Ex Parte Bahar

Patent Trial and Appeal Board

May 3, 2017

09978224 (P.T.A.B. May. 3, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
133/117 4472
EXAMINER
BILGRAMI, ASGHAR H
ART UNIT PAPER NUMBER
2645
MAIL DATE DELIVERY MODE
09/978,224 10/16/2001 Reuben Bahar
7590 05/03/2017
CAHILL VON HELLENS & GLAZER PLC
ALLTEN: MARVIN A GLAZER
155 PARK ONE
2141 E HIGHLAND AVENUE
PHOENIX, AZ 85016
05/03/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte REUBEN BAHAR
Appeal 2016-008391
Application 09/978,224
Technology Center 2400
Before JEAN R. HOMERE, THU A. DANG,
and JON M. JURGOVAN, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
In papers filed April 24, 2017, Appellant requests a rehearing under
37 C.F.R. § 41.52 from the Decision on Appeal (“Decision”) of the Patent
Trial and Appeal Board (“Board”), dated March 13, 2017. In the Decision,
we affirmed the Examiner’s prior art rejection of claims 184—189, 191—210,
218, 236, 237, 239-243, 248-255, 258-260, 263-268, 271, 279, 327-335,
338, 339, 346, 349-353, 356—366, 368—380, and 382. However, we
Appeal 2016-008391
Application 09/978,224
reversed the Examiner’s enablement rejection of claims 236, 248, 252, 258,
260, 264, and 268. Dec. 7.
ANALYSIS
In the Request for Rehearing (“Req. Reh’g”), Appellant alleges the
Board erred by overlooking that Kanevksy recognizes an authorized user as
an intended recipient. Req. Reh’g 2. According to Appellant, because
Kanevsky teaches that the sender (not a mailbox owner) determines, before
sending the message, which persons will have access to the email message,
Kanevsky emphasizes on the ability of the sender (not the recipient) to
control access to the message. Id. at 2-4. This argument is persuasive.
We agree with Appellant that the textual portions of Kanevsky cited in the
Decision teach that the email sender controls the access list by designating
which individuals on the list are allowed to access the email. Kanevsky 6:1—
52. Consequently, we agree with Appellant that Kanevsky teaches
providing such access only to individuals identified as intended recipients.
Because the combination of Choi, Flynn, and Kanevsky does not teach or
suggest “permitting said e-mail to be accessed when the identifying data
received from the accessing party does not identify the intended recipient,”
as recited in claim 236, we do not sustain the Examiner’s obviousness
rejection of claim 236, as well as of claims 184—189, 191—210, 218, 237,
239-243, 248-255, 258-260, 263-268, 271, 279, 327-335, 338, 339, 346,
349-353, 356—366, 368—380, and 382, which recite commensurate
limitations.
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Appeal 2016-008391
Application 09/978,224
CONCLUSION
In view of the foregoing discussion, we grant Appellant’s Request for
Rehearing. We have modified the Decision by reversing the obviousness
rejection of claims 184—189, 191—210, 218, 236, 237, 239-243, 248—255,
258-260, 263-268, 271, 279, 327-335, 338, 339, 346, 349-353, 356-366,
368—380, and 382.
REQUEST FOR REHEARING-GRANTED
37 C.F.R. $ 41.50(b)
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