Ex Parte Barnes et al

Patent Trial and Appeal Board

Nov 8, 2012

11272515 (P.T.A.B. Nov. 8, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS H. BARNES, DAWN M. CANELONES,
and CAROL S. WALTON
____________

Appeal 2010-005472
Application 11/272,515
Technology Center 2400
____________

Before BRADLEY W. BAUMEISTER, JEFFREY S. SMITH, and BRUCE
R. WINSOR, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-005472
Application 11/272,515

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-20, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Representative Claim
1. A process for indicating a value of an email message, the process
comprising:

responsive to a first message recipient opening the email message,
assigning a first message value to the email message by the first message
recipient;

storing the first message value in a message database associated with
the email message;

responsive to each of a plurality of message recipients assigning an
additional message value to the email message to form a plurality of
message values stored in the message database, calculating, by a processor
of a computer connected to the Internet, a composite message value
associated with the email message based on the plurality of message values;
and

inserting the composite message value into the email message,
wherein the composite message value indicates the value of the email
message.

Prior Art
Nielsen US 6,453,327 B1 Sep. 17, 2002
Weatherby US 2004/0054741 A1 Mar. 18, 2004
Rounthwaite US 2004/0177110 A1 Sep. 9, 2004
Adkins US 2004/0243844 A1 Dec. 2, 2004
Daniell US 2005/0097174 A1 May 5, 2005
Appeal 2010-005472
Application 11/272,515

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Prakash US 2005/0114452 A1 May 26, 2005
Sood US 2006/0010217 A1 Jan. 12, 2006
(filed June 3, 2005)

Examiner’s Rejections
Claims 1, 7, and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Prakash and Daniell.
Claims 2-4, 8-10, and 14-16 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Prakash, Daniell, and Sood.
Claims 5, 11, and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Prakash, Daniell, and Nielsen.
Claims 6, 12, and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Prakash, Daniell, Rounthwaite, and Adkins.
Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Prakash, Daniell, Sood, and Weatherby.

ANALYSIS
Section 103 rejection of claims 1, 7, and 13
Appellants contend that the “values” recited in claim 1 are numerical
values. App. Br. 13. To support this contention, Appellants cite a dictionary
definition showing that the word “value” may be a numerical quantity.
Reply Br. 5. However, the fact that a value may be a numerical value does
not establish that the word “value” recited in claim 1 is limited to a
numerical value. Claim 1 does not recite a numerical value, and we find no
basis for reading a numerical value into claim 1.
Appellants contend that the Examiner’s construction of message value
as a word such as “spam” does not allow a calculation of a composite
Appeal 2010-005472
Application 11/272,515

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message value. App. Br. 14-15, 17. The Examiner finds that having
message recipients assign a message value of “spam” or “not spam” to a
message allows for a calculation of a composite message value by counting
the number of message recipients who assigned the message value “spam” to
the message. Ans. 25. Appellants respond that counting the number of
recipients who respond with “spam” is not the same as calculating a
composite message value, because the message value must be different from
the composite message value. Reply Br. 5-6. We find that the composite
message value of Prakash, which is based on a number of reports received
from a community of users, is different from the individual message value
sent from each user. See ¶ [0010]. We also find that counting the number of
message recipients who respond with “spam” teaches calculating a
composite message value within the meaning of claim 1.
Appellants contend that the Examiner’s interpretation of the terms
value, message value, and composite value are inconsistent with Appellants’
Specification. To support this contention, Appellants quote paragraphs 17
and 18 of the Specification, and allege that a person skilled in the art would
read “value” to mean a number in a range indicating a relative degree of
importance. App. Br. 15-16; Reply Br. 2-3.
During prosecution before the USPTO, claims are to be given their
broadest reasonable interpretation, and the scope of a claim cannot be
narrowed by reading disclosed limitations into the claim. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). Our reviewing court has repeatedly
warned against confining the claims to specific embodiments described in
the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir.
2005) (en banc). Though understanding the claim language may be aided by
Appeal 2010-005472
Application 11/272,515

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explanations contained in the written description, it is important not to
import into a claim limitations that are not part of the claim. For example, a
particular embodiment appearing in the written description may not be read
into a claim when the claim language is broader than the embodiment.
Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004).
Paragraphs 17 and 18 of Appellants’ Specification show “possible
values in one embodiment of the invention,” and “one embodiment [of] the
composite value.” We find that the embodiments disclosed in paragraphs 17
and 18 of Appellants’ Specification do not exclude the values of spam and
not spam as taught by Prakash. “Absent an express definition in their
specification, the fact that appellants can point to definitions or usages that
conform to their interpretation does not make the PTO’s definition
unreasonable when the PTO can point to other sources that support its
interpretation.” Morris at 1056.
Appellants contend that interpreting the message value of claim 1 to
be spam or not spam renders the additional values of claim 19 superfluous.
Reply Br. 6-7. Appellants also contend that the Examiner’s construction of
message value, composite message value, and calculating violates the
doctrine of claim differentiation. Reply Br. 7-8. Appellants present these
new arguments for the first time in the Reply Brief. Appellants do not
explain what good cause there might be to consider the new arguments.
Appellants’ new arguments are thus untimely and accordingly, have not
been considered. See Ex parte Borden, 93 USPQ2d 1473 (BPAI 2010)
(informative).
Appeal 2010-005472
Application 11/272,515

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Even if we were to consider these new arguments, we find these
arguments unpersuasive. The Examiner finds that the “message value …
corresponds to … rating value statements” recited in claim 19 is taught by
the combination of Prakash, Daniell, Sood, and Weatherby. Ans. 20-22.
Appellants have not addressed the Examiner’s finding. Further, Appellants
have not provided a definition of “calculating” recited in claim 1 or
“statistically analyzing” recited in claim 6 that excludes counting spam
responses as taught by the combination of Prakash and Daniell.
We sustain the rejection of claim 1 under 35 U.S.C. § 103. Appellants
have not presented arguments for patentability of claims 7 and 13 (see App.
Br. 18), which fall with claim 1.

Section 103 rejection of claims 2-4, 8-10, and 14-16
Appellants have not presented arguments for separate patentability of
claims 2-4, 8-10, and 14-16, but instead rely on those presented for claim 1,
which we find unpersuasive. See App. Br. 18.

Section 103 rejection of claims 5, 11, and 17
Appellants have not presented arguments for separate patentability of
claims 5, 11, and 17, but instead rely on those presented for claim 1, which
we find unpersuasive. See App. Br. 18-19.

Section 103 rejection of claims 6, 12, and 18
Appellants have not presented arguments for separate patentability of
claims 6, 12, and 18, but instead rely on those presented for claim 1, which
we find unpersuasive. See App. Br. 19.
Appeal 2010-005472
Application 11/272,515

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Section 103 rejection of claims 19 and 20
Appellants have not presented arguments for separate patentability of
claims 19 and 20, but instead rely on those presented for claim 1, which we
find unpersuasive. See App. Br. 20.

DECISION
The rejection of claims 1, 7, and 13 under 35 U.S.C. § 103(a) as being
unpatentable over Prakash and Daniell is affirmed.
The rejection of claims 2-4, 8-10, and 14-16 under 35 U.S.C. § 103(a)
as being unpatentable over Prakash, Daniell, and Sood is affirmed.
The rejection of claims 5, 11, and 17 under 35 U.S.C. § 103(a) as
being unpatentable over Prakash, Daniell, and Nielsen is affirmed.
The rejection of claims 6, 12, and 18 under 35 U.S.C. § 103(a) as
being unpatentable over Prakash, Daniell, Rounthwaite, and Adkins is
affirmed.
The rejection of claims 19 and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Prakash, Daniell, Sood, and Weatherby is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED
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