Ex Parte Ordille et al

Board of Patent Appeals and Interferences

Aug 6, 2012

10184236 (B.P.A.I. Aug. 6, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOANN J. ORDILLE and THOMAS A. PETSCHE
____________

Appeal 2010-004823
Application 10/184,236
Technology Center 2400
____________

Before ELENI MANTIS MERCADER, GREGORY J. GONSALVES, and
ANDREW J. DILLON, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004823
Application 10/184,236

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 21-32, 34, and 35 (App. Br. 2). Claims 1-20, 33, 36, and 37 were
cancelled (Id.). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Invention
Exemplary Claim 21 follows:
21. A method for providing a plurality of messages
from a sender to at least one recipient in accordance with a
communication flow, said method comprising:

receiving said message from said sender;

evaluating said communication flow, wherein said
communication flow specifies at least one preference of said
sender for delivering said messages, wherein said
communication flow is evaluated substantially close in time to
when each message is provided to said at least one recipient,
wherein at least two of said plurality of messages are sent at
different times; and

processing said message based on said preferences of
said sender.

The Examiner rejected claims 21, 23-32, and 34-35 under 35 U.S.C.
§ 103(a) as being unpatentable over Owens (U.S. Patent No. 6,633,630 B1)
in view of Reilly (U.S. Patent Application Publication No. 2003/0135567
A1) (Ans. 3-8).
The Examiner rejected claim 22 under 35 U.S.C. § 103(a) as being
unpatentable over Owens and Reilly in view of Iwazaki (U.S. Patent No.
6,687,742 B1) (Ans. 8).
Appeal 2010-004823
Application 10/184,236

3

FACTUAL FINDINGS
We adopt the Examiner’s factual findings as set forth in the Answer
(Ans. 3, et seq.).

ISSUE
Appellants’ responses to the Examiner’s positions present the
following issue:
Did the Examiner err in finding that the combination of Owens and
Reilly teaches or suggests “communication flow is evaluated substantially
close in time to when each message is provided to said at least one recipient,
wherein at least two of said plurality of messages are sent at different times,”
as recited in independent claim 21 and as similarly recited in independent
claims 31, 34, and 35?

ANALYSIS
We disagree with Appellants’ assertions regarding the Examiner’s
rejections of claims 21-32 and 34-35 as obvious. We adopt as our own (1)
the findings and reasons set forth by the Examiner in the action from which
this appeal is taken and (2) the reasons set forth by the Examiner in the
Answer (Ans. 3-11) in response to arguments made in Appellants’ Appeal
Brief and Reply Brief. We concur with the conclusion reached by the
Examiner. We highlight and address certain findings and arguments below.
Appellants contend that the Examiner erred in rejecting independent
claims 21, 31, 34 and 35 because Owens does not teach the claim limitation
that a “communication flow is evaluated substantially close in time to when
Appeal 2010-004823
Application 10/184,236

4
each of a plurality of messages from a sender to at least one recipient in
accordance with a communication flow is provided to at least one recipient”
(App. Br. 5 (emphasis omitted)). In support of their contention, Appellants
argue that Owens’ discussion of rules governing the filtering and forwarding
of messages “lacks any mention of an adjustment … to messages already in
flight as a result of these rules changes” (Id. at 6 (emphasis omitted)).
Appellants’ arguments, however, are not commensurate in scope with the
claims because neither the claim limitation in dispute nor any other part of
the independent claims requires adjustments to messages that are already in
flight.
Moreover, the Examiner found that Owens teaches evaluating
preferences “close in time to when each message is provided to the
recipient” (Ans. 9). We agree with the Examiner’s finding. Owens teaches
that “[b]ased [on] the receiver’s immediate filter and forward option settings,
the receiver may be notified of an incoming message as messages (or
portions of messages) may be immediately forwarded to alternate target
devices/addresses such as a pager or electronic mail box” (col. 10, ll. 36-40).
In other words, Owens’ system evaluates the filter and forward options of a
recipient prior to the time that the message is provided to the recipient.
Moreover, because the evaluation must be done during the time period
between the transmission and receipt of the message, the evaluation is
necessarily done close in time to the receipt of the message as required by
the independent claims whenever the time period between transmission and
receipt is short.
Appellants also contend that Reilly does not teach that “‘at least two
of said plurality of messages are sent at different times,’ as required by
Appeal 2010-004823
Application 10/184,236

5
Independent claims 21, 31, and 34-35, as amended” (App. Br. 7). The
Examiner found, however, that Reilly teaches this claim limitation because it
“discloses [a] method of resending email messages” (Ans. 5). We agree
with the Examiner. Reilly discloses “sending, receiving and resending e-
mail messages” (¶ [0029]). Resending messages requires sending a message
at a first time and sending a message at a later time.
Accordingly, we find no error in the Examiner’s obviousness rejection
of independent claims 21, 31, 34, and 35 or the claims dependent therefrom
because Appellants did not set forth any separate patentability arguments for
those claims (See App. Br. 7).

DECISION
We affirm the Examiner’s decision rejecting claims 21, 23-32, and 34-
35 as obvious.
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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