Ex Parte Jung et al

Patent Trials and Appeals Board

Sep 12, 2013

11107343 - (D) (P.T.A.B. Sep. 12, 2013)

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.
11/107,343 04/15/2005 Edward K.Y. Jung SE1-0459-US 4021
80118 7590 09/13/2013
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
AHMED, MOHAMMED
ART UNIT PAPER NUMBER
2456
MAIL DATE DELIVERY MODE
09/13/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EDWARD K.Y. JUNG, ROYCE A. LEVIEN,
MARK A. MALAMUD, and JOHN D. RINALDO, JR.
____________

Appeal 2011-004310
Application 11/107,343
Technology Center 2400
____________

Before KRISTEN L. DROESCH, STANLEY M. WEINBERG and
GREGG I. ANDERSON, Administrative Patent Judges.

ANDERSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-4, 10, 14-18, 24, 27, 29-35, 38, 42-49, 52, and 55. App.
Br. 3; see also Notice of Appeal.
1
We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

1
The Appeal Brief indicates that only the rejections of claims 4, 18, 32 and
46 are on appeal. App. Br. 6. However, the Appeal Brief also indicates that
claims 1-4, 10, 14-18, 24, 27, 29-35, 38, 42-49, 52, and 55 are on appeal.
App. Br. 3. The Notice of Appeal indicates that the final decision of the
(Footnote continued on next page.)
Appeal 2011-004310
Application 11/107,343

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STATEMENT OF THE CASE
Appellants’ invention includes a method implemented by a device
capable of receiving a signal related to a receipt of electronic mail by a
limited-use electronic mail account and of transmitting a signal related to the
receipt of the item of electronic mail by the limited-use electronic mail
account. The device is capable of detecting the receipt of electronic mail in
a limited-use electronic mail account and of transmitting a signal related to
the receipt of the item of electronic mail by the limited-use electronic mail
account. See generally Spec. 6, ll. 18-28. Claims 1, 2, and 4 are reproduced
below:
1. A method related to electronic mail, the method comprising:
receiving a signal related to a receipt of an item of electronic mail by a
limited use electronic mail account; and
transmitting a signal related to the receipt of the item of electronic
mail by the limited-use electronic mail account.
2. The method of claim 1, wherein the limited-use electronic mail
account is limited in relation to one or more defined operations.
4. The method of claim 2, wherein the one or more defined operations
comprise:
one or more prohibited operations.

Examiner is on appeal. See Final Office Action mailed July 10, 2009.
Accordingly, we treat all of claims 1-4, 10, 14-18, 24, 27, 29-35, 38, 42-49,
52, and 55 as appealed in accordance with the Appeal Brief at page 3 and the
Notice of Appeal.
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THE REJECTIONS
1. The Examiner rejected claims 15-18, 24, and 27 under 35 U.S.C.
§ 101 as being directed to unpatentable subject matter. Ans. 3.
2

2. The Examiner rejected claims 1-4, 10, 14-18, 24, 27, 29-35, 38,
42-49, 52, and 55 under 35 U.S.C. § 102 as being by Beyda (US
2003/0233415 A1, published Dec. 18, 2003). Ans. 3-7.

ISSUE
Under § 102, has the Examiner erred in rejecting claim 4 by finding
that Beyda discloses “the one or more defined operations comprise: one or
more prohibited operations”?

ANALYSIS
Rejection of Claims 15-18, 24, and 27 under 35 U.S.C. § 101
Claim 15 recites, in pertinent part, “a signal bearing medium.” Claims
16-18, 24 and 27 depend on claim 15. The Examiner finds claim 15 claims a
transitory, propagating signal. Ans. 3. As such the claims are not directed
to a “process, machine, manufacture, or composition of matter” under 35
U.S.C. §101. Id. (citing In re Nuijten, 500 F3d 1346 (2007)).
Appellants do not present arguments addressing this rejection. “Any
arguments or authorities not included in the brief or a reply brief filed

2
Throughout this opinion, we refer to (1) the Appeal Brief filed February
11, 2010 (“App. Br.”); (2) the Examiner’s Answer mailed August 23, 2010
(“Ans.”); and (3) the Reply Brief filed October 25, 2010 (“Reply Br.”).
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pursuant to [37 C.F.R.] § 41.41 will be refused consideration by the Board,
unless good cause is shown.” 37 C.F.R. § 41.37(c)(1)(vii)(2007).
The rejection of claims 15-18, 24 and 27 is sustained.

Rejection of Claims 1-3, 10, 14-17, 24, 27, 29-31, 33-35, 38, 42-45, 47-49,
52 and 55 under 35 U.S.C. § 102

No separate argument for patentability is made as to any of claims 1-
3, 10, 14-17, 24, 27, 29-31, 33-35, 38, 42-45, 47-49, 52 and 55. Appellants
have waived any argument with respect to those claims. 37 C.F.R.
§ 41.37(c)(1)(vii)(2011).
Accordingly, the rejections of claims 1-3, 10, 14-17, 24, 27, 29-31,
33-35, 38, 42-45, 47-49, 52 and 55 are sustained.

Rejection of Claims 4, 18, 32, and 46 under 35 U.S.C. § 102
On this record, we find no error in the Examiner’s obviousness
rejection of representative claim 4 which recites, in pertinent part, “wherein
the one or more defined operations comprise: one or more prohibited
operations.” Claim 4 depends on claim 2, which depends on claim 1.
Appellants do not contest the anticipation rejection of claims 1 or 2 based on
Beyda.
The Examiner cites to Beyda’s teaching of a temporary email account
as reading on a “limited use” email account as recited in claim 1. Ans. 4
(citing Beyda, ¶ [0018]). The cited portion of Beyda specifically teaches
“the recipient specifies a time limit after which the temporary address will
expire.” ¶ [0018]. The Examiner maps the expiration of a time limit to a
“prohibited operation.” Ans. 9. The Examiner reasons expiration of the
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temporary mailbox means all operations are prohibited. Id. The Examiner
further cites paragraph 35 of Beyda, which states in part:
the user supplies rules for filtering or forwarding. For example,
the user could specify that only mail containing a particular
keyword or re line (for example, a purchase price threshold), or
only mails that meets the time deadline, be forwarded and that
mail not meeting the conditions be retained in the temporary
mailbox but not forwarded, or that it be deleted or forwarded to
a different address.
Id. at 9-10. The filtering process is cited as another prohibited operation of
the temporary mailbox. Ans. 10. If a condition as stated in is not met, then
the message is not forwarded and it is “prohibited.” Id.
Appellants contend the disputed limitation is not disclosed by Beyda.
App. Br. 24. The portions of Beyda relied on by the Examiner do not “recite
the text” of claim 4. App. Br. 26. Further, “‘one or more prohibited
operations’ is different from cancelling a temporary electronic mailbox when
a specified condition actually occurs.” Id. Appellants further urge that the
rejection is not supported by “objectively verifiable evidence,” (App.Br. 26)
which is required to meet the Examiner’s burden of making a prima facie
case of anticipation. App. Br. 26-27. Such evidence, according to
Appellants, is “objective documentary evidence.” App. Br. 28 (citing, inter
alia, Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1473 (Fed.
Cir. 1997)(expert’s conclusory statement of anticipation unsupported by
documentary evidence not a substitute for “anticipatory disclosure in the
prior art reference itself.”) As a result of this claimed deficiency, the
Examiner has failed to make a prima facie case. Id. Absent such evidence,
the failure of Beyda to recite the precise claim language precludes reliance
on Beyda for an anticipation rejection. App. Br. 28-30. In their Reply Brief,
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Appellants respond to the Examiner’s mapping of “prohibited operations” by
presenting an argument based on the meaning of “prohibited” from the
Specification. Reply Br. 5. Further, the Examiner did not consider the
claims “as a whole” and therefore did not support a prima facie case of
anticipation. Reply Br. 6-12.
We disagree that the Examiner must support the rejection with
additional documentary support because the reference to Beyda does teach
the text of the disputed limitation. It is not necessary for a reference to use
the exact language of the claim to teach the disputed limitation. “These
elements must be arranged as in the claim under review, but this is not an
‘ipsissimis verbis’ test”. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990)
(citations omitted). The Motorola case does not state otherwise.
Appellants’ conclusory contention is that cancelling is not prohibiting. The
Examiner specifically finds expiration of the temporary mailbox means all
operations are “prohibited.” Appellants do not specifically respond to the
Examiner’s reasoning for mapping the cancellation of a limited email
account to a “prohibited operation.” To the extent Appellants respond, the
response is not persuasive of error.
Appellants’ argument relying on a purported definition of
“prohibited” is first raised in the Reply Brief and is considered waived. See
Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[The
reply brief [is not] an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner’s rejections, but
were not.”). Notwithstanding that, the argument is not persuasive. First, no
definition of “prohibited” is clearly set forth in such a way that “prohibited”
would be limiting. See Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324,
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1330 (Fed. Cir. 2012), quoting CCS Fitness, Inc. v. Brunswick Corp., 288
F.3d 1359, 1366 (Fed. Cir. 2002). Second, the portion of the Specification
relied on discusses “prohibited printing and/or viewing . . . (e.g., for a
specified number of times or for a specified period of time.)” Reply Br. 5-6
(citing Spec. 11). Beyda teaches prohibiting after a period of time, which at
least suggests a “prohibited operation.” See Ans. 4, 9 (citing Beyda, ¶¶
[0018], [0035]).
We are not persuaded of any error and sustain the rejection of claim 4.
Claims 18, 32, and 46 have the same or virtually the same limitation. The
arguments for patentability of claims 18 (App. Br. 31), 32 (App. Br. 40), and
46 (App. Br. 48) are substantially identical to those already analyzed. The
rejection of claims 18, 32, and 46 are sustained for reasons already
discussed.

CONCLUSION
The Examiner did not err in rejecting claims 15-18, 24, and 27 under
§ 101.
The Examiner did not err in rejecting claims 1-4, 10, 14-18, 24, 27,
29-35, 38, 42-49, 52, and 55 under § 102.

DECISION
The Examiner’s decision rejecting claims 1-4, 10, 14-18, 24, 27, 29-
35, 38, 42-49, 52, and 55 is affirmed.
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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