Ex Parte Lee et al

Patent Trial and Appeal Board

Jan 22, 2014

12100173 (P.T.A.B. Jan. 22, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/100,173 04/09/2008 Chul-Hwan Lee 1235-568 (SP7070) 5604
66547 7590 01/22/2014
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
BATURAY, ALICIA
ART UNIT PAPER NUMBER
2441
MAIL DATE DELIVERY MODE
01/22/2014 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 CHUL-HWAN LEE and YOUN-TAEK OH
____________

Appeal 2012-005392
Application 12/100,173
Technology Center 2400
____________

Before CARLA M. KRIVAK, JEFFREY S. SMITH, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-7, 9-16, 18-23, 25-32, and 34-38. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

Appeal 2012-005392
Application 12/100,173

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STATEMENT OF THE CASE
Appellants’ claimed invention is directed to “an apparatus and method
for notifying a portable terminal of reception of a new e-mail using a
message server” (Spec. 1:14-17).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. An e-mail system for pushing an e-mail, the e-mail system
comprising:

an e-mail agent for checking if a new e-mail exists in an e-mail
server by using periodic polling operations, receiving and storing the
new e-mail when the new e-mail exists in the e-mail server,
generating a mail notification message notifying reception of the new
e-mail, transmitting the mail notification message to a message server,
receiving a mail request message from an e-mail client, and
transmitting the new e-mail to the e-mail client, wherein the mail
notification message includes a current Internet Protocol (IP) address
of the e-mail agent and information indicating existence of the new e-
mail;

the message server for receiving the mail notification message
and transmitting the received mail notification message to the e-mail
client; and

the e-mail client for generating the mail request message
requesting the new e-mail upon reception of the mail notification
message from the message server, transmitting the generated mail
request message to the e-mail agent, and receiving the new e-mail
from the e-mail agent.

REFERENCES
Lai US 2004/0184613 A1 Sep. 23, 2004
Vallstrom US 2004/0192352 A1 Sep. 30 2004
Clark US 2007/0106739 A1 May 10, 2007
Roberts US 2007/0299918 A1 Dec. 27, 2007
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Application 12/100,173

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Patel US 2008/0244086 A1 Oct. 2, 2008

REJECTIONS
The Examiner rejected claims 1-6 under 35 U.S.C. § 103(a) based on
the teachings of Roberts, Lai, Clark, and Patel.
The Examiner rejected claims 7, 9, 12, and 13 under 35 U.S.C.
§ 103(a) based on the teachings of Lai, Roberts, and Patel.
The Examiner rejected claims 10 and 11 under 35 U.S.C. § 103(a)
based on the teachings of Lai, Roberts, Patel, and Clark.
The Examiner rejected claim 14 under 35 U.S.C. § 103(a) based on
the teachings of Lai, Roberts, Patel, and Vallstrom.
The Examiner rejected claims 15, 16, 18-21, 31, 32, and 34-38 under
35 U.S.C. § 103(a) based on the teachings of Clark, Lai, and Patel.
The Examiner rejected claims 22, 25, 28, and 29 under 35 U.S.C.
§ 103(a) based on the teachings of Roberts, Lai, and Patel.
The Examiner rejected claims 23, 26, and 27 under 35 U.S.C. § 103(a)
based on the teachings of Roberts, Lai, and Clark.
The Examiner rejected claim 30 under 35 U.S.C. § 103(a) based on
the teachings of Roberts, Lai, Patel, and Vallstrom.

ANALYSIS
The Examiner finds Roberts teaches or suggests substantially all of
Appellants’ claim limitations except for receiving and storing a new e-mail,
a server sensing a mail notification to an e-mail client, and the mail
notification including an Internet Protocol (IP) address of an agent in the
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Application 12/100,173

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message. The Examiner finds Lai, Clark, and Patel disclose these features.
(Ans. 6-8).
Appellants contend Roberts discloses an e-mail proxy server pushes
new e-mails to a mobile wireless communication device, rather than pulling
as disclosed by the claims (App. Br. 8-9). However, the Examiner relies on
Clark for this feature. It is also noted the claim language does not preclude
pushing the e-mail notification message.
Appellants argue the functional polling application is not taught by the
cited references. That is, Appellants contend the combination of the
references does not disclose “the polling application (e-mail client
application) receives and stores a new e-mail when the new e-mail exists”
(emphasis removed) (App. Br. 9). Thus, Appellants equate the polling
application with the e-mail client. However, in claim 1, the e-mail client
does not perform polling. Rather, the claim recites the e-mail agent uses the
polling application. Thus, Appellants’ arguments are not commensurate in
scope with the claim language.
Appellants also contend the combination of references fails to disclose
an “IP address of an e-mail agent is provided in a notification of reception of
new e-mail at an e-mail agent” and the “notification and IP address is sent
from the e-mail agent to the message server and from the message server to
the client” (emphasis omitted) (App. Br. 10). We do not agree. We agree
with the Examiner that Patel discloses a client 21 receives a message
containing the IP address of the server (Ans. 32).
Therefore, on this record, we are not persuaded the Examiner’s
reading of the claims on the cited combination of references is overly broad,
unreasonable, or inconsistent with the Specification. For the above reasons,
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Application 12/100,173

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we conclude the weight of the evidence supports the Examiner’s ultimate
legal conclusion of obviousness, and therefore sustain the Examiner’s
rejection of independent claims 1, 7, 15, 22, and 31, argued for the same
reasons (App. Br. 15, 17).
With respect to claims 2, 10, 14, 19, 21, 22, 23, 27, 30, 31, 36, 38, we
agree with the Examiner’s findings and adopt them as our own (Ans. 32,
33).
With respect to claims 3-6, 9, 11-13, 16, 18, 19-21, 25, 26, 28, 29, 32,
and 34-37, Appellants argue these claims are patentable due to their
dependency on their respective independent claims (see App. Br. 11-20).
Thus, as we sustained the rejection of claims 1, 7, 15, 22, and 31, we also
sustain the rejection of claims 3-6, 9, 11-13, 16, 18, 19-21, 25, 26, 28, 29,
32, and 34-37 dependent therefrom.

DECISION
The Examiner’s decision rejecting claims 1-7, 9-16, 18-23, 25-32, and
34-38 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 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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