Ex Parte Kelley

Board of Patent Appeals and Interferences

Jul 17, 2006

09433504 (B.P.A.I. Jul. 17, 2006)

The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.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 EDWARD E. KELLEY

____________

Appeal No. 2006-0489
Application No. 09/433,504

____________

ON BRIEF
____________

Before HAIRSTON, KRASS, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.

A patent examiner rejected claims 1-10 and 12-20. The appellant appeals
therefrom under 35 U.S.C. § 134(a). We affirm.

I. BACKGROUND
The invention at issue on appeal concerns electronic mail ("e-mail"). E-mail can
be used to send messages to anyone who is connected to the Internet. When
someone sends an e-mail message via the Internet, the message is sent to a mail
server to which e-mail software on a client computer can login to see whether a user
has received e-mail. When the user wants to read such a message, the software
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Application No. 09/433,504

downloads the messages to the user's client computer where the user can read it,
delete it, or respond to it. (Spec., p. 1, ll. 12-21.)

Typical e-mail software allows a user to create electronic storage sites for
categorizing and storing received e-mail. Unfortunately, the user must perform such
storing ''manually'' after the software has downloaded an individual message to the
user's computer. (Id. at p. 2, ll. 3-6.)

In contrast, the appellant's invention categorizes an e-mail message as it is sent
by including a category identifier in the header of the message. A plurality of electronic
storage sites correspond to the category identifiers. When the e-mail message is
downloaded by a recipient's computer, the message is stored in an electronic storage
site according to its category identifier. (Id. at p. 10, ll. 19-24.)

A further understanding of the invention can be achieved by reading the following
claim.
1. A method of sending an e-mail message from a first client computer to
a second client computer via a network, said method comprising the steps
of:

(a) creating an e-mail message on a first client computer;

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Application No. 09/433,504

(b) providing a plurality of category identifiers for categorizing said
e-mail message;

(c) selecting at said first client computer by a sender of said e-mail
message a category identifier for said e-mail message from said plurality
of category identifiers;

(d) incorporating said category identifier into said e-mail message;

(e) sending said e-mail message having the category identifier
from said first client computer;

(f) receiving, by a second client computer, said e-mail message
having the category identifier, said second client computer having a
plurality of electronic storage sites corresponding to said plurality of
category identifiers;

(g) placing said e-mail message having the category identifier in an
electronic storage site corresponding to the category identifier;

(h) selecting, by a user of said second client computer, a particular
electronic storage site; and

(I) viewing e-mail messages stored in said particular electronic
storage site.

Claims 1-10 and 12-20 stand rejected under 35 U.S.C. § 103(a) as obvious over
U.S. Patent No. 5,765,170 ("Morikawa") and U.S. Patent No. 6,088,696 ("Moon").

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Application No. 09/433,504

II. OPINION
"[T]o assure separate review by the Board of individual claims within each group
of claims subject to a common ground of rejection, an appellant's brief to the Board
must contain a clear statement for each rejection: (a) asserting that the patentability of
claims within the group of claims subject to this rejection do not stand or fall together,
and (b) identifying which individual claim or claims within the group are separately
patentable and the reasons why the examiner's rejection should not be sustained."
In re McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002) (citing
37 C.F.R. §1.192(c)(7)). "Merely pointing out differences in what the claims cover is not
an argument as to why the claims are separately patentable." 37 C.F.R. § 1.192(c)(7)
(2002). "If the brief fails to meet either requirement, the Board is free to select a single
claim from each group of claims subject to a common ground of rejection as
representative of all claims in that group and to decide the appeal of that rejection
based solely on the selected representative claim." McDaniel, 293 F.3d at 1383, 63
USPQ2d at 1465.

Here, the appellant stipulates, "Claims 1-3 stand or fall together," (Examiner's
Answer at 6); "Claims 5, 7, 8, 15, 16, 18, 19 stand or fall together," (id.); "Claims 9, 12,
13, 17, 20 stand or fall together," (id.); and "Claims 4, 6, 10 stand or fall together. . . ."
(Id.) Although he points out differences in what claims 15, 16, 18, and 19 cover, (id. at
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Application No. 09/433,504

16); differences in what claims 9 and 17 cover, (id. at 17-18); and differences in what
claims 4, 6, and 10 cover, (id. at 18-19); these are not arguments as to why the claims
are separately patentable. Rather than arguing the limitations of claims 4, 6, and 10
separately, moreover, the appellant merely relies on "the elements argued . . . in
connection with their respective base claims." (Id. at 18.) Similarly, rather than arguing
the limitations of claim 14 separately, he merely incorporates his arguments regarding
claim 1 "by reference." (Id. at 19.) Therefore, we select claim 1 as representative of
claims 1-10 and 12-20.

With this representation in mind, rather than reiterate the positions of the
examiner or the appellant in toto, we focus on the point of contention therebetween.
The examiner finds, "Morikawa discloses an electronic mail terminal utility 5 creates a
mail M by filling in the envelop part ME as the directory data D1 to D13, which include
specifying a folder (D12) for storing mail at the receiving side when the receiving side
receives the mail (col. 7, lines 7-50)." (Examiner's Answer at 6.) He further finds,
"Since the communications terminal of Moon is for sending and receiving e-mail, and
e-mail does not change in transit, and so identifiers must be present upon creation in
order to result in classification. . . ." (Examiner's Answer at 5.)

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The appellant argues, "Morikawa is limited to an electronic mail terminal utility 5
that performs analysis on received e-mail attachment files only." (Reply Br. at 6.) He
also argues, "Moon is limited to categorizing received e-mails at a receiving computer
and storing the same thereon in directories depending upon the type of e-mail received
using a messaging application 26. (Col. 4. line 5 to col. 5, line 11.)" (Id. at 5.)

"In addressing the point of contention, the Board conducts a two-step analysis.
First, we construe the representative claim at issue to determine its scope. Second, we
determine whether the construed claim would have been obvious." Ex Parte Massingill,
No. 2003-0506, 2004 WL 1646421, at *2 (Bd.Pat.App & Int. 2004).

A. CLAIM CONSTRUCTION
"Analysis begins with a key legal question — what is the invention claimed?"
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.
Cir. 1987). In answering the question, "the PTO gives claims their 'broadest reasonable
interpretation.'" In re Bigio, 381 F.3d 1320, 1324, 72 USPQ2d 1209, 1211 (Fed. Cir.
2004) (quoting In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1668 (Fed. Cir.
2000)). "Moreover, limitations are not to be read into the claims from the specification."
In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993) (citing
In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989)).
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Application No. 09/433,504

Here, claim 1 recites in pertinent part the following limitations: "selecting at said
first client computer by a sender of said e-mail message a category identifier for said
e-mail message from said plurality of category identifiers. . . ." Giving the representative
claim its broadest, reasonable construction, the limitations require allowing an operator
to select a category identifier for an e-mail message.

B. OBVIOUSNESS DETERMINATION
"Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter would have been obvious." Massingill, at *3. The question
of obviousness is "based on underlying factual determinations including . . . what th[e]
prior art teaches explicitly and inherently. . . ." In re Zurko, 258 F.3d 1379, 1383, 59
USPQ2d 1693, 1696 (Fed. Cir. 2001) (citing Graham v. John Deere Co., 383 U.S. 1, 17-
18, 148 USPQ 459, 467 (1966); In re Dembiczak, 175 F.3d 994, 998, 50 USPQ2d 1614,
1616 (Fed. Cir. 1999); In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed.
Cir. 1995)). "'A prima facie case of obviousness is established when the teachings from
the prior art itself would appear to have suggested the claimed subject matter to a
person of ordinary skill in the art.'" In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529,
1531 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143,
147 (CCPA 1976)).

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Here, Morikawa discloses "the electronic mail system 1 . . . composed of a host 2
undertaking the management of mailboxes MB; and a plurality of data processing
systems 3, 4 for transmitting data to each other through the host 2." (Col. 5, ll. 60-63.)
"Each of the data processing systems 3, 4 is a stand-alone computer system composed
of, for example, a personal computer, display unit, hard disk etc. and various kinds of
application programs can be used with it. In the data processing systems 3, 4, an
electronic mail terminal utility 5, which is a kind of application program, performs
processing on signals concerned with mail services provided by the host 2." (Col. 6,
ll. 8-15.)

"When [an] operator selects the mail creating function, the utility 5 writes a mail
name, an addresser's identification code and an addressee's identification code in the
envelop part ME as the directory data D3, D4, D5, these pieces of information having
been input by the operator through a key board. Thereafter, the utility 5 displays an
interactive screen to require an operator's instruction and then executes editing
processing for creating the content part MC (#11 to 13)." (Col. 7, ll. 22-29.)

"Upon receipt of an instruction to terminate the editing, the utility 5 executes
attachment file register processing for writing the name of the attachment file AF
(directory data D9) in the envelop part ME." (Id. at ll. 30-33.) "With this step, one
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Application No. 09/433,504

attachment file AF has been registered as transmitted data." (Id. at ll. 42-43.) We find
that the reference allows the operator to select a category identifier for the attachment
file, which is to be transmitted. Specifically, "[w]hen specifying a folder for storing the
attachment file AF at the receiving side, the name of the specified folder is written as the
directory data D12." (Id. at ll. 44-46.) Upon receipt of the e-mail, "the transferring
destination for the attachment file AF which is a sort of data file is set in accordance with
specific data stored in the mail M, such as the directory data D12 in the envelop part
ME. . . ." (Col. 8, ll. 62-65.)

Because the e-mail terminal utilities of Morikawa transmit an AF between the
data processing systems, we find that the AF constitutes an e-mail message. Because
the utilities allow an operator to specify a folder for storing the AF at the receiving side,
we further find that the reference allows an operator to select a category identifier for an
e-mail message. The teachings of Moon in this regard are merely cumulative.
Therefore, we affirm the rejection of claim 1 and of claims 2-10 and 12-20, which fall
therewith.

III. CONCLUSION
In summary, the rejection of claims 1-10 and 12-20 under § 103(a) is affirmed.

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Application No. 09/433,504

"Any arguments or authorities not included in the brief will be refused
consideration by the Board of Patent Appeals and Interferences. . . ." 37 C.F.R.
§ 1.192(a). Accordingly, our affirmance is based only on the arguments made in the
briefs. Any arguments or authorities omitted therefrom are neither before us nor at
issue but are considered waived. Cf. In re Watts, 354 F.3d 1362, 1367, 69 USPQ2d
1453, 1457 (Fed. Cir. 2004) ("[I]t is important that the applicant challenging a decision
not be permitted to raise arguments on appeal that were not presented to the Board.")
No time for taking any action connected with this appeal may be extended under
37 C.F.R. § 1.136(a)(1)(iv).

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Application No. 09/433,504

AFFIRMED

KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
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Application No. 09/433,504

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