Ex Parte Huang

Board of Patent Appeals and Interferences

Aug 26, 2010

10984088 (B.P.A.I. Aug. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/984,088 11/09/2004 Lan Huang LOT920040079US1 (061) 2722
46321 7590 08/27/2010
CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
BIAGINI, CHRISTOPHER D
ART UNIT PAPER NUMBER
2442
MAIL DATE DELIVERY MODE
08/27/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LAN HUANG
____________________

Appeal 2009-006600
Application 10/984,088
Technology Center 2400
____________________

Before JAMES D. THOMAS, THU A. DANG, and
CAROLYN D. THOMAS, Administrative Patent Judges.

C. THOMAS, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-6, 11-13, 18, and 19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

According to Appellant, the invention “relates to electronic messaging
systems and more particularly to notification systems for incoming
messages.” (Spec. [0001]).

Claims 1 and 6 are illustrative:
1. A multiple attention level message processing system comprising
multiple attention processing logic comprising instructions which when
executed by an instruction processor assign different attention levels to
corresponding different designated recipients for a single message to audibly
indicate to a viewer that an associated message enjoys a particular priority
relative to other messages.

6. A method for processing multiple attention levels in an electronic
message, the method comprising the steps of:

assigning a first attention level in a set of different attention levels to a
group of different designated recipients for a single message;

assigning a second attention level in the set of different attention
levels to another group of the different designated recipients for the single
message;

generating separate messages from the single message, each message
corresponding to a different one of the designated recipients;

specifying an attention level for each of the separate messages based
upon an attention level assigned to a recipient of the message; and,
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forwarding the separate messages to addressed ones of the designated
recipients.

Rejections
R1: Claims 6, 11-13, 18, and 19 stand rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1-20 of Haynes I (US 6,574,671 B1, June 3, 2003).
R2: Claims 6, 11-13, 18, and 19 stand rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1-24 of Haynes II (US 2002/0194284 A1, Dec. 19, 2002).
R3: Claims 6, 11-13, 18, and 19 are provisionally rejected on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1-19 of Altavilla (US 2002/0194280 A1, Dec. 19,
2002).
R4: Claims 6, 12, 13, and 19 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Haynes II.
R5: Claims 6, 12, 13, and 19 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Altavilla.
R6: Claims 1-4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Haynes II and Appelman (US 2004/0177122 A1, Sept. 9,
2004).
R7: Claims 1-4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Altavilla and Appelman.
R8: Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Altavilla, Appelman, and Sherwood (Kaitlin Duck
Sherwood, A Beginner’s Guide to Effective Email-Context
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http://web.archive.org/web /19961123205649/
http://webfoot.com/advice/email.context.html (Jan. 16, 2007).
R9: Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Haynes II, Appelman, and Sherwood.
R10: Claims 11 and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Altavilla and Sherwood.
R11: Claims 11 and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Haynes II and Sherwood.

GROUPING OF CLAIMS
(1) With respect to the Examiner’s nonstatutory obviousness-type
double patenting rejection over Haynes I, Appellant argues claims 6, 11-13,
18, and 19 as a group on the basis of claim 6 (App. Br. 5-7). We select
independent claim 6 as the representative claim. We will, therefore, treat
claims 11-13, 18, and 19 as standing or falling with representative claim 6.
(2) With respect to the Examiner’s §102 rejection over Haynes II,
Appellant argues claims 6, 12, 13, and 19 as a group on the basis of claim 6
(App. Br. 8-10). We select independent claim 6 as the representative claim.
We will, therefore, treat claims 12, 13, and 19 as standing or falling with
representative claim 6.
(3) With respect to the Examiner’s §103 rejection, Appellant argues
claims 1-4 on the basis of claim 1 (App. Br. 11-13). Appellant separately
addresses claim 5 (under an incorrect heading) (see App. Br. 14), but fails to
provide any specific arguments particular to the rejection of claim 5. Claim
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5 depends from claim 1. We will, therefore, treat claims 2-5 as standing or
falling with representative claim 1.
(4) With respect to the Examiner’s §103 rejection, Appellant argues
claims 11 and 18 as a group (App. Br. 14-15). We select claim 11 as the
representative claim. We will, therefore, treat claim 18 as standing or falling
with representative claim 11.

FINDINGS OF FACT (FF)
Haynes II Reference
1. Haynes II discloses: “The implementation of the present
invention occurs on the data processing system described above, loaded with
a software application containing a program algorithm which permits
individual selection of addresses and individual assignments of level of
importance for electronic communications.” (page 2, para. [0028]).
2. Haynes II discloses:
Data processing system 10 has at least one central processing
unit (CPU) or processor 12. . . , a permanent memory device 16
… for storing the data processing system’s operating system
and user programs/applications, and a temporary memory
device 18 (such as random access memory or RAM) that is
utilized by the processor 12 to implement program instructions.
(page 2, para. [0023]).

PRINCIPLES OF LAW
Non-Statutory Obviousness-Type Double Patenting
As stated by our reviewing court in In re Braat, 937 F.2d 589, 592
(Fed. Cir. 1991):
Obviousness-type double patenting is a judicially created
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doctrine intended to prevent improper timewise extension of
the patent right by prohibiting the issuance of claims in a
second patent which are not “patentably distinct” from the
claims of a first patent. (citation omitted).

An obviousness-type double patenting analysis is analogous to an
obviousness analysis under 35 U.S.C. § 103(a). See Studiengesellschaft
Kohle mbH v. N. Petrochemical Co., 784 F.2d 351, 355 (Fed. Cir. 1986); In
re Longi, 759 F.2d 887, 892-93 (Fed. Cir. 1985).

Obviousness
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). If the
Examiner’s burden is met, the burden then shifts to the Appellant to
overcome the prima facie case with argument and/or evidence. Obviousness
is then determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992).
Anticipation
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)).

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ANALYSIS
NON-STATUTORY OBVIOUSNESS-TYPE DOUBLE PATENTING
Claims 6, 11, 13, 18 and 19

Issue 1: Did the Examiner err in finding that claim 6 is obvious, under
the judicially created doctrine of obviousness-type double patenting, over
claims 1-20 of Haynes I?

Appellant contends claim 6 of Appellant’s claimed invention recites
“the notion of assigning individual groups of recipients of a single message
to respectively different attention levels” (App. Br. 6). Appellant argues
“claim 1 of Haynes I teaches assigning an attention level to a recipient,
which is not ‘assigning individual groups of recipients of a single message to
respectfully different attention levels’” (App. Br. 6). Appellant then
contends that “[c]onsequently, claim 6 is patentably distinguishable from the
claims of Haynes I and therefore the nonstatutory obviousness-type double
patenting rejection is improper” (App. Br. 6).
The Examiner finds the language, argued by Appellant, differs from
the claim language (see Ans. 15). Further, the Examiner finds:
“Haynes I clearly claims ‘first selecting one or more electronic address [sic]’
in claim 1, and further claims assigning ‘said selected characteristic to
multiple selected electronic addresses’ in claim 2 and ‘wherein said
characteristic includes an indication of a level of importance’ in claim 6”
(Ans. 15) (emphasis omitted). Additionally, the Examiner finds “the instant
claims do not require that each group contains more than one designated
recipient” (Ans. 15).
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We agree with the Examiner that Appellant argues language that is
not present in claim 6. Specifically, claim 6 recites “assigning a first
attention level in a set of different attention levels to a group of designated
recipients for a single message” and “assigning a second attention level in a
set of different attention levels to another group of designated recipients for
a single message” (App. Br. 18, Claims App’x).
Thus, we find claim 6 fails to recite “assigning individual groups of
recipients of a single message to respectfully different attention levels,” as
alleged by Appellant. The language argued by Appellant implies that the
individual groups of recipients are assigned different attention levels. In
contrast, claim 6 of Appellant’s application recites assigning a first attention
level and a second attention level, without any specific recitation that the
first attention level is different from the second attention level. Claim 6 only
requires that there is “a set of different attention levels.” Thus, Appellant’s
arguments are nonresponsive to the Examiner’s findings.
Accordingly, Appellant has not persuaded us of error in the
Examiner’s conclusion of obviousness for representative claim 6. Therefore,
we affirm the Examiner’s non-statutory obviousness-type double patenting
rejection over Haynes I, with respect to claim 6 and claims 11-13, 18, and 19
which fall therewith.

Issue 2: Did the Examiner err in finding that claim 6 is obvious, under
the judicially created doctrine of obviousness-type double patenting, over
(1) claims 1-24 of Haynes II and (2) claims 1-19 of Altavilla?

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Appellant contends that the Haynes II and the Altavilla patent
applications “have both been abandoned and therefore the rejections of
claims 6, 11-13, 18 and 19 as being unpatentable over claims 1-24 of Haynes
II, and claims 1-19 of Altavilla are moot and cannot stand” (Reply Br. 2).
We agree with Appellant.
Given that we have verified that both the Haynes II patent application
and the Altavilla patent application have been abandoned, the obviousness-
type double patenting rejections are moot. Obviousness-type double
patenting rejections are made to prevent a later patent from covering a slight
variation of an earlier patented invention. (see Perricone, 432 F.3d 1368 at
1372-73). As the Haynes II and Altavilla patent applications were
abandoned, the Haynes II and Altavilla patent applications cannot form the
basis of an obviousness-type double patenting rejection, as the Haynes II and
Altavilla patent applications will not result in issued patents. Accordingly,
we vacate the Examiner’s non-statutory obviousness-type double patenting
rejections of claims 6, 11-13, 18, and 19 over Haynes II and Altavilla.

35 U.S.C. §102 (b) over Haynes II
Claims 6, 12, 13, and 19
Issue 3: Did the Examiner err in finding Haynes II discloses
“generating separate messages from the single message,” as set forth in
claim 6?

Appellant argues that the portion of Haynes II (i.e., para. [0028]),
cited by the Examiner does not mention “generating separate messages for
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the single message” and the Examiner’s analysis ignores this limitation (see
App. Br. 9).
The Examiner finds that Haynes II discloses that (1) “in an email
system, messages can be sent to a plurality of recipients simultaneously” and
(2) the “recipients download messages addressed to them” (Ans. 16).
Further, the Examiner finds (1) “Haynes II shows, as is conventional and
well-known, that each recipient gets his own copy of an electronic mail
message” and (2) “[t]herefore, the system must generate separate messages
for each different one of the designated recipients” (Ans. 16). We find the
Examiner’s interpretation to be reasonable.
Further, based on our review of the Final Rejection and the Answer,
we find that the Examiner did not ignore the argued limitation (see Final
Rej. 7; see also Ans. 6). We also find Appellant failed to address the
Examiner’s findings with regard to the argued limitation and to rebut the
Examiner’s response in the Reply Brief. Thus, Appellant has not presented
evidence sufficient to refute the Examiner’s finding that Haynes II teaches
the argued limitation.
Accordingly, Appellant has failed to show that the Examiner erred in
finding that Haynes II teaches “generating separate messages from the single
message,” as set forth in claim 6. Accordingly, we affirm the Examiner’s
§ 102 rejection of claim 6, and claims 12, 13, and 19 which fall therewith.

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35 U.S.C. §102 (b) over Altavilla
Claims 6, 12, 13, and 19

We shall not reach a decision as to the § 102 (b) rejection of claims 6,
12, 13, and 19 over Altavilla. As discussed above, we affirmed the first
stated § 102 (b) rejection of claims 6, 12, 13, and 19 over Haynes II. Thus,
we find it unnecessary to reach a decision as to the Examiner’s second § 102
(b) rejection over Altavilla, which encompasses the same claims (i.e., claims
6, 12, 13, and 19), as the Examiner’s first §102 (b) rejection over Haynes II
was sufficient (see MPEP 706.02 - Prior art rejections should ordinarily be
confined strictly to the best available art ….).
Thus, we vacate the Examiner’s 35 U.S.C. § 102 (b) rejection of
claims 6, 12, 13, and 19 over Altavilla to avoid a waste of the Board’s
resources (see Ex parte Gutsch, No. 2009-000249, 2009 WL 1899607 (BPAI
June 30, 2009) (non-precedential) (vacating cumulative rejections).

35 U.S.C. §103 (a) over Haynes II and Appelman
Claims 1-5

Issue 4: Did the Examiner err in finding that the combination of
Haynes II and Appelman teaches or suggests multiple attention processing
logic that comprises instructions to assign different attention levels, as set
forth in claim 1?
Appellant argues that “Haynes II fails to teach or even mention a
‘multiple attention processing logic’ that comprises ‘instructions’ to ‘assign
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different attention levels,’” as recited in claim 1 and “the Appelman
reference fails to cure the failures of Haynes II” (App. Br. 12). Further,
Appellant contends the Examiner’s analysis ignores these limitations. Id.
The Examiner cites paragraph [0023], and finds the multiple attention
processing logic (i.e., the logic that makes up data processing system 10 of
Haynes II) “comprises instructions for carrying out the invention” (Ans. 17).
Further, the Examiner finds “the system comprising instructions taught by
Haynes II may be reasonably interpreted as a ‘multiple processing logic,’ as
it processes multiple attention levels” (Ans. 17).
The Examiner also cites paragraph [0027] of Haynes II, and finds
“Haynes II clearly shows that the invention is directed toward ‘a method and
system for individually assigning a level of importance to a plurality of
recipients’” (Ans. 17). We find the Examiner’s interpretation reasonable.
Appellant’s Specification fails to provide an explicit definition for the
term “multiple attention processing logic.” Thus, we interpret the term
broadly, but reasonably, in light of the Specification, and construe the term
“multiple attention processing logic” as any logic for processing multiple
attention levels.
Haynes II discloses that the data processing system has a software
application containing a program algorithm which permits individual
selection of addresses and individual assignments of level of importance for
electronic communications (FF 1). Thus, Haynes II processes multiple
attention levels, as there are different (i.e., multiple) levels of importance
that can be assigned to electronic communications for different recipients.
We also find it would have been obvious to a skilled artisan that the
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different levels of importance correspond to multiple attention levels, as a
level of importance serves as an indication, to a recipient, of the amount of
attention that should be given to the electronic communication. Thus,
Haynes’ data processing system processes multiple attention levels.
Furthermore, Haynes II discloses that the data processing system
includes (1) programs/applications and (2) a processor 12 to implement
program instructions (FF 2). Thus, it would have been readily understood
by one of ordinary skill in the art that Haynes II’s data processing system
includes logic to accomplish a function.
Accordingly, we find Appellant has failed to show that the Examiner
erred in finding the combination of Haynes II and Appelman teaches or
suggests multiple attention processing logic that comprises instructions to
assign different attention levels, as in claim 1. Thus, we affirm the
Examiner’s rejection of claim 1, and claims 2-4 which fall therewith.
With respect to claim 5, Appellant contends “Sherwood cannot correct
the deficiencies of the Haynes II or Altavilla and Appelman references and
therefore the Examiner’s rejection under 35 U.S.C. § 103 fails to comply
with 37 C.F.R. 1.104(C)” (App. Br. 14).
Here, Appellant does not present any further arguments with respect
to claim 5. Thus, Appellant has failed to rebut the Examiner’s findings on
pages 12 and 13 of the Answer, that claim 5 is obvious under
§ 103 over (1) Altavilla, Appelman, and Sherwood and (2) Haynes II,
Appelman, and Sherwood.
Claim 5 depends from claim 1 (App. Br. 17, Claims App’x).
Therefore, for the lack of arguments pertaining to claim 5, we affirm the
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Examiner’s rejection of claim 5 under §103 over Altavilla, Appelman, and
Sherwood and rejection of claim 5 under § 103 over Haynes II, Appelman,
and Sherwood, for the reasons discussed above with regard to claim 1.

35 U.S.C. §103 (a) over Altavilla and Appelman
Claims 1-5

We shall not reach a decision as to the § 103 (a) rejection of claims 1-
5 over Altavilla and Appelman. As discussed above, we affirmed the first
stated § 103 (a) rejection of claims 1-5 over Hayne II and Appelman. Thus,
we find it unnecessary to reach a decision as to the Examiner’s second
§ 103 (a) rejection over Altavilla and Appelman, which encompasses the
same claims (i.e., claims 1-5), as the Examiner’s first §103 (a) rejection over
Haynes II and Appelman was sufficient (see MPEP 706.02 - Prior art
rejections should ordinarily be confined strictly to the best available art).
Thus, we vacate the Examiner’s 35 U.S.C. § 103 (a) rejection of
claims 1-5 over Altavilla and Appelman to avoid a waste of the Board’s
resources (see Ex parte Gutsch, 2009 WL 1899607 (BPAI 2009) (non-
precedential) (vacating cumulative rejections).

35 U.S.C. §103 (a) over Altavilla and Sherwood
Claims 11 and 18

Issue 5: Did the Examiner err in finding the prior art teaches or
suggests “wherein said specifying step comprises the step of inserting a
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different one of said attention levels as a string in a subject line in each of
said separate messages,” as in claim 11?
Appellant argues the § 103 rejection of claims 11 and 18 over (1) the
combination of Haynes II and Sherwood and (2) the combination of
Altavilla and Sherwood, with respect to a Doyle reference (see App. Br. 15)
which is not of record.
The Examiner finds that Doyle was not cited in the Final Rejection or
during prosecution and “[r]egardless Appellant merely incorporates
previously presented arguments” (Ans. 18).
We agree with the Examiner that the Doyle reference was never cited
in the Final Rejection. Furthermore, Appellant’s Reply Brief fails to rebut
the Examiner’s findings. Therefore, we find Appellant fails to present
sufficient evidence to rebut the Examiner’s findings that claims 11 and 18
are obvious under §103 over (1) the combination of Altavilla and Sherwood
and (2) the combination of Haynes II and Sherwood.
Thus, Appellant has failed to show that the Examiner erred in finding
that the prior art teaches or suggests “wherein said specifying step comprises
the step of inserting a different one of said attention levels as a string in a
subject line in each of said separate messages,” as in claim 11.

DECISION
The Examiner’s rejection of claims 6, 11-13, 18, and 19 on the ground
of nonstatutory obviousness-type double patenting as being unpatentable
over claims 1-20 of Haynes I is affirmed.
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The Examiner’s rejection of claims 6, 11-13, 18, and 19 on the ground
of nonstatutory obviousness-type double patenting as being unpatentable
over claims 1-24 of Haynes II is vacated.
The Examiner’s provisional rejection of claims 6, 11-13, 18, and 19
on the ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1-19 of Altavilla is vacated.
The Examiner’s rejection of claims 6, 12, 13, and 19 under
35 U.S.C. § 102(b) as being anticipated by Haynes II is affirmed.
The Examiner’s rejection of claims 6, 12, 13, and 19 under
35 U.S.C. § 102(b) as being anticipated by Altavilla is vacated.
The Examiner’s rejection of claims 1-4 under 35 U.S.C. § 103(a) as
being unpatentable over Haynes II and Appelman is affirmed.
The Examiner’s rejection of claims 1-4 under 35 U.S.C. § 103(a) as
being unpatentable over Altavilla and Appelman vacated.
The Examiner’s rejection of claim 5 under 35 U.S.C. § 103(a) as
being unpatentable over Altavilla, Appelman, and Sherwood is affirmed.
The Examiner’s rejection of claim 5 under 35 U.S.C. § 103(a) as
being unpatentable over Haynes II, Appelman, and Sherwood is affirmed.
The Examiner’s rejection of claims 11 and 18 under
35 U.S.C. § 103(a) as being unpatentable over Altavilla and Sherwood is
affirmed.
The Examiner’s rejection of claims 11 and 18 under
35 U.S.C. § 103(a) as being unpatentable over Haynes II and Sherwood is
affirmed.
No time period for taking any subsequent action in connection with
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this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED

erc

CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487