Zoho Corporation Private Limited

Patent Trials and Appeals Board

Apr 2, 2021

2019006095 (P.T.A.B. Apr. 2, 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.
15/008,818 01/28/2016 Radha Vembu ZH010.US 6072
27946 7590 04/02/2021
ARTHUR J. BEHIEL
Silicon Edge Law Group LLP
7077 Koll Center Pkwy
Unit 183
PLEASANTON, CA 94566
EXAMINER
MIRZA, ADNAN M
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
04/02/2021 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):
USPTO@dockettrak.com
art@siliconedgelaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RADHA VEMBU, JAGAN RANGANATHAN,
RAVIKUMAR GOVINDARAJAN, SRIDHAR VEMBU,
RAJENDRAN DANDAPANI, BHARATH SRIDHAR, and
SUDHEER A. GRANDHI
____________________

Appeal 2019-006095
Application 15/008,818
Technology Center 2400
____________________

Before ERIC S. FRAHM, LARRY J. HUME, and
JAMES W. DEJMEK, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 4–7, 10–17, 26, 35–39, 41, and 42. Appellant has canceled
claims 3, 8, 9, 18–25, 27–34, 40, 43, and 44. See Amdt 2–6 (filed June 12,
2018). We have jurisdiction over the remaining pending claims under
35 U.S.C. § 6(b).
We reverse.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant identifies Zoho
Corporation Private Limited as the real party in interest. Appeal Br. 1.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to
aggregating electronic messages of different types (e.g., texts, posts,
comments, and events) and making the aggregated list of related messages
available as a communication stream. Spec. ¶ 19.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A computer-implemented method for providing a
communication stream for messages, the method comprising:
receiving a request to create the communication stream,
the request specifying users, including at least a first user;
responsive to the request, creating the communication
stream, the communication stream including posts and
comments but not including email, the creating including
assigning a stream identifier to the communication stream;
receiving a request specifying a second user, and in
response to the request, adding the second user to the
communication stream;
receiving a request specifying a third user, and in response
to the request, adding the third user to the communication stream;
receiving a non-private message from the first user, the
non-private message referencing the stream identifier;
associating the non-private message with the
communication stream;
providing a representation of the communication stream,
including the non-private message, to the users;
receiving a private message from the second user, the
private message referencing the non-private message,
referencing the stream identifier, and referencing the third user;
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associating the private message with the communication
stream, and with the non-private message associated with the
communication stream;
providing a representation of the communication stream,
including the non-private message and the private message, to
the third user; and
providing a representation of the communication stream,
including the non-private message sans the private message, to
the first user.

The Examiner’s Rejection
Claims 1, 2, 4–7, 10–17, 26, 35–39, 41, and 42 stand rejected under
35 U.S.C. § 103 as being unpatentable over Schmidt (US 8,041,770 B1;
Oct. 18, 2011) and Perlow et al. (US 7,680,895 B2; Mar. 16, 2010)
(“Perlow”). Final Act. 2–6.

ANALYSIS2
At the time of the Final Rejection, independent claim 1 recited, inter
alia, “the communication stream including posts and comments.” See
Amdt 2 (filed Jan. 22, 2018). Independent claim 38 similarly recited the
communication stream included posts and comments. See Amdt 5.3 As part
of the After Final Consideration Pilot Program, Appellant amended each of

2 Throughout this Decision, we have considered the Appeal Brief, filed
April 1, 2019 (“Appeal Br.”); the Reply Brief, filed August 12, 2019
(“Reply Br.”); the Examiner’s Answer, mailed July 16, 2019 (“Ans.”); and
the Final Office Action, mailed May 10, 2018 (“Final Act.”), from which
this Appeal is taken.
3 Independent claim 35 did not expressly recite the communication stream
included posts and comments. See Amdt 4–5. Claim 35, at the time of the
Final Rejection, described creating a communication stream including at
least part of the body of an email message. See Amdt. 4–5.
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the independent claims limiting the communication stream to not include
email. See Amdt after Final 2–5 (filed June 12, 2018). That is, the
communication stream includes posts and comments, but does not include
email. See, e.g., claim 1. In a subsequent Advisory Action (mailed June 28,
2018), the Examiner maintained the rejection over the same prior art
references. Adv. Act. 2.
As an initial matter, we note the amendment to the independent claims
is a negative limitation—i.e., but not including email. In Santarus, Inc. v.
Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012), our
reviewing court explained that “[n]egative claim limitations are adequately
supported when the specification describes a reason to exclude the relevant
limitation.” The court noted that such support need not rise to the level of
disclaimer and that it is possible to support both the inclusion and exclusion
of the same element. Santarus, 694 F.3d at 1351.4 In Inphi Corp. v. Netlist,
Inc., 805 F.3d 1350 (Fed. Cir. 2015), the court expanded on the discussion of
negative limitations, noting that Santarus “did not create a heightened
written description standard for negative claim limitations and that properly
described alternative features are sufficient to satisfy the written description
standard of § 112, paragraph 1 for negative claim limitations.” Inphi, 805
F.3d at 1357; see also Manual of Patent Examining Procedure (“MPEP”)
§ 2173(i) (9th ed., Rev. 10.2019, June 2020) (“If alternative elements are
positively recited in the specification, they may be explicitly excluded in the
claims.”). The Inphi court further explained that in describing alternative

4 The court found adequate written description for excluding sucralfate in the
formulation of a pharmaceutical compound because the specification
expressly listed disadvantages of using sucralfate. Santarus, 694 F.3d at
1351.
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features, specific advantages or disadvantages of each feature need not be
articulated in order to later exclude the alternative feature. Inphi, 805 F.3d
at 1355–56.
Appellant asserts support for the amended claim element may be
found, for example, in paragraphs 14–17, 30, 32, and 54–64, as well as in
Figures 1B, 1C, 1D, 7B, 8, 9, and 10. Amdt after Final 7. We leave it to the
Examiner to determine whether there is adequate written description support
for the amended claim language under 35 U.S.C. § 112(a). Although the
Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference
should be drawn when the Board elects not to do so. See MPEP § 1213.02.

Rejection of claims 1, 2, 4–7, 10–17, 26, 35–37
In rejecting claim 1, inter alia, the Examiner relies on the combined
teachings of Schmidt and Perlow. See Final Act. 2–4. Schmidt generally
relates to “providing instant messaging functionality within an email session,
whereas Perlow relates to an integrated conversation view displaying email
and chat messages as part of the same view. See Schmidt, Abstract; Perlow,
Abstract.
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Figure 3 of Schmidt, as relied on by the Examiner (see Ans. 3–4) is
illustrative and is reproduced below.

Figure 3 of Schmidt illustrates the disclosed chat-mail session in
which the intended recipient is responding to a section of a received email
message. Schmidt, col. 3, ll. 54–56, col. 5, ll. 52–59. In the scenario
illustrated in Figure 3 of Schmidt, a user (i.e., Ajones) receives an email
from John Smith, which is displayed in Chat-Mail Recipient View (30).
Schmidt, col. 5, ll. 15–29. Schmidt describes the recipient (Ajones) as
having selected an option to respond to a section of the email message,
opening a separate chat window (32). Schmidt, col. 5, ll. 27–36, col. 5,
ll. 52–59.
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The Examiner finds when the intended recipient (i.e., Ajones) selects
an option to respond to a portion of the original email message, a
communication stream including posts and comments, but not including
email, is created. Ans. 3–4. That is, the Examiner finds the chat window
(32) teaches the claimed communication stream. Ans. 3–4. Further, the
Examiner finds the originator and recipient of the IM session (i.e., Ajones
and John Smith) as teaching the claimed stream identifier. Ans. 5.
Appellant disputes the Examiner’s finding that Schmidt teaches a
communication stream that does not include email. Appeal Br. 5–6; Reply
Br. 1–3. Appellant argues Schmidt expressly describes the system takes
places within an email session and that the Examiner’s reliance on a portion
of the overall chat-mail session fails to consider the overall context of
Schmidt’s teachings. Reply Br. 1–3. Moreover, Appellant argues that even
if the separate chat window were to teach the claimed communication
stream, Schmidt fails to teach assigning a stream identifier to the
communication stream. Appeal Br. 6–7; Reply Br. 3–4. Still further,
Appellant argues that Schmidt (and Perlow) fails to teach using the
purported stream identifier—i.e., the originator and recipient of an IM
session—as recited throughout the other limitations of claim 1 (e.g.,
receiving private and non-private messages that reference the assigned
stream identifier). Appeal Br. 7–8; Reply Br. 4–5.
We find Appellant’s arguments persuasive of Examiner error. In
particular, we disagree that, as relied on by the Examiner, Schmidt teaches
the creation of the claimed communication stream includes “assigning a
stream identifier to the communication stream,” as recited in claim 1. The
Examiner’s interpretation that the chat session originator and recipient teach
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the claimed stream identifier (see Ans. 5) lacks any support from Schmidt
for such an interpretation. For us to sustain the Examiner’s rejection, we
would need to resort to impermissible speculation or unfounded assumptions
or rationales to cure the deficiencies in the factual bases of the rejection
before us. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Moreover, the
Examiner has not shown how Schmidt assigns the purported stream
identifier to the communication stream or how the purported stream
identifier is referenced by received (private and non-private) messages.
Because we find it dispositive that the Examiner has not shown by a
preponderance of evidence that Schmidt and Perlow teach or reasonably
suggest assigning a stream identifier to the communication stream, as
claimed, we do not address other issues raised by Appellant’s arguments
related to these claims. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423
(Fed. Cir. 1984) (finding an administrative agency is at liberty to reach a
decision based on “a single dispositive issue”).
For the reasons discussed supra, we are persuaded of Examiner error.
Accordingly, we do not sustain the Examiner’s rejection of independent
claim 1. For similar reasons, we also do not sustain the Examiner’s rejection
of independent claim 35, which also recites assigning a stream identifier to
the communication stream. In addition, we do not sustain the Examiner’s
rejection of claims 2, 4–7, 10–17, 26, 36, and 37, which depend directly or
indirectly from independent claims 1 or 35.

Rejection of claims 38, 39, 41, and 42
Independent claim 38 recites a system for providing a communication
stream that comprises, in relevant part, (i) a first service for providing a user
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interface for accessing the communication stream; (ii) a second service for
creating and managing the communication stream; and (iii) a third service
for identifying and managing a private message. Similar to independent
claims 1 and 35, the communication stream recited in claim 38 does not
include email.
In the Final Rejection, the Examiner did not make specific findings
regarding the three recited services, and instead grouped the rejection of
claim 38 with that of claim 1. See Final Act. 2–4. In the Answer, the
Examiner finds Perlow teaches a user chat session, which the Examiner
“interpret[s] the Chat session as [a] communication stream and user chat
session as private messages.” Ans. 8 (citing Perlow, col. 5, ll. 59–67 and
col. 1, ll. 1–15 [sic: col. 6, ll. 1–15]).
As an initial matter, we note that Perlow describes integrating
conversations including both email and chat messages. See Perlow,
Abstract, Title. The portion of Perlow identified by the Examiner relates to
Figure 4 of Perlow, which Perlow describes as a “flow diagram of a process
for displaying an integrated conversation view of messages that includes
email messages and chat messages.” Perlow, col. 5, ll. 37–39. Thus, we
disagree that Perlow teaches the claimed communication stream that does
not include email. In addition, the Examiner’s findings do not identify the
recited first, second, and third services.
For the reasons discussed supra, we are persuaded of Examiner error.
Accordingly, we do not sustain the Examiner’s rejection of independent
claim 38. In addition, we do not sustain the Examiner’s rejection of claims
39, 41, and 42, which depend directly or indirectly therefrom.

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CONCLUSION
We reverse the Examiner’s decision rejecting claims 1, 2, 4–7, 10–17,
26, 35–39, 41, and 42 under 35 U.S.C. § 103.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–7,
10–17, 26,
35–39, 41,
42
103 Schmidt, Perlow 1, 2, 4–7,
10–17,
26, 35–
39, 41, 42

REVERSED