Ex Parte Farrell et al

Patent Trial and Appeal Board

Apr 15, 2016

12546318 (P.T.A.B. Apr. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/546,318 08/24/2009 Colm Farrell
70303 7590 04/19/2016
IBM RALEIGH IPLAW (DL)
C/O DELIZIO LAW, PLLC
15201 MASON ROAD
SUITE 1000-312
CYPRESS, TX 77433
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.
RSW920080337US 1 3161
EXAMINER
TANG, KAREN C
ART UNIT PAPER NUMBER
2447
NOTIFICATION DATE DELIVERY MODE
04/19/2016 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):
USPTO@DELIZIOLA W.COM
USPT02@DELIZIOLA W.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte COLM FARRELL, LIAM HARPUR,
PATRICK JOSEPH O'SULLIVAN, FRED RAGUILLAT, and
HEMA SRIKANTH1
Appeal2014-006525
Application 12/546,318
Technology Center 2400
Before ERIC S. FRAHM, CARLL. SILVERMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b ).
We affirm-in-part.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 1.
Appeal2014-006525
Application 12/546,318
STATEMENT OF THE CASE
Introduction
Appellants' invention is directed to the "retrospective changing of
previously sent [(email)] messages." Spec. i-f 1. In a disclosed embodiment,
a user can request to update a previously sent message. Spec. i-f 3. The
previously sent message can be updated based on the change request. Spec.
i-f 3. Further, a "message update unit can also determine if the sent message
has been forwarded, and forward the update notification [ (change request)]
to other recipients." Spec. i-f 12.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below with the disputed limitation emphasized in italics:
1. A method comprising:
receiving a request to update a previously sent message;
determining changes to be applied to the previously sent
message based on the request;
updating the previously sent message based on the changes;
notifying a recipient that the previously sent message has been
updated;
determining that the previously sent message has been
forwarded to a second recipient; and
forwarding the request to the second recipient.
The Examiner's Rejections
1. Claims 8-14 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 2.2
2 In the Non-Final Office Action, mailed June 28, 2013, the Examiner
rejected claims 8-14 under 35 U.S.C. § 101 as being directed to non-
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Application 12/546,318
2. Claims 1-3, 5-10, 12-16, and 18-20 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Bhakta et al. (US 2007 /0106730
Al; May 10, 2007) ("Bhakta"); Quine et al. (US 2002/0023138 Al; Feb. 21,
2002) ("Quine"); and Nielsen (US 5,870,548; Feb. 9, 1999). Final Act. 3-5.
3. Claims 4, 11, and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bhakta, Quine, Nielsen, and Carleton et al. (US
5,966,351; Oct. 12, 1999) ("Carleton"). Final Act. 5---6.
Issues on Appeal
1. Did the Examiner err in determining claims 8-14 are directed to
non-statutory subject matter?
2. Did the Examiner err in finding the combination of Bhakta,
Quine, and Nielsen teaches or suggests "determining that the previously sent
message has been forwarded to a second recipient," as recited in claim 1?
ANALYSIS3
Re} ection under 3 5 U.S. C. § 101
Appellants contend the Examiner erred in rejecting claims 8-14 under
35 U.S.C. § 101 as being directed to non-statutory subject matter because the
claimed "computer usable storage medium" is not "entirely software" and
"necessarily includes a hardware component in order to store electronic
statutory subject matter. Non-Final Act. 2. In the Final Office Action, the
Examiner maintains the rejection. Final Act. 2.
3 Throughout this Decision, we refer to the Appeal Brief filed January 28,
2014 ("App. Br."); the Reply Brief filed May 13, 2014 ("Reply Br."); the
Examiner's Answer mailed on March 28, 2014 ("Ans."); and the Final
Office Action mailed on October 9, 2013 ("Final Act."), from which this
Appeal is taken.
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Application 12/546,318
instructions." App. Br. 8-9; Reply Br. 1-2. Appellants further contend the
Specification "explicitly defines a computer readable signal medium to
encompass a propagating signal, and that a computer readable signal
medium is exclusive of a computer readable storage medium." App. Br. 9.
Contrary to Appellants' assertions, the Specification does not provide
a limiting definition (or any definition) for a "computer readable signal
medium." Further, as the Examiner explains, the Specification does not
provide a limiting definition of a computer usable storage medium. Ans. 8.
Rather, paragraph 41 of the Specification uses non-limiting, permissive
language and sets forth open-ended examples of a machine-readable
medium. See Spec. i-f 41. Accordingly, Appellants' Specification does not
limit the claimed "computer usable storage medium" to a non-transitory
embodiment. Absent such express limitation on the claimed "computer
usable storage medium," as the Board held in Mewherter, the relevant body
of extrinsic evidence compels a finding that "the ordinary and customary
meaning of 'computer readable storage medium' [ (or "computer usable
storage medium")] to a person of ordinary skill in the art [is] broad enough
to encompass both non-transitory and transitory media." Ex parte
Mewherter, 107 USPQ2d 1857, 1860 (PTAB 2013) (precedential).
Accordingly, we sustain the Examiner's rejection of claims 8-14
under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Rejections under 35 U.S.C. § 103
Appellants assert the combination of Bhakta, Quine, and Nielsen fails
to teach or suggest "determining that the previously sent message has been
forwarded to a second recipient," as recited in claim 1. App. Br. 12-14. In
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Application 12/546,318
particular, Appellants contend the Examiner stated Bhakta fails to teach the
disputed limitation and relied on Quine. App. Br. 12 (see Final Act. 3--4).
Appellants argue that although Quine does teach that a current message may
be forwarded, Quine is directed to "determin[ing] that a current message is
addressed to a disfavored address and then forwards the message to a
preferred forwarding e-mail address associated with the disfavored address."
App. Br. 12-13. Appellants further argue the message in Quine is not a
previously sent message. App. Br. 13. Specifically, Appellants argue
paragraph 23 of Quine merely teaches that a message can be configured to
require permission to forward and this disclosure, as well as the other cited
portions of Quine, does not teach determining that a previously sent message
has been forwarded. App. Br. 13.
In response, the Examiner finds Bhakta broadly defines an email
recipient as anyone whose email client received the transferred email.
Ans. 9 (citing Bhakta i-f 7). Further, the Examiner finds Bhakta teaches users
are able to forward an email to recipients specified by the user. Ans. 9.
Additionally, the Examiner finds Bhakta teaches a system that sends
correction information for a previously sent email. Ans. 9. The Examiner
finds, therefore, "[t]he system is capable of detecting whether the users have
forwarded emails to recipients." Ans. 9-10. Although the Examiner finds
Bhakta suggests the disputed limitation, the Examiner notes Bhakta does not
explicitly use the word "forwarded" and, therefore, relies on Quine to teach
that the second recipient receives a forwarded request to update. Ans. 10
(citing Quine i-fi-145, 53-54, 95, and 97). The Examiner determines Quine
"determine[ s] that the forwarded message was forwarded to a second
recipient." Ans. 10.
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We find Appellants' arguments persuasive of Examiner error. In the
Reply Brief, Appellants assert Bhakta' s "ability to forward an email is
different from retrospectively determining if a previously sent email has
already been forwarded." Reply Br. 2. We agree. The cited portion of
Bhakta provides a generic teaching of forwarding an email by a user, but the
Examiner does not provide sufficient findings or rationale that a person of
ordinary skill in the art would understand Bhakta as teaching or suggesting
"detecting whether the users have forwarded emails to recipients." Ans. 9.
We further agree with Appellants that Quine does not remedy this
deficiency. "The system in Quine does not make a determination that a
message has already been forwarded, rather Quine determines if the user
desires to forward the message to a corrected email address." Reply Br. 3.
Because it is dispositive that the combination of Bhakta, Quine, and
Nielsen does not teach or suggest determining that the previously sent
message has been forwarded to a second recipient, as required by
independent claims 1, 8, and 15, we need not address the other issues related
to the rejection of these claims raised by Appellants. Accordingly, for the
reasons discussed supra, we do not sustain the Examiner's 35 U.S.C.
§ 103(a) rejection of claim 1, or of claims 8 and 15, which contain similar
recitations. For similar reasons, we also do not sustain the Examiner's
obviousness rejections of claims 2-7, 9-14, and 16-20, which depend from
claims 1, 8, and 15, respectively.
DECISION
We affirm the Examiner's decision to reject claims 8-14 under 35
U.S.C. § 101 as being directed to non-statutory subject matter.
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We reverse the Examiner's decision to reject claims 1-20 under 35
U.S.C. § 103(a).
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(±).
AFFIRMED-IN-PART
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