Ex Parte Keohane et al

Patent Trial and Appeal BoardNov 30, 2012

10666816 (P.T.A.B. Nov. 30, 2012)

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. 10/666,816 09/18/2003 Susann Marie Keohane AUS920030442US1 8940 77351 7590 11/30/2012 IBM CORP. (AUS) C/O THE LAW OFFICE OF JAMES BAUDINO, PLLC 600 SIX FLAGS DRIVE SUITE 400 ARLINGTON, TX 76011 EXAMINER DAILEY, THOMAS J ART UNIT PAPER NUMBER 2452 MAIL DATE DELIVERY MODE 11/30/2012 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 SUSANN MARIE KEOHANE, GERALD FRANCIS MCBREARTY, SHAWN PATRICK MULLEN, JESSICA MURILLO, and JOHNNY MENG-HAN SHIEH ____________ Appeal 2010-005354 Application 10/666,816 Technology Center 2400 ____________ Before JOSEPH F. RUGGIERO, DENISE M. POTHIER, and JENNIFER L. McKEOWN, Administrative Patent Judges. McKEOWN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1 and 3-6.1 Claims 2 and 11-40 have been canceled. (App. Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Initially, Appellants appealed the rejections of claims 7-10 under 35 U.S.C. § 103(a). (App. Br. 5-10.) The Examiner, however, withdrew the rejections of claims 7-10 (Ans. 2-3) and therefore the rejections of claims 7-10 are no longer before this Board for review. Appeal 2010-005354 Application 10/666,816 2 STATEMENT OF THE CASE Appellants’ invention is directed to a method of rescinding previously transmitted e-mail messages. (See generally Abstract.) The Specification describes that the method of the present application allows the sender of an e-mail message to access the e-mail message for modifying the e-mail message itself or modifying the list of recipients after sending the e-mail message. (Spec. p. 3, ll. 12-16.) Claim 1 is illustrative and is reproduced below, with key disputed limitations emphasized: 1. A method of rescinding previously transmitted e-mail messages by a sender, the messages being addressed to a list of recipients, the method comprising: storing an e-mail message addressed to a list of recipients on a computing system; generating a notification message, the notification message for allowing recipients from the list of recipients and the sender to access the stored e-mail message; sending the notification message to the recipients from the list of recipients and to the sender; determining whether one of the recipients from the list of recipients has accessed the stored e-mail message; and enabling the sender, if one of the recipients from the list of recipients has accessed the stored e-mail message and using the notification message, to preclude one of the recipients from the list of recipients that have not yet accessed the stored e-mail message from accessing the stored e-mail message. THE REJECTIONS 1. The Examiner rejected claims 1 and 3 under 35 U.S.C. § 103(a) as unpatentable over Brogné (EP 1087321 A1; pub. Mar. 28, 2001), Milewski (US 5,930,471; July 27, 1999), and Nielsen (US 5,870,548; Feb. 9, 1999). (Ans. 4-7.) Appeal 2010-005354 Application 10/666,816 3 2. The Examiner rejected claims 4-6 under 35 U.S.C. § 103(a) as unpatentable over Brogné, Milewski, Nielsen and what is well known in the art. (Ans. 8-9.) 2 THE 103 REJECTION OVER BROGNÉ, MILEWSKI, AND NIELSEN The Examiner finds that Brogné discloses every recited limitation of illustrative claim 1, except (1) generating and sending a notification message to the sender and enabling the sender, using the notification message, to preclude e-mail access by the receipts and (2) enabling the sender if one of the recipients from the list of recipients has accessed the stored e-mail message to preclude one of the recipients from the list of recipients that have not yet accessed the stored e-mail message from accessing the stored e-mail message. (Ans. 4-7.) The Examiner, however, relies on the teachings of Milewski and Neilson to cure these deficiencies. (Ans. 5-7.) On the other hand, Appellants contend that none of the cited prior art teaches or suggests generating notification message that is sent to the sender of a message and that the notification message allows the sender to access the e-mail message. (App. Br. 9-10; Reply Br. 4-5.) Appellants identify that the Examiner relies on Milewski for this feature and then argue that Milewski does not provide access to the e-mail but only allows the sender to access status information and to delete a message. (App. Br. 10; Reply Br. 4-6.) Moreover, Appellants contend that the Examiner “over- generalizes” the teachings of Milewski by finding that Milewski enables the sender to perform operations on the stored message. (Reply Br. 6.) 2 As stated above, the Examiner withdrew the rejections for claims 7-9. (Ans. 2-3), and therefore these rejections are no longer before us. Appeal 2010-005354 Application 10/666,816 4 Appellants also assert that the combination of Brogné and Nielsen teaches that once an e-mail is accessed by a recipient it is no longer stored on the server and thus not accessible to the sender. And Appellants argue that Nielsen fails to teach that the sender has access to the e-mail message even after it has been viewed by a recipient. (Reply Br. 5-6.) According to Appellants, even if Milewski taught the claimed notification message, the combination of Milewski with Brogné and Nielsen would still not teach or suggest the limitation of enabling a user to access the stored e-mail and preclude one of the recipients that have not accessed the stored e-mail message from accessing the stored e-mail message. (Reply Br. 5.) Finally, Appellants contend that Brogné teaches away from the sender being able to perform any operations on the sent e-mail once one of the recipients has accessed the e-mail. (Reply Br. 6.) ISSUE Under § 103, has the Examiner erred by finding that the cited prior art collectively teaches or suggests generating and sending to the sender a notification message that allows the sender to access the stored e-mail message and enabling the sender, using the notification message, to preclude one of the recipients from the recipient list from accessing the stored e-mail message even if thee-mail has been accessed by another recipient? ANALYSIS Claims 1 and 3 On this record, we find the Examiner did not err in rejecting claim 1 as unpatentable over Brogné, Milewski, and Nielsen. Namely, we are not Appeal 2010-005354 Application 10/666,816 5 persuaded that the cited prior art collectively fails to teach or suggest the disputed limitations. Here, the Examiner relies on Milewski for the limited purpose of teaching the features of the notification message with respect to the sender. (See Ans. 4-7.) In other words, the Examiner finds that Milewski’s pointer is generated and sent to the sender to allow the sender to access the stored message and the pointer enables the sender by using a notification message to perform operations on the stored message. (Ans. 10-11.) Notably, Milewski is only cited to teach that a sender may use the notification message to perform an operation on the stored message, but not cited to teach the claimed operation of precluding recipients from accessing the message. Instead, as identified by the Examiner, and not disputed by Appellants (App. Br. 9-10), Nielsen teaches this limitation. (Ans. 5-6.) Thus, the Examiner finds that Milewski’s use of the pointer to delete a message, together with Nielsen’s precluding recipients from accessing a message on a per recipient basis, teaches the claimed enabling limitation. Appellants dispute that Milewski’s generated pointer, or notification message, teaches accessing the stored message. In particular, Appellants maintain that the pointer only provides access to status information, not access to the message itself. (App. Br. 9-10; Reply 4-5.) We disagree. Milewski’s pointer not only provides access to status information but additionally allows the sender to view the e-mail message. (Ans. 7, 10-11 (citing Milewski col. 6, ll. 25-33).) Further, as acknowledged by Appellants, the pointer allows the user to delete the message, i.e., perform operations on the stored message. (App. Br. 9-10 (citing Milewski col. 8, ll. 20-25); Reply Appeal 2010-005354 Application 10/666,816 6 Br. 4-5.) Thus, we agree with the Examiner that Milewski teaches a notification message that allows access to the stored message. Additionally, we disagree with Appellants’ contention that the Examiner “over-generalize[s]” Milewski’s teachings by finding that Milewski’s notification message enables the sender to perform operations on the stored message. (Reply Br. 6.) As identified above, Appellants admit that the sender in Milewski may delete the message through use of the pointer. (App. Br. 9-10 (citing Milewski col. 8, ll. 20-25); Reply Br. 4-5.) Enabling a sender to delete the message is an operation that would at least suggest that the sender may delete the message to preclude certain recipients from accessing the message. Therefore, the Examiner did not err in finding that Milewski’s use of a pointer to delete a message, together with Nielsen’s teaching of precluding recipients from accessing a message on a per recipient basis, teaches enabling the sender, using the notification message, to preclude one of the recipients from the list of recipients that have not yet accessed the stored e-mail message from accessing the stored e-mail message. Appellants’ remaining arguments are also unavailing. Appellants incorrectly assert that Brogné and Nielsen teach deleting messages from the server once one recipient has accessed the message. (Reply Br. 5-6.) To the contrary, Brogné merely teaches that the message may be deleted after accessed by an addressee, not that it necessarily is deleted. (Brogné, col. 7, ll. 41-51.) Further, the cited portion of Nielsen only describes use of an e-mail cancel message to delete a previously sent e-mail. (Nielsen, col. 4, ll. 38-43.) Appeal 2010-005354 Application 10/666,816 7 More importantly, providing access to an e-mail message even after the message has been accessed by one user is not a claimed limitation. Instead, claim 1 requires enabling the sender, using the notification message, to preclude recipients from the recipient list from accessing the e-mail message even after another recipient has accessed the e-mail message. (App. Br. 12.) As identified by the Examiner, Nielsen enables the sender to cancel the previously sent e-mail on a per recipient basis. (Ans. 5-6 (citing Nielsen col. 14, ll. 12-19).) Thus, even if another recipient has viewed or accessed the e-mail message, the collective teachings in the references enable the sender to cancel the message, preventing other users from accessing the e-mail message. (Ans. 5-6 (citing Nielsen col. 14, ll. 12-19).) Finally, we disagree that Brogné teaches away from the claimed combination. While Brogné teaches that the sender may only modify or suppress a message when no recipient has accessed the e-mail, this is merely an alternative method. Appellants fail to point to any disclosure of Brogné that discourages modifying the message even after a recipient has accessed the message. See In re Mouttet, 686 F.3d 1322, 1333-1334 (Fed. Cir. 2012)(stating that a reference teaches away from a combination when a person of ordinary skill, upon reading the reference, would be discouraged from the combination and that mere disclosure of an alternative design is insufficient to teach away)(citations omitted). Thus, Brogné does not teach away from modifying the message even after a recipient has accessed the message. Accordingly, we sustain the obviousness rejection of claim 1 and dependent claim 3, not separately argued with particularity. Appeal 2010-005354 Application 10/666,816 8 THE 103 REJECTION OVER BROGNÉ, MILEWSKI, NIELSEN, AND WHAT IS WELL KNOWN IN THE ART Claims 4-6 Claims 4-6 depend from independent claim 1, but were rejected under 35 U.S.C. § 103(a) as unpatentable over Brogné, Milewski, Nielsen, and what is well known in the art. Appellants present no separate argument for patentability of claims 4-6. (App. Br. 10; Reply Br. 6.) Based on the above discussion, we therefore find no error in the Examiner’s rejection of claims 4-6 and sustain the rejection. CONCLUSION Under § 103, the Examiner did not err in rejecting claims 1 and 3-6. ORDER The Examiner’s decision rejecting claims 1 and 3-6 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 babc