RingCentral, Inc.

Patent Trials and Appeals Board

Aug 4, 2021

2020002681 (P.T.A.B. Aug. 4, 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.
15/640,357 06/30/2017 Vladimir Shmunis 12694.0056-00000 9668
127506 7590 08/04/2021
RINGCENTRAL/FINNEGAN
901 New York Avenue, NW
Washington, DC 20001
EXAMINER
FAN, HUA
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
08/04/2021 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):
Regional-Desk@finnegan.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VLADIMIR SHMUNIS, VLAD VENDROW,
PATRICE KHAWAM, CHRISTOPHER van RENSBURG, and
THEODORE JAFFE
____________

Appeal 2020-002681
Application 15/640,357
Technology Center 2400
____________

Before KARL D. EASTHOM, KARA L. SZPONDOWSKI, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1–20, i.e., all pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2019). Appellant identifies the real party in interest
as RingCentral, Inc. Appeal Br. 1.
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STATEMENT OF THE CASE
The Invention
The Specification states that the invention concerns “systems and
methods for automatically converting one or more emails to one or more
chat conversations in collaborative communications environments.” Spec.
¶ 1, Abstract.2 The Specification explains that “it can be difficult to manage
chat conversations and sharing of content across various tools” because
“users may utilize one application to manage their email threads and a
separate application to manage their chat conversations.” Id. ¶ 2. For
instance, “a user may have to manually import portions of an email thread
into a chat conversation or manually move files shared within a chat
conversation to an email thread.” Id. ¶ 3. Hence, the invention endeavors
to provide “systems and methods that more fully integrate a variety of
collaborative tools” by either converting an email thread to a chat
conversation or converting a chat conversation to an email thread. Id.
¶¶ 3–40.
Exemplary Claims
Independent claims 1 and 9 exemplify the claims at issue and read
as follows:
1. A system for automatically converting one or more
emails to one or more chat conversations, comprising:
a memory storing instructions; and

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed June 30, 2017; “Final Act.” for the Final Office Action,
mailed March 13, 2019; “Appeal Br.” for the Appeal Brief, filed October 22,
2019; “Ans.” for the Examiner’s Answer, mailed December 23, 2019; and
“Reply Br.” for the Reply Brief, filed February 22, 2020.
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a processor configured to execute the instructions to:
receive an email thread having at least one email,
receive a request to convert the email thread to a
chat conversation,
determine a plurality of recipients from the email
thread,
parse the email thread to determine a plurality of
conversation flows,
generate a plurality of chat conversations based
on the plurality of recipients and corresponding to the
plurality of conversation flows, and
generate chat messages between one or more of the
recipients containing portions of the email thread in an
order determined by the plurality of conversation flows.
9. A system for automatically converting a chat
conversation to an email thread, comprising:
a memory storing instructions; and
a processor configured to execute the instructions to:
receive at least one chat conversation,
receive a request to convert the at least one
chat conversation to an email thread,
determine a plurality of recipients from the at
least one chat conversation,
parse the at least one chat conversation to
determine a plurality of conversation flows,
generate a plurality of email threads between the
determined recipients containing portions of the chat
conversation in an order determined by the plurality of
conversation flows, and
transmit the generated email threads to an
email host for delivery to the determined recipients.
Appeal Br. 24, 27 (Claims App.).
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The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability under 35 U.S.C. § 102 and § 103, the
Examiner relies on the following prior art:
Name Reference Date
Ishikawa US 2001/0037314 A1 Nov. 1, 2001
Barshow et al. (“Barshow”) US 2015/0032829 A1 Jan. 29, 2015
Waltermann et al.
(“Waltermann”) US 2016/0065519 A1 Mar. 3, 2016
Lindsay et al. (“Lindsay”) US 2016/0323235 A1 Nov. 3, 2016
The Rejections on Appeal
Claims 1, 2, 4–6, 8–10, 12, 13, 15, 17, and 18 stand rejected under
35 U.S.C. § 102 as anticipated by Lindsay. Final Act. 4–7.
Claims 3, 7, 11, 14, and 16 stand rejected under 35 U.S.C. § 103 as
unpatentable over Lindsay and official notice (as supported by Ishikawa and
Barshow). Final Act. 7–8.
Claims 19 and 20 stand rejected under 35 U.S.C. § 103 as
unpatentable over Lindsay and Waltermann. Final Act. 8–9.
ANALYSIS
We have reviewed the rejections in light of Appellant’s arguments
that the Examiner erred. For the reasons explained below, we concur with
the Examiner’s findings and conclusions concerning unpatentability under
§ 102 and § 103. We adopt the Examiner’s findings and reasoning in the
Final Office Action and Answer. See Final Act. 2–9; Ans. 4–8. We add the
following to address and emphasize specific findings and arguments.
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The § 102 Rejection of Claims 1, 2, 4–6, 8–10, 12, 13, 15, 17, and 18
INDEPENDENT CLAIMS 1 AND 5:
“PLURALITY OF CONVERSATION FLOWS”
As noted above, the § 102 rejection of claims 1 and 5 rests on
Lindsay. See Final Act. 4–5. Appellant argues that the Examiner erred in
rejecting claims 1 and 5 because Lindsay fails to disclose the following
limitation in claim 1 and a similar limitation in claim 5: “parse the email
thread to determine a plurality of conversation flows.” See Appeal Br.
10–14; Reply Br. 3–4. In particular, Appellant contends that “[n]othing in
Lindsay suggests the parsing of a body into a plurality of replies constitutes
a ‘flow,’ as claimed.” Appeal Br. 11. Further, Appellant asserts that “even
if the series of email replies in Lindsay were to constitute a conversation
flow, Lindsay is silent regarding ‘a plurality of conversation flows.’” Id.
Appellant’s arguments do not persuade us of Examiner error. The
Specification indicates that determining a sender and one or more recipients
constitutes determining a conversation flow. See Spec. ¶¶ 247–250. Thus,
determining the various senders and the various recipients of the emails in
an email thread corresponds to determining a “plurality of conversation
flows.” See id. ¶¶ 247–253.
Lindsay’s system determines the various senders and the various
recipients of the emails in an email thread, and thus determines a “plurality
of conversation flows.” See Lindsay ¶¶ 31, 76–81, claims 1, 3–5, Fig. 4.
Lindsay distinguishes between an email conversation (email thread) and an
individual message. See id. ¶¶ 25, 27, 62. Lindsay describes converting an
email conversation (email thread) to chat messages by the following steps:
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(1) parsing the email conversation (email thread) to obtain
(i) an email body, (ii) a plurality of email replies, and
(iii) a plurality of file attachments;
(2) identifying the various senders and the various recipients
of the emails in an email conversation (email thread),
including senders and recipients “located either in the
header portion of the email or found within an email
message string”;
(3) generating chat conversations based on the identified
senders and recipients; and
(4) generating chat messages populated with (i) content from
the email body, (ii) content from each of the plurality of
email replies in separate chat messages, and (iii) “each
file attachment as a file transfer.”
Id. ¶¶ 31, 76–80, claims 1, 3–5, Fig. 4.
In Lindsay’s system, the sender of an email reply corresponds to a
previous recipient. By identifying in an email conversation (email thread)
an initial sender, one or more initial recipients, one or more subsequent
senders, and one or more subsequent recipients, Lindsay’s system
determines a “plurality of conversation flows” according to claims 1 and 5.
See Final Act. 5; Ans. 4. As the Examiner properly reasons, “‘the plurality
of email replies’ reads on the broadest reasonable interpretation of ‘a
plurality of conversation flows.’” Ans. 4.
In addition, Lindsay’s system may (1) receive a “second email request
having one or more additional emails associated with the email
conversation” and (2) create one or more additional chat messages “having a
body of each of the one or more additional emails.” Lindsay ¶ 81. When
Lindsay’s system creates multiple additional chat messages “having a body
of each of the one or more additional emails,” the system determines
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a “plurality of conversation flows” according to claims 1 and 5. See Final
Act. 5; Ans. 4.
INDEPENDENT CLAIMS 1 AND 5:
“PLURALITY OF CHAT CONVERSATIONS”
Appellant argues that the Examiner erred in rejecting claims 1 and 5
because Lindsay fails to disclose the following limitation in claim 1 and a
similar limitation in claim 5: “generate a plurality of chat conversations
based on the plurality of recipients and corresponding to the plurality of
conversation flows.” See Appeal Br. 14–15; Reply Br. 4–5. In particular,
Appellant contends that “Lindsay only discloses converting a single email
thread to a single IM chat session.” Appeal Br. 15. Further, Appellant
asserts that “Lindsay is silent regarding the ‘plurality of chat conversations’
recited in claims 1 and 5.” Id.
Appellant’s arguments do not persuade us of Examiner error. The
Specification indicates that a chat conversation includes a communications
link from a sender to one or more recipients. See Spec. ¶¶ 247–253. As
discussed above, Lindsay’s system identifies the various senders and the
various recipients of the emails in an email conversation (email thread) and
generates chat conversations based on the identified senders and recipients.
Lindsay ¶¶ 31, 76–81, claims 1, 3–4, Fig. 4. Lindsay’s system generates
chat conversations by establishing communications links between the
identified senders and recipients. Id. ¶¶ 76–80. Thus, Lindsay’s system
generates a “plurality of chat conversations based on the plurality of
recipients and corresponding to the plurality of conversation flows”
according to claims 1 and 5. See Final Act. 5; Ans. 5–6.
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As also discussed above, Lindsay’s system may (1) receive a “second
email request having one or more additional emails associated with the email
conversation” and (2) create one or more additional chat messages “having a
body of each of the one or more additional emails.” Lindsay ¶ 81. When
Lindsay’s system creates multiple additional chat messages “having a body
of each of the one or more additional emails,” the system establishes
multiple communications links between the identified senders and recipients.
Id. For this reason too, Lindsay’s system generates a “plurality of chat
conversations based on the plurality of recipients and corresponding to the
plurality of conversation flows” according to claims 1 and 5. See Final
Act. 5; Ans. 4.
INDEPENDENT CLAIMS 1 AND 5: “CHAT MESSAGES . . . IN AN ORDER
DETERMINED BY THE PLURALITY OF CONVERSATION FLOWS”
Appellant argues that the Examiner erred in rejecting claims 1 and 5
because Lindsay fails to disclose the following limitation in claim 1 and a
similar limitation in claim 5: “generate chat messages between one or more
of the recipients containing portions of the email thread in an order
determined by the plurality of conversation flows.” See Appeal Br. 16–17;
Reply Br. 5–6. Specifically, Appellant asserts that “Lindsay is silent
regarding any organization for the email replies added as IM chat session
messages.” Appeal Br. 16. In addition, Appellant contends that “Lindsay
does not disclose any ‘order’ in which the chat messages are arranged in an
IM chat session.” Reply Br. 6.
Appellant’s arguments do not persuade us of Examiner error. As
discussed above, Lindsay’s system generates chat messages populated with
(i) content from the email body, (ii) content from each of the plurality of
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email replies in separate chat messages, and (iii) “each file attachment as a
file transfer.” Lindsay ¶¶ 31, 76–80, claims 1, 3–5, Fig. 4. By generating a
chat message for each of the plurality of email replies, Lindsay’s system
generates “chat messages . . . in an order determined by the plurality of
conversation flows” according to claims 1 and 5. See Final Act. 5; Ans. 6–7.
As the Examiner properly reasons, the limitation “does not require
any specific order or a specific relation compared to the order of each
conversation flow in the plurality of conversation flows.” Ans. 6–7. Hence,
the Examiner correctly determines that “Lindsay’s teaching, i.e., the IM
service’s adding each email reply [contained in the plurality of email replies]
as a separate message to the IM chat session reads on ‘in an order
determined by the plurality of conversation flows.’” Id. at 7.
SUMMARY FOR CLAIMS 1 AND 5
For the reasons discussed above, Appellant’s arguments have not
persuaded us that the Examiner erred in rejecting claims 1 and 5 as
anticipated by Lindsay. Hence, we sustain the § 102 rejection of claims 1
and 5.
DEPENDENT CLAIMS 17 AND 18
Claim 17 depends from claim 1 and specifies that “at least one
conversation flow comprises a logical flow.” Appeal Br. 29 (Claims App.).
Claim 18 depends from claim 17 and specifies that “the processor is further
configured to determine the logical flow by classifying the at least one email
by subject based on context clues extracted from the at least one email.” Id.
at 30.
Appellant argues that the Examiner erred in rejecting claims 17
and 18 because
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[t]he first and second email requests of Lindsay are not from
“parsing the email thread to determine a plurality of
conversation flows,” like the claimed “conversation flows,”
much less are they used to “generate a plurality of chat
conversations . . . corresponding to the plurality of conversation
flows” or “generate chat messages . . . in an order determined
by the plurality of conversation flows,” as recited in
independent claim 1, from which claims 17 and 18 depend.
Appeal Br. 19 (alterations by Appellant). Appellant also argues that “[t]he
subject of a single group chat in Lindsay is not the claimed ‘conversation
flows.’” Id. at 20.
Appellant’s arguments do not persuade us of Examiner error. As
discussed above for claims 1 and 5, Lindsay’s system may (1) receive a
“second email request having one or more additional emails associated with
the email conversation” and (2) create one or more additional chat messages
“having a body of each of the one or more additional emails.” Lindsay ¶ 81.
When Lindsay’s system creates multiple additional chat messages “having a
body of each of the one or more additional emails,” the system determines a
“plurality of conversation flows.” See Final Act. 5; Ans. 4.
In addition, Lindsay’s system may extract the subject of an email
conversation (email thread) and use the extracted subject as the subject for
multiple chat messages that constitute a chat session. Lindsay ¶¶ 32, 45.
Multiple chat messages with the same subject correspond to a “logical flow”
according to claims 17 and 18. See Final Act. 6–7; Ans. 8. As the Examiner
properly reasons, “the conversation flow, either the first or the second, is
grouped and based on a subject extracted from the subject of the email and
utilized within the IM chat session, [and] therefore can be considered a
logical flow.” Ans. 8.
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Because Appellant’s arguments do not persuade us of Examiner error,
we sustain the § 102 rejection of claims 17 and 18.
INDEPENDENT CLAIMS 9 AND 12
Appellant argues that the Examiner erred in rejecting claims 9 and 12
because Lindsay fails to disclose the following limitation in claim 9 and a
similar limitation in claim 12: “generate a plurality of email threads between
the determined recipients containing portions of the chat conversation in an
order determined by the plurality of conversation flows.” See Appeal Br.
17–19. Specifically, Appellant asserts that “Lindsay fails to disclose or
suggest the claimed ‘plurality of conversation flows’ and thus cannot
disclose or suggest the claimed ‘plurality of email threads . . . in an order
determined by the plurality of conversation flows,’ as recited in claims 9
and 12.” Id. at 18 (alteration by Appellant). In addition, Appellant contends
that “Lindsay only discloses converting a single IM chat session to a single
email conversation.” Id.
Appellant’s arguments do not persuade us of Examiner error.
Claims 9 and 12 cover a system and a method respectively for converting a
chat conversation to an email thread. Appeal Br. 27–28 (Claims App.).
Claims 1 and 5 cover a system and a method respectively for converting an
email thread to a chat conversation. Id. at 24–26. Claims 1, 5, 9, and 12
recite essentially the same steps for accomplishing a conversion, but the
conversion in claims 1 and 5 occurs in one direction and the conversion
in claims 9 and 12 occurs in the reverse direction. Id. at 24–28.
Lindsay discloses conversions in both directions: converting an email
thread to a chat conversation and converting a chat conversation to an email
thread. Lindsay ¶¶ 23, 31, 62, 64, 76–81, claims 1, 3–5, Fig. 4; see Final
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Act. 4–6; Ans. 5. For example, Lindsay explains that “[w]hile the
paragraphs above have dealt with processes for migrating email
conversations to IM chat sessions, the present technology can be utilized
to convert/migrate IM chat sessions into email conversations,” e.g., by
applying the conversion process “in reverse.” Lindsay ¶¶ 62, 64; see id.
¶ 23; Final Act. 5–6; Ans. 5.
Accordingly, Lindsay discloses a “plurality of email threads . . . in an
order determined by the plurality of conversation flows” according to
claims 9 and 12 for the same reasons that Lindsay discloses “chat messages
. . . in an order determined by the plurality of conversation flows” according
to claims 1 and 5. See Lindsay ¶¶ 23, 31, 62, 64, 76–81, claims 1, 3–5,
Fig. 4; Final Act. 4–6; Ans. 4–7.
Because Appellant’s arguments do not persuade us of Examiner error,
we sustain the § 102 rejection of claims 9 and 12.
DEPENDENT CLAIMS 2, 4, 6, 8, 10, 13, AND 15
Appellant does not argue patentability separately for dependent
claims 2, 4, 6, 8, 10, 13, and 15. See Appeal Br. 10–20; Reply Br. 2–7.
Hence, we sustain the § 102 rejection of these dependent claims for the same
reasons as claims 1, 5, 9, and 12. See 37 C.F.R. § 41.37(c)(1)(iv).
The § 103 Rejection of Claims 3, 7, 11, 14, and 16
As noted above, the § 103 rejection of claims 3, 7, 11, 14, and 16 rests
on Lindsay and official notice. See Final Act. 7–8. Appellant argues that
the Examiner erred in rejecting the claims because “the Examiner’s official
notice is legally improper.” Appeal Br. 20. Specifically, Appellant asserts
that the Examiner “failed to apply official notice ‘narrowly’ and solely for
facts ‘capable of such instant and unquestionable demonstration as to defy
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dispute.’” Id. at 21 (quoting In re Ahlert, 424 F.2d 1088, 1091 (CCPA
1970)). Appellant also asserts that the “Examiner’s use of official notice
improperly deprives Appellant” of “an opportunity to meaningfully argue
for the patentability of the pending claims.” Id.
Appellant’s arguments do not persuade us of Examiner error. The
Manual of Patent Examining Procedure (MPEP) addresses the procedure
for taking official notice. See MPEP § 2144.03. The MPEP permits an
examiner to take official notice of facts that “are capable of instant and
unquestionable demonstration as being well-known.” Id. The MPEP states
that if an “applicant adequately traverses the examiner’s assertion of official
notice, the examiner must provide documentary evidence” supporting the
officially noticed facts. Id.
Here, we need not decide whether Appellant adequately traversed the
Examiner’s assertion of official notice because the Examiner provides
documentary evidence supporting the officially noticed facts with citations
to Ishikawa and Barshow. Final Act. 8 (citing Ishikawa ¶ 16; Barshow
Fig. 2); see also Ans. 8 (explaining that the “Examiner had provided
supporting documents for the official notices taken in the Final Rejection
to show that supporting for the official notices are capable of being
demonstrated instantly and unquestionably”). Appellant ignores the
Examiner’s citations to Ishikawa and Barshow. See Appeal Br. 20–21;
Reply Br. 7–8. By doing so, Appellant forfeits arguments regarding
Ishikawa and Barshow. See In re Google Tech. Holdings LLC, 980 F.3d
858, 862–63 (Fed. Cir. 2020).
Because Appellant’s arguments do not persuade us of Examiner error,
we sustain the § 103 rejection of claims 3, 7, 11, 14, and 16.
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The § 103 Rejection of Claims 19 and 20
Claims 19 and 20 depend from claim 1. Appeal Br. 30 (Claims App.).
As noted above, the § 103 rejection of claims 19 and 20 rests on Lindsay and
Waltermann. See Final Act. 8–9. Appellant argues that the Examiner erred
in rejecting claims 19 and 20 because “Waltermann does not remedy the
deficiencies of Lindsay discussed above with respect to claim 1.” Appeal
Br. 22; see also id. at 21; Reply Br. 7–8.
For the reasons discussed above, however, Lindsay has no
deficiencies with respect to claim 1. Hence, we sustain the § 103 rejection
of claims 19 and 20.
CONCLUSION
We affirm the Examiner’s decision to reject claims 1–20.
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–6,
8–10, 12,
13, 15,
17, 18
102 Lindsay
1, 2, 4–6,
8–10, 12,
13, 15,
17, 18

3, 7, 11,
14, 16 103
Lindsay,
official notice
3, 7, 11,
14, 16
19, 20 103 Lindsay, Waltermann 19, 20
Overall
Outcome 1–20
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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