Ex Parte Aschen et al

Board of Patent Appeals and Interferences

Dec 9, 2010

10604000 (B.P.A.I. Dec. 9, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SEAN E. ASCHEN, JAMES R. DORAN,
BRIAN P. OLORE, and JOSEPH RUDMANN
____________

Appeal 2009-006069
Application 10/604,000
Technology Center 2100
____________

Before LANCE LEONARD BARRY, JEAN R. HOMERE, and DEBRA K.
STEPHENS, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-20. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

INVENTION
The Appellants describe the invention at issue on appeal as follows.
"Access to data in a file created by a mail and calendaring client application
is provided to other applications without the need for use of the mail and
calendaring client." (Abstract.)

ILLUSTRATIVE CLAIM
10. A system for providing data stored in a mailfile to an
application, comprising:
a mailfile stored on a server, having data stored as
documents with sections;
a database for passing a request from an application
running on a user workstation, for one of said documents to
said mailfile and upon return of said one of said documents,
converting said one of said documents into an extended markup
format;
an authentication directory having authentication records
for an application; and
mail and calendaring web service software running on a
server different from said workstation, for receiving said
request from said application for a document, receiving text
files in an extended markup format from said database,
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accessing binary data from said mailfile, creating an object
comprising the converted document with said binary data
inserted, authenticating said application using said directory,
and sending said object to said application.

REJECTIONS
Claims 10-15 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by U.S. Patent Application Pub. No. 2002/0091782 A1
("Benninghoff").
Claims 1-4 and 6-20 stand rejected under § 103(a) as being
unpatentable over Benninghoff in view of U.S. Patent No. 5,913,033
("Grout").
Claim 5 stands rejected under § 103(a) as being unpatentable over
Benninghoff in view of Grout and further in view of U.S. Patent Application
Pub. No. 2005/0114671 ("Little").2

CLAIM GROUPING
Based on the Appellants' arguments, we will decide the appeal of
claims 10-15 on the basis of claim 10 alone. Likewise, will decide the
appeal of claims 1-9 and 16-20 on the basis of claim 1 alone. See 37 C.F.R.
§ 41.37(c)(1)(vii).

2 The Appellants failed to accurately state the rejection of claim 5. (Appeal
Br. 4.)

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ISSUE
The issue before us is whether the Examiner erred in finding that
Benninghoff provides a mailfile of documents with sections as required by
independent claims 1 and 10.

FINDINGS OF FACT
Benninghoff describes its invention as "a method and apparatus that
provides a sender of email a unique and novel independent service to prove
that the message and documents attached to the email, if any, were
transmitted and received by the intended recipient, and to provide a
duplicate thereof upon query . . . ." (¶ 0003.)
Grout describes its invention as follows.
[A] document manager runs at a client computer and retrieves
documents downloaded from a server computer across a
communications medium. The documents can contain
embedded links to objects, which are building blocks that make
up or are associated with the documents. The client computer
keeps a local copy of a standard-set of objects, so that when the
client computer needs to present the linked objects to the user,
the linked objects that are part of the standard set do not need to
be retrieved from the server by the client.
(Col. 3, ll. 13-23.)

ANALYSIS
"Claims must be read in view of the specification, of which they are a
part." Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir.
1995) (en banc) (citations omitted). Here, independent claim 10 recites in
pertinent part "a mailfile . . . having data stored as documents with sections."
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Similarly, independent claim 1 recites "a mailfile . . . of documents having a
section . . . .''
The Specification includes the following disclosure.
A section is defined as additional data which may be hidden or
visible when the document is viewed. For example, the
document may have a subtitle, category, or other term with an
expansion button nearby. A triangle shaped "twistee" button or
any other type of expansion control may be used. When the
expansion control is activated, such as by clicking a mouse
pointer on a twistee, the additional data is either exposed or
hidden from view.
(Spec. 5.)
Reading the independent claims in view of the Specification, we
construe the claims as requiring a section that is capable of being hidden and
capable of being visible, such that the section is either hidden or visible at
any particular time.
"It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim, and that
anticipation is a fact question . . . ." In re King, 801 F.2d 1324, 1326 (Fed.
Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. Am. Hoist &
Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)). The question of
obviousness is "based on underlying factual determinations including . . .
what th[e] prior art teaches explicitly and inherently . . . ." In re Zurko, 258
F.3d 1379, 1383 (Fed. Cir. 2001) (citations omitted).
Here, the Examiner makes the following findings.
Benninghoff clearly discloses or suggests [] a mailfile stored on
a server (Figure 1 elements 10 and 20: electronic package to be
stored on a server), having data stored as documents having
sections (Figure 3: electronic package comprising fields, text
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and messages (body of text could be a section), paragraph 134).
. . .
(Ans. 9.) Figure 3 of Benninghoff follows.

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Figure 3 shows "preferred details associated with receiving the Electronic
Package . . . ." (¶ 0093.) Benninghoff discloses the processing of the
Electronic Package as follows.

FIG. 5 shows the details associated with step 160 of FIG. 2, i.e.
the delivery of the Electronic Package 20 to the Recipient 700.
The Recipient 700 is hypothetically named Rhonda Recipient.
At step 161, through her desktop, wireless, or other system 701
which is internet addressable, the Recipient 700 requests the
web page that is identified by the hyperlink in the email
notification 122 (see FIG. 9). Ideally, the Recipient simply
follows the HTML link in the email notification 122, after
which she simply enters her email. In case the Recipient's email
client does not provide HTML services, an ALT function will
describe the URL at which the Electronic Package 20 may be
retrieved. The email notification 122 also contains, in addition
to the URL, a message code or password generated for this
particular transaction by Server 100. Using her email address
and the password at the URL designated, the Recipient 700 may
download the contents of the Electronic Package 20 that was
prepared and transmitted by the Subscriber at step 143 and 144
of FIG. 3. At step 162, after the server sends the Recipient's
client application the web page shown in FIG. 10, the Recipient
enters her email address (e.g. "rhonda@recipient.com") and, if
necessary, the message code (if the Recipient clicked on the
hyperlink that includes the message code in the HTML request,
the Recipient will only be asked to enter her email address). At
step 163, the Server 100 verifies the Recipient's authority to
take delivery of the Electronic Package by comparing her email
address and provided message code with corresponding data in
the Transaction Log 300. The Server 100 then presents the
Recipient 700 with a download page like that shown in FIG. 11.
At step 164, if she chooses to continue, the Recipient 700 elects
to take delivery of the Electronic Package by either
downloading it with a Java applet, by downloading it directly,
or by receiving it as an encrypted email attachment. The Java
applet results in a standard eml file on the Recipient's system. If
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Recipient chooses on the other options, however, the file is
encrypted before being transmitted to the Recipient and she
must obtain a password from the Server 100 in order to access
the eml file within the encrypted file. At step 165, the Server
delivers the Electronic Package 20 to the Recipient according to
her chosen means of delivery. At step 166, the Server logs the
delivery particulars to the Transaction Log 300.
(¶ 0134.)
We agree, however, with the Appellants that "there is no mention of
anything related to sections . . . in the cited portions of Benninghoff."
(Appeal Br. 6.) More specifically, the Examiner's references to Figure 3 and
¶ 0134 fail to show that this body of text can be either hidden or visible.
Furthermore, the Examiner does not allege, let alone show, that the addition
of Grout or Little cures the aforementioned deficiency of Benninghoff.
Based on the aforementioned facts and analysis, we conclude that the
Examiner has erred in finding that Benninghoff provides a mailfile of data
stored as documents with sections as required by independent claims 1 and
10.

DECISION
We reverse the rejections of claims 1 and 10 and those of claims 2-9
and 16-20 which depend therefrom.

REVERSED

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