Ex Parte Haas

Patent Trial and Appeal Board

Jun 26, 2013

11517855 (P.T.A.B. Jun. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BERTRAND HAAS
____________________

Appeal 2010-011721
Application 11/517,855
Technology Center 2400
____________________

Before JEAN R. HOMERE, TREVOR M. JEFFERSON, and
HUNG H. BUI, Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant
1
seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1-11. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
2

1
Real Party in Interest is Pitney Bowes Inc.
2
Our decision refers to Appellant’s Appeal Brief filed February 9, 2010
(“App. Br.”); Examiner’s Answer mailed May 26, 2010 (“Ans.”); and the
original Specification filed September 8, 2006 (“Spec.”).
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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention relates to a system and method for selectively
compensating service providers for delivering unsolicited and/or unwanted
e-mail messages that will help to reduce the amount of unsolicited and/or
unwanted e-mail messages being sent via computer networks. Appellant’s
Spec., ¶¶[0005]-[0007], and Abstract.
Illustrative Claims
Claims 1 and 10 are the independent claims on appeal. Claims 1 and
10 are illustrative of the invention, and are reproduced below with disputed
limitations emphasized:

1. A method for a service provider to deliver an e-
mail message for a sender using a processor based system
coupled to a network, the method comprising:

delivering from the service provider processor based
system a first data part of the e-mail message to an e-mail
address for a recipient processing system via the network;

storing in a database coupled to the service provider
processor based system a second data part of the e-mail
message;

charging the sender a sending fee for delivery of the first
data part of the e-mail message to the e-mail address for the
recipient processing system;

determining by the service provider processor based
system if the recipient processing system has requested the
second data part of the e-mail message; and

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if the recipient processing system has requested the
second data part of the e-mail message, retrieving the second
data part of the e-mail message from the database, sending the
second data part of the e-mail message to the e-mail address
for the recipient processing system, and reducing the sending
fee to the sender.

10. A method for a service provider to deliver and be
compensated for delivering an e-mail message for a sender, the
service provider using a service provider processing system
coupled to a network to deliver the e-mail message, the method
comprising:

delivering from the service provider processing system a
first portion of the e-mail message for the sender to an e-mail
address for a recipient processing system via the network, the
first portion of the e-mail message including a link for the
recipient processing system to request a second portion of the e-
mail message;

charging the sender a first fee for delivery of the e-mail
message to the e-mail address for the recipient processing
system if the recipient processing system has not requested the
second portion of the e-mail message within a predetermined
time period; and

charging the sender a second fee for delivery of the e-
mail message to the e-mail address for the recipient processing
system if the recipient processing system has requested the
second portion of the e-mail message within the predetermined
time period, the second fee being less than the first fee.

Evidence Considered
Farry US 2005/0004988 A1 Jan. 6, 2005
Heidloff US 2006/0206570 A1 Sep. 14, 2006
Muhonen US 2009/0111433 A1 Apr. 30, 2009
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Examiner’s Rejections
(1) Claims 1 and 3-9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Muhonen and Farry. Ans. 3-7.
(2) Claims 2, 10 and 11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Muhonen, Farry, and Heidloff. Ans. 8-10.

ISSUES
Based on Appellant’s arguments, the dispositive issues on appeal are:
(1) Whether the combination of Muhonen and Farry discloses or
suggests the feature “if the recipient processing system has requested the
second data part of the e-mail message, retrieving the second data part of
the e-mail message from the database, sending the second data part of the e-
mail message to the e-mail address for the recipient processing system, and
reducing the sending fee to the sender,” as recited in independent claim 1
(App. Br. 5-10); and
(2) Whether the combination of Muhonen and Farry discloses or
suggests the features “charging the sender a first fee for delivery of the e-
mail message to the e-mail address for the recipient processing system if the
recipient processing system has not requested the second portion of the e-
mail message within a predetermined time period” and “charging the sender
a second fee for delivery of the e-mail message to the e-mail address for the
recipient processing system if the recipient processing system has requested
the second portion of the e-mail message within the predetermined time
period, the second fee being less than the first fee,” as recited in independent
claim 10 (App. Br. 11-14).

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. Only those arguments actually made
by Appellant in the Appeal Brief have been considered. See 37 C.F.R.
§ 41.37(c)(1)(vii).
We disagree with Appellant’s conclusions. We adopt as our own (1)
the findings and reasons set forth by the Examiner in the action from which
this appeal is taken and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellant’s Appeal Brief. We also
concur with the conclusions reached by the Examiner and further highlight
and address specific findings and arguments for emphasis as follows.
With respect to independent claim 1, Appellant contends that the
combination of Muhonen and Farry does not disclose or suggest the feature
“if the recipient processing system has requested the second data part of the
e-mail message, retrieving the second data part of the e-mail message from
the database, sending the second data part of the e-mail message to the e-
mail address for the recipient processing system, and reducing the sending
fee to the sender.” App. Br. 5-10. In particular, Appellant argues:
(1) As noted in paragraph [0044] of Farry, if the email
is accepted by the receiving user (Transition 76), the service
provider refunds the funds to the sending user upon the
instructions of the receiving user (State 72). Note, however, that
as described in paragraphs [0066] and [0068] of Farry,
acceptance or rejection of the e-mail is performed after a
complete e-mail has been retrieved and viewed. Thus, in
Farry, the receiving client 14 can view the entire e-mail
message, and then decide if it should be accepted or rejected, or
could simply do nothing. If nothing is done and the time period
expires for the e-mail, the funds will be returned to the sending
client 12 via the sending service provider 18 (see paragraph
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[0070]). There is nothing in Farry that ties a reduction in
the sending fee to the recipient requesting a second data
part of the e-mail message. The recipient in Farry receives the
entire e-mail message and then views it. After viewing the
entire e-mail message, the recipient can then decide to accept
the e-mail, reject the e-mail, or do nothing. Thus, in Farry, the
recipient views the entire e-mail message before making any
decisions as to the value of the entire message. Even if the
recipient finds the message of value, the recipient can still reject
the email, in which case the sender will not receive a refund for
the funds to send the e-mail.
(App. Br. 9) (emphasis in original and added); and

(2) Combining the teachings of Farry with the
teachings of Muhonen . . . will not result in any change as to
when acceptance or rejection of the e-mail is performed - it will
still be performed after a complete e-mail has been retrieved
and viewed. Although a recipient may receive an e-mail in
different portions (pursuant to the teachings of Muhonen), the
recipient, after receiving the entire e-mail message and then
viewing it, can then decide to accept the e-mail, reject the e-
mail, or do nothing (pursuant to the teachings of Farry). Thus,
even if the teachings of Muhonen and Farry were combined, the
recipient in such a combined teaching will still view the entire
e-mail message before making any decisions as to the value of
the entire message. Even if the recipient finds the message of
value, the recipient can still reject the email, in which case the
sender will not receive a refund for the funds to send the e-mail.
(App. Br. 10) (emphasis in the original and added).

However, we are not persuaded by Appellant’s arguments and do not
find reversible error in the Examiner’s position. See In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011).
As correctly noted by the Examiner, the rejections are based on the
combined teachings of Muhonen and Farry. “One cannot show
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nonobviousness by attacking references individually where the rejections are
based on combinations of references. In re Keller, 642 F.2d 413, 425
(CCPA 1981). The test of obviousness is what the combined teachings
would have suggested to those of ordinary skill in the art. Id. at 425.
In particular, the Examiner finds that Muhonen discloses sending an
email message in two parts: a “first part” and a “second part.” Ans. 13
(citing Muhonen, ¶¶[0028], [0033], and [0038]). In addition, the Examiner
also finds that Muhonen discloses:
“if the recipient processing system has requested the
second data part of the e-mail message (Muhonen, [0033],
[0035]), retrieving the second data part of the e-mail message
from the database (Muhonen, [0019], lines 7-8, [0132], The
database is located on the sever [sic]), sending the second data
part of the e-mail message to the e-mail address for the
recipient processing system (Muhonen, [0039], [0040], The
content)".

Ans. 11 (emphasis added).
The Examiner then finds that Farry discloses a service provider
charging the sender a sending fee for delivery of the email message,
including making a refund to the sender if the email is accepted by the
recipient. Ans. 13 (citing Farry, ¶¶[0042]-[0044]).
According to the Examiner, the “accepted email” as disclosed in
¶[0044] of Farry can be broadly interpreted to encompass either a “first part”
or a “second part” of an email message since the email message is delivered
in a plurality of parts. Ans. 13 (citing Muhonen, ¶¶[0028], [0033], and
[0038]). Based on the findings regarding Muhonen and Farry, the Examiner
concludes that “it would have been obvious to one skilled in the art at the
time of the invention to combine the teachings of Muhonen with the
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teachings of Farry to include revenue in email delivery to provide more
efficient use of email capacity.” Ans. 5 (citing Farry, ¶[0011]).
Appellant has not contested the Examiner’s specific findings
regarding Muhonen and Farry, as evidenced from the absence of a Reply
Brief. As such, we see no reason to disturb the Examiner’s findings and
conclusion of obviousness which are reasonable in view of the combined
teachings of Muhonen and Farry. Moreover, “it is [also] proper to take into
account not only specific teachings of the references but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968). One of ordinary
skill in the art looking at Muhonen and Farry would certainly draw the
inference that a reduction in fee is made only after the complete email is
accepted, that is, after the recipient processing system has requested the
second data part of the e-mail message (Muhonen, [0033], [0035])” and
“sending the second data part of the e-mail message to the e-mail address for
the recipient processing system (Muhonen, [0039], [0040])," as the
Examiner found. Ans. 11 (emphasis added.
For the reasons set forth above, Appellant has not persuaded us of
error in the Examiner’s rejection of independent claim 1 as well as claims 3-
9, which were not separately argued, under 35 U.SC §103(a).
With respect to independent claim 10, Appellant contends that the
combination of Muhonen and Farry discloses or suggests the features
“charging the sender a first fee for delivery of the e-mail message to the e-
mail address for the recipient processing system if the recipient processing
system has not requested the second portion of the e-mail message within a
predetermined time period” and “charging the sender a second fee for
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delivery of the e-mail message to the e-mail address for the recipient
processing system if the recipient processing system has requested the
second portion of the e-mail message within the predetermined time period,
the second fee being less than the first fee.” App. Br. 11-14. In particular,
Appellant makes the same arguments as presented against independent claim
1. Likewise, for the reasons discussed in connection with Appellant’s
independent claim 1, Appellant has not persuaded us of error in the
Examiner’s rejection of independent claim 10 as well as claims 2 and 11,
which were not separately argued, under 35 U.SC §103(a).

CONCLUSION
On the record before us, we conclude that the Examiner has not erred
in rejecting claims 1-11 under 35 U.S.C. § 103(a).

DECISION
As such, we AFFIRM the Examiner’s final rejection of claims 1-11.
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).

AFFIRMED

ELD