Ex Parte Carter et al

Board of Patent Appeals and Interferences

Jan 5, 2011

10242399 - (D) (B.P.A.I. Jan. 5, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte WILLIAM STEPHEN CARTER, HERMAN RODRIGUEZ,
HYPATIA ROJAS, and NEWTON JAMES SMITH JR.
_____________

Appeal 2009-7668
Application 10/242,399
Technology Center 2400
______________

Before ALLEN R. MACDONALD, ROBERT E. NAPPI, and BRADLEY
W. BAUMEISTER, Administrative Patent Judges.

NAPPI, 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 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.
Appeal 2009-007668
Application 10/242,399

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 21 through 40.
We affirm.
INVENTION
The invention is directed to a method of delivering e-mail to a
recipient based upon the physical location of the recipient. See page 3 of
Appellants’ Specification. Claim 21 is representative of the invention and
reproduced below:
21. A method of delivering an e-mail message to a recipient comprising
the steps of:
determining whether the e-mail message includes a delivery time
specified therein, the e-mail message being addressed to a physical location;
and
delivering, when the e-mail message includes a delivery time
specified therein, the e-mail message at the specified time to the recipient at
the physical location.

REFERENCE
Sakata US 2002/0095468 A1 Jul. 18, 2002

REJECTION AT ISSUE
The Examiner has rejected claims 21 through 40 under 35 U.S.C.
§ 102(e) as being anticipated by Sakata. Answer2 4 through 5.

2 Throughout this decision we refer to the corrected Examiner’s Answer
dated September 23, 2008
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Appeal 2009-007668
Application 10/242,399

ISSUE
Appellants’ contentions, on pages 3 and 4 of the Appeal Brief,3
present us with the issue: Did the Examiner err in finding that Sakata teaches
addressing an e-mail to a physical location as recited in claim 21?

ANALYSIS
Appellants’ arguments have not persuaded us that the Examiner erred
in finding that Sakata teaches addressing an e-mail to a physical location.
Representative claim 21 recites that “the e-mail message being addressed to
a physical location.” Appellants’ Specification, in discussing an e-mail
address, states that a user may use a physical address, an e-mail address, or
“a combination thereof.” Specification 12:1-5. Thus, we find that the scope
of claim 21 is not limited to the physical location as the only addressing
information in the e-mail. Accordingly, we are not persuaded by
Appellants’ argument on page 3 of the Reply Brief that Sakata differs from
the claimed invention because it uses an e-mail address of a recipient.
The Examiner finds that Sakata teaches an e-mail being addressed to a
specific physical location. Answer 4. Appellants admit on page 4 of the
Appeal Brief and page 3 of the Reply Brief, that Sakata includes information
concerning a range which is checked against the physical location of the user
to determine whether the user may receive the message. However,
Appellants state that the messages are not addressed to a physical location.

3 Throughout this decision we refer to the Appeal Brief dated August 7,
2006 and the Reply Brief dated September 24, 2008.
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Appeal 2009-007668
Application 10/242,399

Brief 4. We concur with the Examiner and disagree with Appellants. Sakata
teaches that the range information is directed to locations at which the
message can be delivered. Sakata, para. 0072. As this information is used
to deliver the message, we consider it to be address information. Further,
Appellants’ argument, on page 3 of the Reply Brief, that Sakata’s system
sends the e-mail to the user’s message reception device 100 based upon an e-
mail address, and not a physical address, is not persuasive. The embodiment
of Sakata’s Figure 1 may support Appellants’ argument, as it depicts the
elements which deliver the e-mail based upon location (items 110, 120, 130,
140, and 150) in the same device as the element which presents the message
to the user’s message delivery (item 160). However, Sakata also teaches a
second embodiment where these elements are separated into two units where
the units that deliver e-mail based upon location (items 110, 120, 130, 140,
and 150) are separate from the message delivery unit 160. In this
embodiment the unit that includes items 110, 120, 130, 140, and 150
transmits the message to the user’s message delivery unit (item 160) via a
network. Sakata para 0095. It is in this embodiment where it is clearest that
the message is addressed to, and thereby being delivered to, the user based
upon location. Thus, Appellants’ arguments have not persuaded us that the
Examiner erred in finding that Sakata teaches a step of having a physical
location of the address of an e-mail as recited in representative claim 21.
Accordingly, we sustain the Examiner’s rejection of claims 21 through 40
under 35 U.S.C. § 102(e).

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Appeal 2009-007668
Application 10/242,399

ORDER
The decision of the Examiner to reject claims 21 through 40 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)(1)(iv).

AFFIRMED

ELD

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