Ex Parte Oehrke

Board of Patent Appeals and Interferences

Mar 30, 2010

09594070 (B.P.A.I. Mar. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TERRY L. OEHRKE
____________

Appeal 2009-006432
Application 09/594,070
Technology Center 2400
____________

Decided: March 30, 2010
____________

Before LANCE LEONARD BARRY, MAHSHID D. SAADAT,
and JAY P. LUCAS, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3-5, 7-9, 11-13, and 15-19, which are all of the claims
pending in this application as claims 2, 6, 10, and 14 have been canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
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STATEMENT OF THE CASE
Appellant’s invention relates to messaging in computer networks for
guaranteed messaging service on an internet provider (IP) network
(Specification 1). According to Appellant, instead of returning a message as
undeliverable, the message is rerouted to a relay server (Specification 2)
which attempts to re-send or re-route the message (id.).
Independent Claim 1 reads as follows:
1. A method for providing a messaging service on a
computer network, the method comprising the steps of:

(a) routing a message to a messaging server;

(b) providing the message to a relay server when the
messaging server is inoperable such that the message is
undeliverable to the messaging server;

(c) re-routing the message from the relay server to the
messaging server if the messaging server becomes operational;
and

(d) invoking another messaging server if the
messaging server in step (c) does not become operational.

The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Nelson US 5,974,122 Oct. 26, 1999
Mead US 2001/0036822 A1 Nov. 1, 2001
(effectively filed Apr. 10, 2001)
Ozzie US 6,859,821 B1 Feb. 22, 2005
(filed Jul. 19, 1999)
Whatis.com, DNS (domain name system),
http://web.archive.org/web/20000307002913/whatis.com/dns.htm (last
visited Aug. 17, 2007) (hereinafter DNS).

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Claims 1, 3-5, 7, and 8 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Nelson.
Claims 1, 3-5, 7-9, 11-13, 15, and 16 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Ozzie.
Claims 1, 3-5, 7-9, 11-13, and 15-19 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Mead.
Claims 9-19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nelson and DNS.
Claims 17-19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ozzie.1
We make reference to the Briefs and the Answer for the respective
positions of Appellant and the Examiner. Only those arguments actually
made by Appellant have been considered in this decision. Arguments which
Appellant did not make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
1. Under 35 U.S.C § 102(e), with respect to appealed claims 1, 3-
5, 7, and 8, does Nelson anticipate the claimed subject matter by teaching all
of the claimed limitations?
2. Under 35 U.S.C § 102(e), with respect to appealed claims 1, 3-
5, 7-9, 11-13, 15, and 16, does Ozzie anticipate the claimed subject matter
by teaching all of the claimed limitations?

1 The rejection of claim 18 under 35 U.S.C § 112, second paragraph is
withdrawn, as indicated by the Examiner in page 31 of the Examiner’s
Answer.
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3. Under 35 U.S.C § 102(e), with respect to appealed claims 1, 3-
5, 7-9, 11-13, and 15-19, does Mead anticipate the claimed subject matter by
teaching all of the claimed limitations?

FINDINGS OF FACT
The following findings of fact (FF) are relevant to the issues involved
in the appeal.
Appellant’s Specification
1. Appellant’s Specification describes the claim term “invoking
another messaging server” as designating another server as the destination
by the relay server 18, as stated below:
If attempts by relay server 16 to deliver a message to
destination messaging server 14 are unsuccessful, relay server
16 invokes a process that invokes messaging server 18. In this
embodiment, messaging server 18 comprises a redundant
standby messaging server or redundant operating messaging
server. By invoking messaging server 18, relay server 16
designates messaging server 18 as the destination of messages
for particular addresses or domain names, such as addresses
originally intended for messaging Server 14. In other
embodiments, relay server 16 notifies a different server of the
unavailability of messaging server 14. This other server then
invokes messaging server 18 to act as the destination for
messages.
(Emphasis added.)
(Spec. 5:25-6:3.)
Nelson
2. As shown in Figure 2, Nelson discloses the operation of a
telecommunication system where a subscriber 122 attempts to send a
facsimile message to fax recipient 124. If the recipient 124 is busy or does
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not answer, the message is routed to messaging platform 134 for storage and
redelivery. The messaging platform 134 attempts to call the fax recipient or
continue trying if the message cannot be delivered on the first attempt. (Col.
3, l. 64 – col. 4, l. 14.)
3. Figure 2 of Nelson is shown below:

Nelson shows in Figure 2 the fax messaging platform 134 where the
undelivered messages are stored for redelivery.

Ozzie
4. As depicted in Figure 8, Ozzie discloses a messaging system for
communication between a number of peer units 802A-802D where each unit
includes a dynamic manager 804A-804D and a communications manager
806A-806D for coordinating and controlling the communication between the
peer units. (Col. 15, l. 64 – col. 16, l. 10.)
5. A device presence server 812 ascertains whether the intended
destination is on-line, or temporarily disconnected (“off-line”). If the
destination is off-line, the communications can be made via a relay 814,
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which then forwards the message on to its destination when the destination
returns online. (Col. 16, ll. 29-34.)
6. If peer unit 802A seeks to send a message to peer unit 802C,
and the presence server 812 has informed the communications manager
806A that the peer unit 802C is on-line, then the communications manager
806A sends the message directly to the URL of the peer unit 802C. (Col.
16, ll. 35-42.)
7. On the other hand, if the peer unit 802A seeks to send a
message to the peer unit 802C, and the device presence server 812 has
informed the communications manager 806A that the peer unit 802C is off-
line, then the communications manager 806A sends the message to the URL
of the relay 814. (Col. 16, ll. 43-54.)
Mead
8. Mead relates to methods and systems for delivering electronic
mail between users in a vehicle and others outside of the vehicle. (¶ [0002].)
9. As shown in Figure 1, Mead discloses a ground server 106,
which receives e-mails from the home mail server 102 and is in
communication with the vehicle server 110. However, the vehicle server
110 may not necessarily remain in constant communication with the ground
server 106 and instead, establishes an intermittent link. (¶ [0015].)

PRINCIPLES OF LAW
The scope of the claims in patent applications is determined not solely
on the basis of the claim language, but upon giving claims their broadest
reasonable construction in light of the Specification as it would be
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interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
A rejection for anticipation requires that the four corners of a single
prior art document describe every element of the claimed invention, either
expressly or inherently, such that a person of ordinary skill in the art could
practice the invention without undue experimentation. See Atlas Powder
Co. v. IRECO, Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999); In re Paulsen, 30
F.3d 1475, 1478-79 (Fed. Cir. 1994).

ANALYSIS
35 U.S.C § 102(e) Rejection over Nelson
In rejecting claims 1, 3-5, 7, and 8, the Examiner interprets the claim
term “invoking” as “using” and states that the FAX messaging platform 134
of Nelson is invoked in order to allow delivery of the message (Ans. 24).
The Examiner further argues that the claims merely require invoking another
messaging server, rather than requiring the relay message actually be routed
to the invoked messaging server (id.).
Appellant argues that the FAX messaging platform 134 in Nelson
cannot serve as both the “relay server” and the “another messaging server”
of claim 1 and deliver a message to itself as “the other messaging server”
(App. Br. 8-9). Appellant further points out that the claim term “invoking”
is described in the Specification as designating the invoked server as the
destination for the message (Reply Br. 3).
We disagree with the Examiner’s position. First, by invoking a
server, when interpreted in light of the Specification, the server is designated
as the destination of the message (FF 1). Second, while delivering the
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message to the invoked server is not required, the claims recite invoking
another server which is designated as the destination for the message to be
delivered by the relay server (see claim 1). Therefore, the FAX messaging
platform 134 of Nelson cannot be both the relay server and another
messaging server designated to receive the message provided to the relay
server. In fact, undeliverable messages are routed to the FAX messaging
platform 134 when the fax recipient is unavailable (FF 2). Nelson does not
disclose another messaging server to be designated as the destination for the
undelivered message when the FAX recipient 124 is busy or does not answer
(FF 2-3). Therefore, the 35 U.S.C § 102(e) rejection of claims 1, 3-5, 7, and
8 over Nelson is not sustained.
35 U.S.C § 102(e) Rejection over Ozzie
With respect to the rejection of claims 1, 3-5, 7-9, 11-13, 15, and 16
as anticipated by Ozzie, the Examiner characterizes the relay 814 of Ozzie as
both the relay server and the claimed “another messaging server” (Ans. 6;
26). The Examiner reasons that no specific requirement for the term
“invoking” is presented in the instant Specification (id.). Appellant provides
similar arguments discussed above with respect to Nelson and states that the
relay 814 in Ozzie stores the undelivered message until the destination peer
unit returns on-line (App. Br. 12; Reply Br. 6-7).
We again agree with Appellant and find that based on the above-
discussed meaning of the claim term “invoking another messaging server,”
Ozzie provides no teaching regarding another messaging server that is
designated as the destination for the message. Ozzie merely stores the
message in the relay 814 after the device presence server 812 determines
that the intended destination peer unit is off-line (FF 4; 7). However, the
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relay server 814, instead of invoking another server, sends the message to
the destination after the device presence server 812 informs that the
destination peer unit is on-line (FF 5-6). Therefore, we cannot sustain the
35 U.S.C § 102(e) rejection of claims 1, 3-5, 7-9, 11-13, 15, and 16 over
Ozzie.
35 U.S.C § 102(e) Rejection over Mead
With respect to the rejection of claims 1, 3-5, 7-9, 11-13, and 15-19 as
anticipated by Mead, we also find Appellant’s arguments (App. Br. 14-16;
Reply Br. 7-9) to be persuasive. The disclosure of Mead merely provides for
transmission of e-mail messages from the home server 102 to the ground
server 106, which is in communication with the vehicle server 110 via an
intermittent link (FF 8-9). The portions of Mead relied on by the Examiner
provide no disclosure of invoking another messaging server when the
messaging server does not become operational, as recited in claims 1 and 9.
We also disagree with the Examiner’s characterization of the method
steps recited in claim 1 as a Markush group (Ans. 29). As stated by
Appellant (Reply Br. 8), each of the recited method steps must be disclosed
in the reference in order to be anticipated by that reference. Thus, Mead
does not anticipate the claims and the 35 U.S.C § 102(e) rejection of claims
1, 3-5, 7-9, 11-13, and 15-19 over Mead cannot be sustained.

CONCLUSION
On the record before us and in view of the analysis above, we find
that the Examiner erred in finding that Nelson, Ozzie or Mead anticipates the
appealed claims. Additionally, we do not sustain any of the 35 U.S.C. § 103
rejections of claims 9-19 or 17-19 since the Examiner has not identified any
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modifications to Nelson or Ozzie to overcome the deficiencies discussed
above.

ORDER
The decision of the Examiner rejecting claims 1, 3-5, 7-9, 11-13, and
15-19 is reversed.

REVERSED

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