Ex Parte Adams et al

Patent Trial and Appeal Board

Feb 29, 2016

12806591 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/806,591 08/17/2010
75322 7590 03/02/2016
BlackBerry Limited (Fitch Even)
Patent Team
2200 University A venue East
Waterloo, ON N2K OA 7
CANADA
FIRST NAMED INVENTOR
Neil Patrick Adams
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.
9169-98698 1715
EXAMINER
KHAN,SIDRA
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
03/02/2016 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):
portfolioprosecution@blackberry.com
ptoboca@fggbb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
ExparteNEIL PATRICK ADAMS and VAN QUY TU
Appeal2013-005102
Application 12/806,591
Technology Center 2400
Before STEPHEN C. SIU, JEREMY J. CURCURI, and
IRVINE. BRANCH, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-3 and 5-20. Claim 4 is cancelled. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellants' claimed subject matter provides for obtaining a forwarded
portion of a second email message, previously archived by an email server
associated with a user, this is contained in a first email message without
intervention of the user. Abstract. Claim 1 is illustrative:
1. A method, comprising the step of:
conveying a first email message associated with a mobile
communication device of a user, wherein the first email
message comprises a forwarded portion of a second email
Appeal2013-005102
Application 12/806,591
message that has been previously archived by an email server
associated with the user;
wherein the step of conveying comprises the step of:
obtaining, without intervention of the user, the
forwarded portion of the second email message.
THE REJECTIONS
The Examiner rejected claims 1-3, 5-9, and 15-20 under 35 U.S.C.
§ 103(a) as unpatentable over Kaghazian (US 2008/0016169 Al; Jan. 17,
2008) in view of Reddy (US 2008/0155035 Al; June 26, 2008). Ans. 4--12. 1
The Examiner rejected claims 10-14 under 35 U.S.C. § 103(a) as
unpatentable over Kaghazian, Reddy, and Kulkarni (US 2007 /0067399 Al;
Mar. 26, 2007). Id. at 13-16.
THE OBVIOUSNESS REJECTION OVER KAGHAZIAN AND REDDY
Claims 1-3; 5-9; and 15-20
The Examiner finds the Kaghazian teaches or suggests all elements of
claim 1, except that Kaghazian does not disclose "obtaining, without
intervention of the user, the forwarded portion of the second email
message." For this, the Examiner cites Reddy. Ans. 4--6.
Appellants argue the Examiner erred because Kaghazian "offers no
teachings with respect to an email message that has been previously archived
by an email server" and that "Kaghazian is utterly silent with respect to
archiving or even temporarily storing an 'email' by an email server." App.
1 Throughout this Opinion, we refer to (1) the Appeal Brief filed January 14,
2013 ("App. Br."); (2) the Examiner's Answer mailed February 12, 2013
("Ans."); and (3) the Reply Brief filed February 20, 2013 ("Reply Br.").
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Appeal2013-005102
Application 12/806,591
Br. 9. Appellants reason that, because Kaghazian does not disclose "a
second email message that has been previously archived by an email server,"
"it is impossible for Kaghazian to meet any of the remaining claim
requirements." Id. at 11.
The Examiner responds to Appellants' arguments, reaffirming that
"Kaghazian teaches a method of selective sending of portions of an
electronic content and forwards that particular portion of an email message
that has been previously archived." Ans. 17 (citing Kaghazian Figs. 2, 5,
and 7; and i-fi-f l, 8, 10, 12, 19, 22, 23, and 24). Kaghazian discloses a server
(Fig. 7, ref. no. 708) that saves emails from one user to another (i-f 24). The
Examiner interprets "saving" to the claimed "archiving." Ans. 17.
Kaghazian also discloses a user marking up such an email and forwarding
the marked up portions only to another user in a subsequent email (i-f 19). In
other words, the Examiner finds that Kaghazian discloses "conveying a first
email message associated with a mobile communication device of a user,
wherein the first email message comprises a forwarded portion of a second
email message that has been previously archived by an email server
associated with the user," as recited in claim 1. We see no error.
We are unpersuaded by Appellants' rebuttal that "those skilled in the
art will consider Kaghazian' s more casual approach to storage to be
inconsistent with the ordinary meaning of 'archiving."' Reply Br. 2.
Kaghazian discloses that the server (708) keeps a local copy of the email "at
least temporarily" (i-f 24), which, casual or not, includes indefinite storage.
Appellants do not offer an alternative definition of "archive" to demonstrate
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Application 12/806,591
inconsistency with respect to the Examiner's interpretation that Kaghazian's
"saving" is the claimed "archiving." Ans. 17.
We also are unpersuaded of error by Appellants' rebuttal that
"regardless of whether Kaghazian makes use of 'archived' email content[],
it is clear that Kaghazian does not espouse an approach that includes
obtaining a portion to be forwarded 'without intervention of the user'."
Reply Br. 4--5. The Examiner does not cite Kaghazian for claim 1 's
"obtaining, without intervention of the user, the forwarded portion of the
second email message." For this limitation, the Examiner cites Reddy. Ans.
5---6.
Accordingly, we are unpersuaded of error in the Examiner's rejection
of claim 1. We sustain the Examiner's decision to reject claim 1 and,
because Appellants base their arguments as to the remaining claims on
arguments presented with respect to claim 1 (App. Br. 11-12), we sustain
the Examiner's rejections of all pending claims.
DECISION
The Examiner's decision rejecting claims 1-3 and 5-20 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
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