dispositive; except for our ultimate decision, we do not discuss the merits of the rejections of claims 4, 5, 8, 11, and 14-18 further herein. We address the rejections below. 5 Although the Examiner lists claim 18, independent claim 19 appears to recite a Markush group similar to that recited in independent claims 1 and 12. See Appeal Br. 10, 11, 12 (Claims App.). Consequently, we treat the listing of claim 18, instead of claim 19, as a harmless typographical error. Appeal 2020-006789 Application 14/846,293 5 ANALYSIS 1. Improper Description of Markush Group The Office has determined: When an examiner determines that the members of a Markush group lack either [(1)] a single structural similarity or a common use, or [(2)] if the single structural similarity is a substantial structural feature of a chemical compound that is not essential to the common use, then a rejection on the basis that the claim contains an “improper Markush grouping” is appropriate (see subsection II). Note that this is a rejection on the merits and may be appealed to the Patent Trial and Appeal Board in accordance with 35 U.S.C. 134 and 37 CFR 41.31(a)(1). MPEP § 706.03(y) (9th ed., Rev. 10.2019, Last Rev’d June 2020) (emphasis and bracketed numerals added); see, e.g., Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications (hereinafter “Supplementary Guidelines”), 76 Fed. Reg. 7162, 7166 (Feb. 9, 2011). Thus, when examiners have found that a proposed Markush group fails to satisfy one of these two conditions or if the Markush group is “so expansive that persons skilled in the art cannot determine the metes and bounds of the claimed invention,” the Office treats the determination of an improper Markush group as a rejection appealable to this Board. Supplementary Guidelines, 76 Fed. Reg. at 7166 (“Depending upon the circumstances of an application, it may be appropriate to reject a Markush claim under § 112, [¶ 2,] as indefinite (if one skilled in the art cannot determine the metes and bounds of the Markush claim due to an inability to envision all of the members of the Markush), or under the ‘improper Markush grouping’ doctrine (if the species of a Markush group do not share a single structural similarity or a common use).”); see, e.g., Ex Parte Dong, Appeal No. 2019- Appeal 2020-006789 Application 14/846,293 6 005531, 2020 WL 3820074, at *9-12 (PTAB July 1, 2020) (non- precedential) (analyzing an improper Markush grouping rejection). Here, however, the Examiner finds, “[c]laims 1, 8, 11, 12, 16, and [19] are objected to because of the following informalities: all the claims recite ‘one of {X} and {Z}.’ For grammar, the conjunction ‘and’ should be replace with ‘or.’” Final Act. 5 (emphases added); see supra note 5. Although the Examiner and Appellant debate whether “and” or “or” is the appropriate conjunction (Appeal Br. 6-7; Ans. 8-9), Appellant ultimately contends, based on the Examiner’s clarification of the claim objections (as relating solely to grammar and not affecting clarity or definiteness of the claims (see [Ans. 8])), Applicant notes that claim objections are not appealable to the Patent Trial and Appeal Board (“PTAB”) (see MPEP 706.01). Thus, this issue is moot for the present appeal. Reply Br. 2 (emphasis added). We agree with Appellant that, unlike a determination of an improper Markush group, an objection such as this is not appealable to this Board.6 6 In claims 1, 8, 11, 12, 16, and 19, Appellant uses an unconventional format for defining Markush groups. See, e.g., Appeal Br. 10 (Claims App.) (claim 1 recites “select one of the locally stored attachment and a cloud version of the locally stored attachment”); see also MPEP 703.03(y) (“Treatment of claims reciting alternatives is not governed by the particular format used (e.g., alternatives may be set forth as ‘a material selected from the group consisting of A, B, or C’ or ‘wherein the material is A, B, or C’).” (emphases added)). When prosecution resumes, Appellant should consider adopting the Examiner’s proposed revisions to claims 1, 8, 11, 12, 16, and 19 to avoid potential indefiniteness of the claims. Ans. 9 (“Therefore, the conjunction ‘or’ should be used for the open alternatives recited in the claims.”). Appeal 2020-006789 Application 14/846,293 7 2. Non-Obviousness of Claim 1 Over Mutha or Bhogal and Jackson As noted above, the Examiner rejects independent claim 1 as obvious over the combined teachings of Mutha and Jackson and of Bhogal and Jackson. Final Act. 6-8, 8-10. In particular, the Examiner finds that each of Mutha and Bhogal teaches or suggests a majority of the limitations recited in claim 1. Id. at 6-7 (citing Mutha ¶¶ 71, 281, 284, 286, 289, Figs. 2, 4), 8-9 (citing Bhogal ¶¶ 28, 38, 39, 41, 42, 49, Figs. 1-3). Nevertheless, the Examiner finds, “Mutha doesn’t explicitly disclose wherein the automatic selection is based at least in part on whether the locally stored attachment includes dynamic content.” Final Act. 7 (emphasis added). Similarly, the Examiner finds, “Bhogal doesn’t explicitly disclose wherein the automatic selection is based at least in part on whether the locally stored attachment includes dynamic content.” Id. at 9 (emphasis added). The Examiner finds, however: Jackson, in a similar field of endeavor, discloses wherein an automatic selection is based at least in part on whether a locally stored attachment includes dynamic content (0032 provides for the email contains static and non-interactive parts and an active part that is rendered instead of a static message; 0033 provides for rendering typical static e-mail messages and rendering active content; FIG. 38, step 342 and 0043 provides for the user “clicking” is an indication of dynamic content). Final Act. 7, 9. Further, the Examiner finds a person of ordinary skill in the relevant art would have had reason to combine the teachings of Mutha or Bhogal with those of Jackson to achieve the devices of claim 1. Id. at 8-9, 9-10. In particular, the Examiner finds: One of ordinary skill in the art before the effectively filed date of the claimed invention would have recognized the ability Appeal 2020-006789 Application 14/846,293 8 to utilize the teachings of Jackson for utilizing a second alternative mime part for active emails. The active emails of Jackson, when implemented with the mail attachment management of the Mutha system, will allow one of ordinary skill in the art to retrieve a static copy or active content. One of ordinary skill in the art would be motivated to utilize the active emails of Jackson with the mail attachment management of the Mutha system in order to deliver an email based on the user’s connection to the network. Therefore, the examiner concludes it would have been obvious to one of ordinary skill in the art at the time of applicant’s invention to arrive at the above-claimed invention. Id. at 8-9 (emphasis added); see id. at 10-11 (making corresponding findings regarding the combined teachings of Bhogal and Jackson). Appellant contends the Examiner errs in finding that the teachings of Mutha or Bhogal in combination with those of Jackson achieve the devices of claim 1. Appeal Br. 7-8. In particular, Appellant contends, “Jackson explicitly discloses including both an active part and an inactive part in a transmitted message. Thus, in Jackson there is no determination of what version of an attachment or data to include in a message (as part of and before actually transmitting the message to a recipient).” Id. at 8. Specifically, Appellant contends: Jackson discloses systems and methods for integrating “micro-blogs” with email. In particular, as described in Jackson, blog threads can be delivered as an email within a user’s email inbox. As explicitly described in Jackson, the blog threads delivered as email are not static email but include a dynamic object that allows a user to take various actions with respect to the blog - e.g., “like” the blog, comment on the blog, etc. (see, e.g., Paragraph [0003]). In particular, Paragraph [0032] of Jackson (cited by the Examiner) discloses that when a new comment is added to a blog (or other blog activity occurs) an email message is distributed, wherein the email message includes two different email parts. The first part is a static Appeal 2020-006789 Application 14/846,293 9 message (non-interactive). This part can be used for text searching and also when the user is using an email application that does not allow for active message components. The second part is active and includes a link to the actual blog. The email application uses the second part to pull current, active content from the blog when the user opens the email message. Appeal Br. 7 (emphases added); see Jackson ¶ 33 (describing results of clicking on static or active part of email). Thus, Appellant contends Jackson discloses that every email includes a static part and an active part, but Jackson does not teach or suggest selecting an attachment “based at least in part on whether the locally stored attachment includes dynamic content.” The Examiner responds that Appellant is attacking the references individually when the rejection is based on their combined teachings. Ans. 10. Specifically, the Examiner finds Mutha (or Bhogal) teaches or suggests: Based on [the determination that the attachments of that email match a specific set of criteria], the system will either send out the email with the attachment or the system will send out the email with a link to the attachment (Mutha, 0285). The attachment version determination is based on whether certain characteristics of the attachment satisfy the link replacement rules. For instance, the file type or file size determines which version of an attachment to use in the email message (Mutha, 0285). Id. (underlining added). Although Mutha (or Bhogal) does not teach or suggest that these determinations are “based at least in part on whether the locally stored attachment includes dynamic content,” the Examiner finds: Jackson, in a similar field of endeavor, discloses an email server that detects whether an email includes dynamic objects embedded in an e-mail message (Jackson, 0006). As stated by Appellant “the blog threads delivered as email are not static email but include a dynamic object that allows a user to take various actions with respect to the blog - e.g., “like” the blog, Appeal 2020-006789 Application 14/846,293 10 comment on the blog, etc.” (Appeal Brief, pg. 7). The system of Jackson determines whether to send a “live,” dynamic e-mail message (Jackson, 0027) or whether to send a static, non- interactive e-mail message (Jackson, 0032). Id. at 10-11 (underlining added). Thus, the Examiner finds Jackson teaches or suggests “a system that sends emails based on the presence of an alternative [Multipurpose Internet Mail Extensions (MIME)] part.” Id. at 11 (emphasis added). We disagree with the Examiner. In response to the Examiner’s Answer, Appellant reviews the disclosure of each of Jackson’s paragraphs, upon which the Examiner relies. Reply Br. 4-6 (discussing Jackson ¶¶ 6, 27, 32). Appellant contends, none of the three sections of Jackson cited by the Examiner in the Answer make any mention of performing any type of determination of what version of an attachment to include in an outgoing communication or, in particular, making such a determination based on whether the attachment includes dynamic content as generally recited in claim 1. Reply Br. 4. Moreover, Appellant concludes: Accordingly, the mere fact that Jackson may recognize that an email can include “dynamic content” is not enough to conclude that Jackson, when combined with Mutha [or Bhogal], discloses the specific selective determination of what version of an attachment to include with an outgoing message based on whether the attachment includes dynamic content as generally recited in the claims - especially when Jackson itself makes no mention whatsoever of performing any type of selective determination of email attachments/inclusions. Id. at 6. We find nothing in the relied-upon paragraphs of Jackson that teaches or suggests performing a selective determination “based at least in part on whether the locally stored attachment includes dynamic content,” as recited in claim 1. Therefore, Appellant persuades us that the Examiner errs Appeal 2020-006789 Application 14/846,293 11 in relying on Jackson’s teachings to supply the limitations missing from Mutha’s and Bhogal’s teachings. Consequently, we are persuaded the Examiner errs in rejecting independent claim 1, as well as independent claims 12 and 19, as obvious over the combined teachings of Mutha and Jackson and of Bhogal and Jackson, and we do not sustain the rejection of those claims. For the same reason, we do not sustain the rejections of claims 8, 11, and 16, which are not argued separately from their base claims, claims 1 and 12. 3. The Remaining Rejections As noted above, the Examiner rejects claims 4, 5, 14, 15, 17, and 18 as obvious over the combined teachings of Bhogal and Jackson with those of one or more of Chen, Mutha, Litan Sever, Frid-Nielsen, and Periwal.7 Ans. 4-5. Each of claims 4, 5, 14, 15, 17, and 18 depends directly or indirectly from independent claim 1 or 12. Appeal Br. 10-12 (Claims App.). Because we are persuaded the Examiner errs with respect to the obviousness rejection of claim 1, as well as of claim 12, and because the Examiner does not rely on Chen, Litan Sever, Frid-Nielsen, or Periwal to supply the limitations missing from Mutha, Bhogal, and Jackson; we also are persuaded the Examiner errs with respect to the obviousness rejections of claims 4, 5, 14, 15, 17, and 18. For this reason, we do not sustain the rejections of claims 4, 5, 14, 15, 17, and 18. 7 The Examiner’s claim interpretation is not the basis for rejecting the pending claims. Ans. 6-7; see Final Act. 4-5. Appeal 2020-006789 Application 14/846,293 12 DECISION 1. The Examiner errs in rejecting: a. claims 1, 8, 12, and 19 under 35 U.S.C. § 103 as obvious over the combined teachings of Mutha and Jackson; b. claims 1, 8, 11, 12, 16, and 19 under 35 U.S.C. § 103 as obvious over the combined teachings of Bhogal and Jackson; c. claims 4 and 5 under 35 U.S.C. § 103 as obvious over the combined teachings of Bhogal, Jackson, and Chen; d. claim 14 under 35 U.S.C. § 103 as obvious over the combined teachings of Bhogal, Jackson, and Mutha; e. claim 15 under 35 U.S.C. § 103 as obvious over the combined teachings of Bhogal, Jackson, and Litan Sever; and f. claims 17 and 18 under 35 U.S.C. § 103 as obvious over the combined teachings of Bhogal, Jackson, Frid-Nielsen, and Periwal. 2. Thus, on this record, claims 1, 4, 5, 8, 11, 12, and 14-19 are not unpatentable. CONCLUSION For the above reasons, we reverse the Examiner’s decision rejecting claims 1, 4, 5, 8, 11, 12, and 14-19. In summary: Claim(s) Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1, 8, 12, 19 103 Mutha, Jackson 1, 8, 12, 19 1, 8, 11, 12, 16, 19 103 Bhogal, Jackson 1, 8, 11, 12, 16, 19 4, 5 103 Bhogal, Jackson, Chen 4, 5 14 103 Bhogal, Jackson, Mutha 14 Appeal 2020-006789 Application 14/846,293 13 Claim(s) Rejected 35 U.S.C. § References/Basis Affirmed Reversed 15 103 Bhogal, Jackson, Litan Sever 15 17, 18 103 Bhogal, Jackson, Frid-Nielsen, Periwal 17, 18 Overall Outcome 1, 4, 5, 8, 11, 12, 14- 19 REVERSED