Ex Parte Taylor

Board of Patent Appeals and Interferences

Jul 19, 2010

10207069 (B.P.A.I. Jul. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD TAYLOR
_____________

Appeal 2009-005623
Application 10/207,069
Technology Center 2400

____________

Before MARC S. HOFF, CARLA M. KRIVAK,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or 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 2009-005623
Application 10/207,069

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1-44. We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.

INVENTION
Appellant’s claimed invention is directed to enabling a third party
with a pecuniary interest to verify to an enterprise that it had a role in
soliciting and establishing contact between a client and the enterprise by
generating first and second IDs to verify such contact. See generally Spec.
1:5-14; 4:3-20.
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method of establishing contact between a client and a first location
within a communication network comprising the steps of:
generating a message which is actuable to establish communication
with the first network location;
communicating the message to the client, and including with the
message a first ID unique to the message's provenance;
subsequent to communication of the message to the client, activating
the message and connecting the client to the first network location;
generating, by the client, a second ID based on client activation of the
message;
and
verifying that connection of the client to the first network location
occurred using the message by using the first and second IDs.

Appeal 2009-005623
Application 10/207,069

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THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Kesling US 2002/0132575 A1 Sep. 19, 2002
(filed May 31, 2001)
The following rejection is before us for review:
The Examiner rejected claims 1-44 under 35 U.S.C. § 102(e) as being
anticipated by Kesling.

ISSUE
Did the Examiner err by determining that Kesling teaches “a first ID
unique to the message’s provenance” and “generating, by the client, a
second ID based on client activation of the message” as recited in claim 1?

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).

ANALYSIS
Appellant argues inter alia that neither of the two embodiments
described by Kesling at paragraph 65 discloses “a first ID unique to the
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Application 10/207,069

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message’s provenance” and “a second ID based on client activation of the
message” (App. Br. 18). We are persuaded by Appellant’s argument.
The Examiner asserts (Ans. 31) that the “first ID unique to the
messages provenance” is taught by the Kesling’s first embodiment wherein
an e-mail contains a link whereby the selected program identifiers can be
more easily acted upon (¶ [0065]:ll. 1-5). The Examiner further asserts
(Ans. 31-32) that Kesling’s alternative embodiment teaches “a second ID”
such as a unique electronic serial number (ESN) or mobile identification
number (MIN) (¶ [0065]:ll. 5-13). However, these embodiments constitute
alternative embodiments and independent claim 1 requires both “a first ID
unique to the message’s provenance” and “generating, by the client, a
second ID based on client activation of the message.” Kesling teaches no
embodiment in which both IDs required by the claim are generated.
For the above reason, we will reverse the Examiner’s rejection of
independent claim 1, and for similar reasons the rejections of dependent
claims 2-44.

CONCLUSION
The Examiner erred by determining that Kesling teaches “a first ID
unique to the message’s provenance” and “generating, by the client, a
second ID based on client activation of the message.”

ORDER
The decision of the Examiner to reject claims 1-44 is reversed.
Appeal 2009-005623
Application 10/207,069

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REVERSED

ELD

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