Ex Parte Katsuda

Board of Patent Appeals and Interferences

Jul 5, 2011

09880039 (B.P.A.I. Jul. 5, 2011)

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.
09/880,039 06/14/2001 Takeo Katsuda 011350-276 5950
7590 07/06/2011
Platon N. Mandros
BURNS, DOANE, SWECKER & MATHIS, L.L.P.
P.O. Box 1404
Alexandria, VA 22313-1404
EXAMINER
DUONG, THOMAS
ART UNIT PAPER NUMBER
2454
MAIL DATE DELIVERY MODE
07/06/2011 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 TAKEO KATSUDA
_____________

Appeal 2009-011070
Application 09/880,039
Technology Center 2400
______________

Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and
MARC S. HOFF, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 14, 31, 38, 40, 42, and 44 through 46. The Examiner has indicated
that claims 15 through 30, 37, 39, 41, 43, and 47 contain allowable subject
matter.1
We Affirm-in-part.
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INVENTION
The invention is directed to an e-mail controlling apparatus which
allows a user of a personal computing device upon receiving an e-mail to
have attachments to the e-mail sent to other devices. See paragraphs 7
through 10 of Appellant’s Specification. Claim 14 is representative of the
invention and is reproduced below:
14. An E-mail controlling apparatus comprising:

an E-mail receiving device receiving E-mail including a
main text portion and an attachment file portion and being
addressed to a portable terminal unit;

an E-mail preparing device preparing receipt notice E-
mail by removing the attachment file portion from the received
E-mail;

an E-mail transmitting device transmitting to said
portable terminal unit the receipt notice E-mail prepared by said
E-mail preparing device and an E-mail identifying multiple
prospective image output devices;

an instruction receiving device receiving an E-mail
including an instruction for specifying one of multiple image
output devices;

a converting device converting the attachment file
portion into data of a format acceptable to the image output
device; and

a data transmitting device transmitting said data after the
conversion to the image output device specified by said
instruction.

1 See Non-Final Office action dated March 21, 2008.
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REFERENCES
Theimer 5,493,692 Feb. 20, 1996
Miller 6,421,707 B1 Jul. 16, 2002

REJECTIONS AT ISSUE
The Examiner has rejected claims 14 and 31 under 35 U.S.C. § 102(e)
as being anticipated by Miller. The Examiner’s rejection is on pages 3
through 6 of the Answer.2
The Examiner has rejected claims 38, 40, 42, and 44 through 46
under 35 U.S.C. § 103(a) as being unpatentable over Miller in view of
Theimer. The Examiner’s rejection is on pages 6 through 10 of the Answer.

ISSUE
Anticipation Rejection of claims 14 and 31
Appellant argues on page 7 of the Brief and pages 1 and 2 of the
Reply Brief3, that the Examiner’s rejection of independent claims 14 and 31
is in error. Appellant’s arguments present us with the issue: did the
Examiner err in finding that Miller teaches transmitting to the portable unit a
receipt e-mail which includes an identification of multiple prospective image
output devices as claimed?

2 Throughout this decision we refer to the Examiner’s Answer dated
December 24, 2008.
3 Throughout this decision we refer to the Brief dated September 23, 2008,
and the Reply Brief dated February 23, 2009.
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Obviousness rejection of clams 38, 40, and 42
Appellant argues the obviousness rejection of claims 38, 40, and 42
on pages 8 and 9 of the Brief and pages 2 and 3 of the Reply Brief.
Appellant’s arguments present us with the issue: did the Examiner err in
finding that Miller teaches an e-mail notification is sent to the destination of
an incoming e-mail and that the notification identifies an image output
device to which the a portion of the original e-mail is sent?

Obviousness rejection of clams 44 through 46
Appellant argues the obviousness rejection of claims 44 through 46 on
pages 10 and 11 of the Brief and pages 3 and 4 of the Reply Brief.
Appellant’s arguments present us with the issue: did the Examiner err in
finding that Miller teaches generating an e-mail containing notification or
receipt of an e-mail and notification of at least one output device to which
part of the e-mail is output as claimed?

ANALYSIS
Anticipation Rejection of claims 14 and 31
We have reviewed Appellant’s arguments in the Briefs and we concur
with Appellant’s conclusion that the Examiner erred in finding that Miller
teaches transmitting to the portable unit a receipt e-mail which includes an
identification of multiple prospective image output devices as claimed. The
Examiner identifies that Miller’s figures 4(j), 4(n), 4(q) and 4(t) show that
Miller teaches mail forwarding to different devices. Answer 10-11. We
concur. However, the Examiner has not shown that the information the hand
held computer displays shown in these figures is from an e-mail as claimed.
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Further, we note that claims 14 and 31 recite an instruction receiving device
that receives an e-mail specifying the image output device and that the data
is transmitted to the output device. Thus, the data indicating the image
output devices is functionally related to the apparatus claimed. Accordingly,
we will not sustain the Examiner’s anticipation rejection of claims 14 and
31.

Obviousness rejection of clams 38, 40, and 42
We have reviewed Appellant’s arguments in the Briefs and we concur
with Appellant’s conclusion that the Examiner erred in finding that Miller
teaches an e-mail notification is sent to the destination of an incoming e-mail
and that the notification identifies an image output device to which a portion
of the original e-mail is sent. The Examiner responds to this argument by
finding that lines 33 through 38 in column 3 of Miller teach that the delivery
subsystem teaches sending a notification that a message has been received.
Answer 12. We concur; however, the Examiner has not shown that this
notification contains the notification of the selected image output device as
recited in claims 38, 40, and 42. We note that the selected output device is
selected based upon an acquired location information of the destination, thus
the information is the product of a claimed function. The Examiner has not
shown that the teachings of Theimer make up for this deficiency.
Accordingly, we will not sustain the Examiner’s obviousness rejection of
claims 38, 40, and 42.

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Obviousness rejection of clams 44 through 46
We have reviewed Appellant’s arguments in the Briefs and we
disagree with Appellant’s conclusion that the Examiner erred in finding that
Miller teaches generating an e-mail containing notification or receipt of an e-
mail and notification of at least one output device to which part of the e-mail
is output as claimed. Claim 44 recites a processor that generates an e-mail
containing notification or receipt and information on at least one output
device. However, claim 44 recites no function associated with this
information other than it is sent to a certain destination. Thus, the content of
the generated e-mail is not functionally related to the claimed apparatus.
The Examiner need not give patentable weight to descriptive material absent
a new and unobvious functional relationship between the descriptive
material and the substrate. See In re Lowry, 32 F.3d 1579, 1583-84 (Fed.
Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004) and our
decision in Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative),
aff’d, No. 06-1003 (Fed. Cir. Jun. 12, 2006) (Rule 36). As such, even if the
information in the receipt notification sent to the user of Miller’s system
(Appellant admits such a receipt notification on page 9 of the Brief) is
different from that which is claimed, such a difference will not differentiate
the claim from the prior art. Accordingly, Appellant has not persuaded us of
error in the Examiner’s rejection of claims 44 through 46 and we sustain the
Examiner’s rejection.

CONCLUSION
Appellant has persuaded us of error in the Examiner’s decision to
reject claims 14, 31, 38, 40, and 42. Appellant’s arguments have not
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persuaded us of error in the Examiner’s decision to reject claims 44 through
46.

DECISION
The decision of the Examiner to reject claims 14, 31, 38, 40, 42, and
44 through 46 is affirmed in part.

AFFIRMED IN PART

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