Ex Parte Maresh

Patent Trial and Appeal Board

Jan 31, 2014

11862947 (P.T.A.B. Jan. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARK E. MARESH
____________________

Appeal 2011-007585
Application 11/862,947
Technology Center 2400
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Before ALLEN R. MacDONALD, KEN B. BARRETT, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007585
Application 11/862,947

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
3-6, 8, and 9. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claims 1, 5, and 6 under appeal read as follows (emphasis
added):
1. A method to control expiration of electronic mail (e-mail)
single store attachments, the method comprising:
receiving a composed e-mail message intended for delivery to a
designated recipient at a designated e-mail address, the e-mail
message including an attachment;
creating a single store linked e-mail message by removing the
attachment from the received e-mail message and replacing the
attachment with a corresponding single store attachment link;
storing the removed attachment in an attachment server
accessible at the single store attachment link and in association with
an expiration date;
sending the single store linked e-mail message to the recipient
at the designated e-mail address;
notifying the attachment server to adjust the expiration date for
the attachment; and,
deleting the attachment subsequent to passage of the expiration
date.
5. An electronic mail (e-mail) management system configured for
expiration control of e-mail single store attachments, the system
comprising:
a mail server coupled to one or more repositories of mail user
databases;
an attachment server coupled to a repository of single store
attachments; and,
e-mail processor logic comprising program code enabled to
receive and copy a new e-mail message in the attachment server, to
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remove any attachments in the email message and to store the
removed attachments in the repository of single store attachments, to
replace the removed attachments with a corresponding attachment link
to the removed attachments in the repository of single store
attachments in order to create a single store linked e-mail message, to
assign an expiration date to the removed attachments stored in the
repository of single store attachments, and to subsequently notify the
attachment server to adjust the expiration date for the attachment.

6. A computer program product comprising a computer usable
medium embodying computer usable program code for controlling
expiration of electronic mail (e-mail) single store attachments, the
computer program product comprising:
computer usable program code for receiving a composed e-mail
message intended for delivery to a designated recipient at a designated
e-mail address, the email message including an attachment;
computer usable program code for creating a single store linked
e-mail message by removing the attachment from the sent e-mail
message and replacing the attachment with a corresponding single
store attachment link;
computer usable program code for storing the removed
attachment in an attachment server accessible at the single store
attachment link and in association with an expiration date;
computer usable program code for sending the single store
linked e-mail message to the recipient at the designated e-mail
address;
computer usable program code for notifying the attachment
server to adjust the expiration date for the attachment; and,
computer usable program code for deleting the attachment
stored on the attachment server subsequent to passage of the
expiration date.

Appeal 2011-007585
Application 11/862,947

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Rejections on Appeal
The Examiner rejected claims 5, 6, 8, and 9 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.1
The Examiner rejected claims 1, 4-6, and 9 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Hanna (US 7,054,905 B1)
and Brooks (US 2004/0117456 A1).2
The Examiner rejected claims 3 and 8 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Hanna, Brooks, and Horvitz (US
2004/0254998 A1).3

Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claim 5
under 35 U.S.C. § 101 because “Appellants’ system claim 5 when
interpreted in light of Appellants' specification is a machine—one of the
statutory categories of subject matter under § 101.” (Br. 8).
2. Appellant contends that the Examiner erred in rejecting claim 6
under 35 U.S.C. § 101 because “it is important to note that a computer-
readable medium when interpreted in light of Appellants’ specification is a

1 As to this rejection, separate patentability is not argued for claims 8 and 9.
Except for our ultimate decision, these claims are not discussed further
herein.
2 As to this rejection, separate patentability is not argued for claims 4-6 and
9. Except for our ultimate decision, these claims are not discussed further
herein.
3 As to this rejection, separate patentability is not argued for these claims.
Rather, the appeal for this rejection turns on the underlying § 103 rejection.
Therefore, except for our ultimate decision, these claims are not discussed
further herein.
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machine—one of the statutory categories of subject matter under § 101.”
(Br. 7).
3. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because MPEP 2141 is the Examination
Guidelines for Determining Obviousness Under 35 U.S.C. 103, these
Examination Guidelines set forth a precise process for which the Examiner
must follow in order to establish a prima facie case of obviousness under 35
U.S.C. § 103(a), and the Examiner has not followed these Examination
Guidelines. (Br. 8-10).
4. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
For the convenience of the Honorable Board, the entirety of
section 51, lines 11 through 17 are reproduced herein as
follows:
The attachment selection time is a date and time
value entered by the user, which is used by
transmission software 112 to generate attachment
110 from the source file at the date and time
specified.
Thus, clearly Brooks teaches not an expiration date for an
attachment, but a time to generate an attachment. Further,
Brooks wholly lacks a teaching directed to notifying an
attachment server to do anything, let alone to modify an
expiration date for an attachment.
(Br. 11).

Issues on Appeal
Did the Examiner err in rejecting claims 5 and 6 as being directed to
non-statutory subject matter?
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Did the Examiner err in rejecting claim 1 as being unpatentable under
35 U.S.C. § 103(a) because the combination of Hanna and Brooks fail to
teach or suggest the limitation of modifying an expiration date for an
attachment?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred.
As to Appellant’s above contention 1, we agree. We conclude that
claim 5 is not directed to the disclosed “entirely software embodiment”
(Spec. 0025) because the claim requires the program code to be “enabled” to
perform the recited functions. We deem this to require hardware in addition
to the software.
As to Appellant’s above contention 2, we disagree that claim 6 is a
machine. Rather, we find claim 6 to be a statutory article of manufacture.
Although Appellant’s Specification as filed included non-statutory
embodiments (Spec. 0026) of this article of manufacture, the subsequent
amendment of 12/21/09 eliminated those non-statutory embodiments while
retaining statutory embodiments. Where a specification is silent as to the
“medium” a rejection under § 101 may be in order. See Ex Parte Mewherter,
107 USPQ2d 1857 (PTAB 2013) (Precedential). However, here the
Specification is not silent. Therefore, we reach the opposite result from the
panel in Mewherter.
As to Appellant’s above contention 3, Appellant requests that (1) we
review whether the Examiner has complied with the MPEP; and (2) require
that the Examiner follow the MPEP, if we determine that the Examiner has
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not. We decline these requests. Appellant’s concerns, that the MPEP was
not properly followed, are addressable by petition to the Director not by
appeal to this Board. We lack jurisdiction over the enforcement of such
Director guidance to the Director’s examiners.
As to Appellant’s above contention 4, we disagree. Contrary to the
Appellant’s argument section 51, lines 11 through 17 of Brooks does not
read:
The attachment selection time is a date and time value
entered by the user, which is used by transmission
software 112 to generate attachment 110 from the source
file at the date and time specified.
Rather, this quote is found at lines 17 through 20. Section 51, lines 11
through 17 are reproduced herein as follows (emphasis added):
The user can then choose to set advanced options in
dialogs 306 and 308, which may include an access
password, a maximum number of transmissions, an
expiry date and/or time, an issuer signature, a
transmission type (such as MIME, advanced, or html, as
described below), as well as an attachment selection
time.
Although we agree with Appellant that Brooks lacks modifying an
expiration date for an attachment, it is plain that Brooks does teach an expiry
date as found by the Examiner. In response to Appellant’s argument that
Brooks lacks modifying the expiration date, the Examiner supplements the
rejection analysis by pointing to the teachings of Hanna at column 6, lines
15-18 and 24-26 to show adjusting an expiration date by immediate deletion.
(Ans. 7 and 16). We agree with the Examiner’s reasoning.

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CONCLUSIONS
(1) Appellant has established that the Examiner erred in rejecting
claims 5, 6, 8, and 9 as being unpatentable under 35 U.S.C. § 101.
(2) The Examiner did not err in rejecting claims 1, 3-6, 8, and 9 as
being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1, 3-6, 8, and 9 are not patentable.

DECISION
The Examiner’s rejections of claims 5, 6, 8, and 9 as being
unpatentable under 35 U.S.C. § 101 are reversed.
The Examiner’s rejections of claims 1, 3-6, 8, and 9 as being
unpatentable under 35 U.S.C. § 103(a) are 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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