Ex Parte Vedula

Board of Patent Appeals and Interferences

Apr 19, 2012

11307366 (B.P.A.I. Apr. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte VENKATA NAGA VEDULA
____________________

Appeal 2010-001996
Application 11/307,366
Technology Center 2100
____________________

Before LANCE LEONARD BARRY, JEAN R. HOMERE,
and THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001996
Application 11/307,366

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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-10, 12-18 and 21-25 (App. Br. 2). Claims 11, 19, and 20 are
canceled (id.). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

A. INVENTION
Appellant’s invention is directed to an email communication system
that enables the user to specify a policy associated with an email; wherein,
the policy is sent as an attachment or within a portion of the email to a
Records Management System (RMS)-Email Interface that stores the policy
and the email prior to forwarding the email (Abstract).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A method of maintaining records of email
communications according to desired policies, said method
comprising:

receiving an email communication, wherein said email
communication includes a content included by a sender while
composing said email communication, said email
communication further including a policy according to which
said content composed by said sender of said email
communication is to be managed as a record; and

storing said content of said email communication as said
record according to said policy included in said email
communication.

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C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bourges-Sevenier US 2007/0192818 A1 Aug. 16, 2007
(filed Oct. 12, 2005)
Chasin US 2007/0244974 A1 Oct. 18, 2007
(filed Sep. 29, 2006)
Jacobson US 2007/0261121 A1 Nov. 08, 2007
(effectively filed Mar. 31, 2004)

Claims 1-3, 6-10, and 12-18 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Jacobson.
Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jacobson in view of Bourges-Sevenier.
Claims 21-25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jacobson in view of Chasin.

II. ISSUE
The dispositive issue before us is whether the Examiner has erred in
finding that Jacobson teaches “receiving an email communication, wherein
said email communication includes a content included by a sender while
composing said email communication, said email communication further
including a policy according to which said content composed by said sender
of said email communication is to be managed as a record” and “storing said
content of said email communication as said record according to said policy
included in said email communication” (claim 1, emphasis added).

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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Jacobson
1. Jacobson discloses a policy compliance and reporting module
115 that sends an email or pager message to the system administrator
notifying the administrator that a network user compliance violation has
occurred; wherein, the email message includes a policy compliance violation
report (file) as an attachment and instructions for the system administrator to
follow regarding a set of compliance reporting procedures (Fig. 38; ¶
[0148]).
2. The email instructs the system administrator to log into the
system by presenting a password and hardware token to access the policy
violation reporting procedures; wherein, several options for the system
administrator are displayed on the screen including the ability to file a policy
compliance violation report, investigate a policy compliance violation
report, review audit, system reports, examine an appeal process, review a
user profile, and access policy resources or policy effectiveness reports (¶
[0148]).
3. When the system administrator chooses to file a policy
compliance violation report, the system monitors and records the reporting
and investigation process in the policy effectiveness database, along with the
policy compliance violation report (¶¶ [0153]-[0154]).
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Chasin
4. Chasin discloses a duration for a retention period for
quarantined messages and member data stored in an audit database (¶
[0127]).

IV. ANALYSIS
Claims 1 - 3, 6 - 10, and 12 -18
Appellant does not provide separate arguments with respect to
independent claims 1, 8, and 15 (App. Br. 14-16). Further, Appellant
provides a similar argument with respect to independent claims 6 and 13
(App. Br. 16-18). Appellant does not provide arguments with respect to
dependent claims 2, 3, 7, 9, 10, 12, 14, and 16-18. Accordingly, we select
claim 1 as being representative of these claims. See 37 C.F.R. §
41.37(c)(1)(vii).
Appellant contends that “the claimed policy specifies the manner in
which the accompanying content (in the claimed email communication) is to
be stored (or managed) as a record, while the policy of Jacobson is a
specification to be complied with by network users” (App. Br. 14). Further,
Appellant argues that Jacobson does not disclose “that the same email
communication contains both the content (composed by the user and that is
to be stored) and the policy … which [defines how] the content is [to be]
stored” (App. Br. 14). In particular, Appellant contends that “the policy
violations are not specified in any of the individual emails” (App. Br. 15).
According to Appellant, “the separate emails relied upon by the Examiner
are analogous to the two separate protocols relied upon by the alleged
infringer in Net MoneyIN [v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir.
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2008)],” where the court found that, “though the two protocols may have
together disclosed the five links of the claim, … such selection from
different protocols[] would not anticipate the claimed five links” (App. Br.
16).
Appellant also asserts that “emails [in Jacobson] relied upon by the
Examiner are not sent by senders (human beings)” (id.).
However, the Examiner finds that “[w]hat is described in claim 1 is
very broad” and that Jacobson “explicitly and exactly discloses ‘email,’
‘records,’ ‘recording,’ ‘policy,’ ‘stores,’ and ‘database’” (Ans. 17). The
Examiner notes that “that policy as disclosed in claim 1 contains no specific
details about the functionality of the policy” (Ans. 18) or “the sender” (Ans.
22). The Examiner finds further that “Jacobson in paragraph [0148]
explicitly and exactly discloses an ‘email message, policy report (file), [and
a] policy file attached to the email’” (Ans. 19).
Appellant’s argument that “the claimed policy specifies the manner in
which the accompanying content (in the claimed email communication) is to
be stored (or managed) as a record” is not commensurate in scope with the
specific language of claim 1 (App. Br. 14). In particular, claim 1 does not
recite such “policy specifies the manner in which the accompanying content
(in the claimed email communication) is to be stored” as Appellant argues
(id., emphasis added).
Similarly, Appellant’s argument “emails relied upon by the Examiner
are not sent by senders (human beings)” (App. Br. 16) is not commensurate
in scope with the specific language of claim 1 since claim 1 does not require
that the sender be “human beings.”
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Jacobson discloses a policy compliance and reporting module that
sends an email to the system administrator; wherein, the email message
includes a policy compliance violation report (file) as an attachment and
instructions for the system administrator to follow regarding the compliance
reporting procedures (FF 1). When the system administrator accesses the
policy violation reporting procedures, a screen is displayed having several
options for the system administrator including the ability to file the policy
compliance violation report (FF 2). When the system administrator chooses
to file a policy compliance violation report, the system records the policy
compliance violation report in the policy effectiveness database as a record
within the database (FF 3). We find that the policy compliance and
reporting module comprises the sender of the email to the system
administrator that includes content (the policy and instructions to the system
administrator) and the policy as an attachment. The policy is in accordance
with the management of the attached report. That is, we find that “receiving
an email communication, wherein said email communication includes a
content included by a sender while composing said email communication,
said email communication further including a policy according to which
said content composed by said sender of said email communication is to be
managed as a record” (claim 1, emphasis added) reads on Jacobson’s policy
compliance and reporting module that sends an email to the system
administrator including instructions and an attached policy compliance
violation report.
We also find the system of Jacobson stores the policy compliance
violation report (content of the email) as a record in the policy effectiveness
database. That is, we find that “storing said content of said email
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communication as said record according to said policy included in said email
communication” (claim 1) reads on Jacobson’s policy compliance and
reporting module that stores the policy compliance violation report in the
policy effectiveness database.
Our reviewing court has found that “‘the [prior art] reference must
clearly and unequivocally disclose the claimed [invention] or direct those
skilled in the art to the [invention] without any need for picking, choosing,
and combining various disclosures not directly related to each other by the
teachings of the cited reference’” Net MoneyIN, 545 F.3d at 1371 (quoting
In re Arkley, 455 F.2d 586, 587 (CCPA 1972)).
Although the Examiner points to various email communications
disclosed in Jacobson, we find that the email communication sent from the
policy compliance and reporting module to the system administrator which
includes instructions and an attached policy compliance violation report
represents sufficient support for all the claim limitations of claim 1, as noted
supra. Therefore, contrary to Appellant’s argument that “the separate emails
relied upon by the Examiner” would not anticipate the claimed invention
(App. Br. 16), we find Jacobson to anticipate claim 1 without relying on a
combination of various disclosures not directly related to each other.
Accordingly, we find that Appellant has not shown that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 102(e) over Jacobson; and
independent claims 6, 8, 13, and 15 and claims 2, 3, 7, 9, 10, 12, 14, and 16-
18 depending from claims 1, 6, 8, 13, and 15 which have been grouped
therewith.
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Claims 4 and 5
At the outset, we noted that Appellant did not present arguments
directed to the Examiner’s rejection of claims 4 and 5 under 35 U.S.C. § 103
over Jacobson in view of Bourges-Sevenier. Accordingly, we will sustain
this rejection pro forma.
Claims 21-25
Appellant contends that “several portions of Chasin-Published relied
upon by the Examiner are absent in Chasin-Provisional” (App. Br. 19).
Appellant also argues that claims 21-25 is patentable over the cited prior art
for the same reasons asserted with respect to claim 1 (App. Br. 20).
The Examiner finds that Chasin “has a priority date for its
application” (Ans. 29).
In the Reply Brief, Appellant contends that “Chasin-Published is
effective prior art as of the corresponding provisional application … filing
date, for what the provisional application discloses/supports” (Reply Br. 2,
emphasis added); however, “there are at least some portions relied upon by
the Examiner, that are not present/disclosed/supported by the Chasin-
Provisional” (Reply Br. 2-3).
Even though, as noted supra, we find that Jacobson discloses all the
features of parent claim 1, we agree with Appellant that the provisional
application filed on November 7, 2005 is silent as to the disclosure regarding
the retention period for messages/ user data (App. Br. 18-19; FF 4) from the
Chasin’s Continuation-in-Part filed on September 29, 2006 that the
Examiner relies upon (Ans. 10-11). Since the Appellant’s application was
filed February 3, 2006, the relied upon portion of Chasin’s Continuation-in-
Part (having a filing date of September 29, 2006) is not prior art.
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We therefore reverse the Examiner’s rejection of claims 21-25 under
35 U.S.C. § 103 over Jacobson in view of Chasin.

V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1-3, 6-10, and 12-18 under
35 U.S.C. § 102(e) and claims 4 and 5 under 35 U.S.C. § 103(a) is affirmed.
The Examiner’s rejection of claims 21-25 under 35 U.S.C. § 103(a) is
reversed.
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-IN-PART

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