Ex Parte Sievers et al

Board of Patent Appeals and Interferences

May 13, 2008

10099789 (B.P.A.I. May. 13, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte A. KENT SIEVERS and DAVID R. HANSEN
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Appeal 2007-3633
Application 10/099,789
Technology Center 2100
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Decided: May 13, 2008
____________

Before LANCE LEONARD BARRY, ALLEN R. MACDONALD, and JAY
P. LUCAS, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-7 and 26-38. The Appellants
appeal(s) therefrom under 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).

Appeal 2007-3633
Application 10/099,789

A. INVENTION
The invention at issue on appeal defines and binds electronic
addresses. (Spec. 1.) According to the Appellants, "conventional electronic
addressing policies within organizations are based on static policies that
cannot be dynamically modified by the organizations." (Id. 3.) In contrast,
the Appellants' invention "institute[s] dynamic electronic addressing
policies . . . ." (Id.)

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows.
1. A method for defining an electronic address, comprising:
selecting a preferred domain name;
selecting one or more additional domain names in
addition to the preferred domain name;
selecting a preferred address format;
selecting one or more additional address formats in
addition to the preferred address format; and
retaining the preferred domain name, the one or more
additional domain names, the preferred address format, and the
one or more additional address formats to define the electronic
address.

C. REJECTION
Claims 1-7 and 26-38 stand rejected under 35 U.S.C. § 103(a) as
obvious over U.S. Patent Application Pub. No. 2003/0115280 ("Quine") and
U.S. Patent No. 6,901,436 ("Schneider").

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II. CLAIM GROUPING
"When multiple claims subject to the same ground of rejection are
argued as a group by appellant, the Board may select a single claim
from the group of claims that are argued together to decide the appeal
with respect to the group of claims as to the ground of rejection on the
basis of the selected claim alone. Notwithstanding any other
provision of this paragraph, the failure of appellant to separately argue
claims which appellant has grouped together shall constitute a waiver
of any argument that the Board must consider the patentability of any
grouped claim separately." 37 C.F.R. § 41.37(c)(1)(vii) (2006).

Here, the Appellants argue all the aforementioned claims, which are
subject to the same ground of rejection, as a group. (App. Br. 10-12). We
select claim 1 as the sole claim on which to decide the appeal of the group.
"With this representation in mind, rather than reiterate the positions of the
parties in toto, we focus on the issues therebetween." Ex Parte Zettel,
No. 2007-1361, 2007 WL 3114962, at *2 (BPAI 2007).

III. MULTIPLE DATA STRUCTURES
The Examiner finds, "Quine . . . discloses in figure 7, page 8
paragraph [079], a list of multiple prefix formats for an email (the list under
items 701 and 702 in figure 7 shows multiple sample addresses for user to
select)." (Ans. 7.) The Appellants argue that "multiple different prefix
formats cannot be selected to define the email in Quine." (Reply Br. 2.)
Therefore, the issue is whether the Appellants have shown error in the
Examiner's finding that Quine selects multiple data structures.

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"Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims . . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art." Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933 (Fed.Cir. 2003) (internal citations omitted).

A. CLAIM CONSTRUCTION
"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000)). "'Where . . . printed matter is not
functionally related to the substrate, the printed matter will not distinguish
the invention from the prior art in terms of patentability.'" In re Ngai, 367
F.3d 1336, 1339 (Fed. Cir. 2004) (quoting In re Gulack, 703 F.2d 1381,
1385 (Fed. Cir. 1983)). "Although the printed matter must be considered, in
that situation it may not be entitled to patentable weight." Gulack, 703 F.2d
at 1385.

Here, claim 1 recites in pertinent part the following limitations:
"selecting one or more additional address formats . . . ." We view the term
"address" as analogous to unpatentable printed matter. Because no routing
or delivery is claimed, and the address formats are merely retained, the data
representing the address lacks a functional relation. Denying the term
patentable weight, the limitations merely require selecting multiple data
structures.

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B. OBVIOUSNESS ANALYSIS
The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently . . . ." In re Zurko, 258 F.3d 1379, 1383-84 (Fed. Cir. 2001)
(citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); In re
Dembiczak, 175 F.3d 994, 998 (Fed. Cir. 1999); In re Napier, 55 F.3d 610,
613 (Fed. Cir. 1995)). "'A prima facie case of obviousness is established
when the teachings from the prior art itself would appear to have suggested
the claimed subject matter to a person of ordinary skill in the art.'" In re
Bell, 991 F.2d 781, 783 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d
1048, 1051 (CCPA 1976)).

Here, Quine's "FIG. 7 depicts an interface for registering corporate e-
mail address formats. . . ." (¶ [0028].) The Appellants admit, "FIG. 7 does
present multiple prefix formats. . . ." (Reply Br. 2.) Furthermore, we find
that "a plain reading of Quine" (id.) reveals that the interface instructs a user
to "enter your corporate e-mail address format(s)" (Fig. 7 (emphasis added))
and allows him to "Edit Corporate Address Formats." (Id. (emphasis
added).) The reference' use of the plural in referring to entering and editing
address formats, belies the Appellants' attempt to show error in the
Examiner's finding that Quine selects multiple data structures.

IV. DATUM
The Examiner makes the following findings.
Quine disclosed a domain of "p[b].com" (see figure 7), which is
viewed as a "preferred domain name" and Schneider suggests in
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Col 16 lines 41-57, that when a valid domain name is available
for the registration, the additional selection of available
fictitious domain name may be concurrently displayed for an
potential registrant to register a final selection from the valid or
fictitious domain names."
(Ans. 7.) The Appellants argue, "The fictitious domain is not a domain at all
it is an alias for but one domain. Consequently, . . . the proposed
combination lacks any notion of a 'preferred domain'. . . ." (Reply Br. 2.)
Therefore, the issue is whether the Appellants have shown error in the
Examiner's finding that teachings from Quine and Schneider would appear
to have suggested selecting a datum.

A. CLAIM CONSTRUCTION
Although the Appellants argue about the notion of a "preferred
domain," claim 1 recites in pertinent part the following limitations:
"selecting a preferred domain name. . . ." We view the phrase "preferred
domain name" as analogous to unpatentable printed matter. Denying the
term patentable weight, the limitations merely require selecting a datum.

B. OBVIOUSNESS ANALYSIS
The Appellants admit that Quine features a "domain that can be used
and that is the domain of the enterprise." (Reply Br. 2.) We agree with the
Examiner that the selection of a name for that domain constitutes selecting a
datum.

Contrary to the premise of the Appellants' argument, moreover, the
claim does not require multiple domains; it merely requires multiple
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"domain names." (Emphasis added.) For its part, the part of Schneider
cited by the Examiner teaches that "all selected TDLA [i.e., top level domain
alias] names may be registered . . . ." (Col. 16, ll. 38-39.) The faulty
premise of the Appellants' argument and the secondary reference's use of top
level domain alias names undermine the Appellants' attempt to show error
in the Examiner's finding that teachings from Quine and Schneider would
appear to have suggested selecting a datum.

V. RETAINING PLURAL DATA AND PLURAL DATA STRUCTURES
The Examiner makes the following findings.
Quine . . . teaches mapping for a definition that maps multiple
valid prefixes to a single email definition for a user (see
figure 7, item 701, multiple formats are provided with different
arrangement of prefixes, e.g. first.last), and Schneider suggests
that multiple domains (Col 16 lines 41-57, "example.new",
"example.sitemap", etc.) could also be displayed for potential
registrant to register a final selection.
(Ans. 8.) The Appellants argue that "there is still no mapping or retention of
a definition that maps multiple valid domains and prefixes to a single email
definition for a user." (App. Br. 11.) Therefore, the issue is whether the
Appellants have shown error in the Examiner's finding that teachings from
Quine and Schneider would appear to have suggested retaining plural data
and plural data structures to define an additional data structure.

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A. CLAIM CONSTRUCTION
Claim 1 recites in pertinent part the following limitations: "retaining
the preferred domain name, the one or more additional domain names, the
preferred address format, and the one or more additional address formats to
define the electronic address." Giving the representative claim the broadest,
reasonable construction, the limitations require retaining plural data and
plural data structures to define an additional data structure.

B. OBVIOUSNESS ANALYSIS
"[W]hen a patent 'simply arranges old elements with each performing
the same function it had been known to perform' and yields no more than
one would expect from such an arrangement, the combination is obvious."
KSR Int'l v. Teleflex Inc., 127 S.Ct. 1727, 1739 (2007) (quoting Sakraida v.
Ag Pro, Inc., 425 U.S. 273, 282 (1976)).

As found regarding the first issue, Quine selects multiple data
structures, i.e., multiple e-mail address formats. The reference teaches,
moreover, retaining these data structures along with data, i.e., domain
names, in a "domain name and domain format database 204 . . . ."
(¶ [0040].) Each combination of an address format and a domain name
defines an additional data structure, viz., an e-mail address.

As found regarding the second issue, Schneider teaches registering
plural data, i.e., multiple domain names. Retaining these data is inherent in
registering these data.
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One of ordinary skill in the art could have used known methods to
combine the aforementioned teachings of the two references without
changing their respective functions. Such a one would have recognized that
result of the combination, viz., retaining plural data and plural data
structures to define an additional data structure, was predictable.

"Argument in the brief does not take the place of evidence in the
record." In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (citing In re Cole,
326 F.2d 769, 773 (CCPA 1964)). Here, the Appellants' allegation that
"account[ing] for multiple domains and multiple valid identifiers for a single
user" (App. Br. 11) "would not be capable with the existing teachings of
Quine" (id.) is unsupported by evidence. It shows no error in the Examiner's
finding that teachings from Quine and Schneider would appear to have
suggested retaining plural data and plural data structures to define an
additional data structure.

VI. ORDER
For the aforementioned reasons, we affirm the rejection of claim 1 and
of claims 2-7 and 26-38, which fall therewith.

"Any arguments or authorities not included in the brief or a reply brief
filed pursuant to [37 C.F.R.] § 41.41 will be refused consideration by the
Board, unless good cause is shown." 37 C.F.R. § 41.37(c)(1)(vii).
Accordingly, our affirmance is based only on the arguments made in the
briefs. Any arguments or authorities omitted therefrom are neither before us
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nor at issue but are considered waived. Cf. In re Watts, 354 F.3d 1362, 1367
(Fed. Cir. 2004) ("[I]t is important that the applicant challenging a decision
not be permitted to raise arguments on appeal that were not presented to the
Board.")

No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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