Zoho Corporation Private Limited

Patent Trials and Appeals BoardDec 2, 2021

2020005681 (P.T.A.B. Dec. 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. 14/961,701 12/07/2015 Sridhar Vembu ZH005.CIP1.US 8131 27946 7590 12/02/2021 ARTHUR J. BEHIEL Silicon Edge Law Group LLP 7077 Koll Center Pkwy Unit 183 PLEASANTON, CA 94566 EXAMINER ROBINSON, CHRISTOPHER B ART UNIT PAPER NUMBER 2457 NOTIFICATION DATE DELIVERY MODE 12/02/2021 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 SRIDHAR VEMBU, BHARATH SRIDHAR, and SUDHEER A. GRANDHI ___________________ Appeal 2020-005681 Application 14/961,701 Technology Center 2400 ____________________ Before ELENI MANTIS MERCADER, JAMES R. HUGHES, and JOHN A. EVANS, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 seeks our review under 35 U.S.C. § 134(a) from the final rejections of Claims 9–23, 25, and 27 which are all the pending claims. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). 1 Our Decision refers to Appellant’s Appeal Brief filed April 6, 2020 (“Appeal Br.”); Appellant’s Reply Brief filed July 30, 2020 (“Reply Br.”); Examiner’s Answer mailed July 15, 2020 (“Ans.”); the Final Rejection mailed December 16, 2019 (“Final Act.”), and the Specification filed December 12, 2015 (“Spec.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appeal Brief identifies Zoho Corporation Private Limited, as the real party in interest. Appeal Br. 1. Appeal 2020-005681 Application 14/961,701 2 We REVERSE. STATEMENT OF THE CASE INVENTION The claims relate to a system and method for creating, managing, and using an application in a messaging environment. See Abstract. Claims 9 and 27 are independent. Appeal Br. 13, 16 (Claims Appx.). An understanding of the invention can be derived from a reading of Claim 9, which is reproduced below with some formatting added: 9. A computer-implemented method for creating an application product, the method comprising: receiving by an application service a first electronic communication from a first sender, the first electronic communication identifying zero or more recipients and including an application specification that indicates an application that the first sender desires to create; parsing the first electronic communication by the application service to determine the application specification, the application specification including an input-data variable and a function, wherein the function determines how the input- data variable will be processed by the application service; processing the application specification by the application service, wherein the processing comprises creating an application product that is new, such that the application product provides an output based upon an operation of the function on input data supplied by a user of the application product and the application product is not a modification of an existing application; determining by the application service whether the application specification is in a done condition; storing the application product; Appeal 2020-005681 Application 14/961,701 3 transmitting information for accessing the application product to the first sender, and to the zero or more recipients; and revising the application specification by the application service and transmitting the revised application specification to the sender if the application specification is not in a done condition, thereby creating the application. PRIOR ART Name3 Reference Date Ryan US 2002/0010743 A1 January 24, 2002 Wenocur US 2002/0199001 A1 December 26, 2002 Paatero US 2006/0137007 A1 June 22, 2006 Ma US 2008/0114847 A1 May 15, 2008 Murphy, Jr. US 2009/0307315 A1 December 10, 2009 Meisels US 2014/0173423 A1 June 19, 2014 REJECTION4 AT ISSUE 1. Claims 9–15, 18, 20, 25, and 27 stand rejected under 35 U.S.C. § 103 as obvious over Ma and Wenocur. Final Act. 4–9. 2. Claim 16 stands rejected under 35 U.S.C. § 103 as obvious over Ma, Wenocur, and Ryan. Final Act. 9–10. 3. Claim 17 stands rejected under 35 U.S.C. § 103 as obvious over Ma, Wenocur, and Murphy, Jr. Final Act. 10–11. 4. Claims 19 and 22 stand rejected under 35 U.S.C. § 103 as obvious over Ma, Wenocur, and Meisels. Final Act. 11–12. 3 All citations herein to the references are by reference to the first named inventor/author only. 4 The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Final Act. 2. Appeal 2020-005681 Application 14/961,701 4 5. Claim 21 stands rejected under 35 U.S.C. § 103 as obvious over Ma, Wenocur, and Paatero. Final Act. 12–13. ANALYSIS We review the appealed rejection for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). We have considered in this decision only those arguments Appellant actually raised in the Briefs. Any other arguments which Appellant could have made but chose not to make in the Briefs are deemed to be forfeit. See 37 C.F.R. § 41.37(c)(1)(iv). After considering the evidence presented in this Appeal and each of Appellant’s arguments, we are persuaded that Appellant identifies reversible error. Thus, we reverse the Examiner’s rejections and add the following primarily for emphasis. CLAIMS 9–15, 18, 20, 25, AND 27: OBVIOUSNESS OVER MA AND WENOCUR. Appellant argues these claims as a group in view of the common limitations of Claims 9 and 27. Appeal Br. 11 (“Applicant respectfully reiterates that Ma does not teach any of the limitations of independent claims 9 and 27 that are alleged by the Office Action to be taught by Ma. For at least the above reasons, the Final Rejection has not presented a prima facie case of obviousness for any claim, and should be reversed.”). Therefore, we Appeal 2020-005681 Application 14/961,701 5 decide the appeal of the § 103 rejections on the basis of representative Claim 9 and refer to the rejected claims collectively herein as “the claims.” See 37 C.F.R. § 41.37(c)(1)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). Independent Claim 9 recites, inter alia: “a first electronic communication . . . including an application specification that indicates an application that the first sender desires to create.” Independent Claim 27 recites commensurate limitations. The Examiner finds this limitation is taught by Ma. Final Act. 4–5 (citing Ma, Figures 1–32; ¶¶ 23–42, 316). To teach this limitation, the Examiner cites non-specifically to thirty two (32) figure drawings and twenty one (21) paragraphs of disclosure. Final Act. 4–5. The Examiner‘s finding does not comport with a prima facie case of obviousness under 35 U.S.C. 103: The examiner has essentially only set forth a broad-brush approach to reject the claims on appeal. Stated differently, each claim limitation of each independent claim on appeal has not been respectively mapped to each of the reference’s teachings and/or showings in the drawings in a detailed manner. Thus, the examiner has not fully explained the rationale for the rejection under 35 U.S.C. § 103 for each of the independent claims on appeal. Ex parte Donald K. Forest, 2002 WL 33951036, at 2 (BPAI 2002). Such general citation in the absence of specific citation does not meet the PTO’s standards for formation of a prima facie case: for each reference relied on in each rejection, the PTO’s policy is for the examiner to compare the rejected claims feature-by- feature or limitation-by-limitation with each of the references Appeal 2020-005681 Application 14/961,701 6 relied upon in the rejection. This comparison should map the language of the claims to the specific page number, column number, line number, drawing number, drawing reference number, and/or quotation from each reference relied upon. Id. The Examiner finds: “[t]he software application indicates the application the first sender desires to create, such as e-mail response, calendar invite, and spreadsheet modification.” Final Act. 5. Appellant contends: Ma discloses a “system (that) allows a user to use whatever authoring tool the user is already familiar with, such as email or word-processing, to immediately publish a communication, making use of re-usable content and templates and then automatically routing that information via the best channel to the intended recipient. The recipient is able to direct the format and mode of the incoming communications as well, based on one or more of sender, role, type, and action requirement.” Appeal Br. 4 (quoting Ma, ¶ 9). Appellant argues: “[a]n “e-mail response” is not an application that a sender wishes to create, but a use of an existing email application. The same goes for a “calendar invite” and “a spreadsheet modification.” Id. Appellant further argues that each of independent Claims 9 and 27 includes the limitation “the application product is not a modification of an existing application,” which, Appellant argues, is the opposite of the asserted “spreadsheet modification.” Id. The Examiner finds that Ma teaches the creation of new application product, such as a newly created e-mail, calendar invite or spreadsheet. Ans. 4 (citing Ma, 33–43) (ten paragraphs). The Examiner further finds Ma teaches “analyzing the electronic communication to determine the Appeal 2020-005681 Application 14/961,701 7 application specification, such as an email, calendar invite, spreadsheet.” Id. The Examiner equates the e-mail, calendar invite, and spreadsheet, as disclosed by Ma, to both the claimed “application product” and “application specification.” Ans. 4. However, Appellant argues that this equation ignores the fact “that the claims make clear that the ‘application product’ and ‘application specification’ are different and further ignores the limitation that ‘the application product is not a modification of an existing application.’” Reply Br. 3 (referring to Appeal Br. 5). Each of independent Claims 9 and 27 recites “application product” and “application specification.” Moreover, Claim 27 clearly distinguishes the two by reciting “including an application specification that indicates an application product that the first sender desires to create.” It is well- established law that a single element in the prior art cannot serve as two different claim limitations. Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (“[w]here a claim lists elements separately, the clear implication of the claim language is that those elements are distinct components of the patented invention.”); Ex parte Weideman, Appeal No. 2008-3454, Decision on Appeal at 7 (BPAI Jan. 27, 2009) (“[I]t is improper to rely on the same structure in the Lohr reference as being responsive to two different elements...in claim 1.”); Ex parte Koutsky, Appeal No. 2008-0557, Decision on Appeal at 4–5 (BPAI Sep. 23, 2008) (“When a claim requires two separate elements, one element construed as having two separate functions will not suffice to meet the terms of the claim...all limitations in a claim must be considered meaningful.”); Ex parte Appeal 2020-005681 Application 14/961,701 8 Konstant, Appeal No. 2009-001901, Decision on Appeal at 6 (BPAI Aug. 20, 2009) (“Consistent with the principle that all limitations in a claim must be considered to be meaningful, it is improper to rely on the same structure in the Mulholland reference as being responsive to two different elements.”). Because the prior art does not teach at least one of the claimed “application product” and “application specification,” we find the Examiner has not made out a prima facie case of obviousness for at least a second reason. In view of the foregoing, we decline to sustain the rejections of Claims 9–15, 18, 20, 25, and 27. CLAIM 16: OBVIOUSNESS OVER MA, WENOCUR, AND RYAN. Appellant argues each dependent claim in view of Claim 9. See Appeal Br. 11. The Answer does not present separate findings for any dependent claim. See Ans. 4. In view of the foregoing, we decline to sustain the rejections of Claim 16. CLAIM 17: OBVIOUSNESS OVER MA, WENOCUR, AND MURPHY, JR. Appellant argues each dependent claim in view of Claim 9. See Appeal Br. 11. The Answer does not present separate findings for any dependent claim. See Ans. 4. In view of the foregoing, we decline to sustain the rejections of Claim 17. CLAIMS 19 AND 22: OBVIOUSNESS OVER MA, WENOCUR, AND MEISELS. Appellant argues each dependent claim in view of Claim 9. See Appeal Br. 11. The Answer does not present separate findings for any dependent claim. See Ans. 4. Appeal 2020-005681 Application 14/961,701 9 In view of the foregoing, we decline to sustain the rejections of Claims 19 and 22. CLAIM 21: OBVIOUSNESS OVER MA, WENOCUR, AND PAATERO. Appellant argues each dependent claim in view of Claim 9. See Appeal Br. 11. The Answer does not present separate findings for any dependent claim. See Ans. 4. In view of the foregoing, we decline to sustain the rejections of Claim 21. DECISION Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 9–15, 18, 20, 25, 27 103 Ma, Wenocur 9–15, 18, 20, 25, 27 16 103 Ma, Wenocur, Ryan 16 17 103 Ma, Wenocur, Murphy, Jr. 17 19, 22 103 Ma, Wenocur, Meisels 19, 22 21 103 Ma, Wenocur, Paatero 21 Overall Outcome 9–23, 25, 27 REVERSED