Ex Parte Gellens

Patent Trial and Appeal Board

Feb 27, 2013

10884088 (P.T.A.B. Feb. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RANDALL C. GELLENS
____________________

Appeal 2010-009175
Application 10/884,088
Technology Center 2400
____________________

Before: DEBRA K. STEPHENS, JUSTIN BUSCH, and HUNG H. BUI,
Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-009175
Application 10/884,088

2
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1, 3, 4, 6-26, and 29-38. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and ENTER A NEW GROUND OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).

Introduction
According to Appellant, the invention relates to a “messaging system
on a server computes a spamicity value (spam score) for incoming messages
. . . [where] the spamicity value is communicated to a remote device prior to
communicating the messages to the remote device.” Spec. Abstract.

STATEMENT OF THE CASE
Exemplary Claim
Claim 1, reproduced below (with disputed elements highlighted), is
illustrative of the claimed subject matter:
1. A method for communicating information about
content of an electronic message to a remote device, the method
comprising:
receiving at a server the electronic message;
calculating at the server a spam score for the electronic
message, the spam score being related to a likelihood that the
electronic message comprises spam; and
communicating a message list to the remote device prior
to communicating the electronic message to the remote device,
wherein the message list includes information about the
electronic message including the spam score.

References
Kennedy
Flynn
US 6,134,582
US 6,618,747 B1
Oct. 17, 2000
Sep. 9, 2003
Appeal 2010-009175
Application 10/884,088

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Avner US 6,868,418 B1 Mar. 15, 2005
Purcell ’005
Purcell ’006
US 2005/0204005 A1
US 2005/0204006 A1
Sep. 15, 2005
Sep. 15, 2005

Rejections on Appeal
Claims 1, 3, 4, 6, 10, 15-19, 23, 24, 29, 32, 35, and 37 stand rejected
under 35 U.S.C. §102(e) as being anticipated by Purcell ’005. Ans. 3-8.
Claims 9, 11, 12, 26, 30, 33, 36, and 38 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over Purcell ’005 in view of Kennedy. Ans. 8-
11.
Claims 7, 13, 25, 31, and 34 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Purcell ’005 in view of Avner. Ans. 11-13.
Claims 8 and 14 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Purcell ’005 in view of Avner and Flynn. Ans. 13-15.
Claims 20-22 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Purcell ’005 in view of Purcell ’006. Ans. 15-16.

ISSUE
Appellant argues that Purcell ’005 does not disclose “communicating
a message list to the remote device prior to communicating the electronic
message to the remote device,” as recited in claim 1. App. Br. 7-10.
Appellant argues that Purcell ’005 discloses transmitting the message at the
same time as the message list and merely hiding the display in the preview
pane, which does not meet the recited limitation.
Issue: Has the Examiner erred in determining that Purcell ’005
discloses “communicating a message list to the remote device prior to
communicating the electronic message to the remote device,” as recited in
Appeal 2010-009175
Application 10/884,088

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independent claims 1, 29, and 32, and similarly recited in independent
claims 10, 19, 23, 35, and 37?

ANALYSIS
The Examiner finds that “[a]fter the junk score is determined, the
messages are sent in a list to the user’s inbox displaying the junk
rating/score with the relevant message while blocking the content of the
message in which the message displayed to the user until the sender answer
a challenge response question.” Ans. 17 (emphasis added).
We agree with Appellant’s contentions. The Examiner has not set
forth with specificity where Purcell ’005 discloses “communicating a
message list to a remote device prior to communicating the message to the
remote device,” as recited in claim 1 and commensurately recited in
independent claims 10, 19, 23, 29, 32, 35, and 37.
Therefore, we agree with Appellant that the Examiner has not shown
that Purcell ’005 discloses “communicating a message list to a remote device
prior to communicating the electronic message to the remote device.” As
such, given the current findings, arguments, and evidence presented before
us, we are constrained to reverse the Examiner’s rejection of claims 1, 3, 4,
6, 10, 15-19, 23, 24, 29, 32, 35, and 37 under 35 U.S.C. §102(e) as being
anticipated by Purcell ’005.

Appeal 2010-009175
Application 10/884,088

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NEW GROUND OF REJECTION
Rejection under 35 U.S.C. § 103(a): Claims 1, 10, 19, 23, 29, 32, 35,
and 37 under 37 C.F.R. §41.50(b)
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject
independent claims 1, 10, 19, 23, 29, 32, 35, and 37 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Purcell ’005 and
Kennedy.
First, we find Purcell ’005 discloses each limitation of claim 1,
including communicating both a message list and an electronic message to
the remote device, except for the feature “communicating a message list to
the remote device prior to communicating the electronic message to the
remote device,” as recited in claim 1 for the reasons set forth by the
Examiner. Ans. 3-4.
Additionally, as a secondary reference, Kennedy discloses during a
client-server session, message-related information (message list)
corresponding to a message is communicated to the client (remote device)
from the server. Kennedy col. 2 ll. 54-56. Kennedy further teaches the client
uses the message-related information to determine whether the message has
been downloaded from the server to the client. Kennedy col. 2 ll. 57-60. In
addition, Kennedy discloses “[i]n response to determining that the message
has not been downloaded, the message is downloaded from the server to the
local message store located at the client [remote device].” Kennedy col. 2 ll
60-62. Thus, Kennedy teaches or suggests communicating message
information to the remote device prior to communicating the electronic
message to the remote device. Therefore, it follows Kennedy teaches or
Appeal 2010-009175
Application 10/884,088

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suggests the one aspect of independent claim 1 that is not explicitly
disclosed in Purcell ’005.
We find one of ordinary skill in the art at the time would have been
motivated to consider transmitting a message list prior to the actual
messages in order to save bandwidth and/or storage space on the remote
device until the user has determined whether or not they want to download
the messages that are indicated as potential spam.
Therefore, we conclude that claim 1 is obvious in view of the
combination of Purcell ’005 and Kennedy.
For the same reasons as discussed above, we therefore find that claims
10, 19, 23, 29, 32, 35, and 37 are obvious in view of the combination of
Purcell ’005 and Kennedy.
The Patent Trial and Appeal Board is a review body rather than a
place of initial examination. We have made the rejection regarding
independent claims 1, 10, 19, 23, 29, 32, 35, and 37 under 37 C.F.R.
§ 41.50(b). However, we have not reviewed the remaining claims 3, 4, 6-9,
11-18, 20-22, 24-26, 30, 31, 33, 34, 36, and 38 to the extent necessary to
determine whether these claims are unpatentable over Purcell ’005 and
Kennedy and/or other prior art. We leave it to the Examiner to determine the
appropriateness of any further rejections based on these or other references.
Our decision not to enter a new ground of rejection for all claims should not
be considered as an indication regarding the appropriateness of further
rejection or allowance of the non-rejected claims.

Appeal 2010-009175
Application 10/884,088

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DECISION
Based on the analysis above, we conclude that: (1) the Examiner erred
in rejecting claims 1, 3, 4, 6-26, and 29-38; and (2) claims 1, 10, 19, 23, 29,
32, 35, and 37 are rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Purcell ’005 and Kennedy, which has been
designated as a new ground of rejection.
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” 37 C.F.R.
§ 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION:
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

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).

REVERSED; 37 C.F.R. § 41.50(b)

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