Ex Parte Yamamoto

Board of Patent Appeals and Interferences

Aug 30, 2011

10170756 (B.P.A.I. Aug. 30, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/170,756 06/13/2002 Gaku Yamamoto JP920000463US1 8544
7590 08/30/2011
IBM CORPORATION
INTELLECTUAL PROPERTY LAW DEPT.
P.O. BOX 218
YORKTOWN HEIGHTS, NY 10598
EXAMINER
WIDHALM, ANGELA M
ART UNIT PAPER NUMBER
2452
MAIL DATE DELIVERY MODE
08/30/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GAKU YAMAMOTO
____________

Appeal 2009-014163
Application 10/170,756
Technology Center 2400
____________

Before KRISTEN L. DROESCH, DENISE M. POTHIER and
ERIC B. CHEN, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of a final rejection
of claims 1, 3, 5, 7, 8, 13, 15-18 and 21.
1
We have jurisdiction under 35
U.S.C. § 6(b). We REVERSE and enter a new grounds of rejection.
BACKGROUND
Appellant’s invention is related to a system and method for
transmitting numerous e-mails to multiple recipients. Spec. 1, ¶ 1.
Claim 1 is illustrative and is reproduced below (minor formatting
added):
A system for transmitting e-mail data to a plurality of
recipients via a network, comprising:
reception means for receiving the e-mail data that
includes destination address information, domain information
included therein and mail text information;
transmission data generation means for querying a
domain information database to determine if said domain
information is registered in said domain information database
and for grouping multiple sets of the e-mail data by the domain
information when said domain information is registered in said
domain information database to generate transmission data,
wherein a set comprises e-mail data addressed to multiple
different recipients having common domain information;
domain information database for storing the domain
information which allows grouping of the multiple sets of the
e-mail data;
first transmission means for transmitting said generated
transmission data via said network to a computer system
designated based on said domain information using at least one

1
Claims 2, 4, 6, 9-12, 14, 19 and 20 have been cancelled.

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of FTP (file transfer protocol) and HTTP (hypertext transfer
protocol);
second transmission means for transmitting each set of
the e-mail data one by one via said network using SMTP
(simple mail transfer protocol), if is determined that the domain
information has not yet been registered in said domain
information database; and
collector means for collecting e-mail transmission
information for use in charging for transmission of e-mail data.

The Examiner relies on the following prior art:
Funk 5,937,162 Aug. 10, 1999
Deo 6,304,914 B1 Oct. 16, 2001

Claims 1, 3, 5, 7, 8, 13, 15-17 and 21 are rejected under
35 U.S.C. § 103(a) as unpatentable over Funk and Official Notice.
Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Funk, Official Notice and Deo.
ISSUES
Did the Examiner err in finding that Funk describes querying a
domain database with domain information to determine if the domain
information has been registered with the domain database?
Are claims 17 and 18 drawn to statutory subject matter under
35 U.S.C. § 101?
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments (Appeal Brief and Reply Brief). We concur with Appellant that

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the Examiner erred in determining that the claims are rendered obvious over
the applied prior art.
Independent claim 1 recites: “transmission data generation means for
querying a domain information database to determine if said domain
information is registered in said domain information database[.]” Appellant
disputes the Examiner’s finding that Funk describes the aforementioned
limitation. App. Br. 12-14, 16; Reply Br. 3; Ans. 3-4, 10.
The Examiner finds that Funk describes a customer database 200
which includes customers’ e-mail addresses that contain domain information
and if a customer exists in the database 200 then an e-mail message could be
generated using databases 200-208. Ans. 4, 10 (citing Funk at col. 7, ll. 9-
11, 52-67; col. 8, ll. 52-67); see also Figs. 2, 5. The Examiner further finds
that Funk describes that if the customer did not yet exist in the database, then
the customer was not yet registered for the information service and would be
sent the customer field template. Ans. 4, 10 (citing col. 7, ll. 33-42). The
Examiner further finds that querying the database 200 is inherently included
when using information from the database 200 and therefore, a query to
determine if a customer is registered in the customer database 200 is also
inherently included in Funk’s system. Ans. 4.
Appellant argues that, contrary to the Examiner’s findings, Funk does
not teach or suggest generating customer solicitation e-mails but instead
only mentions sending information field templates to potential customers in
response to a request by an interested potential customer. App. Br. 12-14,
16; Reply Br. 3.

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We agree with the Appellant. Contrary to the Examiner’s findings,
Funk does not teach or suggest querying a customer database 200 to
determine if a customer is registered in the database 200 and sending a field
template to the customer if the customer is not yet registered for the
information service or if a customer record 201 does not exist in the
customer database 200. As argued by Appellant, Funk instead describes a
service processing system 104 that may send a customer field template
which is used to complete the fields of a customer record and subscribe to an
information service in response to a request from a potential customer. Col.
7, ll. 34-42. Additionally, there is insufficient factual support for finding
that a query to determine if a customer is registered in the customer database
is inherently included in Funk’s system when using information from the
database. While Funk describes that the customer database 200 is accessed
by a processor system 210 to read the contents from a customer record 201
and provide the contents to a temporary file (col. 7, ll. 60-63), the Examiner
has not demonstrated that, when using Funk’s database, an inquiry or
determination as to whether a customer record 201 is registered in the
customer database 200 is necessarily performed.
Rather, Funk describes, referring to Figure 5, a service processing
system 104 which creates and distributes an information e-mail by: 1)
starting with a first customer record 201 in the database 200 (step 500); 2)
writing the contents of the first customer record 201 to a temporary file (step
504); and 3) determining if there are more customer records 201 in the
customer database 200 (step 512). Col. 7, ll. 52-67; col. 8, ll. 47-49; Figs. 2,
5. If more customer records 201 remain in Funk’s customer database 200,

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the processor system 210 advances to the next customer record 201 (step
518) and writes the content of the next customer record 201 to the temporary
file (step 504). Col. 8, ll. 50-54. If there are no more customer records 201
in the customer database 200, the temporary file is closed (step 514) and
passed to an outbound email processor (step 516). Col. 8, ll. 49-50. In other
words, Funk’s processor system 210 reads the information from the
customer records 201 in the database 200 and automatically proceeds from
one customer record to the next customer record without inquiring as to
whether a particular customer or customer record 201 is registered or
contained in the customer database 200.
Also, even if Funk’s system probably determines whether a customer
record is registered in a customer database, such a possibility is inadequate
to demonstrate an inherent characteristic of Funk’s system. While the
teachings of Funk are insufficient to show that querying the database 200 to
determine if a customer is registered in the customer database 200 is
inherent in Funk’s system, that does not mean that we have made any
conclusion as to whether providing this function would have been obvious to
one with ordinary skill in the art. We leave it to the Examiner to evaluate
whether it would have been obvious to one with ordinary skill in the art, in
light if Funk’s teachings, to include querying the database 200 to determine
if a customer is registered in the customer database 200. Additionally, the
Examiner’s taking of Official Notice of using SMTP to transmit emails
(Ans. 6) does not cure the deficiencies of Funk.
For all these reasons, we do not sustain the rejections of claims 1, 3, 5,
7, 8, 13, 15-17 and 21 as obvious over Funk and Official Notice. As applied

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by the Examiner, Deo does not remedy the deficiencies of Funk. For this
reason, in addition to those addressing claims 1, 3, 5, 7, 8, 13, 15-17 and 21,
we do not sustain the rejection of dependent claim 18 as obvious over Funk,
Official Notice and Deo.
NEW GROUNDS OF REJECTION
We enter a new grounds of rejection pursuant to our authority under
37 C.F.R. § 41.50(b). Claims 17 and 18 are rejected under 35 U.S.C. § 101
as being directed to non-statutory subject matter. Independent claim 17 is
reproduced below (minor formatting added):
A program product executable on a computer for
performing a method of transmitting e-mail data, comprising
the steps of:
receiving the e-mail data including mail text information
and destination address information, which includes domain
information;
querying said domain database with said domain
information to determine if said domain information has been
registered with the domain database, whereby e-mail data is to
be grouped for transmission;
grouping the e-mail data by the domain information into
one or more sets, wherein a set comprises e-mail data addressed
to multiple different recipients having common domain
information;
generating transmission data for said one or more sets,
based on grouped e-mail data wherein said transmission data
comprises at least a set of e-mail data and domain information;
transmitting said transmission data to a computer system
that is designated by said domain information via the network;
and
collecting transmission information for use in charging
for transmission of e-mail data.

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In accordance with § 101, there are four categories of patent eligible
subject matter: processes, machines, manufactures and compositions of
matter. See Bilski v. Kappos, 130 S.Ct. 3218, 3225 (2010). Claim 17 is
directed to “a program product” or computer program per se and does not
recite a process, machine, manufacture or composition of matter. Claim 17
does no more than provide a description of how the program, if executed on
a computer (i.e., “executable on a computer”), is intended to function; claim
17 describes an abstract idea. See U.S. Patent Office, Interim Examination
Instructions for Evaluating Patent Eligible Subject Matter Under 35 U.S.C.
§ 101 at 1-2 (August 24, 2009), available at http://www.uspto.gov/web/
offices/pac/dapp/opla/2009-08-25_interim_101_instructions.pdf). Also, this
claim to “[a] program product,” when given its broadest reasonable
construction, is not limited to a storage or transmission media described on
page thirty-four of the disclosure.
Claim 18, which depends from claim 17, is also directed non-statutory
subject matter as it merely provides additional description of how the
program is intended to function.
Although we decline to reject every claim under our discretionary
authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does
not mean the remaining claims are patentable under 35 U.S.C. § 101.
Rather, we leave the patentability determination of these claims to the
Examiner. See MPEP § 1213.02.
DECISION
We REVERSE the rejection of claims 1, 3, 5, 7, 8, 13, 15-17 and 21
under 35 U.S.C. § 103(a) as unpatentable over Funk and Official Notice.

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We REVERSE the rejection of claim 18 under 35 U.S.C. § 103(a) as
unpatentable over Funk, Official Notice and Deo.
We enter a new grounds of rejection for claims 17 and 18 under
35 U.S.C. § 101.
TIME PERIOD
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . . .

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).
REVERSED
37 C.F.R. § 41.50(b)

ELD