Ex Parte Bhan et al

Board of Patent Appeals and Interferences

Mar 7, 2007

10734811 (B.P.A.I. Mar. 7, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SUNDEEP BHAN, JEFF FENIGSTEIN, and JOHN ALFANO
____________

Appeal 2006-3269
Application 10/734,811
Technology Center 3600
____________

Decided: March 7, 2007
____________

Before TERRY J. OWENS, JENNIFER D. BAHR, and LINDA E. HORNER,
Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
Examiner’s final rejection of claims 1-6, 8, 10-15, 17, and 18, all of the pending
claims in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
The invention relates to a method of selectively distributing invitations for a
plurality of events (Specification 1: [0002]). Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. A method of selectively distributing invitations for
a plurality of events, the method comprising the steps of:
storing event information about each of a plurality
of events, wherein the event information for each of the
plurality of events includes at least one invitee selection
criterion;
storing member information about each of a
plurality of members;
detecting, for each of the plurality of members,
whether the at least one invitee selection criterion for
each of the events matches the member information; and
sending an e-mail invitation to at least some of the
members for whom a match was detected in the detecting
step, wherein the e-mail invitation invites its recipient to
at least some of the events for which a match was
detected in the detecting step, and
wherein at least one of the e-mail invitations sent
in the sending step invites its recipient to a plurality of
events for which a match was detected in the detecting
steps.
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THE REJECTION
The Examiner relies upon the following as evidence of unpatentability:
Sarid (Gal)1 WO 01/52106 A2 Jul. 19, 2001
The Examiner rejected claims 1-6, 8, 10-15, 17, and 18 under 35 U.S.C.
§ 102(b) as being anticipated by Gal.

ISSUE
Appellants contend that claims 1-6, 8, 10-15, 17, and 18 are not anticipated
by Gal, because Gal does not teach or suggest sending a multi-event invitation via
email, as required by independent claims 1, 6, and 15 (Br. 6). The Examiner found
that Gal anticipates claims 1, 6, and 15, because Gal discloses a method of
selectively distributing invitations by email wherein at least one of the email
invitations sent in the sending step invites its recipient to a plurality of events
(Answer 3-5). The issue before us is whether Appellants have shown that the
Examiner erred in finding that Gal anticipates claims 1-6, 8, 10-15, 17, and 18.

FINDINGS OF FACT
A preponderance of the evidence establishes the following facts:
“Email,” shorthand for “electronic mail,” are “messages sent by a user and
retrieved by another through an electronic service system, most often via telephone
lines or radio transmission.” Jerry M. Rosenberg, Dictionary of Computers,

1 Although the first named inventor is Sarid, the Examiner and Appellants refer to
the document throughout by reference to the second named inventor, Gal. To
avoid confusion, we refer to the reference as “Gal.”
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Information Processing and Telecommunications 202 (2nd ed. 1987) (copy
attached).
Gal discloses a system in which a user wishing to send a message visits a
Web page run by a Web server, creates the message, and provides profile
information about the intended recipients of the message (Gal 3: 6-9).
Gal discloses the system uses the profile information to search a database to
obtain a list of recipients and sends the message to the recipients’ computers via
email or via a dynamically-created Web page (Gal 3: 12-15).
Gal discloses using a relational database 90 to store hobby information,
occupation information, and name information about potential recipients in tables,
and using profile information provided by a user to search the database for keys
corresponding to the profile information. The matching keys are then used in the
name table to create a list of email addresses to send the message (Gal 5: 5-14,
Figure 4).
Instead of sending individual invitations in email messages, Gal discloses
that the relational database 90 can be used, along with the profile information
provided by a user, to create invitation tables such as Tables 98 and 100. Each
invitation message is associated with a pointer to the message block. The
recipients of a message are associated with an invitation number. When a recipient
visits the Web page to retrieve the recipient’s invitations, a personal Web page is
dynamically constructed by searching the database 90 for invitations corresponding
to the recipient’s key number (Gal 5: 15-20).
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Gal discloses that the recipient’s computer with a Web browser produces the
dynamically-created Web page. The dynamically-created Web page is a personal
invitation age for a user of the system. When the user clicks on a personal
invitation page, the server produces an HTML document constructed from the
database 90. Gal discloses that the user’s dynamically-created Web page can
contain invitations for multiple events. (Gal 5: 21-25, Figure 5).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).
“[A]rguments that the alleged anticipatory prior art is ‘nonanalogous art’ or
‘teaches away from the invention’ or is not recognized as solving the problem
solved by the claimed invention, [are] not ‘germane’ to a rejection under section
102.” Twin Disc, Inc. v. United States, 231 USPQ 417, 424 (Cl. Ct. 1986) (quoting
In re Self, 671 F.2d 1344, 1350-51, 213 USPQ 1, 7 (CCPA 1982)). The question
whether a reference “teaches away” from the invention is inapplicable to an
anticipation analysis. Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354,
1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The prior art was held to
anticipate the claims even though it taught away from the claimed invention.)
To determine whether the claims are anticipated, we must first construe the
meaning of the word “e-mail” as used by Appellants in the claims. We determine
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the scope of the claims in patent applications “not solely on the basis of the claim
language, but upon giving claims their broadest reasonable construction ‘in light of
the specification as it would be interpreted by one of ordinary skill in the art.’”
Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir.
2005) (en banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364,
70 USPQ2d 1827, 1830 (Fed. Cir. 2004)). We must be careful not to read a
particular embodiment appearing in the written description into the claim if the
claim language is broader than the embodiment. See Superguide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868-69 (Fed. Cir. 2004)
(“Though understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim. For example, a particular embodiment
appearing in the written description may not be read into a claim when the claim
language is broader than the embodiment.”) The challenge is to interpret claims in
view of the specification without unnecessarily importing limitations from the
specification into the claims. See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d
1364, 1369, 67 USPQ2d 1947, 1950 (Fed. Cir. 2003).

ANALYSIS
Appellants argue all of the claims as a group (Br. 6). As such, we treat claim
1 as the representative claim.
Appellants argue that the Examiner’s definition of email, “electronic
communication through a computer,” is too broad (Br. 7-8). Appellants contend
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that “email” is “a specific type of ‘electronic communication through a computer’”
(Br. 8). Appellants, however, fail to specify exactly what “type” of electronic
communication through a computer qualifies as the claimed “e-mail.” We find that
email refers to messages sent by a user and retrieved by another through an
electronic service system.
As stated supra, Gal discloses a method of selectively distributing
invitations for a plurality of events. Gal’s system sends to the recipient a
dynamically-created Web page, which includes textual messages inviting the
recipient to a plurality of events. The dynamically-created Web page is sent to the
recipient via the recipient’s Web browser when the recipient visits the Web site to
retrieve the recipient’s invitations. As such, the dynamically-created Web page
falls within the scope of the claimed “e-mail invitation” because the dynamically-
created Web page is an electronic communication from the Web server to the
recipient through the recipient’s Web browser that communicates textual messages
(i.e., invitations to multiple events) to the recipient. Gal’s system stores the
invitations in its database (shown in Figure 4) and then forwards the invitations to
the recipient via the dynamically-created Web page (e-mail) when requested to do
so by the recipient via the recipient’s Web browser. Thus, Gal anticipates the
invention as claimed in independent claims 1, 6, and 15, which includes sending
email invitations where at least one of the invitations invites its recipient to more
than one event.
Appellants argue that Gal teaches away from the method of claim 1 because
Gal acknowledges drawbacks with sending separate emails for each invitation (Br.
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7). As stated supra, the question whether a reference “teaches away” from the
invention is inapplicable to an anticipation analysis. Further, we do not rely on
Gal’s disclosure of separate emails for each invitation as the basis for our finding
of anticipation. Rather, we affirm the Examiner’s finding of anticipation based on
Gal’s use of a dynamically-created web page to send invitations for multiple events
to a recipient.

CONCLUSIONS OF LAW
We conclude that the Examiner did not err in rejecting claims 1-6, 8, 10-15,
17, and 18 under 35 U.S.C. § 102(b) as anticipated by Gal.

DECISION
The decision of the Examiner to reject claims 1-6, 8, 10-15, 17, and 18 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2006).
AFFIRMED
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