Ex Parte Chen et alDownload PDFPatent Trial and Appeal BoardSep 23, 201613029183 (P.T.A.B. Sep. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/029, 183 02/17/2011 48916 7590 Greg Goshorn, P,C, 9600 Escarpment Blvd. Suite 745-9 AUSTIN, TX 78749 09/26/2016 FIRST NAMED INVENTOR Yu-Jin Chen 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. AUS920100332US1 1254 EXAMINER BUKHARI, SIBTE H ART UNIT PAPER NUMBER 2449 MAILDATE DELIVERY MODE 09/26/2016 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 YU-JIN CHEN, MING-FA HSU, CHEN-YU KUO, KANG LIANG LIU, and MARK D. ROGALSKI Appeal2015-004846 Application 13/029, 183 Technology Center 2400 Before CAROLYN D. THOMAS, JEFFREYS. SMITH, and TERRENCE W. McMILLIN, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) from the Examiner finally rejecting claims 1-21, all the claims pending in the application. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We REVERSE. Appeal2015-004846 Application 13/029,183 The present invention relates "generally to electronic communication and, more specifically, to techniques for a negotiation among email clients and email servers corresponding to a potential email message" (Spec. i-f 1 ). Claim 1 is illustrative: 1. A method for transmitting electronic mail (email), compnsmg: receiving a first address of a first recipient of an email message, wherein the first recipient is associated with a recipient computing device; notifying an email server, associated with the email message and the first recipient, of the first address; transmitting a parameter associated with the email message to the email server; receiving a first message from the email server indicating that the parameter is not acceptable to the email server; notifying a sender of the email message that the parameter is not acceptable to the email server; and not transmitting the email message to either the recipient computing device or the email server in response to a first message from the email server indicating that the parameter is not acceptable to the email server. Appellants appeal the following rejection: Claims 1-21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Schiavone et al. (US 2002/0120600 Al, Aug. 29, 2002), Choi (US 8,463,857 B2, June 11, 2013), and Benisti et al. (US 2010/0324987 Al, Dec. 23, 2010). 2 Appeal2015-004846 Application 13/029,183 ANALYSIS We have reviewed Appellants' arguments in the Briefs, the Examiner's rejection, and the Examiner's response to Appellants' arguments. We concur with Appellants' conclusion that the Examiner erred in finding that the combined teachings of Schiavone, Choi, and Benisti teach the claimed "not transmitting the email message to either the recipient computing device or the email server in response to a first message from the email server indicating that the parameter is not acceptable to the email server" (see claim 1) (emphasis added). Here, the Examiner finds that Benisti's indication of non-transmittal of email to the email server and recipient teaches the claimed "not transmitting the email message to either the recipient computing device or the email server in response to a first message from the email server indicating that the parameter is not acceptable to the email server" (see Ans. 4, 7-8). We disagree with this interpretation. As identified by Appellants, the claimed invention "is directed to preventing the transmission in the first place" (App. Br. 10), by not transmitting the email in response to a first message that parameters are unacceptable. Appellants argue that Benisti instead teaches "an [first] attempt to transmit the original email before the claimed processing associated with notification is even initiated" (Id.) (emphasis added). Appellants further argue that Benisti teaches that processing takes place "after notification processing begins" (Reply Br. 3) (emphasis added). Specifically, Benisti discloses: If the notification email 27a, 27b is not deliverable 26a, 26b, that may indicate that the original email 25 may, also, not have been deliverable-for example, the allotted storage for email may 3 Appeal2015-004846 Application 13/029,183 have been reached or the email address 1s mvalid, resulting in the original email and the email notification being undeliverable, or "bouncing." Thus, the demanding party 20 preferably positively informs 28 the sender 130 of the receipt of the notification email 27 or negatively informs 29 the sender of the non-receipt 26a, 26b of the notification email 27 ... the positive receipt emails 28 and/or negative receipt emails 29 may be addressed to the sender's delegated assistant or may be redundantly addressed to the sender and to the delegated assistant. (Benisti i-f 96) (emphasis omitted). In other words, Benisti merely teaches notifying the sender that an email was not successfully transmitted, i.e., it bounced back to the sender. However, the Examiner has failed to provide persuasive evidence that Benisti' s notification that an email was not successfully transmitted teaches a message indicating that a parameter is not acceptable and then not transmitting the email based thereon. Specifically, the Examiner has not shown that Benisti, or any of the other cited references, teaches or suggests "not transmitting the email message to either the recipient computing device or the email server in response to a first message from the email server indicating that the parameter is not acceptable to the email server," as required by claim 1 (emphases added). Thus, we disagree with the Examiner's finding that the combined teachings of Schiavone, Choi, and Benisti teach the aforementioned limitation as recited in independent claim 1 with commensurate limitations in each of the remaining independent claims. Because we agree with at least one of the arguments advanced by Appellants, we need not reach the merits of Appellants' other arguments. Accordingly, we will not sustain the Examiner's obviousness rejection of claims 1-21. 4 Appeal2015-004846 Application 13/029,183 DECISION The decision of the Examiner to reject claims 1-21 is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation