Ex Parte Weir et al

Patent Trial and Appeal BoardNov 15, 2012

10839832 (P.T.A.B. Nov. 15, 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. 10/839,832 05/06/2004 Diane Weir LOT920030115 (041) 6683 46321 7590 11/15/2012 CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP STEVEN M. GREENBERG 950 PENINSULA CORPORATE CIRCLE SUITE 2022 BOCA RATON, FL 33487 EXAMINER BOUTAH, ALINA A ART UNIT PAPER NUMBER 2443 MAIL DATE DELIVERY MODE 11/15/2012 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 DIANE WEIR and ROBERT C. WEIR ____________________ Appeal 2012-012633 Application 10/839,832 Technology Center 2400 ____________________ Before ALLEN R. MacDONALD, ROBERT E. NAPPI and BRUCE R. WINSOR, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-012633 Application 10/839,832 2 STATEMENT OF CASE Introduction Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 7-12. We have jurisdiction under 35 U.S.C. § 6(b). Exemplary Claim Exemplary claim 7 under appeal reads as follows: 7. A selective commenting method comprising the steps of: designating a plurality of recipients for an e-mail message; selecting a subset of recipients from among said designated recipients; composing a comment to said e-mail message that is separate from said email message; and, transmitting concurrently both said e-mail message to said designated recipients exclusive of said comment and also said e-mail message combined with said comment only to said selected subset. Rejections on Appeal 1 The Examiner rejected claims 7-12 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Kohler (US 6,192,396 B1) and Cabello (US 2003/0097414 A1). Issue on Appeal Did the Examiner err in rejecting claims 7-12 as being obvious because the references fail to teach or suggest the claim limitation at issue? 1 Separate patentability is not argued for claims 8-12. Appeal 2012-012633 Application 10/839,832 3 ANALYSIS We have reviewed the Examiner’s current rejections in light of Appellants’ arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We disagree with Appellants’ conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. We concur with the conclusions reached by the Examiner. Appellants contend, in the Reply Brief, but not the Appeal Brief, that claim 7 is distinguishable from the cited art because claim 7 recites that “the e-mail message and the comment must be transmitted concurrently and separately.” (Reply Br. 4). This argument is untimely as it is presented for the first time in the Reply Brief. See In re Borden, 93 USPQ2d 1473 (BPAI 2010) (informative). Even if it were timely, it is unpersuasive because it is not commensurate with the scope of claim 7, which does not recite that the comment and e-mail message are transmitted separately. This is the second time that claims covering essentially the same subject matter have been before this Board. 2 The analysis found in our previous decision is still relevant to the issues before us and we also incorporate it herein. 2 See Decision on Appeal 2009-011110, mailed on May 26, 2011. Appeal 2012-012633 Application 10/839,832 4 CONCLUSIONS (1) The Examiner has not erred in rejecting claims 7-12 as being unpatentable under 35 U.S.C. § 103(a). (2) Claims 7-12 are not patentable. DECISION The Examiner’s rejection of claims 7-12 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 msc