Ex Parte Schulz et al

Patent Trial and Appeal Board

Nov 13, 2014

11019606 (P.T.A.B. Nov. 13, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
___________

Ex parte KARSTEN A. SCHULZ,
SIMON M. STEBBINS,
and KIM E. FULLER
___________

Appeal 2012-003387
Application 11/019,6061
Technology Center 2400
___________

Before HUBERT C. LORIN, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE2
Karsten A. Schulz, Simon M. Stebbins, And Kim E. Fuller (Appellants)
seek review under 35 U.S.C. § 134 of a final rejection of claims 1, 2, 4–14,

1 The real party in interest, according to the Appellants, is SAP AG. (Appeal
Br. 2).
2 Our decision will make reference to the Appellants’ Appeal Brief (“Appeal
Br.,” filed May 27, 2011) and Reply Brief (“Reply Br.,” filed November 14,
2011), and the Examiner’s Answer (“Ans.,” mailed September 13, 2011),
and Final Rejection (“Final Rej.,” mailed December 3, 2010).
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Application 11/019,606

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16–29, and 31–37, the only claims pending in the application on appeal. We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We reverse.
The Appellants invented a system and method for filing a relayed e-mail
(Spec. ¶ 1).
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added].
1. A system to file relayed e-mails, the system including:
[A] a parsing module to parse a relayed e-mail to obtain
addressing information from an e-mail header and body, and to
extract the addressing information from the parsed relayed e-
mail;
[B] a memory to store the addressing information;
[C] a participant list module
[D] to generate a participant list from the stored
addressing information, and
[E] to provide the participant list to a user
[F] to enable the user to select a participant from
the participant list,
[G] the participant list generated after the
addressing information has been obtained and extracted
from the relayed e-mail and including a plurality of
participants; and
[H] a filing module to file the relayed e-mail based on the
selected participant,
[I] the parsing module, the participant list module
and the filing module including computer
instructions executed by at least one computer
processor.

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The Examiner relies upon the following prior art:
Massanelli
Jain
US 2004/0133645 A1
US 2006/0075032 A1
July 8, 2004
Apr. 6, 2006

Claims 1, 2, 4–14, 16–29, and 31–37 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Jain and Massanelli.
ISSUES
The issue of obviousness turns generally on whether Jain or Massanelli
discloses presenting a participant list to a user to permit the user to select a
participant from the list.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Jain
01. Jain is directed to journaling envelope information from e-mail
messages. (Jain ¶ 2).
02. Jain discloses “the receiving server expands the distribution list to
reveal recipients e-mail addresses in the distribution list” to allow
forwarding the e-mail to a newly added recipient, with a copy to a
server that also journals the forwarded email and full list of
recipients. (Jain ¶ 71; see also ¶¶ 78 and 84).
03. Jain discloses an email recipient may be added automatically by a
server using a “forwarding rule.” (Jain ¶ 72).
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Massanelli
04. Massanelli is directed to systems and methods for automatically
capturing and archiving electronic correspondence, such as emails,
to support recovery audits. (Massenelli, ¶ 2).
05. Massenelli discloses filtering mechanisms to automatically store
or exclude particular emails. (Massanelli, ¶¶ 25–28).
ANALYSIS
Claims 1, 2, 4-14, 16-29, and 31-37 rejected under 35 U.S.C. § 103(a) as
unpatentable over Jain and Massanelli
Each of independent claims 1, 11, 27, and 28 recites limitations
substantially identical to a system “to generate a participant list from the
stored addressing information, and to provide the participant list to a user to
enable the user to select a participant from the participant list.” The relevant
claim elements are annotated as parts [E] and [F] in claim 1, above.
We are persuaded by the Appellants’ arguments that neither Jain nor
Massanelli discloses either providing a participant list to a user (Appeal Br.
12–14), or enabling a user to select a participant from the provided
participant list (Appeal Br. 14–18, Reply Br. 2–7).
The Examiner finds both claim limitations disclosed in Jain, at
paragraphs 26, 53, 71–73, 78, and 84 (Ans. 6–8, 25–27), and finds limitation
[F] in Massanelli at paragraphs 25, 27, and 28 (Ans. 8–9, 28–29).
The Examiner reasons that the limitations are met by Jain’s disclosure of
a server expanding the list of recipients in an email, so a participant may add
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an additional recipient to whom to forward the email. (Ans. 6–8; see also
Ans. 27). However, adding a recipient in Jain does not involve selecting a
participant from the list of past recipients. (FF 02).
The Examiner also reasons that use of a “forwarding rule” in Jain meets
the claim language (Ans. 8, 26), but in Jain a forwarding rule operates
automatically, without a user being presented a list to enable selection of a
participant from that list. (FF 03). Finally, the Examiner reasons that the
automated filtering of emails at a server, disclosed by Massanelli [paras. 27
and 28], to either retain or exclude emails based on “selection criteria,”
meets limitation [F]. (Ans. 28–29). However, a selection criteria that leads
to particular emails automatically being stored, does not provide a
participant list to a user for selection from the list. (FF 05).
Thus, the Examiner has not set forth a prima facie case of obviousness
that the combination of Jain and Massanelli discloses presenting a
participant list to a user to enable selecting a participant from that list. For
this reason, we reverse the rejection of independent claims 1, 11, 27, and 28,
as well as similarly rejected dependent claims 2, 4–10, 12–14, 16–26, 29,
and 31–37.
CONCLUSIONS OF LAW
The rejection of claims 1, 2, 4–14, 16–29, and 31–37 under 35 U.S.C.
§ 103(a) as unpatentable over Jain and Massanelli is improper.
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DECISION
The rejection of claims 1, 2, 4–14, 16–29 and 31–37 is reversed.

REVERSED

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