Ex Parte GonzalezDownload PDFBoard of Patent Appeals and InterferencesMay 10, 200709984929 (B.P.A.I. May. 10, 2007) Copy Citation The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board. UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _____________ Ex parte MANUEL GONZALEZ _____________ Appeal No. 2007-0964 Application No. 09/984,929 Technology Center 2100 ______________ Decided: May 10, 2007 _______________ Before MURRIEL E. CRAWFORD, ANITA PELLMAN GROSS, and ROBERT E. NAPPI Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 of the Final Rejection of claims 1 through 15, 17 through 29, and 31 through 36. For the reasons stated infra we affirm-in-part the Examiner’s rejection of these claims. Appeal 2007-0964 Application 09/984,929 2 INVENTION The invention is directed to an electronic document distribution system in which it is possible to generate a distribution list at substantially the same time as creating or sending an electronic document. See page 2 of Appellant’s Specification. Claim 1 is representative of the invention and reproduced below: 1. A method of operating an electronic document distribution system arranged to distribute documents over a network including the steps of: composing an electronic document; addressing said document with a plurality of recipient addresses by at least one of adding a recipient address or selecting a recipient identifier; in response to a user input, automatically creating a distribution list corresponding to said plurality of recipient addresses; and, distributing said electronic document after creating the distribution list. REFERENCE The reference relied upon by the Examiner is: Terada US 2002/0026480 A1 Feb. 28, 2002 (filed Jan. 19, 2001) REJECTIONS AT ISSUE Claims 22 through 291, and 34 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. The Examiner’s rejection is set forth on page 3 of the Answer. Claims 1 through 15, 17 through 29, and 31 through 36 1 We note that the statement of the rejection includes claim 30, however claim 30 has been canceled. Appeal 2007-0964 Application 09/984,929 3 stand rejected under 35 U.S.C. § 102(e) as being anticipated by or in the alterative under 35 U.S.C. § 103(a) as being unpatentable over Terada. Throughout the opinion we make reference to the Brief and Reply Brief (filed June 20, 2006 and November 1, 2006, respectively), and the Answer (mailed September 8, 2006) for the respective details thereof. ISSUES First issue: Appellant contends that the Examiner’s rejection based upon 35 U.S.C. § 101 is in error. Specifically, Appellant states that claims 22 through 29 and 34 are directed to a computer readable medium on which is imbedded a computer program. Appellant argues that the computer readable medium is statutory subject matter and does not include signals. (Br. 5, Reply Br. 2) The Examiner contends that the rejection is proper. The Examiner states that Appellant’s Specification defines the medium as a storage medium or a data carrier and accordingly finds that the claim encompasses a data carrier or a signal. (Answer 8) Thus, the first issue for us to consider is whether claims 22 through 29 and 34 are directed to a signal and therefore not directed to statutory subject matter under 35 U.S.C. § 101. Second issue: Appellant contends that the Examiner’s rejection of claims 1 through 15, 17 through 29, and 31 through 35under 35 U.S.C. § 102(e) or under 35 U.S.C. § 103 is in error. Appellant contends, on page 6 of the Brief, that in Terada a distribution list is created “after the E-mail from which the addresses are extracted is Appeal 2007-0964 Application 09/984,929 4 delivered”(emphasis original). Thus, Appellant argues that Terada does not teach or suggest the claim limitation of “distributing said electronic document after creating the distribution list.” (Br. 6-7, Reply Br. 2-3) The Examiner contends that the rejection is proper and finds that Terada teaches the creation of a distribution list. Creation of this list is triggered by delivering or storing an e-mail created fresh. (Answer 9). Thus, the second issue for us to consider is whether Terada teaches or suggests distributing said electronic document after creating the distribution list. We note that Appellant’s arguments on pages 6 through 7 of the Brief discuss claims 1 through 15, 17 through 29, and 31 through 35 as a group. Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii) we claims 1 through 15, 17 through 29, and 31 through 35 together as one group and select claim 1 as representative of the group to decide this issue. Third issue: Appellant contends that the rejection of claim 36 under 35 U.S.C. § 102(e) or under 35 U.S.C. § 103 is in error. Appellant contends that in Terada the electronic document is delivered prior to saving the distribution list. As such Appellant reasons that Terada does not teach or suggest the claim 36 limitation of “saving said distribution list at the time of distributing said electronic document.” The Examiner maintains that the rejection is proper as Terada teaches in paragraphs 53 and 54 that the list is created and stored at the time of delivery. Thus, the third issue for us to consider is whether Terada teaches or suggests “saving said distribution list at the time of distributing said electronic document.” Appeal 2007-0964 Application 09/984,929 5 FINDINGS OF FACT Appellant’s Specification discusses a method of creating e-mail distribution lists. Appellant’s Specification, on page 4, states: The present invention also extends [sic, to] a computer program arranged to implement the method of the invention and to a storage medium or data carrier carrying a computer program arranged to implement the method of the invention. As the Specification states the program can be on a storage medium or data carrier, it implies that the two ways of conveying the program are different. Thus, we find that Appellant’s Specification discusses two ways to convey the computer program, 1) a storage medium and 2) a data carrier (i.e. a signal) and not that the storage medium is a carrier signal. Terada teaches an e-mail system which allows for the automatic creation of an e-mail group. The e-mail group is created by examining the addresses entered in an e-mail. Para. 0054. The triggering event for creating the distribution list is a) delivering the e-mail, b) storing an e-mail created fresh, and c) delivering or storing an already stored e-mail in which the destination address has been modified. Para. 0053. In paragraphs 0054 et seq. Terada discusses the operation of the system when the generation of an e-mail group is triggered by delivery of an e-mail. Terada does not provide a descriptive example of the system’s operation to create an e-mail distribution list when triggering events b) or c) occur. Figure 5 depicts the flow of creation of an e-mail and shows that storing an e-mail can occur without delivering the e-mail. Thus we find that triggering events b) storing an e- mail and c) storing an already stored e-mail in which the destination address has been modified occur prior to delivery of the e-mail. Appeal 2007-0964 Application 09/984,929 6 PRINCIPLES OF LAW Office personnel must rely on Appellant’s disclosure to properly determine the meaning of the terms used in the claims. Markman v. Westview Instruments, Inc., 52 F.3d 967, 980, 34 USPQ2d 1321, 1330 (Fed. Cir. 1995). “[I]nterpreting what is meant by a word in a claim ‘is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.’” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348, 64 USPQ2d 1202, 1205, (Fed. Cir. 2002) (emphasis in original) (citing Intervet Am., Inc. v. Kee-Vet Labs., Inc., 887 F.2d 1050, 1053, 12 USPQ2d 1474, 1476 (Fed.Cir.1989)). ANALYSIS First issue: Independent claims 22 and 29 recite “[a] computer readable medium on which is embedded at least one program ….” Claims 23 through 28 and 34 are dependent upon claim 22. We find that the claimed computer readable medium is in reference to the “storage medium” discussed in the Specification. As discussed in our finding of facts, the term storage medium does not include a carrier signal. Thus, interpreting the claims in light of the Specification, we do not find that independent claims 22 and 29 are directed to a carrier signal. We therefore find for the Appellant as we disagree with the Examiner’s rationale in support of the rejection under 35 U.S.C. § 101. Second issue: Claim 1 recites “distributing said electronic document after creating the distribution list.” Appellant’s arguments center around Terada’s teaching of creating a distribution list after the document is delivered. We concur with Appellant’s characterization of Terada as it applies to the mode where the Appeal 2007-0964 Application 09/984,929 7 generation of a distribution list is triggered by delivering an e-mail. However, as discussed supra we find that Terada also teaches that there are other triggering events for generation of the distribution list e.g. storing the distribution list. Also, as discussed supra, we find that the step of storing the e-mail occurs prior to distributing the e-mail. Thus, we find that Terada teaches in one mode of operation the system will generate a distribution list prior to delivering the e-mail, i.e. delivering the e-mail after the distribution list is created. We therefore find for the Examiner, as we find ample evidence to support the Examiner’s rejection of claims 1 through 15, 17 through 29, and 31 through 35, and Appellant has not convinced us of error in the Examiner’s rejection. Third issue: Independent claim 36 recites “saving said distribution list at the time of distributing said electronic document.” As discussed in our findings of fact, Terada teaches generating a distribution list from an e-mail. Terada teaches several triggering events for the creation of the distribution list. These triggering events can result in generating and saving of the distribution list before or after the delivery of the e-mail. However, we do not find that Terada teaches or suggests that any of the triggering events result at the time of distributing the e-mail. Thus, we find for the Appellant as we do not find that Terada teaches or suggests all of the limitations of independent claim 36. CONCLUSION We find for the Examiner as we find that Terada teaches the claimed feature of delivering the e-mail after a distribution list is created. Thus, Appellant’s arguments have not persuaded us of error in the Examiner’s rejection of claims 1 through 15, 17 through 29, and 31 through 35 under 35 U.S.C. § 102(e), and we Appeal 2007-0964 Application 09/984,929 8 sustain the rejection of these claims. We find for the Appellant in that we do not find that the Examiner has shown that claims 22 through 30 and 34 are directed to non-statutory subject matter. Thus, we do not sustain the Examiner’s rejection under 35 U.S.C. § 101. Further, we find for the Appellant as we do not find that the Examiner has shown that Terada teaches or suggests saving said distribution list at the time of distributing said electronic document. Thus, Appellant’s arguments have persuaded us of error in the Examiner’s rejection of claim 36 under 35 U.S.C. § 102(e) or 35 U.S.C. § 103(a), and we do not sustain the rejection of this claim. The decision of the Examiner is affirmed-in-part. 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) (2006). AFFIRMED-IN-PART KIS HEWLETT-PACKARD COMPANY INTELLECTUAL PROPERTY ADMINISTRATION P. O. BOX 272400 FORT COLLINS, CO 80527-2400 Copy with citationCopy as parenthetical citation