Ex Parte Taniuchi

Patent Trial and Appeal BoardJun 27, 2016

13225849 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/225,849 09/06/2011 127226 7590 06/29/2016 Birch, Stewart, Kolasch & Birch, LLP P.O. Box 747 Falls Church, VA 22040-0747 FIRST NAMED INVENTOR Toshiyuki Taniuchi 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. 4492-0187PUS 1 2443 EXAMINER WIDHALM DE RODRIG, ANGELA MARIE ART UNIT PAPER NUMBER 2452 NOTIFICATION DATE DELIVERY MODE 06/29/2016 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): mailroom@bskb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TOSHIYUKI T ANIUCHI 1 Appeal2015-003349 Application 13/225,849 Technology Center 2400 Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and JAMES W. DEJMEK, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1 and 4---6. Claims 2 and 3 have been cancelled. App. Br. 9. We have jurisdiction over the remaining pending claims under 35 U.S.C. Â§ 6(b). We affirm. 1 Appellant identifies SHARP KABUSHIKI KAISHA as the real party in interest. App. Br. 1. Appeal2015-003349 Application 13/225,849 STATEMENT OF THE CASE Introduction Appellant's invention is directed to "a mail server that administers transmission and reception of emails." Spec. 1: 10-11. Claim 1 is representative of the subject matter on appeal and is reproduced below with the disputed limitation emphasized in italics: 1. A mail server administering at least one domain and provided with a mail box for storing mails to a mail address having the domain, the mail server comprising: a memory section to store: (a) an address information table in which address information is registered that includes ability or inability to use the mail address, and a new mail address to be used when the mail address cannot be used, for each mail address having the domain; and (b) a notifY party information table in which notifY party information is registered that specifies each notifY party to notifY that a mail address having the domain cannot be used; an acquisition means to acquire mail addresses of a source and a destination of the received mail; and a control section for performing: (A) a first process to judge, referring to the address information table, whether the mail address of the destination is available or not; (B) a second process to judge, referring to the notify party information table, whether the mail address of the source falls within the notify party information; (C) a third process to create one of a first reply mail and a second reply mail, the first reply mail stating that the mail address of the destination cannot be used and stating no new mail address, and the second reply mail stating the new mail address; and 2 Appeal2015-003349 Application 13/225,849 (D) a fourth process to transmit the first reply mail or the second reply mail to the mail address of the source, wherein the control section creates the first reply mail in the third process when there is no new mail address registered in the address information table and creates the second reply mail in the third process when there is a new mail address registered in the address information table in a case where it is judged in the first process that the mail address of the destination is unavailable and where it is judged in the second process that the mail address of the source falls within the notify party information. The Examiner's Rejection Claims 1and4--6 stand rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Togawa et al. (US 2002/0004821 Al; Jan. 10, 2002) ("Togawa"). Non-Final Act. 3-7. ISSUE ON APPEAL Based on Appellant's argument in the Appeal Brief (App. Br. 4--6), the issue presented on appeal is whether the Examiner erred in finding Togawa discloses a "notify party information table," as recited in claim 1. ANALYSIS2 We have reviewed the Examiner's rejections in light of Appellant's argument the Examiner has erred. App. Br. 4--7. We disagree with 2 In this Opinion, we refer to Appellant's Appeal Brief ("App. Br.," filed June 20, 2014); Appellant's Reply Brief ("Reply Br.," filed Jan. 13, 2015); the Non-Final Office Action ("Non-Final Act.," mailed Jan. 22, 2014); the Examiner's Answer ("Ans.," mailed on Nov. 14, 2014); and the original Specification ("Spec.," filed Sept. 6, 2011 ). 3 Appeal2015-003349 Application 13/225,849 Appellant's conclusion. We adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Non- Final Act. 2-7), and (2) the reasons set forth by the Examiner in the Answer in response to arguments made in Appellant's Appeal Brief (Ans. 7-8). We highlight and address specific findings and arguments below. Appellant contends the Examiner erred in finding Togawa discloses a "notify party information table," recited in claim 1. App. Br. 4---6. In particular, Appellant asserts "[t]here is no indication in Togawa that the notification is sent only to the necessary (or 'registered') sources as required in the present invention." App. Br. 6 (citing Togawa i-fi-181, 233). We are not persuaded the Examiner erred. At the outset, we note Appellant's argument is not commensurate with the scope of claim 1 and, thus, does not persuade us of error in the Examiner's rejection. See In re Self, 671F.2d1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be relied upon for patentability). Claim 1 does not require a "notification is sent only to the necessary (or 'registered') sources" as argued. App. Br. 6 (emphasis added). For the reasons discussed supra, Appellant has not provided persuasive evidence or argument to rebut the Examiner's prima facie case. See In re Jung, 637 F.3d 1356, 1365---66 (Fed. Cir. 2011) (citing Ex Parte Frye, 94 USPQ2d 1072 (BPAI 2010) (precedential)). Accordingly, we sustain the Examiner's rejection of independent claim 1. Additionally, we sustain the Examiner's rejections of dependent claims 4---6, which were not argued separately. See App. Br. 4--7. 4 Appeal2015-003349 Application 13/225,849 DECISION We affirm the Examiner's decision to reject claims 1 and 4--6. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 5