Ex Parte Kelley

Board of Patent Appeals and Interferences

Nov 29, 2006

09433504 (B.P.A.I. Nov. 29, 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The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.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 REQUEST FOR REHEARING
____________

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

I. BACKGROUND

A patent examiner rejected claims 1-10 and 12-20. The appellant appealed
therefrom under 35 U.S.C. § 134(a). We affirmed. Pursuant to 37 C.F.R. § 41.52(a)(1),
the appellant now asks us to reconsider our affirmance. We grant his request.

II. OPINION
"Rather than reiterate the positions of the examiner or the appellant in toto, we
focus on the point of contention therebetween." Ex parte Kaysen, No. 2003-0553,
2004 WL 1697755, at *2 (B.P.A.I. 2004). The examiner 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
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Application No. 09/433,504

in classification. . . ." (Examiner's Answer at 5.) He further 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)." (Id.
at 6.)

The appellant 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.)"
(Reply Br. at 5.) He also argues that Morikawa's "attachment file alone does not include
the necessary information required for being electronically transmitted to a recipient's
network and, as such, cannot and does not constitute an e-mail message." (Req. Reh'g
at 3.)

"In addressing the point of contention, the Board conducts a two-step analysis.
First, we construe the independent claims at issue to determine their scope. Second,
we determine whether the construed claims would have been obvious." Ex Parte
Cuomo, No. 2003-0509, 2004 WL 4978831, at *2 (B.P.A.I. 2004).

A. CLAIM CONSTRUCTION
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Application No. 09/433,504

"Analysis begins with a key legal question C 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)).

Here, independent 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. . . ."
Independent claims 5, 9, 14, 15, 16, 17, 18, 19, and 20 include similar limitations.
Giving the independent claims the broadest, reasonable construction, the limitations
require allowing an operator to select a category identifier for an e-mail message.

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Application No. 09/433,504

B. OBVIOUSNESS DETERMINATION
"Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter would have been obvious." Ex Parte Massingill, No. 2003-
0506, 2004 WL 1646421, at *3 (B.P.A.I.. 2004). "In rejecting claims under 35 U.S.C.
Section 103, the examiner bears the initial burden of presenting a prima facie case of
obviousness." In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993) (citing In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992)). "'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)).

Here, Moon describes its "invention [a]s directed toward . . . a mailing system
which doubles as a filing system for congruently categorizing electronic mail received at
a user communications device and directly storing the received electronic mail in an
appropriate directory." (Col. 1, ll. 9-13.) Despite this description, however, the
reference does not categorize different e-mail messages. Instead, Moon categorizes
electronic "mail parcels . . . as, but not limited to, fax, voice, E-mail, scenery, business
card, MIME, HTML, or attachment." (Col. 4, ll. 58-60.) Based on the category of a
received mail parcel, the reference's "file module 32 upon recognizing the type of parcel
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Application No. 09/433,504

automatically names and places the incoming mail parcel into an appropriate 'mailbox'
or directory 33-40. . . ." (Id. at ll. 61-64.)

For its part, Morikawa discloses an "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.)

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Application No. 09/433,504

"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
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.)

Although Morikawa allows an operator to select the transferring destination for an
attachment file, the reference supports the appellant's aforementioned argument that
the attachment file does not constitute an e-mail message. (Req. Reh'g at 3.) More
specifically, Morikawa's Figure 2, "a diagram showing the arrangement of data in a
mail," (col. 5, ll. 40-41), depicts "message information" and an "attachment file" as
distinct entities. Similarly, the reference describes "heading files HF that are a group of
text data corresponding to message information and one or a plurality of attachment
files AF that are attached to the heading files HF. . . ." (Col. 6, ll. 40-43.)

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Application No. 09/433,504

Absent a teaching or suggestion of allowing an operator to select a category
identifier for an e-mail message, we are unpersuaded of a prima facie case of
obviousness. Therefore, we reverse the rejection of claims 1-10 and 12-20.

III. CONCLUSION
In summary, we have granted the appellant's request for rehearing by reversing
the rejection of claims 1-10 and 12-20 under ' 103(a).

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Application No. 09/433,504

GRANTED

KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )

LLB/eld
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Application No. 09/433,504

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