Ex Parte Lucas et al

Patent Trial and Appeal Board

Sep 16, 2013

10901704 (P.T.A.B. Sep. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN MARK LUCAS, RACHEL ANN CAPUTO,
JAMES C. LANG, NORMA A. LANG, and
THOMAS JOHN KNOBLOCH
____________

Appeal 2011-003987
Application 10/901,704
Technology Center 2400
____________

Before DENISE M. POTHIER, LYNNE E. PETTIGREW, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

CLEMENTS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 22-37. Claims 1-21 are cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

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STATEMENT OF THE CASE
Appellants’ invention generally relates to an email system for
reducing the size of user accounts by substituting a link to an attachment for
an attachment when the sender and recipient share a storage location. See
generally Abstract, Claim 22, Spec. 6-12.1
Claim 22 is illustrative (disputed limitation in italics):
22. A system for reducing the size of an email account, said
system comprising:
a) an email server;
b) an email program;
c) a data file storage system;
d) a system for matching a sender and a recipient with a
common data file storage location on said data file storage system;
e) a system for moving or copying and saving a selected
computer readable data file to said common data file storage location
on data file storage system;
f) a system for alternatively determining whether said recipient
is to receive either an email message comprising a link to said
computer readable data file stored at said data file storage location
on data file storage system or an email message comprising said
computer readable data file attached thereto;
g) a system for alternatively, generating a link to said computer
readable data file stored at said data file storage location on data file
storage system and inserting said link into said email message when
said sender and said recipient are matched to said common data file
storage location, or attaching said computer readable data file to said
email message when said sender and said recipient cannot be
matched to said common data file storage location, before said email
message is sent to said recipient.

1 We refer to Appellants’ Substitute Specification filed August 5, 2008.
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REFERENCES
Collins US 2002/0013817 A1 Jan. 31, 2002
Malik US 2002/0065892 A1 May 30, 2002
Nishiyama US 2003/0055905 A1 Mar. 20, 2003
Gong US 2004/0064733 A1 Apr. 1, 2004
(filed June 26, 2003)

THE REJECTIONS
1. Claims 22 and 32 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter. Ans. 3-4.
2. Claims 22, 27, 32, and 35 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Malik. Ans. 5-9.
3. Claims 22-37 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gong, Nishiyama, and Collins. Ans. 10-24.

THE STATUTORY SUBJECT MATTER REJECTION OF
CLAIMS 22 AND 32
The Examiner finds that claims 22 and 32 are directed to nonstatutory
subject matter. Ans. 3-4.
Appellants argue that claims 22 and 32 are “drawn to a computer
system, i.e., a machine and software, and not a signal per se.” Br. 10.

ISSUE
Are claims 22 and 32 directed to patent-ineligible subject matter?
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LEGAL PRINCIPLES
“A transitory, propagating signal . . . is not a ‘process, machine,
manufacture, or composition of matter.’ Those four categories define the
explicit scope and reach of subject matter patentable under 35 U.S.C. § 101;
thus, such a signal cannot be patentable subject matter.” In re Nuijten, 500
F.3d 1346, 1357 (Fed. Cir. 2007).

ANALYSIS
The Examiner contends that:
The broadest reasonable interpretation of a claim drawn to a computer
readable medium (also called machine readable medium and other
such variations) typically covers forms of non-transitory tangible
media and transitory propagating signals per se in view of the
ordinary and customary meaning of computer readable media,
particularly when the specification is silent. When the broadest
reasonable interpretation of a claim covers a signal per se, the claim
must be rejected under 35 U.S.C. § 101 as covering non-statutory
subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir.
2007) (transitory embodiments are not directed to statutory subject
matter) and Interim Examination Instructions for Evaluating Subject
Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009; p. 2.
Ans. 4 (citing MPEP 2111.01)(emphasis original); see also Ans. 25. While
we do not disagree with the Examiner’s characterization of the law, claims
22 and 32 recite systems, not computer-readable media. Claim 22 (“A
system for reducing . . .”), Claim 32 (“A system for removing . . .”). The
recited “computer readable data file” is merely one element of each claimed
system. The recitation of a “computer-readable data file” in the body of a
system claim does not transform the claim into a computer-readable medium
claim. As a result, we are persuaded of error in the Examiner’s rejection of
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claims 22 and 32 under 35 U.S.C. § 101. We therefore do not sustain the
Examiner’s rejection of independent claims 22 and 32.

THE ANTICIPATION REJECTION OVER MALIK
The Examiner finds that Malik discloses every recited limitation of
claim 22. Ans. 5-7.
Appellants argue, inter alia, that Malik does not disclose a system for
“matching a sender and a recipient with a common data file storage
location” (claim 22) because Malik determines whether an attachment is a
duplicate without regard to sender and recipient. Br. 11-15.

ISSUE
Under § 102, has the Examiner erred in rejecting claim 22 by finding
that Malik discloses “matching a sender and a recipient with a common data
file storage location”?

ANALYSIS
On this record, we are persuaded of error in the Examiner’s
anticipation rejection of claim 22. The Examiner relies upon paragraphs
0036 to 0038 of Malik to disclose “matching a sender and a recipient with a
common data file storage location.” Ans. 5, 25-26. These paragraphs
describe the operation of Malik’s duplication checker 24. Malik ¶¶ 0036-
0038. When an email is received by email server 20, duplication checker 24
identifies the attachment file in the email. Malik ¶ 0035. If the size of the
attachment exceeds 0.5MB, duplication checker 24 then searches the
attachment file database for that file by comparing, e.g., the “title, size,
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software and version, author and creation date” of the received file with that
of the files stored in the database. Malik ¶¶ 0035-0037. If the received file
is a duplicate of a file already in the attachment database, the email server
modifies the header of the received email to link to the version of the file
already stored in the attachment file database. Malik ¶¶ 0038 and 0039. In
this way, email server 20 of Malik “can minimize storage of duplicate
attachment files in an e-mail communications system.” Malik ¶ 0042.
Appellants correctly argue that Malik’s identification of a duplicate
file does not match a sender and recipient with a common data file storage
location. Br. 12. Malik determines whether a received file is a duplicate of
a file already in the attachment file database based upon the attributes of the
file itself. Malik ¶¶ 0035-0037. The identification of the file as a duplicate
does not depend upon the sender and recipient of the email being matched
with a “common data file storage location.”
The Examiner contends that Malik’s attachment file database is the
recited “common data file storage location.” Ans. 25. Even assuming that is
so, Malik does not disclose the disputed limitation because Malik does not
disclose matching the sender of the email or the recipient of the email with
the attachment file database. The Examiner also contends that the author of
the attachment is the recited “sender” and the destination email address is
the recited “recipient.” Even assuming that is so, Malik does not disclose
the disputed limitation because Malik does not disclose matching the author
of the file and the recipient of the email with a common data file storage
location. To the extent that the author of the attachment file is used at all, it
is only as a criterion by which the received file is determined to be a
duplicate of a file in the attachment file database. Malik ¶¶ 0035 and 0037.
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Malik does not disclose that the author of the attachment is matched with the
attachment file database. As a result, we are persuaded that the Examiner
incorrectly determined that Malik discloses “matching a sender and a
recipient with a common data file storage location.”
We therefore do not sustain the Examiner’s anticipation rejection of
independent claim 22 and of independent claims 27, 32, and 35 which recite
commensurate limitations.

THE OBVIOUSNESS REJECTION OVER
GONG, NISHIYAMA, AND COLLINS
In rejecting claim 22 alternatively under § 103, the Examiner finds
that Gong does not teach “an email system wherein the sender can remove
an email attachment, or determining a link status” (Ans. 11), but cites
Nishiyama as teaching “a mail transmitting and receiving device wherein the
sender can set attributes of an attachment that can hide the selected
attachment from selected recipients . . . and determining a link status” (Ans.
11-12)
The Examiner finds that Gong and Nishiyama teach every recited
limitation of claim 22 except for “wherein an email attachment is moved or
copy/saved before the email is sent, or a method wherein handling of data
files is dependent upon the identity of a sender and recipient, not the
attributes of an attachment” (Ans. 13-14), but cites Collins as teaching
“distributing of e-mail to multiple recipients comprising a method wherein
an email attachment is moved or copy/saved before the email is sent . . . and
. . . handling of data files is dependent upon the identity of a sender and
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recipient, not the attributes of an attachment” (Ans. 14) in concluding that
the claim would have been obvious.
Appellants argue, inter alia, that none of Gong, Nishiyama, or Collins
teaches “matching a sender and a recipient with a common data file storage
location.” Br. 27-31.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 22 by finding
that Gong, Nishiyama, and Collins collectively would have taught or
suggested “matching a sender and a recipient with a common data file
storage location”?

ANALYSIS
On this record, we are persuaded of error in the Examiner’s
obviousness rejection of claim 22. In the Grounds of Rejection, the
Examiner relies on Collins to teach “matching a sender and a recipient with
a common data file storage location.” Ans. 13-14 (citing Collins ¶¶ 0056
and 0059). Collins’ paragraph 0056 describes a system in which the sender
of an email may designate which of multiple attachments are sent to a
particular recipient. Collins ¶ 0056. Collins’ paragraph 0059 teaches that,
for recipients designated as “‘without attachment,’” the system removes the
attachment from the email and replaces it with a “ghost icon.” Collins
¶ 0059. As Appellants correctly point out, the system in Collins does not
match anything. Br. 28. Instead, the sender manually designates which
recipients receive which attachments. Collins ¶¶ 0056 and 0059. Moreover,
if a sender designates a recipient as “without attachment,” that recipient is
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sent an email with a “ghost icon,” which is not a link to the attachment.
Collins ¶ 0059. In response to Appellants’ arguments, the Examiner
contends that Gong’s paragraph 0005 teaches matching a sender with a
recipient. Ans. 34. We disagree. Gong’s paragraph 0005 merely describes
the problem being solved by Gong—namely, the exchange of several
versions of attachments between two users. Gong ¶ 0005. Nowhere in
paragraph 0005 does Gong teach that the sender and the recipient are
matched with a common storage location. As a result, on the record before
us, we are persuaded that the Examiner incorrectly determined that Gong,
Nishiyama, and Collins collectively teach “matching a sender and a recipient
with a common data file storage location.”
We therefore do not sustain the Examiner’s rejection of (1)
independent claim 22; (2) independent claims 27, 32, and 35 which recite
commensurate limitations; and (3) dependent claims 23-26, 28-31, 33, 34,
36 and 37.

CONCLUSION
The Examiner erred in rejecting (1) claims 22 and 32 under § 101;
(2) claims 22, 27, 32, and 35 under § 102; and (3) claims 22-37 under § 103.

DECISION
The Examiner’s decision rejecting claims 22-37 is REVERSED.

REVERSED

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