Ex Parte Rein et al

Patent Trial and Appeal Board

Nov 20, 2018

13080296 (P.T.A.B. Nov. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/080,296 04/05/2011
121363 7590 11/23/2018
Shook, Hardy & Bacon L.L.P.
(Adobe Systems Incorporated)
Intellectual Property Department
2555 Grand Blvd
Kansas City, MO 64108
FIRST NAMED INVENTOR
Todd Rein
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Bl337/ADBS.208945 1528
EXAMINER
NAZAR, AHAMED I
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
11/23/2018 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
nhensley@shb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TODD REIN, V ARUN PARMAR,
SHANNON HICKEY, EYLON STROH, PETER BAIRD,
BRIAN HAVLIN, and SUBHASH SINGH DAGA
Appeal2018-003998 1
Application 13/080,296
Technology Center 2100
Before CARL W. WHITEHEAD JR., ADAM J. PYONIN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject all pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 "The real party in interest is ADOBE SYSTEMS IN CORPORA TED, the
assignee of record." Brief 3.
Appeal2018-003998
Application 13/080,296
STATEMENT OF THE CASE
Introduction
The Application is directed to a "system and method for tracking new
submissions of an electronic form." Specification ,r 1. Claims 1-20 are
pending. Brief 3. Claims 1, 11, and 20 are independent and reproduced
below for reference ( emphases added):
1. A computer-implemented method comprising:
detecting, using at least one processor, a request to load a
view that includes information identifying multiple submissions
of a plurality of electronic forms, a submission of each electronic
form of the plurality of electronic forms including an instance of
the electronic form augmented with data provided by a user;
tracking a number of new submissions of each of the
electronic forms of the plurality of electronic forms using a
submission counter that is separate from other counters, a new
submission being a submission of the electronic form received
via a communications network that includes user-supplied data
not previously presented by a computer system for viewing; and
in response to the request, providing the view for display,
the view presenting both a first value indicative of only the
number of new submissions of each of the electronic forms of the
plurality of electronic forms and a second value indicative of a
total number of submissions of each of the electronic forms of the
plurality of electronic forms, where both the first value and the
second value are individually provided for each of the electronic
forms of the plurality of electronic forms.
11. A computer-implemented system comprising:
a request detector to detect, using at least one processor, a
request submitted via a user interface presented at a computer
system to load a view in the computer-implemented system that
includes information identifying multiple submissions of each
electronic form of a plurality of electronic forms, a submission
of each of the electronic forms of the plurality of electronic forms
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Application 13/080,296
including an instance of one of the electronic forms augmented
with data provided by a user;
a submission counter that is separate from other counters
to track only a number of new submissions of each of the
electronic forms of the plurality of electronic forms, a new
submission being a submission of the electronic form received
via a communications network that includes user-supplied data
not previously presented by a computer system for viewing; and
a view provider to provide the view for display in response
to the request, the view presenting each of a value indicative of
the number of new submissions of each of the electronic forms
and a predetermined indicator that identifies any records that are
previously unviewed submissions, wherein the value indicative
of the number of new submissions is provided individually for
each of the electronic forms of the plurality of electronic forms.
20. A machine-readable non-transitory medium having
instruction data to cause a machine to:
detect a request to load a view that includes information
identifying multiple submissions of an electronic form, a
submission of the electronic form including an instance of the
electronic form augmented with data provided by a user;
track a number of new submissions of the electronic form
using a submission counter that is separate from other counters,
a new submission being a submission of the electronic form
received via a communications network that includes data
provided by one or more users in the electronic form not
previously presented by a computer system for viewing;
in response to the request, provide the view for display, the
view presenting a value indicative of the number of new
submissions of the electronic form;
determine that the view includes data provided by the one
or more users in the electronic form, wherein only views
including data provided by the one or more users in the electronic
form trigger a reset of the submission counter;
upon determining that the view includes data provided by
the one or more users in the electronic form, reset the submission
counter indicating the number of new submissions of the
electronic form;
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Application 13/080,296
monitor for subsequent new submissions of the electronic
form.
References and Rejection
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Patricia DiGiacomo et al., Special Edition Using Microsoft Office Outlook
2007, published December 2006, pages 1-32 (hereinafter, "DiGiacomo").
Outlook Blog-Managing Automatic Meeting Responses, published
February 2008, pages 1-8 (hereinafter, "Outlook Blog").
Aggregate Unread Mail in Outlook 2010 (hereinafter, "Outlook-I").
Cornell University CIT Training & Documentation, Outlook 2007
Calendaring Topics, published March 2010, pages 1-32 (hereinafter
"Outlook").
Claims 1-20 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Outlook, Outlook Blog, DiGiacomo, and Outlook-I.
Final Action 3.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments. We have considered in this Decision only those arguments
Appellants actually raised. Any other arguments Appellants could have
made but chose not to make are deemed to be waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
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Application 13/080,296
A. Independent Claim 1
Appellants argue the Examiner's rejection of independent claim 1 is in
error, because the cited art is directed to "email applications providing a total
number of email messages for a single inbox[, which are] quite distinct from
providing two separate counters individually for each electronic form of a
plurality of electronic forms," as claimed. Brief 9. Appellants contend that
the Examiner has articulated "no motivation to apply a new submissions
counter with each email message and a total submissions counter with each
email message," for "each email message of a plurality of email messages."
Brief 13.
We are persuaded the Examiner errs. Independent claim 1 requires
the display of a first value for new submissions of each electronic form and a
second value for total submissions for each electronic form, "where both the
first value and the second value are individually provided for each of the
electronic forms of the plurality of electronic forms." The Examiner relies
on various publications describing the Microsoft Outlook software for
teaching this limitation. See Final Action 3; Answer 2--4. These
publications, however, provide either one value for multiple forms or two
values for a single form (e.g., a folder of meeting response messages). See,
e.g., Final Action 4 ("DiGiacomo, in an analogous art, discloses in [page 2]
unread or total items."); Final Action 6 ("Outlook-1,2 in an analogous art,
explicitly discloses screenshot of Outlook 2010 illustrating inbox folder
configuration displaying the number of unread items and the total number
2 Separately we note the following: 1) The Examiner has not provided a
publication date for the computer screenshot of Outlook-I; and 2) Outlook-
!, as included in the record before us, does not appear to legibly display
values.
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Appeal2018-003998
Application 13/080,296
items as displayed on the bottom, left."). None of the references cited by the
Examiner teach displaying both total and new messages for each of a
plurality of forms, as required by claim 1. See Brief 10-12. Nor does the
Examiner provide reasoning sufficient to explain why one of ordinary skill
would modify the cited references to display such information. See Answer
3; see also KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) ("[A]
patent composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art," thus "rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.").
Accordingly, we are constrained by the record to not sustain the
Examiner's rejection of independent claim 1, or the claims dependent
thereon.
B. Independent Claim 11
Appellants argue independent claim 11 as a group with independent
claim 1. See Brief 6-7. Claim 11, however does not recite a limitation
commensurate in scope with the claim 1 limitation of "where both the first
value and the second value are individually provided for each of the
electronic forms of the plurality of electronic forms." Thus, we do not find
the Examiner's rejection of independent claim 11 to be in error as discussed
above with respect to claim 1. Further, Appellants do not show the
Examiner errs in finding the references teach or suggest the limitations of
claim 11, including "a view provider to provide the view for display in
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Application 13/080,296
response to the request, the view presenting each of a value indicative of the
number of new submissions of each of the electronic forms," "wherein the
value indicative of the number of new submissions is provided individually
for each of the individual electronic forms of the plurality of electronic
forms." Brief 6-7; Final Action 4---6; Outlook page 15 ("When you get
responses back from the individuals attending your meeting, ... you can
create a rule to move them from you inbox and mark them as read.");
Di Giacomo page 2 ("You can select whether to display the total number of
items or the number of unread items" for each folder.); Outlook Blog page 4
(Displaying folders with unread counts.).
Accordingly, we sustain the Examiner's rejection of independent
claim 11, and the claims dependent thereon for which Appellants do not
provide separate substantive arguments. See Brief 13.
C. Independent Claim 20
Independent claim 20 recites "upon determining that the view
includes data provided by the one or more users in the electronic form, reset
the submission counter indicating the number of new submissions of the
electronic form." Appellants argue the Examiner errs, because "[t]he Office
Action [] has equated this claim feature to clicking bolded portions of a
message to reduce a counter by one," but "making a determination as to
whether certain data is presented is not the same as clicking a bolded portion
of a message." Brief 15.
We are persuaded of Examiner error. First, we note the Examiner
does not respond to Appellants' claim 20 appeal brief arguments. See
Answer 2--4. Second, Appellants' Specification explains that a reset of the
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submission counter will result in the counter value equaling zero.
Specification ,r 33. The Examiner has not explained how "decrement[ing a
counter] by one for each clicked new received reply" equates to resetting the
counter, within the meaning of the claim. See Brief 14--15; Final Action 7.
Thus, we agree with Appellants that the Examiner has not shown the
references teach or suggest all limitations of independent claim 20.
Accordingly, we are constrained by the record to not sustain the
Examiner's rejection of independent claim 20.
IN THE EVENT OF FURTHER PROSECUTION
In the event of further prosecution, the Examiner may wish to
consider whether the pending claims are patent-eligible pursuant to Alice
Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014) (Describing
the two-step framework "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.").
DECISION
The Examiner's decision rejecting claims 1-10 and 20 is reversed.
The Examiner's decision rejecting claims 11-19 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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