Ex Parte Parry et al

Board of Patent Appeals and Interferences

Feb 28, 2011

10171276 (B.P.A.I. Feb. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TRAVIS J. PARRY and ROGER S. TWEDE
____________________

Appeal 2009-006334
Application 10/171,2761
Technology Center 2400
____________________

Before JEAN R. HOMERE, DEBRA K. STEPHENS, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed June 12, 2002. The real party in interest is Hewlett-
Packard Development Company, LP. (App. Br. 2.)
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006334
Application 10/171,276

2
STATEMENT OF THE CASE
Appellants appeal from the Examiner’s rejection of claims 1, 6-9, 12,
16-19, and 21-23 under authority of 35 U.S.C. § 134(a). Claims 2-5, 10, 11,
13-15, and 20 have been canceled. (App. Br. 2.) The Board of Patent
Appeals and Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appellants’ Invention
The invention at issue on appeal generally relates to a system and
method for managing and manipulating electronically stored documents
using dedicated e-mail addresses or interactive web pages. (Spec. ¶¶ [0001],
[0008]-[0009].)3
Representative Claims
Independent claim 1 and dependent claim 6 further illustrate the
invention, and are reproduced below with the key disputed limitations
emphasized:
1. A method for managing e-mail, comprising:
providing at least one e-mail address associated with a
device for receiving e-mail providing a daemon for
automatically saving at least a portion of an e-mail received by
said at least one e-mail address associated with said device to a
storage location from which the portion can be viewed over the
Internet; and
automatically saving at least the portion of said e-mail to
the storage location in accordance with the daemon.

3 We refer to Appellants’ Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed January 9, 2008; and Reply Brief (“Reply Br.”) filed June 10, 2008.
We also refer to the Examiner’s Answer (“Ans.”) mailed April 10, 2008.
Appeal 2009-006334
Application 10/171,276

3
6. The method according to claim 1, wherein said
automatically saving at least the portion of said e-mail
comprises saving at least one attachment to said e-mail as a file
in said storage location where that file is associated with an
URL.

Reference
The Examiner relies on the following reference as evidence in support
of the rejection:
Peek US 6,614,551 B1 Sep. 2, 2003
(filed Nov. 23, 1999)

Rejection on Appeal
The Examiner rejects claims 1, 6-9, 12, 16-19, and 21-23 under 35
U.S.C. § 102(e) as being anticipated by Peek.

ISSUES
Based on our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issues
before us are as follows:
1. Does the Examiner err in finding Peek discloses “providing a
daemon for automatically saving at least a portion of an e-mail received by
said at least one e-mail address associated with said device to a storage
location from which the portion can be viewed over the Internet” and
“automatically saving at least the portion of said e-mail to the storage
location in accordance with the daemon” as recited in Appellants’ claim 1?
2. Does the Examiner err in finding Peek discloses “saving at least
one attachment to said e-mail as a file in said storage location where that file
is associated with an URL” as recited in Appellants’ claim 6?
Appeal 2009-006334
Application 10/171,276

4
3. Does the Examiner err in finding Peek discloses “receiving an
e-mail at a particular e-mail address associate with a device, the device being
associated with a plurality of e-mail addresses wherein each e-mail address
is associated with a different daemon provided by the device,” as recited in
claim 21?

FINDINGS OF FACT (FF)
Appellants’ Specification
1. Appellants define a daemon as a program performing tasks for a
computer operating system;
The term “daemon” as used herein means and includes
processes or programming operating behind or with the
operating system of a computing device for performing tasks
for the operating system as known in the art. Although various
operating systems use different names or terms for daemon
processes and programming, the term daemon as used herein
includes such processes and programming.
(Spec. ¶ [0013].)
Peek Reference
2. Peek describes, in relevant part, an email capable fax machine
including a processor, a memory, and an internet type modem, capable of
sending and receiving graphic data by email. Peek further describes
configuring the e-mail capable fax machine as a client for an internet service
provider (ISP). (Col. 2, ll. 30-38; Fig. 3.) Peek also specifically describes
the e-mail capable fax machine receiving e-mail messages and converting
attachments into “fax type data.” (Col. 2, ll. 55-59; see col. 8, ll. 16-67.)
3. Peek describes the e-mail capable fax machine’s processor
executing a software program for exchanging data over the Internet utilizing
Appeal 2009-006334
Application 10/171,276

5
an internet protocol. (Col. 5, ll. 8-16.) Peek further describes configuring
the fax machine as a client of an ISP to access server computers of the ISP
through the Internet. (Col. 2, ll. 30-38; col. 5, ll. 34-40.) The fax machine
may then send an e-mail message to a desired destination address by
transmitting the message to a server of the ISP using the internet protocol
(col. 7, ll. 28-32) and leaving certain (uploaded) unprintable attachments on
the server for the recipient to later retrieve (col. 7, ll. 41-45).
4. Peek specifically describes the e-mail capable fax machine
querying the ISP “for new email messages using an internet protocol” (col.
8, ll. 40-41), receiving or downloading any new messages using the internet
protocol, and storing the messages and any attachments in memory (col. 8,
ll. 44-46, 49-53). (See col. 8, ll. 16-54.) Peek also describes determining if
all the attachments of the stored e-mail message are of a supported type (i.e.,
printable), and leaving a copy of any non-supported (unprintable)
attachments on the ISP server for later access by a computer (i.e., a personal
computer (PC)) – “After receiving and storing the email data, it is preferably
checked to determine that all attachments are supported types. If not, a copy
of the message is left on the e-mail server, for possible later access by a
computer.” (Col. 8, ll. 64-67.) Peek then describes printing a cover sheet
including information from the e-mail message and a list of attachments
indicating any attachments left on the server, and the text of the e-mail
message – “[n]ext, a cover sheet is printed, . . . containing the e-mail
sender’s address and name, the list of recipients, the time sent, the subject,
list of attachments and whether any were unknown and left on the e-mail
server, and then the text of the message body.” (Col. 9, ll. 1-5.)

Appeal 2009-006334
Application 10/171,276

6
ANALYSIS
Appellants argue the limitations of independent claim 1 with respect
to the Examiner’s § 102 rejection of independent claims 1, 8, 12, and 17.
(App. Br. 9-12.) Appellants also argue the limitations of dependent claim 6
with respect to the Examiner’s § 102 rejection of dependent claims 6, 9, 16,
and 18. (App. Br. 10-12.) Appellants separately argue independent claim
21. (App. Br. 12-13.) Appellants do not separately argue dependent claims
7, 19, 22, and 23. (App. Br. 9, 12-14.) Therefore, we select claims 1, 6, and
21 as representative of Appellants’ arguments and groupings with respect to
the Examiner’s anticipation rejection. 37 C.F.R. § 41.37(c)(1)(vii). See In
re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987). We have considered only
those arguments that Appellants have actually raised in their Briefs.
Arguments that Appellants could have made but chose not to make in the
Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).
Appellants have the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). The Examiner sets forth a
detailed explanation of a reasoned determination of anticipation in the
Examiner’s Answer with respect to each of Appellants’ claims (Ans. 3-9),
and in particular independent claim 1 (Ans. 3-4, 7-8), dependent claim 6
(Ans. 4, 8), and independent claim 21 (Ans. 7, 9). Therefore, we look to the
Appellants’ Briefs to show error in the proffered reasoned findings. See
Kahn, 441 F.3d at 985-86.
Appeal 2009-006334
Application 10/171,276

7
Arguments Concerning the Examiner’s Rejection of
Representative Claim 1
The Examiner rejects Appellants’ independent claim 1 as being
anticipated by Peek. (Ans. 3-4.) Specifically, the Examiner finds that Peek
discloses an e-mail capable fax machine having its own e-mail address and
capable of receiving e-mail messages. (Ans. 3 (citing Peek, Abstract; col. 2,
ll. 30-38).) The Examiner also finds that Peek discloses a daemon for
automatically saving a portion of the e-mail message to a storage location
accessible over the Internet, and automatically saving a portion of the e-mail
to the storage location. (Ans. 3-4 (citing Peek, col. 5, ll. 9-20; col. 8, ll. 40-
67).)
Appellants contend that:
Peek fails to teach a method that includes (a) providing a
daemon for automatically saving at least a portion of an e-mail
received by said at least one e-mail address associated with said
device to a storage location from which the portion can be
viewed over the Internet and (b) automatically saving at least
the portion of said e-mail to the storage location in accordance
with the daemon.
(App. Br. 8-9 (see App. Br. 7-9; Reply Br. 2-5).)
Based on the record before us, we do not find error in the Examiner’s
anticipation rejection of Appellants’ claim 1. We agree with the Examiner
that Peek describes the disputed features of “a daemon for automatically
saving at least a portion of an e-mail received by said at least one e-mail
address associated with said device to a storage location from which the
portion can be viewed over the Internet,” and “automatically saving at least
the portion of said e-mail to the storage location in accordance with the
daemon” (App. Br. 15 (Claim App’x., Claim 1)) for essentially the reasons
espoused by the Examiner (Ans. 3-4, 7-8).
Appeal 2009-006334
Application 10/171,276

8
The Examiner finds that Peek discloses, teaches, and/or suggests “a
daemon for automatically saving . . . a portion of an e-mail . . . to a storage
location from which the portion can be viewed over the Internet,” and
“automatically saving at least the portion of said e-mail to the storage
location in accordance with the daemon.” (Ans. 3-4, 8.) We find that
Peek’s disclosures support the Examiner’s findings. (FF 2-4.)
We begin our analysis by construing Appellants’ disputed claim
limitations. We give claim terminology the “broadest reasonable
interpretation consistent with the [S]pecification” in accordance with our
mandate that “claim language should be read in light of the [S]pecification
as it would be 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) (citations
omitted).
In view of Appellants’ disclosure (FF 1), we broadly but reasonably
construe Appellants’ disputed claim limitations to simply mean a program
for performing tasks for an operating system (“a daemon”) that is capable of
causing the result of (“for”) automatically saving at least a portion of an e-
mail that is received by an e-mail address associated with a device to a
storage location accessible (“from which the portion can be viewed”) over
the Internet, and automatically saving the portion of the e-mail to the storage
location (“in accordance with the daemon”). We note that Appellants do not
claim, nor do they disclose the daemon’s code, algorithms, or processes by
which the daemon causes the portion of the e-mail message to be saved to
the storage location.
Appellants concede that Peek describes retaining copies of e-mail
attachments on an ISP’s e-mail server and accessing the retained copies
Appeal 2009-006334
Application 10/171,276

9
through the Internet using a computer (FF 3, 4). (See App. Br. 8; Reply Br.
4-5.) Appellants, however, contend that “Peek’s decision to retain a copy of
an email on the email server is not the same as saving that email to the email
se[r]ver” (Reply Br. 5), “the software residing on the fax machine’s
processor is not a daemon” (App. Br. 8) providing the claimed functionality,
“retention of [attachment] copies is not the same as ‘automatically saving at
least the portion of said e-mail to the storage location in accordance with the
daemon,’” and “Peek’s fax machine has nothing to do with the saving of
messages on an ISP’s server” (App. Br. 8; see Reply Br. 4-5). In summary,
we understand Appellants to argue that Peek’s fax machine does not include
a daemon that (automatically) saves e-mail attachments to an Internet
accessible storage location.
We find Appellants’ arguments unpersuasive because the arguments
are not commensurate with the scope of Appellants’ recited claim
limitations. Specifically, we find (supra) Appellants’ claim does not recite,
as Appellants contend, a daemon (program) that actually creates and stores a
portion of a received e-mail. Rather, Appellants’ claim recites a program
that is capable of causing a portion of an e-mail that is received by an e-mail
address to be automatically saved to a storage location accessible over the
Internet. Appellants claim does not recite the actual processes for saving the
e-mail portion, only that the portion is automatically saved.
Peek discloses loading (uploading, downloading) or saving a
temporary copy of an e-mail message, including its attachments, to an ISP’s
e-mail server, and leaving certain unprintable attachments on the server for
the recipient to later retrieve. (FF 3, 4). We find that one of skill in the art
would understand the disclosure of retaining certain attachments to mean
Appeal 2009-006334
Application 10/171,276

10
“saving” those attachments. Peek’s fax machine (i.e, the programming
executing on its processor) determines if the attachment is supported, and if
not, causes the attachment to be retained on the server. (FF 3, 4.) Thus,
based on a broad but reasonable interpretation of Appellants’ disputed claim
limitations in light of Appellants’ Specification, we find that Peek discloses
the disputed limitations of “a daemon for automatically saving . . . a portion
of an e-mail . . . to a storage location from which the portion can be viewed
over the Internet,” and “automatically saving at least the portion of said e-
mail to the storage location in accordance with the daemon” as recited in
Appellants’ claim 1.
Appellants do not separately argue independent claims 8, 12, and 17,
nor dependent claims 7 and 19 (supra), and these claims fall with
representative claim 1. It follows that Appellants do not persuade us of error
in the Examiner’s anticipation rejection of claims 1, 7, 8, 12, 17, and 19, and
we affirm the Examiner’s rejection of these claims.
Arguments Concerning the Examiner’s Rejection of
Representative Claim 6
The Examiner rejects Appellants’ dependent claim 6 as being
anticipated by Peek. (Ans. 4, 8.) Specifically, the Examiner finds that
retaining unsupported attachments on a server “inherently teaches the use of
a URL.” (Ans. 8.) Appellants, on the other hand, contend that there is no
disclosure in Peek of associating a saved e-mail portion with a URL. (App.
Br. 9-10.) Based on the record before us, we agree with Appellants that
Peek does not disclose associating a saved file (e-mail portion) with a URL,
and we accordingly find error in the Examiner’s anticipation rejection of
Appellants’ claim 6. While the Examiner may be correct that
Appeal 2009-006334
Application 10/171,276

11
saving/retaining a portion of an e-mail on an e-mail server associates the
retained e-mail portion with a URL (e.g., the URL of the e-mail server, and
possibly the particular storage location on the e-mail server), the cited
portion of Peek does not explicitly disclose this feature, and the Examiner
has not cited any evidence that such a feature is inherent. The fact that a
certain result or characteristic may possibly occur or be present in the prior
art is insufficient to establish the inherency of that result or characteristic.
See In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993).
To establish inherency, the extrinsic evidence “must make clear
that the missing descriptive matter is necessarily present in the
thing described in the reference, and that it would be so
recognized by persons of ordinary skill.” “Inherency, however,
may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of
circumstances is not sufficient.”
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted). “In
relying upon the theory of inherency, the examiner must provide a
basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d
1461, 1464 (BPAI 1990) (emphasis added). To anticipate, every element
and limitation of the claimed invention must be found in a single prior art
reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf
Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).
Appellants correctly identify that Peek does not describe a feature of
associating a saved portion of an e-mail with a URL, and that the
Examiner’s speculation as to the feature is not supported by the record.
Accordingly, we are constrained by the record before us to find that Peek
Appeal 2009-006334
Application 10/171,276

12
does not disclose the disputed limitation of “wherein said automatically
saving at least the portion of said e-mail comprises saving at least one
attachment to said e-mail as a file in said storage location where that file is
associated with an URL” as recited in Appellants’ claim 6. Appellants argue
dependent claims 9, 16, and 18 together with representative dependent claim
6 (supra). It follows that Appellants have persuaded us of error in the
Examiner’s anticipation rejection of claims 6, 9, 16, and 18, and we reverse
the Examiner’s rejection of these claims.
Arguments Concerning the Examiner’s Rejection of
Representative Claim 21
The Examiner rejects Appellants’ independent claim 21 as being
anticipated by Peek. (Ans. 7, 9.) Specifically, the Examiner finds that the
claim does not “teach or define any limitations beyond the scope of the
rejected claims” (Ans. 7), i.e., representative claim 1, and that Peek’s fax
machine is associated with multiple e-mail addresses (Ans. 9). Appellants
contend that “Peek’s fax machine is configured with a single e-mail
address,” does not mention “associating the fax machine with a plurality of
e-mail addresses,” and therefore fails disclose “receiving an e-mail at a
device that is associated [with a] plurality of e-mail addresses where each e-
mail address is associated with a different daemon provided by the device
and configured to manipulate an e-mail in a particular manner.” (App. Br.
13 (see Reply Br. 9).)
Based on the record before us, we agree with Appellants that Peek
does not disclose receiving an e-mail at a device that is associated plurality
of e-mail addresses where each e-mail address is associated with a different
daemon, and we accordingly find error in the Examiner’s anticipation
Appeal 2009-006334
Application 10/171,276

13
rejection of Appellants’ claim 21. While the Examiner is correct that Peek’s
fax machine may send information to multiple e-mail addresses (Ans. 9), we
do not agree that Peek’s fax machine is “associated with” multiple e-mail
addresses. Appellants’ claim requires that an e-mail be received at a
particular e-mail address of a device, that the device is associated with
multiple e-mail addresses, and that each e-mail is associated with a different
daemon. Even if we were, arguendo, to read Appellants’ claim as broadly
as does the Examiner – such that the capability of e-mailing to multiple e-
mail addresses somehow associates the device with these e-mail addresses
(“Peek’s fax machine is in fact associated with a plurality of e-mail
addresses because it can e-mail more than one person or device and is
therefore associated with more than one device” (Ans. 9)) – which we do
not, the cited portion of Peek does not disclose that these other e-mail
addresses are associated with daemons as recited in the claim. Nor has the
Examiner cited any evidence that such a feature is inherent.
Accordingly, we are constrained by the record before us to find that
Peek does not disclose the disputed limitation of “receiving an e-mail at a
particular e-mail address associate[d] with a device, the device being
associated with a plurality of e-mail addresses wherein each e-mail address
is associated with a different daemon provided by the device and each
daemon is configured to manipulate an e-mail in a particular manner” as
recited in Appellants’ claim 21. Appellants argue dependent claims 22 and
23 together with representative independent claim 21. (App. Br. 13.) It
follows that Appellants have persuaded us of error in the Examiner’s
anticipation rejection of claims 21, 22, and 23, and we reverse the
Examiner’s rejection of these claims.
Appeal 2009-006334
Application 10/171,276

14

CONCLUSIONS OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1, 7, 8, 12, 17, and 19 under 35 U.S.C. § 102(e).
Appellants have shown that the Examiner erred in rejecting claims 6,
9, 16, 18, and 21-23 under 35 U.S.C. § 102(e).

DECISION
We affirm the Examiner’s rejection of claims 1, 7, 8, 12, 17, and 19
under 35 U.S.C. § 102(e).
We reverse the Examiner’s rejection of claims 6, 9, 16, 18, and 21-23
under 35 U.S.C. § 102(e).

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)(v).

AFFIRMED-IN-PART

msc

Hewlett Packard Company
Intellectual Property Administration
3404 E. Harmony Road
Mail Stop 35
Fort Collins, CO 80528