Ex Parte Gandhi et al

Patent Trial and Appeal Board

Sep 3, 2014

11539770 (P.T.A.B. Sep. 3, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/539,770 10/09/2006 Rajeev H. Gandhi AUS920060589US1 4289
50170 7590 09/04/2014
IBM CORP. (WIP)
c/o WALDER INTELLECTUAL PROPERTY LAW, P.C.
17304 PRESTON ROAD
SUITE 200
DALLAS, TX 75252
EXAMINER
MAI, KEVIN S
ART UNIT PAPER NUMBER
2456
MAIL DATE DELIVERY MODE
09/04/2014 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 RAJEEV H. GANDHI, SCOTT L. WINTERS, and
RICHARD A. ZEVIN
____________________

Appeal 2012-002141
Application 11/539,7701
Technology Center 2400
____________________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–5, 8, 9, 12–17, and 20–26. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.2

1 The real party in interest identified by Appellants is International Business
Machines Corporation (App. Br. 2).
2 Our decision will refer to Appellants’ Appeal Brief (“App. Br.,” filed
June 6, 2011) and Reply Brief (“Reply Br.,” filed November 14, 2011), and
the Examiner’s Answer (“Ans.,” mailed September 14, 2011).
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THE CLAIMED INVENTION
Appellants’ claimed invention “is directed to a system and method for
restricting replies to an original electronic mail message” (Spec. ¶ 2).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A method, in a data processing system, for
specifying recipients of an original electronic mail (email)
message that may respond to the original email message,
comprising:
[(a)] presenting a user interface for composition of the
original email message;
[(b)] receiving a first user input to the user interface
specifying one or more email addresses of one or more
recipients of the original email message and a content of the
original email message;
[(c)] receiving a second user input selecting a restricted
subset of the one or more email addresses of the one or more
recipients and selecting a response restriction option to prevent
response email messages to the original email message from the
restricted subset such that response email messages to the
original email message are allowed from an allowed subset of
the one or more email addresses of the one or more recipients;
[(d)] adding an indicator of the selected response
restriction option to a data structure associated with the original
email message to form a response restricted email message;
[(e)] generating a filter data structure, the filter data
structure specifying one of the restricted subset of the one or
more email addresses of the one or more recipients or the
allowed subset of the one or more email addresses of the one or
more recipients;
[(f)] storing the filter data structure on the data
processing system in association with an identifier of the
original email message;
[(g)] transmitting the response restricted email message
to one or more computing devices associated with the one or
more email addresses of the one or more recipients;
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[(h)] receiving a response email message to the original
email message;
[(i)] comparing an email address of an originator of the
response email message to one or more email addresses
specified in the filter data structure to thereby determine if the
response email message is to be output on the data processing
system; and
[(j)] blocking an output of the response email message
on the data processing system if a result of the determination is
that the response email message is not to be output on the data
processing system.

THE REJECTIONS
The following rejections are before us for review:
Claims 14–17 are rejected under 35 U.S.C. § 101 as being directed to
nonstatutory subject matter.3
Claims 1–5, 8, 9, 12–17, and 20–26 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Gusler (US 2003/0233410 A1, pub. Dec. 18,
2003) and Lapstun (US 2003/0098997 A1, pub. May 29, 2003).

3 We treat the Examiner’s failure to list the rejection of claims 14–17 under
35 U.S.C. § 101 in the Grounds of Rejection as inadvertent inasmuch as the
Examiner addresses the rejection in the Response to Argument at page 24 of
the Answer.
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ANALYSIS
Non-Statutory Subject Matter
Independent claim 14 and dependent claims 15–17
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting claim 14 under 35 U.S.C. § 101 because the phrase
“computer recordable medium,” as recited in claim 14,4 cannot be
reasonably interpreted to include a propagation medium or a signal alone
(App. Br. 7–9). Appellants maintain that the Specification distinguishes
between “recordable” media and “propagation” media, and that “claim 14
clearly recites the former and not the latter” (App. Br. 8). Yet the term
“recordable” does not appear in the Specification at all. And we find
nothing in the Specification that draws a distinction between recordable and
propagation media (see Ans. 24).
Appellants also maintain that the Specification does not disclose any
embodiment in which a medium is a disembodied signal or carrier wave
(App. Br. 7–8). However, even if there is no express disclosure in
Appellants’ Specification of any transitory propagating signals, the
Specification states that a computer-usable or computer-readable medium
“can be any apparatus that can contain, store, communicate, propagate, or
transport the program for use by or in connection with the instruction
execution system, apparatus, or device” (Spec. ¶ 95). The phrase “computer
recordable medium,” when interpreted in light of the Specification, thus,
encompasses transitory propagating signals. See Ex parte Mewherter,
107 USPQ2d 1857 (PTAB 2013) (precedential) (holding recited computer-

4 Claim 14 recites a “computer program product comprising a computer
recordable medium having a computer readable program recorded thereon.”
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readable storage medium ineligible under § 101 because, absent a definition
in the Specification, the phrase encompasses transitory media).
Appellants emphasize that claim 14 calls for a “computer recordable
medium,” which Appellants argue “cannot be interpreted to be a
disembodied signal, because a signal by itself cannot record” (App. Br. 8).
Yet a medium that is recordable, i.e., capable of being recorded, but not
actually recorded, leaves open the possibility that it is used to convey a
transient signal.
We find that the phrase “computer recordable medium,” in the context
of claim 14, encompasses a transient, propagating signal medium, which is
patent-ineligible under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1355
(Fed. Cir. 2007). Therefore, we sustain the Examiner’s rejection of
claims 14–17 under 35 U.S.C. § 101.
Obviousness
Independent claim 1
Appellants argue that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because “Gusler does not contemplate the case where the
email client software at the data processing system of the BCC recipient
lacks the functionality to perform the BCC methods described therein,”
i.e., where the BCC recipient’s computer does not provide the functions for
preventing a reply (App. Br. 10).5 That argument is not persuasive because

5 Gusler is directed to a system and method for allowing an author to control
the dissemination of information contained in a blind carbon copy electronic
message, e.g., the author may specify whether a BCC recipient may reply to
the author, reply to any of the other message recipients, forward the
message, copy, save, or print the message. If a BCC recipient attempts to
perform a controlled dissemination action, the author may elect to be
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the argument does not address any features recited in the claim. As the
Examiner correctly observes, “there are no limitations [in claim 1] that state
‘wherein the recipient lacks the functionality to perform the BCC methods
described therein’” (Ans. 25).
Even if that were not so, Gusler describes an embodiment at
paragraph 99 in which a server communicates with both the author’s email
client and the BCC recipient’s email client. In that arrangement, the BCC
recipient’s email program cannot send or forward email messages
independently; instead the email client requests the server to send or forward
messages on its behalf. The server is, thus, situated to carry out or block
requested actions of the BCC recipient according to the author’s BCC
control settings. We agree with the Examiner that Gusler, thus,
contemplates and addresses the situation where the BCC recipient’s email
client lacks the functionality required to enact the BCC control settings
(see id.).
Appellants argue that the server described in paragraph 99 of Gusler
does not perform all of the other limitations of claim 1:
[T]he server described in this portion of Gusler does not present
a user interface for composition of the original email message,
receive a first user input to the user interface specifying one or
more email addresses of one or more recipients of the original
email message and a content of the original email message,
receive a second user input selecting a restricted subset of the
one or more email addresses of the one or more recipients and
selecting a response restriction option to prevent response email
messages to the original email message from the restricted

notified of the attempt, to notify the BCC recipient of the surveillance,
and/or to optionally authorize the performance of the dissemination
operation (see, e.g., Gusler, Abstract).
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subset such that response email messages to the original email
message are allowed from an allowed subset of the one or more
email addresses of the one or more recipients, add an indicator
of the selected response restriction option to a data structure
associated with the original email message to form a response
restricted email message, and transmit the response restricted
email message to one or more computing devices associated
with the one or more email addresses of the one or more
recipients, as recited in claim 1.
(App. Br. 11–12). But there is nothing in the claim language that requires
the method steps to be performed by a single system component. Instead,
claim 1 merely recites that the method is performed “in a data processing
system” (see Ans. 28).
We also are not persuaded of error on the part of the Examiner by
Appellants’ argument that Gusler fails to disclose or suggest “generating a
filter data structure . . . specifying one of the restricted subset of the one or
more email addresses of the one or more recipients or the allowed subset of
the one or more email addresses of the one or more recipients,” as recited in
claim 1 (App. Br. 12). Instead, we agree with the Examiner that
paragraph 94 of Gusler discloses a filter data structure in the form of
Table 4, which identifies a first group of recipients, i.e., the “allowed” subset
of recipients, in the TO field, and a second group of recipients, i.e., the
“restricted” recipients, in the BCC field. The table also discloses BCC
controls to be applied to the messages of the BCC recipients, e.g., controls
disabling the BCC’s recipient’s ability to forward the message and/or reply
to the message (Ans. 5–6).
Appellants further argue that neither Gusler nor Lapstun discloses or
suggests “storing the filter data structure on the data processing system in
association with an identifier of the original email message,”
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i.e., element (f), as recited in claim 1 (App. Br. 12–15). But that argument is
similarly unpersuasive.
In finally rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner
acknowledged that Gusler does not explicitly disclose any of limitations (f),
(h), (i), and (j) of claim 1, and the Examiner relied on Lapstun to cure the
deficiencies of Gusler (see Ans. 6–8). In the Final Office Action, the
Examiner, cited paragraph 557 of Lapstun as disclosing limitation (f) of
claim 1 (see Ans. 6–7). But, in the Response to Argument section of the
Answer, the Examiner asserts that this feature also would have been obvious
in view of paragraph 99 of Gusler because the server, in performing the
BCC reply limiting features, “would need to be able to associate potential
replies with the email . . . which they are replying to” (Ans. 27). Appellants
offer no persuasive argument or reasoning to demonstrate error in the
Examiner’s findings.
Lapstun discloses a system and method for delivering a facsimile
message, and describes that, if the sender so instructs, the message may
include a reply fax number, that is valid for a predetermined time only
(see, e.g., Lapstun, Abstract and ¶ 21). Lapstun describes in paragraph 557
that when a reply is permitted, the fax application allocates a unique one-
time use reply sequence number, records the sequence number in a pending
fax reply, and enters the pending fax reply in a pending fax reply list. The
pending fax reply list is then used to match incoming faxes with pending
replies. The pending fax reply also is associated with the device, e.g., a
netpage printer, through which the outgoing fax was submitted, thus
specifying where the subsequent incoming fax reply is to be delivered.
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Lapstun describes in paragraphs 562–568 that a recipient replies by
dialing the fax server’s fax number followed by the reply sequence number.
The fax server captures the reply sequence number to identify the
corresponding pending fax reply (in the pending fax reply list) and the
appropriate device, e.g., netpage printer, to which the incoming reply should
be delivered. The reply is blocked, i.e., will not be delivered, if the captured
sequence number fails to match a sequence number in the pending fax reply
list.
We agree with the Examiner that combining the “reply restricting
method” disclosed in Gusler with the “allowing recipients to reply” method
disclosed in Lapstun is nothing more than a combination of prior art
elements according to their established functions, and yields a predictable
result (Ans. 7). Therefore, it would have been obvious at the time of
Appellants’ invention to a person of ordinary skill in the art. See KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results”).
Appellants variously argue that Lapstun relates to facsimile, rather
than email, communications; that Lapstun teaches a mechanism for allowing
a reply in the first place rather than a mechanism for limiting replies; and
that Lapstun teaches a routing data structure rather than a filter data
structure. However, as the Examiner explains, Lapstun was cited to
demonstrate that it is known in the art of restricting replies to store a
structure, i.e., Lapstun’s pending fax reply list, identifying which replies are
allowed; to use the pending fax reply list to match incoming responses with
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pending replies; and to block any response whose sequence number does not
match a sequence number in the pending fax reply list (Ans. 6–8 and 27).
Appellants further argue that even if a person of ordinary skill in the
art were motivated to combine Gusler and Lapstun, the combination would
not result in the combination of features recited in claim 1. But the difficulty
with that argument is that it is based on the bodily incorporation of Lapstun
into Gusler.
The test for obviousness is not whether the features of one reference
may be bodily incorporated into the structure of the other reference; instead,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art. See, e.g., In re Sneed, 710
F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of
the references be physically combinable to render obvious the invention
under review.”); In re Nievelt, 482 F.2d 965 (CCPA 1973) (“Combining the
teachings of references does not involve an ability to combine their specific
structures.”). The Examiner does not propose any bodily incorporation of
Lapstun into Gusler, or vice versa.
In view of the foregoing, we sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a).
Claims 2–5, 8, 9, 12–17, and 20–26
Appellants do not present any arguments in support of the
patentability of any of the remaining claims except to assert that claims 2–5,
8, 9, 12, 13, 25, and 26 are allowable based on their dependence on claim 1
(App. Br. 17). We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a). Therefore,
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we also sustain the Examiner’s rejection of claims 2–5, 8, 9, 12–17, and 20–
26.

DECISION
The Examiner’s rejection of claims 14–17 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejection of claims 1–5, 8, 9, 12–17, and 20–26 under
35 U.S.C. § 103(a) 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)(1)(iv).

AFFIRMED

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