Ex Parte Yamade

Board of Patent Appeals and Interferences

May 26, 2009

10073150 (B.P.A.I. May. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YASUSHI YAMADE
____________

Appeal 2008-004582
Application 10/073,150
Technology Center 2400
____________

Decided:1 May 26, 2009
____________

Before JEAN R. HOMERE, ST. JOHN COURTENAY III,
and STEPHEN C. SIU, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Data (electronic delivery).

Appeal 2008-004582
Application 10/073,150

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-11. Claim 12 is canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

Invention
Appellant’s invention generally relates to a data transmission device
that increases efficiency in data transmission during multi-destination
delivery. (See Spec. 1-2, Para. [0002], [0008]).

Representative Claim
1. A data transmission device comprising:

transmitting means having a first transmission mode in
which a file is sent attached to an e-mail message, a second
transmission mode in which a file is sent to a file transfer
server, and a mixed transmission mode in which a file is sent to
a file transfer server and an e-mail message having a text string
including address information of the file transfer server is sent;
and

transmission judging means for determining whether or
not the destinations include those for which the first
transmission mode as well as those for which the second
transmission mode are designated during multi-destination
delivery in which multiple destinations are designated, wherein

when the transmission judging means judges that the
destinations for the first and second transmission modes are
included, the transmitting unit executes the mixed transmission
mode in which an e-mail message having a text string including
Appeal 2008-004582
Application 10/073,150

3
address information of the file transfer server designated in the
second mode is sent to the destination designated for the first
mode, where no file is attached to the e-mail, and

a file designated to the second mode is sent to the file
transfer server.

Prior Art
The Examiner relies on the following references:
Ramaley US 6,687,741 B1 Feb. 3, 2004
Kakimoto US 6,775,688 B1 Aug. 10, 2004

Examiner’s Rejection
Claims 1-11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kakimoto in view of Ramaley.

FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF)
that are supported by a preponderance of the evidence:
1. Ramaley teaches determining whether to send a file as a link, an
attachment, or as a link and an attachment. (Col. 7, ll. 30-36; Fig. 3).
2. Ramaley teaches that a determination is made as to whether a
file has been saved. If the file is not stored in a shared disk location,
the file is sent as an attachment. Otherwise, a registry setting that
corresponds to a “send preference” is checked and the file is either
sent only as a link or as both links and attachments. (Col. 7, ll. 38-40
and col. 8, ll. 7-8; Fig. 3).
Appeal 2008-004582
Application 10/073,150

4

ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal:

Has Appellant shown the Examiner erred in finding that Ramaley
teaches or suggests the limitation of “determining whether or not the
destinations include those for which the first transmission mode as well as
those for which the second transmission mode are designated during multi-
destination delivery in which multiple destinations are designated?”

PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). What a reference teaches is a question of fact. In
re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994); In re Beattie, 974 F.2d 1309,
1311 (Fed. Cir. 1992).
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006). Therefore, we look to Appellant’s Briefs to show error in the
Examiner’s proffered prima facie case.

ANALYSIS
As noted above, Appellant contends that the cited references, most
notably Ramaley, fail to teach “determining whether or not the destinations
Appeal 2008-004582
Application 10/073,150

5
include those for which the first transmission mode as well as those for
which the second transmission mode are designated during multi-destination
delivery in which multiple destinations are designated,” as recited in
independent claims 1, 6, and 9. Appellant further contends that Ramaley
does not teach or suggest multi-destination delivery but rather determines
the way in which a file is to be delivered, either by sender preference or by
default, depending on whether the file is in a shared disk location. (App. Br.
7). The Examiner contends that this limitation is taught by Ramaley. (Ans.
4-5)
At the outset, we interpret the independent claims to require that the
mixed transmission mode of delivery replaces the first transmission mode
after the determination is made that the multi-destination delivery (in which
multiple destinations are designated) includes both the first and second
transmission modes.
Ramaley teaches determining whether to send a file as a link, an
attachment, or as a link and an attachment. (FF 1). As noted above, Ramaley
determines the mode of delivery based on the sender’s preference, or by
default. (FF 1-2). Therefore, we find that Ramaley does not teach or fairly
suggest sending a file based upon “whether or not the destinations include
those for which the first transmission mode as well as those for which the
second transmission mode are designated during multi-destination delivery
in which multiple destinations are designated,” as claimed. (independent
claim 1; see equivalent language in each of independent claims 6 and 9).

Appeal 2008-004582
Application 10/073,150

6
In addition, we have not found, nor has the Examiner established, that
Kakimoto cures the deficiencies of Ramaley. Accordingly, we reverse the
Examiner’s rejection of independent claims 1, 6, and 9 and associated
dependent claims 2-5, 7-8, and 10-11.

CONCLUSION
Appellant has established the Examiner erred in finding that the
combination of Kakimoto and Ramaley teaches determining whether or not
the destinations include those for which the first transmission mode as well
as those for which the second transmission mode are designated during
multi-destination delivery in which multiple destinations are designated.
Appeal 2008-004582
Application 10/073,150

7
DECISION
We reverse the Examiner’s rejection of claims 1-11 under 35 U.S.C.
§ 103(a).

REVERSED

pgc

Barry E. Bretschneider
Morrison & Foerster LLP
2000 Pennsylvania Ave., N.W.
Washington, DC 20006-1888