Ex Parte Chen et alDownload PDFPatent Trial and Appeal BoardApr 10, 201311874758 (P.T.A.B. Apr. 10, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YEN-FU CHEN, FABIAN F. MORGAN, KEITH R. WALKER, and SARAH V. WHITE EAGLE ____________ Appeal 2010-010344 Application 11/874,758 Technology Center 2400 ____________ 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.”). Appeal 2010-010344 Application 11/874,758 2 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. Appeal 2010-010344 Application 11/874,758 3 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 Appeal 2010-010344 Application 11/874,758 4 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). Appeal 2010-010344 Application 11/874,758 5 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. Appeal 2010-010344 Application 11/874,758 6 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. Appeal 2010-010344 Application 11/874,758 7 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., Appeal 2010-010344 Application 11/874,758 8 620 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 Appeal 2010-010344 Application 11/874,758 9 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. Appeal 2010-010344 Application 11/874,758 10 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. Appeal 2010-010344 Application 11/874,758 11 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 babc Copy with citationCopy as parenthetical citation