Ex Parte Decime

Board of Patent Appeals and Interferences

Sep 14, 2009

09746365 (B.P.A.I. Sep. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JERRY B. DECIME
____________________

Appeal 2008-000402
Application 09/746,3651
Technology Center 2400
____________________

Decided: September 15, 2009
____________________

Before ALLEN R. MACDONALD, JAY P. LUCAS, and ST. JOHN
COURTENAY III, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals from a final rejection of claims 1-8, 10-14, 16-18
and 20-25 under authority of 35 U.S.C. § 134. Claims 9, 15, and 19 are

1 Application filed December 21, 2000. The real party in interest is Hewlett
Packard Development Corp, LP.
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Application 09/746,365
cancelled. (App. Br. 2). The Board of Patent Appeals and Interferences
(BPAI) has jurisdiction under 35 U.S.C. § 6(b).
Appellant’s invention relates to a system and method for directing e-
mails to the correct person in an organization dependent on the language and
the topic of the e-mail. In the words of the Appellant:
After a client or potential client accesses the web-site of a
host organization and generates an e-mail to the organization,
an e-mail sorting and routing system parses the meta-tags
appended to the message to appropriately sort and route the
message. The meta-tags specify the language of the client, i.e.,
the language in which the web-site was communicating with the
client when the message was generated. The meta-tags also
specify the topic, e.g. a product or service, about which the
message was written. This information may be input by the
client or ascertained from the content or purpose of the web-
page from which the e-mail was generated. The messages are
then sorted, first by language and then by topic. As a result,
each message is quickly routed to a person qualified as to both
language and subject matter who can respond to the client.

(Spec. 16, Abstract.)
Claim 1 is exemplary:
1. An e-mail sorting and routing system, the system
comprising:

a web server for providing a web-site at which clients
generate e-mail messages to a host organization, the web server
being configured to determine the language in which the web-
site is written and to append a meta-tag to each e-mail message
that identifies that web-site language; and

a response server configured to sort the e-mail messages
by language through reference to the appended meta-tags.

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Application 09/746,365
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ayyadurai US 6,718,367 Apr. 6, 2004
Mowbray EP1024447 A2 Aug. 2, 2000

Ponfoort, Support your e-commerce with an e-center, World Trade,
July 2000, at 66-68 (hereinafter “World Trade”).

Novell’s Breathrough Language Identifier, Newsbytes, no.
pNEW08040047, Aug. 4, 1997 (hereinafter “Newsbytes”).

Talisma Enterprise’s Multiple Language Capabilities enable
companies to build strong global customer relationships, PR
Newswire, Aug. 10, 2000 (hereinafter “Newswire”).
REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 1-8, 10-14, 16-18, and 20-25 stand rejected under 35 U.S.C. §
112, second paragraph, for being indefinite.
R2: Claims 1, 5, 6, and 22 stand rejected under 35 U.S.C. § 103(a) for
being obvious over Newsbytes or Worldtrade or Newswire in view of
Mowbray.
R3: Claims 2-4, 7, 8, 10-14, 16-18, 20, 21, and 23-25 stand rejected under
35 U.S.C. § 103(a) for being obvious over Newsbytes or Worldtrade or
Newswire in view of Mowbray and further in view of Ayyadurai.

Groups of Claims:
The arguments will be addressed in the order of their presentation.
See 37 CFR § 41.37 (c) (vii).
Appellant contends that the claimed subject matter is not indefinite,
merely broad, and is not rendered obvious by Newsbytes or Worldtrade or
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Newswire in view of Mowbray alone or in combination with Ayyadurai
because the references fail to disclose claimed limitations. The Examiner
contends that each of the claims is properly rejected (Ans. 19, bottom).
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellant have been considered in
this opinion. Arguments that Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.

We reverse all rejections.
ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 112, paragraph 2, and
35 U.S.C. § 103(a). The issue under 35 U.S.C. § 112, paragraph 2, turns on
whether alleged inoperability of the invention is a ground for rejection under
35 U.S.C. § 112, paragraph 2. The issue under 35 U.S.C. § 103 turns on
whether the references teach determining the language of an e-mail based on
the language of the web-site from which it was generated, as claimed.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellant has invented a method and system for properly routing e-mails
from clients of a website, for example a company’s website (Spec. 3, l.
10). When the e-mail is generated by the website, the system appends
meta-tags to the e-mail indicating the language and topic of the website
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(Spec. 3, l. 25). When the e-mail is received by the company’s response
server, it can be routed to an agent knowledgeable in the language and
topic area as indicated by the meta-tags (Spec. 4, l. 8).
2. The non-patent literature references World Trade, Newsbytes and
Newswire each teach the automatic labeling of emails and other such
documents based upon a language analysis of the text. Based upon this
classification, each reference routes or directs the e-mail to an agent
skilled in that language (World trade, p. 1, bottom; Newsbytes, p. 1,
middle; Newswire, p. 1, middle).
3. The EPO Patent Application Mowbray sorts incoming e-mail messages
by topic identifiers in the address line of an incoming e-mail (col. 9, top).
4. U.S. Patent Ayyadurai automatically analyzes the header and body
sections of e-mails to determine information about the writer (col. 4, ll.
30-40; 55-65). By analyzing the e-mail using morphology, natural
language processing syllabic analysis and other techniques, the system
can determine, among other things, how annoyed the writer was (col. 5, l.
28; col. 4, ll. 8-12).

PRINCIPLES OF LAW
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
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nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
To serve as an anticipation when the reference is silent about the
asserted inherent characteristic, such gap in the reference may be filled with
recourse to extrinsic evidence. Such evidence must make clear that the
missing descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.
Continental Can Co. USA Inc. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed.
Cir. 1991).
For post-prosecution analysis, our guiding courts use the following
analysis: A patent claim is not invalid for indefiniteness unless it is
insolubly ambiguous; therefore, if the meaning of the claim is discernible,
the claim is sufficiently clear to avoid invalidity on indefiniteness grounds,
even if interpreting the claim is difficult, and construction is one over which
reasonable persons could disagree. Bancorp Services LLC v. Hartford Life
Insurance Co., 359 F3d 1367 (Fed. Cir. 2004).
However, during prosecution before this Office, while Appellant still
has the opportunity to amend the claims, a higher standard of clarity is
required:
In particular, rather than requiring that the claims are
insolubly ambiguous, we hold that if a claim is amenable to two
or more plausible claim constructions, the USPTO is justified in
requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim
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unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.
Ex parte Kenichi Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential opinion).
ANALYSIS
From our review of the administrative record, we find that Examiner
has presented a prima facie case for the rejections of Appellant’s claims
under 35 U.S.C. § 112, paragraph 2, and 35 U.S.C. § 103(a ) on pages 3-13
of the Examiner’s Answer. In opposition, Appellant presents a number of
arguments.
Arguments with respect to the rejection
of claims 1 to 8, 10 to 14, 16 to 18, and 20 to 25
under 35 U.S.C. § 112(para. 2) [R1]

The Examiner explains this rejection as follows:
A web site is usually written with a specific language, and e-
mails written from the web site are written using the same
language. It is obvious that if a customer writes an e-mail with
a language different from the web-site language, it will be
appended with a meta-tag that refers to the web-site language “a
wrong one.”
(Ans. 5, middle).
In essence, the Examiner is stating that the invention infers that the
language of the user’s e-mail will be that of the web page, and because a
user may choose to use a different language than that of the web-site, the
claims are indefinite. Appellant was correct in challenging this
interpretation of indefiniteness under 35 U.S.C. 112, paragraph 2.
This Board has recently clarified the standard for indefiniteness for
claims before the Office.
In particular, rather than requiring that the claims are insolubly
ambiguous, we hold that if a claim is amenable to two or more
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plausible claim constructions, the USPTO is justified in
requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.
Ex parte Kenichi Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential opinion). The Examiner’s explanation seems to address the
issue of operability, rather than indefiniteness.
We do not find that the recited claims are amenable to two or more
plausible claim constructions. We also decline to impose a rejection under
35 U.S.C. § 101 for inoperability. The claims as recited are clear, and the
fact that the accuracy of the sorting by the response server may be
occasionally “wrong” is a risk that the inventor has assumed. That may be a
marketing or reliability consideration, but it is not an issue of indefiniteness
under § 112, second paragraph.
We conclude that the rejection [R1] under 35 U.S.C. § 112, second
paragraph, is in error.

Arguments with respect to the rejection
of claims 1 to 8, 10 to 14, 16 to 18, and 20 to 25
under 35 U.S.C. § 103(a) [R2 and R3]

We will address both rejections [R2] and [R3] under 35 U.S.C. § 103
together.
Appellant argues that after review of Newsbytes, WorldTrade and
Newswire references he “found no teaching of a ‘web server’ at which e-
mails can be generated and a separate ‘response server’ that sorts the e-mail
messages by language”. (App. Br. 10, bottom, to 11, top). The Examiner
points to paragraphs of the respective references (Ans. 6, middle), but
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though we see mention of e-mails, we do not see mention of web-site
generated e-mails. As e-mails may be generated by other means than web-
sites, we cannot call them inherent. See Continental Can, 948 F.2d at 1268.
Appellant also argues that the references fail to teach determining “the
language in which the web-site is written”. We agree; this is also missing
from the references.
Either or both of these failures of teachings in the references are
dispositive of the rejection, and we need not address Appellant’s other
contentions. The rejection was made in error.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner erred in rejecting claims 1-8, 10-14, 16-18, and 20-25 under 35
U.S.C. § 112, second paragraph, and 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejection [R1] of claims 1-8, 10-14, 16-18, and 20-25
under 35 U.S.C. § 112, second paragraph, is reversed. The Examiner’s
rejection [R2] and [R3] of claims 1-8, 10-14, 16-18, and 20-25 under 35
U.S.C. § 103(a) is reversed.
REVERSED

peb

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