Ex Parte Gonzalez

Board of Patent Appeals and Interferences

May 10, 2007

09984929 (B.P.A.I. May. 10, 2007)

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publication and is not binding precedent of the Board.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