Ex Parte Malik

Board of Patent Appeals and Interferences

Jul 10, 2008

10165814 (B.P.A.I. Jul. 10, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DALE W. MALIK
____________

Appeal 2008-0701
Application 10/165,814
Technology Center 2100
____________

Decided: July 10, 2008
____________

Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and
STEPHEN C. SIU, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-7, which are all the claims in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part, and enter a new ground of rejection as permitted by
37 C.F.R. § 41.50(b).
Appeal 2008-0701
Application 10/165,814

Appellant describes a time-sensitive e-mail message having an IM
(instant messaging) conference request and a rule set for delivering the
message. The rule set contains a predefined time limit for allowing the
recipient to open the message. If the recipient opens the message within the
predefined time limit, the e-mail content is delivered to the recipient. If the
recipient fails to open the message with the time limit, the message is
deleted from the recipient’s mailbox, or an alternative message is displayed.
(Abstract; see also Spec. 16: 22 - 20: 13.) Claim 1 is the sole independent
claim on appeal.
1. A method for establishing an instant message (IM) conference
between a sender and at least one attendee, comprising:

receiving a time-sensitive e-mail message, the time-sensitive e-mail
message comprising:

an IM conference request;

an e-mail address associated with each attendee; and

a rule set specifying a predefined time limit governing the
delivery of the e-mail message;

receiving and extracting the rule set and the e-mail address for each
attendee;

determining a predefined time limit;

forwarding the time-sensitive e-mail message to a mailbox for each
attendee in accordance with the rule set;

determining whether the at least one attendee opened the time
sensitive e-mail message within the predefined time limit;
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Application 10/165,814

if the attendee opened the time-sensitive e-mail message within the
predefined time limit, providing the IM conference request to the attendee;
and

if the attendee did not open the time-sensitive e-mail message within
the predefined time limit, not providing the IM conference request to the
attendee.

The Examiner relies on the following references as evidence of
unpatentability.
Dailey US 6,363,352 B1 Mar. 26, 2002
Hanson US 6,505,233 B1 Jan. 07, 2003
(filed Oct. 25, 1999)
Awasthi US 2003/0154254 A1 Aug. 14, 2003
(filed Feb. 14, 2002)

Claim 1 is provisionally rejected under the judicially created doctrine
of obviousness-type double patenting over claim 1 of copending Application
No. 10/686,431, which the Examiner reproduces in a claim chart at pages 3
and 4 of the Answer.
Claims 1-5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dailey and Awasthi.
Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dailey, Awasthi, and Hanson.

Provisional Rejection -- Obviousness type double patenting
In response to the provisional rejection of claim 1 over claim 1 of the
′431 application, Appellant quotes from Manual of Patent Examining
Procedure (MPEP) § 804 and submits that the “proper procedure” would be
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Application 10/165,814

for the Examiner to allow this, the earlier-filed application, and enter the
double patenting rejection in the other application, if warranted.
However, the section quoted by Appellant begins with “[i]f a
‘provisional’ nonstatutory obviousness-type double patenting (ODP)
rejection is the only rejection remaining in the earlier filed of the two
pending applications . . .” -- a situation that does not apply in this case.
“The ‘provisional’ double patenting rejection should continue to be
made by the examiner in each application as long as there are conflicting
claims in more than one application unless that ‘provisional’ double
patenting rejection is the only rejection remaining in at least one of the
applications.” MPEP § 804, heading I.B., p. 800-17 (Eighth Ed., Rev. 6,
Sept. 2007). We find no procedural error in the Examiner’s entry of the
double patenting rejection in this case.
Because Appellant does not contest the merits of the double patenting
rejection, we summarily sustain the Examiner’s provisional rejection of
claim 1 for obviousness-type double patenting. We rule on the record that is
before us. Our affirmance of the double patenting rejection is only
provisional, and “might be obviated by future events.” See In re Wetterau,
356 F.2d 556, 558 (CCPA 1966).

Section 103(a) rejections
Turning to the § 103(a) rejection of instant claim 1, the Examiner
finds that Dailey teaches, inter alia, a rule set specifying a predefined time
limit governing the delivery of the e-mail message, receiving and extracting
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Application 10/165,814

the rule set, and forwarding the time-sensitive e-mail to a mailbox for each
attendee in accordance with the rule set. (Answer 6-7.)
We have studied the Dailey reference, with particular emphasis on the
sections cited in the Answer, but we do not find at least the above-noted
teachings that the rejection attributes to Dailey.
Dailey describes the system operation in detail at column 11, line 4 et
seq. A meeting organizer sends a request for a virtual meeting to potential
attendees. The meeting invitation may be accepted or declined by the
proposed attendees. Dailey col. 13, l. 12 - col. 14, l. 8. However, we find no
teaching in Dailey of an e-mail message comprising a rule set that specifies a
predefined time limit governing the delivery of the e-mail invitation.1 Nor
do we find teaching of the e-mail invitation being forwarded to the mailbox
of each attendee in accordance with the “rule set” received and extracted
from the e-mail message.
The rejection of claim 1 also indicates that Awasthi teaches
distinguishing whether an attendee opens, or does not open, a time-sensitive
e-mail message within a predefined time limit. (Ans. 7.) However, we do
not find such a teaching in Awasthi. The Awasthi paragraphs (46 and 49)

1 For the purposes of our review of the § 103(a) rejection, we assume that
the “predefined time limit” in the e-mail message is entitled to patentable
weight, consistent with the Examiner’s apparent position. However, instant
claim 1 contains an ambiguity that we will address in the new ground of
rejection, infra. If the “predefined time limit” is information in the e-mail
message that does not affect implementation of the steps of claim 1, the
message content would represent nonfunctional descriptive material, or
printed matter, that is not entitled to weight in the analysis of patentability
over the prior art.
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referenced in the rejection describe automatically deleting an e-mail message
when its specified age limit has been met or exceeded.
In a rejection on obviousness grounds, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Because the
Examiner has not provided persuasive reasons why the subject matter of
instant claim 1 would have been obvious to the artisan, we do not sustain the
§ 103(a) rejection. Further, since Hanson as applied against claims 6 and 7
does not remedy the deficiencies in the rejection against the base claim, we
do not sustain the rejection of any claim on appeal under 35 U.S.C. § 103(a).

New Ground of Rejection -- 35 U.S.C. § 112, second paragraph
We reject claims 1-7 under 35 U.S.C. § 112, second paragraph, as
being indefinite.
Each occurrence of “the predefined time limit” in the final three
clauses of independent claim 1, and in dependent claims 2 and 6, lacks
proper antecedent basis in the claim. Claim 1 recites a rule set specifying “a
predefined time limit,” but also recites the step of “determining a predefined
time limit” -- i.e., another “predefined time limit.”2

2 Appellant neglects to tell us where the step of “determining a predefined
time limit” is described in the Specification. (See Br. 2, “Summary of
Claimed Subject Matter.”) Cf. 37 C.F.R. § 41.37(c)(1)(v) (“A concise
explanation of the subject matter defined in each of the independent claims
involved in the appeal, which shall refer to the specification by page and line
number, and to the drawing, if any, by reference characters.”).
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Application 10/165,814

CONCLUSION
The provisional rejection of claim 1 under the judicially created
doctrine of obviousness-type double patenting over claim 1 of copending
Application No. 10/686,431 is affirmed.
The rejection of claims 1-7 under 35 U.S.C. § 103(a) is reversed.
Because we have sustained at least one ground of rejection against
claim 1, the Examiner’s decision is affirmed-in-part.
In a new ground of rejection, we have rejected claims 1-7 under
35 U.S.C. § 112, second paragraph, as being indefinite.
With respect to the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1)
provides that “Appellant may file a single request for rehearing within two
months from the date of the original decision of the Board.”
In addition to affirming 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, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .
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(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART -- 37 C.F.R. § 41.50(b)

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