Ex Parte Aboel-Nil et alDownload PDFPatent Trial and Appeal BoardDec 21, 201614017984 (P.T.A.B. Dec. 21, 2016) Copy Citation 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. 14/017,984 09/04/2013 Samy Mahmoud ABOEL-NIL T00211-C1 5142 33438 7590 12/23/2016 TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP P.O. BOX 203518 AUSTIN, TX 78720 EXAMINER BELANI, KISHIN G ART UNIT PAPER NUMBER 2443 NOTIFICATION DATE DELIVERY MODE 12/23/2016 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): tmunoz @ tcchlaw. com kchambers@tcchlaw.com heather@tcchlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SAMY MAHMOUD ABOEL-NIL, SATIN MIRCHANDANI, MICHAEL NONEMACHER, IGOR POSTELNIK, MICHAEL I. ROSENFELT, and CHRIS SCHARFF Appeal 2016-000607 Application 14/017,984 Technology Center 2400 Before MICHAEL J. STRAUSS, JOSEPH P. LENTIVECH, and SHARON FENICK, Administrative Patent Judges. LENTIVECH, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1 and 12—19. Claims 2—11 have been withdrawn. See Br. 14—17 (Claims App’x). We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We reverse. 1 According to Appellants, the real party in interest is Dell Marketing L.P. Br. 2. Appeal 2016-000607 Application 14/017,984 STATEMENT OF THE CASE Appellants ’ Invention Appellants’ invention generally relates to “processing email during an unplanned outage.” Spec. 1:16—17. Claim 1, which is illustrative, reads as follows: 1. A method for providing backup electronic messaging services during unplanned outages, comprising: redirecting email messages from a primary server to a secondary server when said primary server is unavailable; providing intended recipients of said email messages with access to said email messages on a said secondary server while said primary server is unavailable; and incorporating said email messages received while said primary server was unavailable into said intended recipient’s primary email file so as to create a continuous email history. Rejections Claims 1, 12, 13, and 16 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Pickup et al. (US 2003/0050984 Al; published Mar. 13, 2003) (“Pickup”). Final Act. 3-6. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Pickup and Civanlar et al. (US 2003/0191781 Al; published Oct. 9, 2003) (“Civanlar”). Final Act. 7-8. Claims 15 and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Pickup and Ouchi (US 6,553,407 Bl; issued Apr. 22, 2003). Final Act. 8—10. 2 Appeal 2016-000607 Application 14/017,984 Claim 17 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Pickup and Burton-Krahn (US 2004/0153709 Al; published Aug. 5, 2004). Final Act. 10-11. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Pickup and Frietas et al. (US 7,092,998 B2; issued Aug. 15, 2006) (“Frietas”). Final Act. 11—12. Dispositive Issue on Appeal Did the Examiner err in finding that Pickup discloses “incorporating said email messages received while said primary server was unavailable into said intended recipient’s primary email file so as to create a continuous email history,” as recited in claim 1 ? ANALYSIS Appellants contend Pickup fails to disclose the disputed limitation because Pickup does not disclose that the primary or the backup database stores email messages. App. Br. 9—11. According to Appellants, Pickup, instead, discloses that these databases store telephone numbers and email addresses. Id. Appellants contend “[sjince Pickup’s database does not include email messages received while the primary server was unavailable, there would be no way to use Pickup’s database of phone numbers and email addresses to ‘incorporate email messages received while the primary server was unavailable into the intended recipient’s primary email file,”’ as required by claim 1. Br. 10—11. Pickup is directed to a redirection service for delivering email from a sender to a recipient. Pickup, Abstract. The sender obtains a telephone 3 Appeal 2016-000607 Application 14/017,984 number of the recipient and forwards an email message to the email address: “@“. Id. The redirection service receives the email message and determines whether the telephone number is registered with the redirection service. Id. Pickup discloses that the redirection service maintains a database which lists telephone numbers of people who have registered to receive emails, together with their emails. Id. 114. If the telephone number is registered, the redirection service generates an email transmission and forwards the text of the original email message to the recipient using the email address stored in the database. Id. 1 55. Pickup discloses that if the telephone number is not registered, the redirection service contacts the intended recipient using the phone number and notifies the recipient that a message is waiting for them at the redirection service’s website. Id. The Examiner finds Pickup discloses that a backup system is used in order to safeguard against failure of the primary system and that the backup system receives, processes, and stores any email message sent to the redirection service while the primary system is unavailable. Final Act. 4 (citing Pickup 1 57). The Examiner further finds When a backup server receives an email message for a recipient, the recipient may not be available at that time or even for several days after the message arrives. Therefore, the backup server must have capability to store received messages until they are delivered. Microsoft’s Outlook is an example of such storage capability for incoming messages. Ans. 14. We agree with the Examiner that Pickup discloses that the backup system stores any email messages sent to the redirection service while the primary system is unavailable. See Pickup 57. However, the Examiner’s 4 Appeal 2016-000607 Application 14/017,984 findings fail to show that these received email messages are stored in the backup database. In fact, Pickup is silent regarding where these email messages are stored or regarding any suggestion of incorporating them into a primary email file. As such, we are constrained by the record to not sustain the Examiner’s rejection of claim 1; independent claim 12, which recites similar limitations; and claims 13 and 16, which depend from claim 12.2 Claims 14, 15, and 17—19, which depend from claim 12, stand rejected under 35 U.S.C. § 103(a) based on Pickup and various additional references. The Examiner does not find these additional references cure the above noted deficiencies in the disclosure of Pickup. As such, we do not sustain the rejection of claims 14, 15, and 17—19 for the reasons discussed supra with respect to claim 1. DECISION We reverse the Examiner’s rejection of claims 1, 12, 13, and 16 under 35 U.S.C. § 102(e). We reverse the Examiner’s rejections of claims 14, 15, and 17—19 under 35 U.S.C. § 103(a). REVERSED 2 Because we find this issue to be dispositive as to the rejection of all the pending claims, we do not reach the merits of Appellants’ remaining arguments. 5 Copy with citationCopy as parenthetical citation