Ex Parte Chen et al

Patent Trial and Appeal Board

Apr 10, 2013

11874758 (P.T.A.B. Apr. 10, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YEN-FU CHEN, FABIAN F. MORGAN,
KEITH R. WALKER, and SARAH V. WHITE EAGLE
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Appeal 2010-010344
Application 11/874,758
Technology Center 2400
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Before JOHN A. JEFFERY, JOHN A. EVANS, and
DAVID C. McKONE, Administrative Patent Judges.

McKONE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20, which constitute all the claims pending in this application. See
App. Br. 3.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Throughout this opinion, we refer to the Appeal Brief filed February 22,
2010 (“App. Br.”), the Examiner’s Answer mailed May 10, 2010 (“Ans.”),
and the Reply Brief filed May 24, 2010 (“Reply Br.”).
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THE INVENTION
Appellants’ invention relates to detection and removal of duplicate
email addresses prior to sending an email. See Spec. ¶ 0001. Claim 1,
which is illustrative of the invention, reads as follows (footnote added):
1. A method for managing multiple email addresses,
the method comprising:
selecting, on a user computer system having an
email client interface, email addresses for an email to be
sent through a computer system in communication with a
mail server, wherein the email addresses comprise an
email distribution list;
querying, on the user computer system and before
sending the email, for duplicate contacts associated with
any of the email addresses in the email distribution list
for the email;
updating, on the user computer system and after
the querying, the email distribution list to the email
addresses left in a remaining email distribution list
produced through removal, if any, of the duplicate
contacts identified by the querying; and
the2 sending the email to contacts associated with
each of the email addresses in the remaining email
distribution list in communication with the mail server.

THE REJECTIONS
Claims 8-20 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. See Ans. 4.3

2 The word “the” preceding “sending” appears to be a typographical error,
which should be corrected should prosecution continue.
3 The Examiner had previously rejected claims 1-7 under § 101, but
withdrew that rejection. See Ans. 3.
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Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Fu (US 2006/0009249 A1; published Jan. 12, 2006) and Burke (US
2004/0133561 A1; published July 8, 2004). See Ans. 5-10.

ANALYSIS
REJECTION OF CLAIMS 8-20 UNDER 35 U.S.C. § 101
Claims 8-14
The Examiner rejects claims 8-14, concluding that they recite
“software per se,” fail to “positively recite any elements of hardware,” and,
thus, are non-statutory under § 101. Ans. 4. Claim 8 is directed to a
“system”; therefore, claim 8 recites patent-eligible subject matter if it is
directed to a statutory “machine” under § 101. “The Supreme Court has
defined the term ‘machine’ as ‘a concrete thing, consisting of parts, or of
certain devices and combination of devices.’” In re Nuijten, 500 F.3d 1346,
1355 (Fed. Cir. 2007) (quoting Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570
(1863)). However, “[a]bstract software code is an idea without physical
embodiment . . . .” Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449
(2007) (holding that Windows® software, in the abstract, does not qualify as
a “component” under 35 U.S.C. § 271(f)). See also MPEP § 2106 (I)
(noting that a computer program per se is ineligible under § 101 (citing
Gottschalk v. Benson, 409 U.S. 63, 72 (1972)).
The issue is whether claim 8 recites concrete structure, e.g., computer
hardware (and thus is statutory) or recites only software in the abstract (and
thus is non-statutory).
Appellants contend that claim 8 positively recites elements of
hardware. Specifically, Appellants argue that claim 8 recites “a user
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computer system having an email client interface” and “a computer system
in communication with a mail server.” App. Br. 9. The Examiner disagrees,
explaining that the system of claim 8 is recited as a plurality of modules, and
that the recited “computer systems” are not positively tied to any of these
modules and are not otherwise claimed as part of the system. See Ans. 11.
We agree with the Examiner. Claim 8 recites “email addresses
selected, on a user computer system . . . .” Here, the system component
claimed is “email addresses,” which is software. Although such software
may be “selected on” a user computer system, the user computer system
itself is not recited as part of the claimed system.4 Similarly, claim 8’s
recitation of “for an email to be sent through a computer system in
communication with a mail server” qualifies “email addresses” in that it
specifies the purpose of those email addresses. However, neither the “email
to be sent,” nor the “computer system” the email is to be “sent through,” nor
the “mail server” that the computer system is in “communication with” is
recited as a component of the claimed system. In other words, the invention
of claim 8 does not comprise either a user computer system or a computer
system in communication with a mail server. Likewise, neither the
“interrogation module,” nor the “update module,” nor the “completion
module” is recited as including any hardware even if each is “associated
with” something that arguably does include hardware. Thus, we are not
persuaded that the Examiner erred in concluding that claim 8 is non-
statutory.

4 We note that if we were to construe claim 8 to require selecting email
addresses on a user computer system, the result would be a claim that
impermissibly recites a method step and apparatus limitations. See IPXL
Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005).
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Accordingly, we sustain the rejection of claim 8 and claims 9-14 not
argued with particularity.

Claims 15-20
Regarding the § 101 rejection of claims 15-20, the Examiner
concludes that the “storage-type accessible medium” recited in claim 15,
under a broadest reasonable interpretation, could include “a signal (i.e.
carrier wave),” and thus claim 15 is directed to non-statutory subject matter.
Ans. 4. According to the Examiner, the Specification, at paragraphs 0038
and 0040, describes storage-type accessible media broadly enough to
encompass carrier waves. See id. The Federal Circuit has held that “[a]
transient electric or electromagnetic transmission does not fit within [the]
definition [of ‘articles’ of ‘manufacture’],” and thus “signals, standing alone,
are not ‘manufacture[s]’ under the meaning of that term in § 101.” Nuijten,
500 F.3d at 1356-57 (last brackets in original).
Paragraph 0038 of the Specification explains that “BIOS5 480 can be
stored in any computer readable medium, including . . . communications
media conveying signals encoding the instructions (e.g., signals from a
network)” (footnote added). According to paragraph 0040 (emphases
added):
The program(s) of the program product defines functions of the
embodiments (including the methods described herein) and can
be contained on a variety of data-bearing media. Illustrative
data-bearing media include, but are not limited to: (i)
information permanently stored on non-writable storage-type

5 “BIOS . . . incorporates the necessary processor executable code for a
variety of low-level system functions and system boot functions.” Spec. ¶
0038.
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accessible media (e.g., read-only memory devices within a
computer such as CD-ROM disks readable by a CD-ROM
drive); (ii) alterable information stored on writable storage-type
accessible media (e.g., floppy disks within a diskette drive or
hard-disk drive); and (iii) information conveyed to a computer
by a communications medium, such as through a computer or
telephone network, including wireless communications.
Appellants contend that claim 15 is directed to a “storage-type
accessible medium,” which is distinguishable from “computer readable
medium” and described more narrowly to exclude signals. See App. Br. 10.
Appellants argue that the Specification’s description of “computer readable
medium” in paragraph 0038 does not suggest a “storage-type accessible
medium” and that the Examiner’s citation to paragraph 0038 is erroneous.
See Reply Br. 6.6 As to Specification paragraph 0040, Appellants argue that
claim 15 recites “storage-type accessible medium” rather than “data-bearing
media.” App. Br. 10. Appellants further argue that the description of
“storage-type accessible medium” should not be equated with “computer
readable medium” of paragraph 0038. See Reply Br. 6-7.
The Patent Office has advised that
The broadest reasonable interpretation of a claim drawn to a
computer readable medium (also called machine readable
medium and other such variations) typically covers forms of
non-transitory tangible media and transitory propagating signals
per se in view of the ordinary and customary meaning of
computer readable media, particularly when the specification is
silent.

6 Appellants also argue that claim differentiation supports this argument.
See Reply Br. 6. However, Appellants do not further identify which claims
they would differentiate from claim 15 or further explain how the doctrine
would apply. Thus, we find the argument unpersuasive.
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David J. Kappos, Subject Matter Eligibility of Computer Readable Media,
1351 OFFICIAL GAZ. PAT. OFF. 212 (emphasis added). See also MPEP
§ 2106 (I). Appellants have not persuasively argued that departure from this
approach is appropriate here.
To be sure, Specification paragraph 0040 does describe non-transitory
examples of “storage-type accessible media,” including devices such as
“CD-ROM disks” and “floppy disks.” However, paragraph 0040 makes
clear that its description is “not limited to” these “illustrative” examples.
Thus, Appellants have not shown that the Specification defines “storage-
type accessible media” to exclude transitory signals and waves. Moreover,
the Specification, at paragraph 0038, supports the Examiner’s broad
construction. Regardless of whether paragraph 0038 describes “storage-type
accessible media” directly, it does provide a description of what it means to
“store” data. Specifically, data can be “stored in any computer readable
medium, including . . . signals encoding the instructions (e.g., signals from a
network).” Spec. ¶ 0038. Appellants have not adequately explained why
such a broad definition of “stored,” in the context of the “computer readable
medium” of paragraph 0038, should be narrowed for the term “storage-type
accessible media” appearing shortly thereafter in the Specification. Thus,
we conclude that the Examiner’s broad construction of “storage-type
accessible media” is reasonable.
Appellants’ reliance on dicta in Nuijten is inapposite, as the claim in
question was not before the court. See Nuijten, 500 F.3d at 1351, 1356 n.6.
Here, as explained above, the Specification describes storage-type accessible
media broadly enough to encompass signals per se. Likewise, reliance on
the District Court decision in CyberSource Corp. v. Retail Decisions, Inc.,
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620 F.Supp.2d 1068 (N.D. Cal. 2009), is misplaced. While the court held
that “appending ‘[a] computer readable media including program
instructions . . .’ to an otherwise non-statutory process claim is insufficient
to make it statutory,” it never held the converse, namely that statutory
process steps can render statutory an otherwise non-statutory article of
manufacture. Id. at 1080. Nor did the Federal Circuit so hold on appeal.
See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1376 (Fed.
Cir. 2011). In sum, Appellants have not persuaded us of error in the
Examiner’s conclusion that claim 15 recites non-statutory subject matter.
Accordingly, we sustain the rejection of claim 15 and claims 16-20 not
separately argued.

REJECTION OF CLAIMS 1-20 UNDER 35 U.S.C. § 103(a)
The Examiner finds that Fu teaches every limitation of claim 1 except
for “querying . . . for duplicate contacts associated with any of the email
addresses in the email distribution list for the email,” recited in claim 1
(emphasis added). See Ans. 5-6. The Examiner finds that Burke teaches
duplicate contacts associated with email addresses, and that a person of
ordinary skill in the art would have incorporated Burke’s teaching into Fu’s
method to “allow an individual to have multiple email accounts.” Ans. 6-7.
Fu teaches a technique for creating a communication group of
contacts in an electronic address book. See Fu, Abstract. Entries or contacts
in an address book include contact information, see Fu, ¶ 0036, such that if a
user sends an email to a group of contacts, each member of the group
receives the email, see Fu, ¶ 0088. Fu also teaches that duplicate contacts
can be removed from a contact group. See Fu, ¶ 0075. Burke teaches a
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technique of identifying alternate contact information (e.g., email addresses)
by querying a database using a known email address, which is in turn
associated with other contact information, and using that other contact
information to identify alternative email addresses. See Burke, Abstract;
¶ 0101; Fig. 7. The Examiner finds that Burke (e.g., Figure 7), shows
duplicate contacts (e.g., records with identifier 9230) associated with more
than one email address. See Ans. 13.
Appellants contend that neither Fu nor Burke teaches querying an
email distribution list; rather, Appellants argue, they both teach querying an
“address book.” App. Br. 13; accord Reply Br. 9. Claim 1, however, does
not recite querying an email distribution list. Instead, it recites “querying . . .
for duplicate contacts associated with any of the email addresses in the email
distribution list.” Claim 1 does not specify what is queried. It merely
specifies the subject of the query, namely duplicate contacts associated with
email addresses. The claim language, then, is broad enough to encompass
querying an address book for duplicate contacts associated with the email
addresses in an email distribution list. Thus, Appellants’ argument is not
commensurate in scope with the claim language.
Appellants also distinguish Fu by arguing that “Appellants remove
unique email addresses destined for the same user in the ‘email distribution
list,’ which is the ‘to’ and/or ‘cc’ email addresses in an email to be sent.”
App. Br. 13; accord Reply Br. 9. Appellants do not adequately explain what
is lacking in Fu should we accept this characterization of claim 1. However,
this argument, too, is not commensurate in scope with the claim language,
which recites “removal . . . of the duplicate contacts identified by the
querying.” Thus, we are not persuaded by Appellants’ argument.
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Appellants also contend that Burke teaches away from claim 1’s
“querying” and “updating” limitations, arguing that, in contrast to Burke,
claim 1 does not claim “a cumbersome unique person identifier associated
with multiple addresses.” App. Br. 13. According to Appellants, because of
this teaching away, and Burke’s failure to teach querying an email
distribution list, the Examiner’s proposed combination “possesses an
expectation of failure.”
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). Aside from statements that Burke teaches a “unique person
identifier” and an unsupported assertion that this technique is “cumbersome”
(App. Br. 13; Reply Br. 9), Appellants have not explained why Burke would
have discouraged a skilled artisan from recognizing that the duplicate
contacts Fu teaches deleting could be associated with email addresses in the
email distribution list. Thus, we are not persuaded that the Examiner erred
in concluding that claim 1 is obvious.
Accordingly, we sustain the rejection of claim 1 and claims 2-20 not
argued separately with particularity.

ORDER
The decision of the Examiner to reject claims 8-20 under § 101 is
affirmed. The decision of the Examiner to reject claims 1-20 under § 103(a)
is affirmed.
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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