Ex Parte Elfner

Patent Trial and Appeal Board

Sep 21, 2012

10791566 (P.T.A.B. Sep. 21, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/791,566 03/02/2004 Axel E. Elfner END920030098US1 3099
30400 7590 09/24/2012
HESLIN ROTHENBERG FARLEY & MESITI P.C.
5 COLUMBIA CIRCLE
ALBANY, NY 12203
EXAMINER
POLLACK, MELVIN H
ART UNIT PAPER NUMBER
2445
MAIL DATE DELIVERY MODE
09/24/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AXEL E. ELFNER
____________

Appeal 2010-006459
Application 10/791,566
Technology Center 2400
____________

Before STEPHEN C. SIU, MICHAEL R. ZECHER, and
JUSTIN T. ARBES, Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 from the Examiner’s rejection
of claims 1-3 and 5-12. We have jurisdiction under 35 U.S.C. § 6(b).

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STATEMENT OF THE CASE

The disclosed invention relates generally to sending mail from a
restricted communications network (Spec. 1). Claim 1 is representative and
reads as follows:
1. A method of facilitating the sending of mail from a restricted
communications network, said method comprising:
automatically checking periodically by a communications unit
external to a restricted communications network whether mail of the
restricted communications network is to be sent; and
retrieving by the communications unit the mail from the
restricted communications network, in response to there being mail to
be sent;
wherein the automatically checking comprises sending a
request from a program of the communications unit to a program of
the restricted communications network inquiring as to whether there is
mail to be sent, and wherein the program of the restricted
communications network checks a data structure to determine whether
there is mail in the data structure to be sent.
(App. Br. 23, Claims Appendix.)

Claims 1-3, 5, 6, 8, 10, and 11 stand rejected under 35 U.S.C. 103(a)
as unpatentable over Afergan (U.S. Patent Application Publication No.
2004/0010601 A1; Jan. 15, 2004) and Yoshida (US Patent Application
Publication No. 2004/0049546 A1; Mar. 11, 2004).
Claim 7 stands rejected under 35 U.S.C. 103(a) as unpatentable over
Afergan, Yoshida, and Banister (U.S. Patent No. 7,219,131 B2; May 15,
2007).
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Claim 9 stands rejected under 35 U.S.C. 103(a) as unpatentable over
Afergan, Yoshida, and Mizuno (U.S. Patent Application Publication No.
2006/0031927 A1; Feb. 9, 2006).
Claim 12 stands rejected under 35 U.S.C. 103(a) as unpatentable over
Afergan, Yoshida, and Clarke (U.S. Patent No. 7,043,240 B2; May 9, 2006).
Issue
Did the Examiner err in rejecting claims 1-3 and 5-12?
Principles of Law
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co. of Kansas City,
383 U.S. 1, 17-18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
Analysis
Appellant argues that the Afergan reference is not analogous to the
claimed invention because Afergan is both “not within the field of
Appellant’s endeavor” (App. Br. 8) and “not reasonably pertinent to the
problem the inventor sought to solve” (Id. at 9). Specifically, Appellant
argues the following:
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1) Afergan is “not related to sending mail from a restricted
communications network” (App. Br. 8),
2) “There is no indication in Afergan that the user requests come
from a restricted network” (Id.), and
3) Afergan is not concerned with “getting email out of a restricted
network” (Id. at 9).
We disagree with Appellant for at least the reasons set forth by the
Examiner (Ans. 7-14). For example, as the Examiner points out, “the field
of endeavor [of the claimed invention] is sending content (data) from a
restricted network” (Ans. 11, 12), which appears to be the same field of
endeavor as Afergan that discloses, for example, a restricted network (e.g., a
website that has been “insulated from flash crowds” – ¶ [0029]) and sending
data from the restricted network (e.g., “content delivery to end users” –
¶ [0025]) or, as the Examiner states, “that ‘the inventive ‘shielding’
technique protects a site’s Web servers” (Ans. 12).
Appellant also argues that the Yoshida reference is not analogous to
the claimed invention because Yoshida is “not within the field of
Appellant’s endeavor” (App. Br. 9) and “not reasonably pertinent to the
problem of restricted communications networks” (App. Br. 10) because,
according to Appellant, “Yoshida is concerned with receiving email, not
sending it or sending it out of a restricted network” (App. Br. 10). Similar to
our analysis above, we disagree with Appellant for at least the reasons set
forth by the Examiner (see, e.g., Ans. 12, 14). In addition, even assuming
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that the field of endeavor of the claimed invention requires sending mail as
Appellant appears to argue, we note that Yoshida discloses “bulk mail data .
. . is transferred . . . for delivery to a destination mail address” (see, e.g., ¶
[0036]), which appears to be the same as a system in which mail is sent (i.e.,
within Appellant’s alleged field of endeavor).
Appellant also argues that “one of ordinary skill in the art would not
be motivated to combine Yoshida with Afergan” because “Afergan focuses
on shielding the content server from incoming requests” while “Yoshida
focuses on disseminating outgoing mail from a central mail server” (App.
Br. 11). We disagree with Appellant for at least the reasons set forth by the
Examiner (Ans. 16-17). In addition, while Afergan discloses “incoming
requests” for data, as Appellant argues, Afergan also discloses “content . . .
is delivered quickly and without fail” (see, e.g., ¶ [0002]). If content is
delivered to users in the Afergan reference, then data content would be
disseminated out to users. Thus, contrary to Appellant’s assertion, Afergan
does disclose “outgoing” data (in addition to “incoming requests”).
Appellant argues that Afergan fails to disclose or suggest the
automatically checking step recited in claim 1 (see, e.g., App. Br. 11-12).
Claim 1 recites automatically checking periodically whether mail is to be
sent. We disagree with Appellant for at least the reasons set forth by the
Examiner (Ans. 18-19). In addition, we note that Yoshida also supports
automatically checking for mail to be sent (e.g., “a download request from
the client-side mail server 14 for delivery to a destination mail address” –
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¶ [0036]), which Appellant does not adequately demonstrate to be different
from the claimed feature of automatically checking whether mail is to be
sent.
Appellant argues that Afergan fails to disclose or suggest the claim
term “restricted” (see, e.g., App. Br. 12). Claim 1 recites a “restricted
communications network.” We disagree with Appellant for at least the
reasons set forth by the Examiner (Ans. 19-20). In addition, Afergan
discloses, for example, a website that has been “insulated from flash
crowds” (e.g., ¶ [0029]), which Appellant does not adequately demonstrate
to be different from a “restricted” network since in both cases, access to the
network is limited (or “restricted”).
Appellant argues that Afergan fails to disclose or suggest “the aspect
of mail within the restricted network needing to be sent” or “the retrieving
aspect of claim 1” (App. Br. 13). Appellant presumably refers to the
recitation of claim 1 of “retrieving . . . mail from the . . . network.” We
disagree with Appellant for at least the reasons set forth by the Examiner
(Ans. 20-21). In addition, as described above, Afergan discloses a
“restricted network” while Yoshida discloses sending mail from one network
to another network (i.e., mail is “retrieved”). Appellant does not provide a
sufficient showing of any differences between the combination of Afergan
and Yoshida and retrieving mail from a restricted network as recited in claim
1.
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Appellant argues that “Yoshida also does not address mail coming out
of a network with outgoing restrictions; any restrictions are on the receiving
side” (App. Br. 14). We disagree with Appellant for at least the reasons set
forth by the Examiner (Ans. 21). For example, claim 1 recites “retrieving . .
. the mail from the . . . communications network.” As the Examiner
indicates, Appellant has not adequately demonstrated how this differs from
Yoshida’s disclosure of, for example, a “center-side mail server 30”
(¶ [0027], Figs. 1-2) that stores “electronic mail data” as “bulk mail data
100” (¶ [0033]) that is “for delivery to a destination mail address within the
client domain (¶ [0036]).
Appellant argues that the combination of Afergan and Yoshida fails to
disclose or suggest “storing mail in a data structure, or checking a data
structure to determine whether there is mail (or any other content) in the data
structure to be sent out of the communications network” (App. Br. 14).
However, as the Examiner indicates, Yoshida, at least, discloses “adding the
received electronic mail data to the end of the bulk mail data” (¶ [0033]) in a
“center-side mail server 30” (¶ [0027], Figs. 1-2), which Appellant has not
adequately demonstrated to differ from the disputed claim features.
Regarding claim 2, Appellant argues that Afergan fails to disclose an
“available port” (App. Br. 15). We disagree with Appellant for at least the
reasons set forth by the Examiner (Ans. 22). For example, Appellant has not
sufficiently demonstrated that all ports utilized in Afergan would not be
“available” since data is, in fact, provided in Afergan. One of ordinary skill
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in the art would have understood that in order for data to be provided (as in
Afergan), a port over which the data is provided would have been
“available” to provide the data. If not, data would not be provided as
disclosed.

Regarding claim 5, Appellant argues that Afergan fails to disclose or
suggest “sending mail out of an outgoing restricted communications
network” (App. Br. 15). We disagree with Appellant for at least the reasons
set forth by the Examiner (Ans. 22) and for reasons set forth above regarding
claim 1.
Regarding claim 6, Appellant argues that Afergan fails to disclose or
suggest a “data structure” (App. Br. 16). We disagree with Appellant for at
least the reasons set forth by the Examiner (Ans. 22-23). In addition, we
note that Yoshida also discloses a “data structure” (e.g., “bulk mailed data
100” in which electronic mail is stored – ¶ [0033], Fig. 3).
Regarding claim 8, Appellant argues that Afergan fails to disclose or
suggest “forwarding content” (App. Br. 16). Claim 8 recites forwarding
email from a unit to a receiver. We disagree with Appellant for at least the
reasons set forth by the Examiner (Ans. 23). In addition, we note that
Yoshida also discloses “delivery” of content to an address (see, e.g.,
¶ [0036]).
Regarding claim 10, Appellant argues that Afergan fails to disclose or
suggest “content, let alone mail” (App. Br. 17). Claim 10 recites
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“forwarding the mail.” We disagree with Appellant for at least the reasons
set forth by the Examiner (Ans. 23). In addition, we note that Yoshida
further discloses “delivery” of content (i.e., mail) to an address (see, e.g.,
¶ [0036]). Hence, Yoshida discloses both “content” and “mail” as well.
Regarding claim 11, Appellant argues that Afergan fails to disclose or
suggest “parsing of the content, let alone parsing mail” (App. Br. 18). Claim
11 recites “parsing the mail.” We disagree with Appellant for at least the
reasons set forth by the Examiner (Ans. 23).
Regarding claim 7, Appellant argues that Banister is “not within
Appellant’s field of endeavor” because “Banister is not concerned with
sending email out of a restricted network” (App. Br. 19). Appellant also
argues that Banister is not “reasonably pertinent to the problem of restricted
communications networks” because Banister, according to Appellant, “is
concerned with the duplication of files from outside the network to inside so
that users can access the same” (App. Br. 19). We disagree with Appellant
for at least the reasons set forth by the Examiner (Ans. 15). In addition, as
indicated by the Examiner and as described above, claim 7 recites a system
of retrieving emails. Banister discloses a system for electronic message
delivery (see title and abstract). Appellant has not sufficiently demonstrated
how the general “field of endeavor” of an electronic message delivery
system (Banister) differs from the general field of endeavor of an electronic
message delivery system of claim 1 (and claim 7) as both systems/methods
pertain to delivery or retrieval of data (e.g., mail).
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Appellant also argues that Banister fails to disclose or suggest “that
the program addressing queues puts mail into a data structure” (App. Br. 20).
We disagree with Appellant for at least the reasons set forth by the Examiner
(Ans. 23). In addition, as discussed above, we note that Yoshida also
discloses such a “data structure” (e.g., “bulk mailed data 100” in which
electronic mail is stored – ¶ [0033], Fig. 3).
Regarding claim 9, Appellant argues that Mizuno fails to disclose or
suggest “receivers being an intended recipient of email” because, according
to Appellant, “Mizuno is not concerned with email, but data” (App. Br. 21).
Appellant also argues that “the network [of Mizuno] is not externally
restricted, but internally restricted” (App. Br. 21). We disagree with
Appellant for at least the reasons set forth by the Examiner (Ans. 24). In
addition, as discussed above, Yoshida discloses email (e.g., “delivery” of
content (i.e., mail) to an address (see, e.g., ¶ [0036])) and Afergan discloses
a restricted network, at least (e.g., a website that has been “insulated from
flash crowds” – ¶ [0029]).
Regarding claim 12, Appellant argues that “Clarke is not within the
field of Applicant’s endeavor” because “Clarke is not concerned with
sending email out of a restricted network” (App. Br. 21), and that “Clarke is
also not reasonably pertinent to the problem of restricted communications
networks” (App. Br. 21) because Clarke “focuses on mobile alerts for email
received” (App. Br. 22). We disagree with Appellant for at least the reasons
set forth by the Examiner (Ans. 15) and for reasons discussed above. For
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example, claim 1 and claim 12 recite retrieving data from a communications
network while Clarke also discloses “communications systems” (e.g., col. 1,
ll. 58-59) “for communicating with a plurality of . . . device[s]” (e.g., col. 2,
ll. 47-49). As Clarke discloses communications between networks and
devices, we agree with the Examiner that, contrary to Appellant’s assertion,
Clarke is within the field of endeavor of or at least pertinent to the problem
of the claimed invention (e.g., a communications network).
Conclusion of Law
The Examiner did not err in rejecting claims 1-3 and 5-12 under 35
U.S.C. § 103(a).

SUMMARY
We affirm the Examiner’s rejections of claim 1-3 and 5-12.
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.
§ 1.136(a)(1)(iv).

AFFIRMED

rvb