Ex Parte Itoh

Board of Patent Appeals and Interferences

Jan 26, 2007

10060782 (B.P.A.I. Jan. 26, 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publication and is not binding precedent of the Board.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 HIROSHI ITOH
____________

Appeal No. 2006-2513
Application No. 10/060,782
____________

ON BRIEF
____________

Before BARRY, BLANKENSHIP, and MACDONALD, Administrative Patent Judges.
BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. ' 134 from the examiner=s final
rejection of claims 1-21, which are all the claims in the application.
We affirm.
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BACKGROUND
The invention relates to a method of specifying destinations of electronic mail
transmitted to multiple recipients including both a group name having multiple mail
addresses and a personal name. (Spec. at 1.) Claim 1 is reproduced below.
1. A method of setting destinations of electronic mail transmitted using
electronic mail software from a communication terminal to multiple destinations,
comprising the steps of:

predefining in the electronic mail software an addition symbol to add two
destinations selected from a list of destinations including a group name
representing mail addresses of multiple members; and

placing said addition symbol between one and the other destinations in a
destination section on a screen for composing an outgoing mail to thereby set
destinations including the mail addresses of said one and the other destinations,
wherein the addition symbol is selected from the group consisting of the + symbol
and the & symbol.

The examiner relies on the following references:
Meister et al. (Meister) US 6,671,718 B1 Dec. 30, 2003

Sheldon et al. (Sheldon) US 6,708,205 B2 Mar. 16, 2004

Minich et al. (Minich), Searching the Web, available at http://www.minich.com/
interneteducation/searching/search.html, last visited Aug. 12, 2004 (1999).

Claims 1, 2, 9, and 16 stand rejected under 35 U.S.C. ' 103 as being
unpatentable over Meister and Sheldon.
Claims 3-8, 10-15, and 17-21 stand rejected under 35 U.S.C. ' 103 as being
unpatentable over Meister, Sheldon, and Minich.
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We refer to the Final Rejection (mailed Mar. 18, 2005) and the Examiner=s
Answer (mailed Apr. 4, 2006) for a statement of the examiner=s position and to the Brief
(filed Aug. 24, 2005) and the Reply Brief (filed Jan. 17, 2006) for appellant=s position
with respect to the claims which stand rejected.

OPINION
Meister and Sheldon -- claims 1, 2, 9, 16
The examiner finds that Meister teaches the steps of instant claim 1 except for
the Aaddition signal@ being selected from the group consisting of the A+@ symbol and the
A&@ symbol. Meister teaches the use of a comma (e.g., Fig. 3) as an addition symbol.
The rejection further relies on Sheldon, which teaches that various characters may be
used as delimiters in electronic messaging systems to assist in the processing of e-
mails. Sheldon col. 7, l. 57 - col. 8, l. 4. The examiner concludes that it would have
been obvious, within the meaning of ' 103, to have used a delimiter such as the A+@ or
the A&@ as claimed.
Appellant contends there is no disclosure or suggestion in Sheldon to use one of
the claimed symbols. In response to the examiner=s taking of official notice that any
symbol or combination of symbols can be (or could have been, at the time of invention)
programmed as delimiters, appellant contends that the official notice has been
traversed and the examiner should provide evidence in support of the allegation. (Brief
at 8-11.)
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The USPTO may take notice of facts beyond the record which, while not
generally notorious, are capable of instant and unquestionable demonstration as to defy
dispute. In re Ahlert, 424 F.2d 1088, 1091, 165 USPQ 418, 420 (CCPA 1970). In the
instant case, appellant has not traversed the examiner=s official notice. A Atraverse@ is
not a demand for evidence. A Atraverse@ is a denial of an opposing party=s allegations of
fact. See Black=s Law Dictionary Fifth Edition (AIn common law pleading, a traverse
signifies a denial.@). Moreover, an adequate traverse must contain adequate
information or argument to create on its face a reasonable doubt regarding the
circumstances justifying the official notice. In re Boon, 439 F.2d 724, 728, 169 USPQ
231, 234 (CCPA 1971).
Appellant does not deny that any symbol or combination of symbols can be (or
could have been) programmed as delimiters. Appellant instead alleges that the scope
of the prior art does not include use of the A+@ symbol and/or the A&@ symbol to add
destinations selected from a list of destinations including a group name representing
mail addresses of multiple members. (Brief at 10-11.) Appellant=s allegation seems to
be based on the view that machines in the prior art have not been programmed to
process a A+@ or a A&@ in place of a A,@, as described by Meister. However, the position
does not speak to what the examiner alleges to be fact -- which we know to be fact --
and which, in any event, appellant has not denied.
We thus find that the evidence shows that the choice of programming of the
character or characters to initiate the claimed functions represents an arbitrary design
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choice to one skilled in the pertinent art. We are unpersuaded that the subject matter
as a whole would not have been prima facie obvious to one skilled in the art at the time
of invention.
Moreover, the portion of Sheldon referenced by the rejection of claim 1 also
provides evidence that the programming choice, per se, of the particular characters to
trigger processing in the machine does not relate to machine function beyond the
programmer=s selection of the character or characters to initiate a particular process.
In other words, at the machine level it does not matter whether the characters for
input are to consist of commas or of plus symbols. The selection of a particular symbol
for input does not change the underlying function of the machine; any symbol or group
of symbols that are recognizable by the machine could be chosen to invoke the
machine functions. As appellant notes at page 30 of the specification, the particular
symbols have been chosen for convenience of the (human) electronic mail user. The
difference in meaning between a A,@ and a A+@ is intelligible only to the human mind. As
far as the electronic mail software and system is concerned, any symbol or group of
symbols within its prior art character set would do.
Appellant does not claim different machine function with respect to the prior art,
but argues that the characters for initiating the functions are different from those in the
prior art. The particular data symbols that are to be input to the electronic mail software
and system to initiate prior art machine functions consist of what has come to be known
as nonfunctional descriptive material, as defined in Manual of Patent Examining
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Procedure (MPEP) ' 2106.01 (8th Ed., Rev. 5, Aug. 2006). The content of the
nonfunctional descriptive material carries no weight in the analysis of patentability over
the prior art. Cf. In re Lowry, 32 F.3d 1579, 1583, 32 USPQ2d 1031, 1034 (Fed. Cir.
1994) (ALowry does not claim merely the information content of a memory. . . . [N]or
does he seek to patent the content of information resident in a database.@). As such,
we are further unpersuaded that instant claim 1 distinguishes over the applied prior art.
We thus sustain the rejection of claim 1 under 35 U.S.C. ' 103 as being
unpatentable over Meister and Sheldon. Claims 2, 9, and 16 fall with claim 1.

Meister, Sheldon, and Minich
Claims 3, 4, 10
The examiner further relies on the teachings of Minich, in addition to those of
Meister and Sheldon, in the ' 103 rejection applied against claim 3.1 Meister relates to
the general problem of misdirection of electronic mail (e.g., col. 1, ll. 36-45). Meister
teaches the capability of modifying lists of intended addressees (e.g., col. 3, ll. 40-56;
Fig. 2). Meister provides examples of modifying or deleting addressees in sequence
(col. 5, ll. 17-26; Fig. 6), and allowing deletion of particular addressees with a pointing
device (col. 5, ll. 42-51).

1 We note in passing that Athe other destination@ in the fifth line of claim 3, as reproduced in the
Brief=s claim appendix, lacks proper antecedent basis in the claims. A[T]he other destination@ was
changed from Aan other destination@ in an apparent error in the amendment filed November 24, 2004.
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Appellant=s arguments in defense of claim 3 seem to contend that the teachings
of Minich are limited to searching for content on the World Wide Web. Minich, however,
shows that the artisan was well acquainted with Boolean operators that may be
represented by characters such as a plus or a minus symbol. We find no error in the
conclusion that it would have been obvious to use Aa subtraction symbol@ as claimed for
the convenience of the user. The subtraction symbol was well known as an operator for
exclusion of content. Moreover, the subtraction symbol was well known in general
mathematics (as appellant notes at page 30 of the specification), and chosen by
appellant for what it represents to the human mind than for any improvement of
machine function.
We therefore sustain the rejection of claim 3. We also sustain the rejection of
claim 4 which, by its terms -- i.e., what the subtraction symbol Aindicates to a user@ -- is
directed to nonfunctional descriptive material.
In response to appellant=s arguments in the Brief, the examiner clarifies the
rejection of claim 10 in the Answer. Appellant reproduces the Aif@ clauses of the claim in
the Reply Brief, and alleges that the references do not teach or suggest any of the
features contained within the Aif@ clauses. However, claim 10, by its terms, does not
require any of the features within the Aif@ clauses. That is, reciting that Aif@ something is
to occur does not require its occurrence. As such, the claim has not been shown to
distinguish over the applied references. We sustain the rejection of claim 10.

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Claims 5, 6-8, 11-15
Appellant=s arguments in defense of claim 5 presuppose that the teachings of
Minich are limited to World Wide Web searches. As we have indicated in our
consideration of claim 3, we find the position to be untenable. We sustain the rejection
of claim 5.
With respect to claims 7, 8, 13, and 15, appellant alleges that the references do
not teach or suggest the features relating to Aorder specifying operation symbols.@
Appellant=s argument in support of the allegation is that although Minich discloses the
use of parentheses symbols, the reference states that the symbols are for nesting
Boolean expressions. In appellant=s view, Minich does not teach or suggest the use of
parentheses symbols for specifying the order of priority for performing the operations.
(Brief at 18-20.)
We disagree with appellant=s assessment of the Minich reference, and in
particular with what the Anesting@ of Boolean (or algebraic) expressions constitutes. The
examiner provides findings (Answer at 13) with respect to the artisan=s understanding of
Minich=s teachings regarding the use of parentheses, which appellant has not
persuasively rebutted. Appellant having failed to show error in the rejection of claims 7,
8, 13, and 15, we sustain the rejection.
With respect to claim 14, appellant contends that Meister (col. 5, ll. 17-27) does
not teach that address deletion is performed before the transmission of the electronic
mail so that only the group name is displayed in the destination section on a screen
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displayed at each destination. (Brief at 20-21.) In response to the examiner=s findings
in the Answer (at 9), appellant holds that the identified section of Meister does not teach
the claimed deletion of the operation symbols. (Reply Brief at 14.)
Meister teaches at column 5, lines 17 through 27 that when the addressee is
deleted, the system removes any delimiters from the header field that need to be
removed. We consider the reference to provide ample support for the examiner=s
finding that Meister, when combined with Sheldon and Minich, teaches deletion of the
operation symbols as claimed. We are not persuaded of error in the rejection of claim
14, and thus sustain the rejection.2

Claims 17-21
Appellant contends that claim 17 is patentable over the references because the
combination does not teach or suggest assigning a new group name to destinations for
registration in a destination list. (Brief at 21.) The examiner finds that the use of an
address book by Meister inherently teaches assigning group names to destinations in a
destination list (Answer at 9), that the presence of both group and individual e-mail
names and aliases as used by Meister indicates that e-mail address groups may be
formed and given group names and aliases (id. at 14), and that widely used e-mail
programs are well known in the art to include such features as creating and managing

2 We also note that claim 14 is indefinite under 35 U.S.C. ' 112, second paragraph, in that Athe
operation symbols@ lacks proper antecedent basis in the claims.
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group lists and aliases (id.). Appellant argues that inherency cannot be used to reject a
claim under 35 U.S.C. ' 103 (Brief at 21-22), and while not alleging that well known e-
mail programs do not include features such as creating and managing group lists and
aliases, appellant complains that only Meister, Sheldon, and Minich have been named
in the statement of the rejection (Reply Brief at 15).
Even assuming appellant=s arguments with respect to Ainherency@ and improper
procedure to be correct, appellant has not rebutted the examiner=s finding that Meister=s
teachings are sufficient to demonstrate assigning a new group name to destinations for
registration in a destination list in the prior art, even without the presumption of what is
inherent or the presumption of what one skilled in the art knew apart from what is set
forth in the text and drawings of Meister. Appellant=s further argument in support of
claim 17, and of claims 18 through 21, rests on the position that Meister, Sheldon, and
Minich do not teach the claimed deletion of the operation symbols (Brief at 21-24; Reply
Brief at 14-17), which rests in turn on the untenable position that the teachings of Minich
are limited to Web searches. We sustain the rejection of claims 17 through 21.

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CONCLUSION
We have considered all of appellant=s arguments but are not persuaded of error
in the rejection of any claim. The rejection of claims 1-21 under 35 U.S.C. ' 103 is
affirmed.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR ' 1.136(a). See 37 CFR ' 1.136(a)(1)(iv).

AFFIRMED

LANCE LEONARD BARRY )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
HOWARD B. BLANKENSHIP ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ALLEN R. MACDONALD )
Administrative Patent Judge )
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