Ex Parte Domenico

Board of Patent Appeals and Interferences

Mar 1, 2010

10302498 - (D) (B.P.A.I. Mar. 1, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RAGUSEO DOMENICO
___________

Appeal 2009-003586
Application 10/302,498
Technology Center 2100
____________

Decided: March 1, 2010
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
THU A. DANG, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s rejection of claims 1-6 and 10-23. Claims 7-9 have been
cancelled (App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b) (2008).
We reverse.

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STATEMENT OF THE CASE
INVENTION
The invention on appeal relates generally to controlling multiple
electronic mail messages in a data processing system. (Spec. 1).

ILLUSTRATIVE CLAIM
1. A method of controlling a multiple electronic mail message in a data
processing system comprising the steps of:

providing a multiple electronic mail message having embedded
therein a plurality of basic electronic mail messages that have been sent from
or forwarded by a plurality of users;

reading the multiple electronic mail message;

presenting a user interface, wherein the user interface presents at least
a portion of a first basic electronic mail message within the plurality of basic
electronic mail messages and a selection structure having a plurality of
selectable items, wherein each selectable item within the plurality of
selectable items is associated with an identifier of a corresponding basic
electronic mail message within the plurality of basic electronic mail
messages; and

responsive to selection of one of the plurality of selectable items, at
least partially presenting a second basic electronic mail message associated
with the selected item.

PRIOR ART
The Examiner relies upon the following references as evidence:
Becker 6,981,223 B2 Dec. 27, 2005

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Microsoft Mail Electronic Mail For PC Networks Workstation
Software For Windows And Presentation Manager Version 3.0, 1A –
4, 20, 23, 24, 28, 29 (Microsoft Corp. 1992) (hereinafter “Microsoft”).

THE REJECTIONS
The Examiner rejected claims 5, 17, and 23 under 35 U.S.C. §112,
second paragraph.1
The Examiner rejected claims 1-4, 6, 10-16, and 18-22 under 35
U.S.C. § 102(b) as anticipated by Microsoft.
The Examiner rejected claims 5, 17, and 23 under 35 U.S.C. §103(a)
as unpatentable over Microsoft and Becker.

ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:

Issue 1: Under § 112, did the Examiner err in rejecting
representative claim 5 by concluding that the limitation “the corresponding
item,” has insufficient antecedent basis?

Issue 2: Under § 102, did the Examiner err in rejecting
representative claim 1 by finding that Microsoft discloses or describes “a
selection structure having a plurality of selectable items, wherein each
selectable item within the plurality of selectable items is associated with an

1 This rejection was made in the Non-Final rejection and responded to by
Appellant in Appellant’s Brief. (App. Br. 8-9). The Examiner’s Answer
does not withdraw the rejection and does not address Appellant’s Response.
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identifier of a corresponding basic electronic mail message within the
plurality of basic electronic mail messages”?

PRINCIPLES OF LAW
35 U.S.C. §112, second paragraph
"The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope." In re Warmerdam, 33 F.3d
1354, 1361 (Fed. Cir. 1994) (citing Amgen Inc. v. Chugai Pharmaceutical
Co. Ltd., 927 F.2d 1200, 1217 (Fed. Cir.1991)). The "inquiry therefore is
merely to determine whether the claims do, in fact, set out and circumscribe
a particular area with a reasonable degree of precision and particularity."
In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). "[T]he definiteness of the
language employed must be analyzed - not in a vacuum, but always in light
of the teachings of the prior art and of the particular application disclosure as
it would be interpreted by one possessing the ordinary level of skill in the
pertinent art." Id.
Anticipation under § 102
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) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)).
Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference. In other words, if
granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art,
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then that claim is anticipated, regardless of whether it also
covers subject matter not in the prior art.

Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999)
(citations omitted).
FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF)
that are supported by the record:

The Microsoft Reference
1. Microsoft discloses that a plurality of electronic mail messages can be
shown and selected from an “Inbox” user interface. (Pg. 1, 4, Fig. 1).
2. Microsoft discloses that in a message body a user can cut and paste
text between messages and files. (Pg. 4, 2nd para.).
3. Microsoft discloses that if a user wants to send formatted files such as
Microsoft Word and Microsoft Excel documents, the formatted files
can be sent with the message as attached files. (Id.).

ANALYSIS
ISSUE 1
We decide the question of whether the Examiner erred in concluding
under § 112 that the limitation “the corresponding item,” has insufficient
antecedent basis. (Claim 5). As noted above, the Examiner’s Answer did
not contain a withdrawal of the rejection or a response to Appellant’s
arguments. See n.1 supra.
We note that claim 1 (from which claim 5 indirectly depends via
claim 4), recites “wherein each selectable item within the plurality of
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selectable items is associated with an identifier of a corresponding basic
electronic mail message within the plurality of basic electronic mail
messages.” (See claim 1). Thus, it is our view that according to the claim
language, each item has a corresponding basic electronic mail message
through its association with an identifier. Therefore, we conclude that one
possessing an ordinary level of skill in the art would have interpreted each
selectable item as being associated with an identifier that corresponds to a
basic mail message. Accordingly, we reverse the Examiner’s 35 U.S.C.
§112, second paragraph rejection of claims 5, 17, and 23.

ISSUE 2
We decide the question of whether the Examiner erred in finding
under § 102 that Microsoft discloses or describes “a selection structure
having a plurality of selectable items, wherein each selectable item within
the plurality of selectable items is associated with an identifier of a
corresponding basic electronic mail message within the plurality of basic
electronic mail messages.” (See claim 1 and the commensurate language
recited in each of independent claims 10-13 and 19; see also App. Br. 11).
The Examiner contends that this limitation is disclosed or described
on pages 4 and 20 of Microsoft. (Ans. 4, 8-9). The Examiner notes that
Microsoft teaches a user interface in which a user can create or read a
message where the user is presented with selectable items for mail. (Id.).
The Examiner finds that the claimed multiple electronic mail message is
disclosed on page 1 and Fig. 1 of Microsoft that the Examiner finds teaches
that once a user sends a message, others can then send a reply or forward the
message to one mail recipient or all mail recipients. (Id. at 9). The
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Examiner reasons that “all the replies and forward[ed] emails can be selected
if the user clicks on the linked item.” (Id. at 15-16).
We begin our analysis by noting that the commensurate language of
each independent claim on appeal requires a multiple electronic mail
message to have embedded within it a plurality of basic mail messages that
have been sent or forwarded by a plurality of users. While Microsoft
discloses that a plurality of electronic mail messages can be shown and
selected from an “Inbox” user interface, we find that the messages shown are
not an integral part of a multiple electronic mail message within the meaning
of Appellant’s independent claims, and are instead, separate messages. (See
Microsoft, Fig. 1). Further, while each message may contain an attachment
to a spreadsheet or word processor document, without more, we do not find
that the attachments are equivalent to the plurality of basic electronic mail
messages, within the meaning of Appellant’s independent claims. (FF 2-3).
Based upon our review of the record, we agree with Appellant that the
Examiner has not clearly shown that Microsoft discloses or describes a
plurality of selectable items wherein each selectable item is associated with
an identifier of a corresponding basic electronic mail message, as recited in
commensurate form in each independent claim before us on appeal. In
particular, we find the Examiner has not sufficiently developed the record to
clearly establish how the spreadsheet or word processor document
attachments described in Microsoft fairly disclose a plurality of selectable
items wherein each selectable item is associated with an identifier of a
corresponding basic electronic mail message.
Therefore, we agree with Appellant that Microsoft does not fairly
disclose a user interface that allows a user to select an item that corresponds
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to a basic electronic mail message that is one of a plurality of basic
electronic mail messages embedded within a multiple mail message, within
the meaning of Appellant’s independent claims. (See Reply Br. 2-3). We
find that to sustain the Examiner based upon the cited portions of Microsoft
would require speculation on our part. We decline to engage in speculation.
We note that “absence from the reference of any claimed element
negates anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d
1565, 1571 (Fed. Cir. 1986) (citation omitted). Accordingly, we reverse the
Examiner’s anticipation rejection of independent claims 1, 10-13, and 19
and associated dependent claims 2-4, 6, 14-16, 18, and 20-22.
Because we have reversed the Examiner’s rejection of each
independent claim on appeal, and the Examiner does not rely upon the
teaching of Becker to remedy the noted deficiency, we also reverse the
Examiner’s § 103 rejection of dependent claims 5, 17, and 23.

CONCLUSIONS
Based on the findings of facts and analysis above:
The Examiner erred by concluding that the limitation “the
corresponding item,” has insufficient antecedent basis.
The Examiner erred in finding that Microsoft discloses or describes a
selection structure having a plurality of selectable items, wherein each
selectable item within the plurality of selectable items is associated with an
identifier of a corresponding basic electronic mail message within the
plurality of basic electronic mail messages.

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ORDER
We reverse the Examiner’s rejection of claims 5, 17, and 23 under 35
U.S.C. §112, second paragraph.
We reverse the Examiner’s rejection of claims 1-4, 6, 10-16 and 18-
22, under 35 U.S.C. § 102(b).
We reverse the Examiner’s rejection of claims 5, 17, and 23 under 35
U.S.C. §103(a).

REVERSED

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