Ex Parte Zito

Patent Trial and Appeal Board

Jul 15, 2016

12498127 (P.T.A.B. Jul. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/498, 127 0710612009
106095 7590 07119/2016
Baker Botts LLP
2001 Ross Avenue, 6th Floor
Dallas, TX 75201
FIRST NAMED INVENTOR
JackE. Zito
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
063170.9260 7833
EXAMINER
BOUT AH, ALINA A
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
07/19/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PTOmaill@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACK E. ZITO 1
Appeal2014-006922
Application 12/498, 127
Technology Center 2400
Before KRISTEN L. DROESCH, JOHNNY A. KUMAR, and
JOYCE CRAIG, Administrative Patent Judges.
DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of the Examiner's
Final Rejection of claims 1-20, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellant indicates the real party-in-interest is CA Inc. App. Br. 4.
Appeal2014-006922
Application 12/498, 127
The disclosed invention relates to a system and methods for archiving
and retrieving messages. Spec. 1, 6.
Representative claims 1 and 10, reproduced from the Claims Appendix of
the Appeal Brief, read as follows (disputed limitations in italics):
1. A method comprising:
establishing by a computer an audience element
comprising a first combination of addresses identified as
recipient addresses for one message;
creating a first relationship between the audience element
and the first combination of addresses;
determining whether a second combination of addresses
identified as recipient addresses for another message matches
the first combination of addresses;
creating a second relationship between the other
message and the audience element in response to determining
that the second combination of addresses matches the first
combination of addresses; and
utilizing the first relationship and the second relationship
to identify an association bet\~1een the other message and a
particular address from the first combination of addresses.
10. A method, comprising:
establishing by a computer an audience element
comprising a combination of addresses identified as recipient
addresses for one message;
creating an audience identifier associated with the
audience element;
determining whether the audience identifier matches an
audience identifier already stored in a memory;
if the audience identifier does not match the audience
identifier already stored in the memory:
storing the audience identifier in the memory; and
associating the audience element with the audience
identifier; and
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Appeal2014-006922
Application 12/498, 127
if the audience identifier is matches the audience
identifier already stored in the memory:
associating the audience element with the audience
identifier already stored in the memory.
REJECTIONS
Claims 1--4, 7-10, 12-17, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Sen (US 2008/0195953 Al; published Aug.
14, 2008) and Hammer et al. (US 2010/0017194 Al; published Jan. 21,
2010) ("Hammer").
Claims 5, 6, 11, and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sen, Hammer, and Albornoz et al. (US 2005/0165852 Al;
published July 28, 2005).
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
arguments in the Appeal Brief and the Reply Brief. We agree with
Appellant's arguments and highlight and address specific findings and
arguments for emphasis below.
Claims 1-9 and 16-20
The Examiner finds that "determining whether a second combination
of addresses identified as recipient addresses for another message matches
the first combination of addresses," as recited in claim 1 and recited
similarly in independent claims 16 and 20, is taught or suggested by Sen
based on Sen's following disclosures: (1) "[p]referably the second list [of
recipient addresses] is a subset of the first list;" (2) "each list of recipients
for a targeted message component is a subset of a list of recipients for a first
message component;" and (3) "emails are created each including the first
message component, or the first message component and the targeted
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Appeal2014-006922
Application 12/498, 127
message components that have at least one recipient in common." Sen
i-fi-f 19, 70, 89; see Final Act. 3 (citing Sen i-fi-f 19, 89); Ans. 17 ((citing Sen
i-fi-f 19, 70, 89). The Examiner explains the second list of addresses is a
subset of the first list, which matches the first combination of addresses. See
Final Act. 3. The Examiner further explains the subset list of recipients
included in the targeted message has at least one member in common with
the main message set of recipients, therefore, the recipient who is a common
member between the two messages matches the first combination of
addresses originally sent. See Ans. 17-18.
Appellant argues, and we agree, that Sen merely describes
determining whether each individual address listed in an address field
matches one of the individual addresses listed in another address field,
instead of determining whether a combination of addresses in an address
field matches a combination of addresses in another address field. App. Br.
16-17 (citing Sen i-fi-159-70). Appellant further argues, and we agree, that
Sen does not disclose or suggest "determining whether a second
combination of addresses identified as recipient addresses for another
message matches the first combination of addresses," as recited in
independent claim 1, and recited similarly in independent claims 16 and 20.
Id. at 16-17. We further observe that Sen's description of a second list of
recipient addresses that is a subset of a first list of recipient addresses cannot
teach or suggest the disputed claim limitations because additional recipient
addresses are included in Sen's first combination (i.e., first list) of addresses
that are not included in Sen's second combination (i.e., the subset list) of
addresses, thereby precluding a determination of whether the first
combination of addresses matches the second combination of addresses.
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Appeal2014-006922
Application 12/498, 127
For at least this reason, we are constrained to reverse the rejection of
claims 1, 16, and 20, and claims 2--4, 7-9, 17, and 19 dependent therefrom,
as unpatentable over Sen in view of Hammer. As applied by the Examiner,
the teachings of Albornoz do not remedy the deficiencies of Sen. See Final
Act. 13-14. Therefore, for the same reasons as claims 1--4, 7-9, 16, 17, 19,
and 20, we are constrained to reverse the rejection of claims 5, 6, and 18 as
unpatentable over Sen, Hammer, and Albornoz.
Claims 10-15
The Examiner finds that "determining whether the audience identifier
matches an audience identifier already stored in memory," as recited in
independent claim 10, is taught or suggested by Sen based on Sen's
following disclosures: (1) "[p ]referably the second list [of recipient
addresses] is a subset of the first list;" (2) "each list of recipients for a
targeted message component is a subset of a list of recipients for a first
message component;" and (3) "memory for storing message components,
recipient addresses and their associations." Sen i-fi-f 19, 34, 89; see Final Act.
6 (citing Sen i-fi-f 19, 89); see also Ans. 19 ((citing Sen i-fi-f 19, 34, 89). The
Examiner explains that "the second list of addresses is a subset of the first
list, which matches the first combination of addresses." Final Act. 6; Ans.
19. The Examiner further explains that "[ t ]he message components
associated with the recipient addresses and their associations are stored in
memory." Ans. 19.
Appellant argues, and we agree, that Sen merely describes
determining whether each individual address listed in an address field
matches one of the individual addresses listed in another address field,
instead of determining whether an audience identifier associated with a
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Appeal2014-006922
Application 12/498, 127
combination of addresses in an address field matches another audience
identifier associated with a combination of addresses in another address
field. See App. Br. 20-21 (citing Sen. i-fi-159-70). Appellant further argues,
and we agree, that Sen does not "disclose or suggest 'determining whether
the audience identifier matches an audience identifier already stored in a
memory,"' as recited in independent claim 10. App. Br. 21. In addition to
our observation discussed above addressing claims 1, 16, and 20, we further
observe that the Examiner does not direct us to where Sen teaches or
suggests determining whether the message components, recipient addresses
and their associations that are associated with one message matches the
message components, recipient addresses and their associations already
stored in a memory.
For at least this reason, we are constrained to reverse the rejection of
claim 10, and claims 12-15 dependent therefrom, as unpatentable over Sen
in view of Hammer. As applied by the Examiner, the teachings of Albornoz
do not remedy the deficiencies of Sen. See Final Act. 13-14. Therefore, for
the same reasons as claims 10 and 12-15, we are constrained to reverse the
rejection of claim 11 as unpatentable over Sen, Hammer, and Albornoz.
DECISION
We REVERSE the rejections of claims 1-20.
REVERSED
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