Ex Parte DeLuca et al

Patent Trial and Appeal Board

Dec 29, 2014

12647769 (P.T.A.B. Dec. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LISA SEACAT DELUCA and PAMELA A. NESBITT
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Appeal 2012-009129
Application 12/647,7691
Technology Center 2400
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Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
BRUCE T. WIEDER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1–20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
Appellants’ claimed invention relates to a computer program for
requesting emails from an email message database and particularly for
downloading email from the database to an email client in accordance with
download instructions specifying a priority order. (Claim 1.)

1 According to Appellants, the real party in interest is International Business
Machines Corporation. (Appeal Br. 2.)
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Application 12/647,769

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Claims 1, 9, and 16 are the only independent claims. Claim 1 is
illustrative and is reproduced below:
1. A computer implemented method for requesting e-mail
messages, comprising:
receiving, by an e-mail messaging system, download
instructions for sending e-mail messages from an e-mail
message database storing a plurality of e-mail messages to an e-
mail client; and
the e-mail messaging system sending e-mail messages
from the e-mail message database to the e-mail client in
accordance with the download instructions, wherein the
download instructions specify a priority order in which the e-
mail messages are to be sent from the e-mail message database
to the e-mail client.

REJECTION
Claims 1–20 are rejected under 35 U.S.C. § 103(a)2 as being
unpatentable over Sivakumar (US 2007/0124390 A1, pub. May 31, 2007)
and Sood (US 2008/0126951 A1, pub. May 29, 2008).

ANALYSIS
Claims 1–3, 8–11, 16, and 17
Claim 1–3, 8–11, 16, and 17 are argued together. (Appeal Br. 912.)
Therefore, these claims stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii)
(2011).
Appellants argue that the cited art does “not describe receiving
download instructions that specify a priority order. Instead, a pre-existing

2 Now 35 U.S.C. § 103.
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prioritization engine assigns a priority to a message after it has been
received (Sood paragraph 0045).” (Appeal Br. at 11.)
The Examiner argues that “Sivakumar discloses the email database
and store and forward mechanism of email from host server to email client.”
(Answer 6.) The Examiner further argues that “Sood teaches specify a
priority order in which the e-mail messages are to be sent to the e-mail client
. . . .” (Id.)
Sivakumar describes a “message manager” that specifies how emails
are to be downloaded to an email client. (Sivakumar ¶ 22.) The message
manager can be set to block emails “from particular users or domain names.”
(Id.) The message manager operates before the email is downloaded to the
email client. (Id.) Exceptions and options can be set to limit downloads
during peak pricing, while roaming, etc., thus specifying priorities for some
email messages over others.3 (Id.)
Sood describes a priority order system for emails. (Sood ¶¶ 3637.)
Citing paragraph 45 of Sood, Appellants argue that the Sood system operates
on the email after the email has been downloaded to the client, i.e., that the
Sood system is located at the email client. (Appeal Br. 11.) We note,
however, that Sood also teaches that its “system can reside anywhere on the
network” which would include residing before the email client. (See Sood
¶¶ 46 and 48.) Regardless, the Examiner argues (Answer 6) that it would
have been obvious to combine Sivakumar and Sood and that the
combination would

3 The exceptions and options referenced in paragraph 22 of Sivakumar are
shown in Figures 9 and 10 as including deciding whether and when to
download certain messages, i.e., to prioritize some messages over others.
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provide a system for managing download e-mail message [sic]
that enables an e-mail client to automatically format and limit e-
mail messages according to current communication
characteristics and assigned prioritization score and category to
e-mail message [sic] received or sent by a user.

Appellants next argue that “the priority [described in Sood] is used to
‘arrange and present’ messages to a user, and is not described as being
priority for which the e-mail messages are to be sent, as claimed.” (Appeal
Br. 11.) Appellants further argue that “the Sood priority is assigned to an
email message after the message has already been received by the client
(Sood paragraph 0045, lines 1-2).” (Id.)
As discussed above, Sood teaches a priority order system for emails
and Sivakumar teaches downloading messages according to specific
instructions received from the email client. (Sood ¶¶ 3637; Sivakumar
¶¶ 22 and 27.) It is the combination of these references, not Sood or
Sivakumar individually, upon which the Examiner relies in asserting
obviousness. (See Answer 18.)
The Examiner has presented a prima facie case that the combination
of Sivakumar and Sood teaches receiving download instructions that specify
a priority order for which the emails are to be sent. We conclude that
Appellants have not rebutted the Examiner’s prima facie case that the
combination would have been obvious to one of ordinary skill in the art at
the time the claimed invention was made.
Thus, we sustain the Examiner’s rejection of claim 1 under 35 U.S.C.
§ 103(a). For the same reason, we sustain the Examiner’s rejection of claims
2, 3, 8–11, 16, and 17 which were not separately argued.

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Claims 4 and 12
Claim 4 recites:
4. The computer implemented method of claim 1, wherein
the download instructions further specify a number of the
e-mail messages to be sent to the e-mail client at a time.

Claim 12 contains similar language.
Appellants argue that the “communication profile” described in
Sivakumar as “provid[ing] instructions as to how e-mail messages are to be
selected, formatted, and limited . . .” (Sivakumar ¶ 38) “does not specify a
number of actual e-mail messages that are to be sent at a time . . . .”
(Appeal Br. 16.)
The Examiner does not indicate why it would have been obvious from
the combination of Sivakumar and Sood to “specify a number of the e-mail
messages to be sent to the e-mail client at a time.”
Therefore, we reverse the Examiner’s rejection of claims 4 and 12
under 35 U.S.C. § 103(a).

Claims 5 and 13
Claim 5 and 13 are argued together. (Appeal Br. 1618.)
Claim 5 recites:
5. The computer implemented method of claim 1, wherein
the download instructions further specify one of e-mail
messages to be sent to the e-mail client and e-mail messages not
to be sent to the e-mail client.

Appellants argue that even though Sood teaches setting priorities
based on keywords in an email or contacts, this is “very different from what
is recited in Claim 5. For example, [Sood ¶¶ 8384] does not describe
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(1) receiving download instructions, or (2) received download instructions
that specify e-mail messages to be sent/not to be sent. Instead, this cited
passage describes that a user manually selects a priority for a keyword or
contact.” (Appeal Br. 18.)
Arguably, claim 5 is limited to either “email messages to be sent to
the e-mail client” or “email messages not to be sent to the e-mail client,” but
not both. However, Appellants do not argue this. Their argument indicates
that they are reading the claim to include either or both options. (See Appeal
Br. 1718.) Applying a broadest reasonable interpretation leads to the same
conclusion.
Sivakumar teaches specifying emails not to be sent, e.g., blocking
emails from particular users. (Sivakumar ¶ 22.) And Sood teaches
specifying emails to be sent (Sood ¶¶ 8384). Applying the broadest
reasonable interpretation, we conclude that Appellants have not rebutted the
Examiner’s prima facie case.
Therefore, we sustain the Examiner’s rejection of claims 5 and 13
under 35 U.S.C. § 103(a).

Claims 6, 14, and 19
Claim 6, 14, and 19 are argued together. (Appeal Br. 18.)
Claim 6 recites:
6. The computer implemented method of claim 1, wherein
the download instructions further specify one of e-mail
messages to be sent from certain parties only and e-mail
messages not to be sent from certain parties.

For the reasons discussed with regard to claims 5 and 13, we sustain
the Examiner’s rejection of claims 6, 14, and 19 under 35 U.S.C. § 103(a).
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Claims 7, 15, and 20
Claim 7, 15, and 20 are argued together. (Appeal Br. 19.)
Claim 7 recites:
7. The computer implemented method of claim 1, wherein
the priority comprises one of a priority based on historical
factors, a priority based on an organizational structure, a
priority based on a specified priority of the e-mail messages, or
a priority based on one or more keywords in a subject line of
the e-mail messages.
The Examiner argues that “Sivakumar is silent about priority
comprises one of a priority based on a specified priority of the e-mail
messages.” (Answer 8.) But, the Examiner further argues, “Sood teaches
specify a priority in which the e-mail messages are to be sent to the e-mail
client . . . .” (Id.)
Appellants, again arguing that Sood relates to prioritizing emails
already received at the email client, argue that Sood does not teach “a
priority order in which the e-mail messages are to be sent to the e-mail
client.” (Appeal Br. 19, citing Sood ¶ 37.)
As discussed above with regard to claim 1, the combination of
Sivakumar and Sood address a priority order based on a specified priority of
the message. For example, priority may be based on keywords. (See
Sivakumar ¶ 22 and Sood ¶¶ 8384.)
Thus, we conclude that Appellants have not rebutted the Examiner’s
prima facie case. Therefore, we sustain the Examiner’s rejection of claims
7, 15, and 20 under 35 U.S.C. § 103(a).

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Claim 18
Claim 18 recites:
18. The apparatus of claim 16, wherein the download
instructions further specify one of a number of the e-mail
messages to be sent to the e-mail client at a time, e-mail
messages to be sent to the e-mail client, and e-mail messages
not to be sent to the e-mail client.

Appellants’ argument with regard to claim 18 reads, in its entirety
(Appeal Br. 1920):
Appellants initially urge error in the Rejection of Claim
18 for reasons given above with respect to Claim 16 (of which
Claim 18 depends upon).
Appellants further traverse the rejection of Claim 18 for
similar reasons to those given above with respect to Claims 4
and 5.

For the reasons discussed with regard to claims 1 and 5, we sustain the
Examiner’s rejection of claim 18 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejection of claims 1–3, 5–11, and 13–20 under
35 U.S.C. § 103(a) is affirmed.
The Examiner’s rejection of claims 4 and 12 under 35 U.S.C. § 103(a)
is reversed.
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).

AFFIRMED-IN-PART
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