Ex Parte Malik

Board of Patent Appeals and Interferences

Jun 30, 2011

10165831 (B.P.A.I. Jun. 30, 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.
10/165,831 06/07/2002 Dale W. Malik 36968/273934-BS02189 4507
36192 7590 06/30/2011
AT&T Legal Department - CC
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
DOAN, DUYEN MY
ART UNIT PAPER NUMBER
2452
MAIL DATE DELIVERY MODE
06/30/2011 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 DALE W. MALIK
____________________

Appeal 2009-008833
Application 10/165,831
Technology Center 2400
____________________

Before: HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
DEBRA K. STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-008833
Application 10/165,831

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Appellant appeals under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1, 3-7, and 10-15. Claims 2, 8, and 9 have been canceled.
(App. Br. 1).1 We have jurisdiction under 35 U.S.C. § 6(b) (2008).
We REVERSE and enter a New Ground of Rejection.

Introduction
According to Appellant, the invention is a system and method for
displaying content of a time-sensitive e-mail message to a recipient. The
content that is displayed is dependent on when the recipient opens the time-
sensitive e-mail message. A sender establishes rules set for e-mail message
delivery. If the recipient opens the time-sensitive e-mail message within the
predefined time limit, the e-mail’s content is delivered to the recipient. If
the recipient fails to open the time-sensitive e-mail message within the
predefined time limit, then the time-sensitive e-mail message is either
deleted from the recipient's mailbox or an alternative message is displayed.
(Abstract).

STATEMENT OF CASE
Exemplary Claim
Claim 1 is an exemplary claim and is reproduced below:
1. A method for delivering a time-sensitive e-mail message
to a recipient, said method comprising:

receiving the time-sensitive e-mail message including a first
set of content and a second set of content different from the first
set of content, the time-sensitive e-mail message having a

1 The Examiner has withdrawn the rejection of claim 14 (Ans. 11).
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rule set for delivering the time-sensitive e-mail message and a
header identifying the number of the first and second sets of
related content associated with the e-mail message;

storing said time-sensitive email message in a storage
medium;

extracting the rule set, from the time-sensitive e-mail
message, the rule set specifying a predefined time limit;

determining whether to provide the first set of content to
the recipient based on when the recipient opened the time-
sensitive e-mail message before the predefined time limit;

if the recipient opened the time-sensitive e-mail message
before the predefined time limit, then providing the first set of
content of the time-sensitive e-mail message to the recipient;
and
if the recipient opened the time-sensitive e-mail message
after the predefined time limit, providing the second set of
content to the recipient.

Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Eguchi US 6,219,150 B1 Apr. 17, 2001
Sheldon US 2002/0169840 A1 Nov. 14, 2002
Liga US 2003/0154128 A1 Aug. 14, 2003
Awasthi US 2003/0154254 A1 Aug. 14, 2003
Loucks US 6,760,412 B1 Jul. 6, 2004
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Official Notice taken of well known subject matter at time of invention.
(Off. Notice)
REJECTIONS2
Claims 1, 3, 5-7, and 10-13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Awasthi, Liga, and Eguchi. (Ans. 3-7).
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Awasthi, Liga, Eguchi and Off. Notice. (Ans. 7-8.)
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Awasthi, Liga, Eguchi, Loucks and Off. Notice. (Ans.
8-9.)
ISSUE
35 U.S.C. § 103(a): claims 1, 3-7, and 10-13, 15
Appellant assert their invention is not obvious over Awasthi, Liga,
and Eguchi. Specifically, Appellant argues Liga is non-analogous art
directed to communicating and displaying advertisements over a broadcast
television network in conjunction with a personal video recorder not
pertinent to the problem addressed by Appellant’s invention (Br. 8-9).

The Examiner finds with respect to the non-analogous art argument
that

Liga's invention is concerned with delivering time sensitive
information (for example advertisements) over the network.
Awasthi is also concerned with delivering time sensitive
information (such as email with set age limit) over the network.

2 The Examiner has withdrawn the § 103 rejection of claim 14 over Awasthi,
Liga, and Eguchi (Ans. 11.) It is not apparent why the Examiner did not
withdraw the rejection of claim 15, which depends from claim 14.
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Thus, Liga and Awasthi’s inventions are both concerned with
delivering time sensitive information over the network.

(Ans. 9).
Issue: Has Appellant shown that the Examiner erred in finding that
Liga is analogous art?

ANALYSIS
A reference qualifies as prior art for an obviousness determination
under § 103 only when it is analogous to the claimed invention. Innovention
Toys, LLC, v. MGA Entertainment, Inc., 637 F.3d 1314, 1321 (Fed. Cir.
2011); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In re Clay, 966
F.2d 656, 658 (Fed. Cir. 1992). “Two separate tests define the scope of
analogous prior art: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved.”
Bigio, at 1325.
Appellant argues that Liga is non-analogous art since it is not from the
same field of endeavor, i.e., Liga is directed to communicating and
displaying video advertisements over a broadcast television network in
conjunction with a personal video recorder while the present invention is
directed toward time-sensitive e-mail messages with a first and a second set
of content (Br. 9). Appellant further argues Liga’s disclosure is not
reasonably pertinent to the particular problem with which Appellant’s
recitations are concerned (id.).
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The Examiner responds that Liga and Awasthi are “both concerned
with delivering time sensitive information over the network” (Ans. 9). The
Examiner does not provide any findings or conclusions as to: (1) whether
Liga is from the same field of endeavor as the present invention, regardless
of the problem addressed and, (2) if Liga is not within the field of the
inventor’s endeavor, whether Liga still is reasonably pertinent to the
particular problem with which the inventor is involved.
Accordingly, the Examiner has not persuasively responded to
Appellant’s assertion and therefore, the Examiner has not shown that Liga is
analogous art. Since Liga was relied upon in the rejection of all of the
claims, the Examiner has not shown that claims 1, 3, 5-7, and 10-13 are
obvious under 35 U.S.C. § 103(a) over Awasthi, Liga, and Eguchi; that
claim 4 is obvious under 35 U.S.C. § 103(a) over Awasthi, Liga, Eguchi and
Off. Notice; and that claim 15 is obvious under 35 U.S.C. § 103(a) over
Awasthi, Liga, Eguchi, Loucks and Off. Notice.

NEW GROUND OF REJECTION UNDER
37 C.F.R. § 41.50(b)

35 U.S.C. §112, first paragraph
Appellant argues that none of the references teach or suggest that the
time-sensitive e-mail message includes a first and a second set of content
and if the time-sensitive e-mail message is opened after the predefined time
limit, providing the second set of content to the recipient (App. Br. 7-11).
We begin by noting that § 112, first paragraph, of the Patent Act states that
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the “specification shall contain a written description of the invention.”
35 U.S.C. § 112. The Court of Appeals for the Federal Circuit has held that
“[t]o fulfill the written description requirement, the patent specification must
describe an invention in sufficient detail that one skilled in the art can clearly
conclude that the inventor invented what is claimed.” (Kao Corp. v. Unilever
U.S., Inc., 441 F.3d 963, 967-968 (Fed. Cir. 2006) (quoting Cordis Corp. v.
Medtronic AVE, Inc., 339 F.3d 1352, 1364 (Fed. Cir. 2003)). Although
“[t]he disclosure as originally filed does not ... have to provide in haec verba
support for the claimed subject matter at issue.” (Cordis Corp. v. Medtronic
AVE, Inc., 339 F.3d at 1364 (internal citation omitted)); however, “ ... the
description must clearly allow persons of ordinary skill in the art to
recognize that [he or she] invented what is claimed.” (In re Gosteli, 872
F.2d 1008, 1012 (Fed. Cir. 1989) (citations omitted)).
In the instant case, we find Appellant does not identify where in the
written description support is provided for the recited “time-sensitive e-mail
message including a first set of content and a second set of content different
from the first set of content” and “if the recipient opened the time-sensitive
e-mail message after the predefined time limit, providing the second set of
content to the recipient.” Specifically, Appellant points to the Specification,
page 7, lines 9-13 and 18-21 as providing support for the time-sensitive e-
mail including a first and a second set of content (Br. 3). However, this
portion of the Specification discusses routing the time-sensitive e-mail that
includes a rule set and a message server determining if the e-mail message
contains a time-based header embedded in the subject field of the message
(Spec. 7, ll. 9-13 and 18-21).
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For the recited “if the recipient opened the time-sensitive e-mail
message after the predefined time limit, providing the second set of content
to the recipient,” Appellant points to the Specification, page 6, lines 19-27
(Br. 3) and page 10, lines 8-12 (Br. 4). Again, neither of these portions of
Appellant’s Specification provides support for the recited limitation.
Specifically, Appellant’s Specification discloses that a rule set established
when the e-mail message is created is used to determine if and how the time-
sensitive e-mail message content is presented to the user (Spec. 6, ll. 19-21).
Thus, the rule set may include instructions to delete the e-mail message if
not read within a period of time or “display an alternate e-mail message with
alternative content if the recipient 125 has not opened the first time-sensitive
e-mail message within a predefined time limit” (Spec. 6, ll. 22-27). No
support for an e-mail with two sets of content is taught or suggested, instead,
two different e-mails are taught.
Similarly, Appellant’s reliance on the Specification at page 10, lines
8-12 is also misplaced. This portion of the Specification also discloses that
“the sender 105 may prefer that an alternative message be displayed to the
recipient 125 after the expiry of the time period” (Spec. 10, ll. 8-12). The
provided example also discusses two different e-mails and their respective
headers (Spec. 10, l. 10 to Spec. 11, l. 10).
Therefore, Appellant has pointed to portions of the Specification that
do not support the recited limitations. Indeed, Appellant has not identified
any portion of the Specification that teaches or suggests the time-sensitive e-
mail message includes both a first and a second set of content or that if the
predefined time has passed, providing that second set of content to the
recipient. While literal support is not required, we nevertheless find that
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Appellant has failed to convey with reasonable clarity to those skilled in the
art that Appellants were in possession of the invention as of the filing date
sought. Accordingly, we introduce a new ground of rejection under
35 U.S.C. §112, first paragraph for failing to fulfill the written description
requirement.

DECISION
The Examiner’s rejection of claims 1, 3, 5-7, and 10-13 under
35 U.S.C. § 103(a) as being unpatentable over Awasthi, Liga, and Eguchi
is reversed.
The Examiner’s rejection of claim 4 under 35 U.S.C. § 103(a) as
being unpatentable over Awasthi, Liga, Eguchi, and Off. Notice is reversed.
The Examiner’s rejection of claim 15 under 35 U.S.C. § 103(a) as
being unpatentable over Awasthi, Liga, Eguchi, Off. Notice, and Loucks is
reversed.
In addition to reversing the Examiner's rejection(s) of one or
more claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
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and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner.…

(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.…

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).

REVERSED
37 C.F.R. § 41.50(b)

Vsh