`The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DAWN CAREY
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Appeal 2007-1440
Application 09/920,481
Technology Center 2100
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Decided: July 11, 2007
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Before JAMES D. THOMAS, JOSEPH F. RUGGIERO, and JOHN A.
JEFFERY, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-30 and 41. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
Appeal 2007-1440
Application 09/920,481
STATEMENT OF THE CASE
Appellant invented a method of delivering items of content (e.g.,
electronic material such as document files, graphic files, sound and video
files, etc.) to a user via email. The system delivers content from a storage
location to remote client devices through email based inquiry-response
automation.1 Claim 1 is illustrative:
1. A method of delivering items of content from a storage location to
client devices at remote locations through e-mail based inquiry-response
automation, the method comprising the steps of
providing a content delivery system for customer support
storing plural items of content, wherein the plural items of content are
technical support information
storing respective descriptions of the items of content and respective
order codes for the items of content
receiving a first message via e-mail from a user of a given client
device at a remote location, whereby an inquiry-response transaction is
initiated
assigning a tracking code for the inquiry-response transaction
responding via e-mail to the first e-mail message with a prompt
message, the prompt e-mail message including an arrangement of
descriptions and order codes for a plurality of the items of content, the
tracking code, and instructions to the user for ordering the items of content
receiving a second message via e-mail from the user
parsing the second e-mail message and identifying the tracking code
in the second e-mail message
1 See generally Specification ¶¶ 0007-0011 and 0019.
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Application 09/920,481
parsing the second e-mail message for at least one of the order codes
specified by the user
extracting the items of content identified by the order codes in the
second e-mail message
packaging the items of content from the extracting step into a single
package unit
responding via e-mail to the second e-mail message with a response e-
mail message comprising the single package unit comprising the items of
content corresponding to the order codes in the second e-mail message.
The Examiner relies on the following prior art references to show
unpatentability:
Gifford US 5,724,424 Mar. 3, 1998
Talati US 5,903,878 May 11, 1999
Schuster US 6,351,524 B1 Feb. 26, 2002
(filed Jan. 20, 1999)
Joseph US 2003/0028448 A1 Feb. 6, 2003
(filed May 10, 2001)
Appellant’s admitted prior art at ¶ 0004 of the Specification (“APA”).
1. Claims 1, 2, 4-6, 13, 14, 16-18, 22, 23, 25-27, and 41 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Gifford in view of
Talati.
2. Claims 3, 15, and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gifford in view of Talati and further in view of
APA.
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Application 09/920,481
3. Claims 7, 19, and 28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gifford in view of Talati and further in view of
Joseph.
4. Claims 8-12, 20, 21, 29, and 30 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Gifford in view of Talati and further in
view of Schuster.
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answer for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).
OPINION
We first consider the Examiner’s rejection of claims 1, 2, 4-6, 13, 14,
16-18, 22, 23, 25-27, and 41 under 35 U.S.C. § 103(a) as unpatentable over
Gifford in view of Talati. In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the Examiner to establish a factual basis to support the legal
conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988). In so doing, the Examiner must make the
factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966). Furthermore, “‘there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness’ . . . . [H]owever, the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
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Application 09/920,481
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007) (quoting In re
Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Regarding the independent claims, the Examiner's rejection essentially
finds that Gifford teaches a method of delivering items of content through
email based inquiry-response automation with every claimed feature except
for (1) assigning a tracking code for the inquiry-response transaction, and (2)
parsing the second email message and identifying the tracking code in the
second email message as claimed. The Examiner cites Talati as disclosing
an electronic commerce system that uses a Unique Global Transaction ID
(UTID) to help identify the originator (user). The Examiner concludes that
it would have been obvious to one of ordinary skill in the art at the time of
the invention to use a tracking code such as a UTID in Gifford’s system to
reduce fraudulent transactions (Answer 3-7).
Regarding representative claim 1,2 Appellant argues that because the
buyer initiates the transaction in Gifford by clicking on a hyperlink -- not via
email -- the reference does not teach or suggest “receiving a first message
via e-mail from a user of a given client device at a remote location, whereby
2 Appellant argues independent claims 1, 13, 22, and 41 together as a group.
See Br. 6-8. Accordingly, we select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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Application 09/920,481
an inquiry-response transaction is initiated” as claimed (emphasis added).
Appellant emphasizes that skilled artisans would necessarily construe the
term “email” as entirely incongruent with the term “hyperlink.” In support
of this argument, Appellant argues that email messages are distinct from
HTTP request messages in view of, among other things, their different
protocols. Appellant also contends that, unlike email messages, HTTP
request messages are composed by the user’s browser client software
responsive to certain user actions (Br. 6-8; Reply Br. 5-6).
The Examiner argues that Gifford’s statement in column 7 regarding
implementing an “electronic mail order system” at least suggests using email
(Answer 11-12). The Examiner further contends that since Appellant did
not ascribe a special meaning to the term “email,” it is interpreted with its
plain meaning. As such, the plain meaning of “email” does not preclude an
HTTP request (Answer 12-13).
We will sustain the Examiner’s rejection of representative claim 1.
In Gifford’s network sales system, a buyer views an overview screen that is
retrieved from a merchant computer. The screen includes links 1, 2, and 3
that, when activated, cause the buyer’s computer to take specified actions.
As shown in Fig. 3, a document is retrieved with links 5, 6, and 7 that are
used to purchase the products described by corresponding advertisements.
(Gifford, col. 5, ll. 7-47; Figs. 2-5).
As shown in Fig. 6 of Gifford, when the user activates link 1, an
HTTP request 20 results for a specific document with a specified URL. The
merchant computer then retrieves the document and returns it to the buyer
computer (Gifford, col. 5, ll. 49-59).
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It is this HTTP request 20 that is the sole point of contention in this
appeal. As Appellant indicates in the Reply Brief, the sole issue before us is
whether an email message from the user would have been the same as, or an
obvious variant of, an HTTP request message (Reply Br. 4). While we find
that an HTTP request message is not necessarily the same as an email
message, we nonetheless find that an email message would have been an
obvious variant of an HTTP request message in Gifford. Moreover,
associating email messages with hyperlinks is well known.
At the outset, we note that both the Appellant’s and the Examiner’s
definitions of “email”3 share a common characteristic: sending messages
over a network. Furthermore, we find that an HTTP request ultimately
performs a commensurate function: it sends a message over a network.
Although Appellant argues that an email message differs from an HTTP
request message in “form, origin, and purpose,”4 both types of messages
would nonetheless provide commensurate utility -- at least from the user’s
perspective -- when used to convey messages to the content delivery system
in the manner claimed. That is, at least from the user’s perspective, a
message initiating the inquiry-response transaction would be sent from the
client device to the content delivery system via a network, irrespective of
whether an HTTP request message or an email message was used.
3 Appellant defines “email” in pertinent part as “[t]he exchange of text
messages and computer files over a communications network....” (Br. 8).
The Examiner defines “email” in pertinent part as “[t]he sending of
messages by electronic means from one computer user to one or more
recipients via a network….” (Answer 12).
4 See Reply Br. 4-5 (explaining distinctions between email messages and
HTTP request messages).
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In our view, using email in lieu of an HTTP request to initiate the
transaction as claimed would have been an obvious variant in light of the
commensurate functionality from the user’s perspective achieved by both
types of messages. Moreover, Appellant has not persuasively rebutted the
Examiner’s reliance on the teachings of Talati for the reasons stated on Page
5 of the Answer – a position that we find reasonable. For at least these
reasons, we will sustain the Examiner’s rejection of representative claim 1.
Additionally, we note that Gifford’s system is based on Hypertext
Markup Language (HTML) (Gifford, col. 4, ll. 61-65). As is well known in
the art, a hyperlink in an HTML document is created by providing the
appropriate tags with respect to certain displayed text along with the
reference to the particular link.5
In addition to this standard hyperlinking capability, HTML also
provides the capability to open new email messages when links are clicked.
To this end, a hyperlink that is created using a special HTML tag (“mailto”)
facilitates sending email messages to a desired destination email address
when the link is clicked.6
5 For example, to hyperlink the phrase “THIS IS TEXT” in an HTML
document to a certain URL (e.g., www.uspto.gov), the following syntax is
used:
THIS IS TEXT. See HTML
Basics, at
http://itsinfo.tamu.edu/workshops/handouts/pdf_handouts/html_basics.pdf,
June 11, 2001, at 1-2 (last visited Jul. 2, 2007).
6 See id. at 3. For example, the following HTML syntax will create a
hyperlink corresponding to a user’s name (“John Doe”) that will open a new
email message addressed to name@host when the hyperlink “John Doe” is
clicked:
= “mailto:name@host”>John Doe. See also
Entering Subject Using Mailto, in HTML Tips, at
www.digitalpoint.com/tips/html.html, June 6, 1996 (last visited Jul. 3, 2007)
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Application 09/920,481
In view of this well-known functionality of hyperlinks, we see no
reason why the skilled artisan could not have provided a “mailto” capability
associated with the hyperlink that initiates the transaction in Gifford. Such a
capability would provide, among other things, the ability for the user to add
other information to the request or query the merchant for specific
information in conjunction with the request.
For the foregoing reasons, we conclude that receiving an email
message responsive to the user’s activating a link in Gifford (i.e., via an
HTML “mailto” function associated with the link) would have been well
within the level of the skilled artisan.
In addition, we find that Talati is replete with teachings of using email
in an electronic commerce transaction as a traceable delivery system. See,
e.g., Fig. 15 and col. 10, ll. 41-48 (noting that the client generates a purchase
order that is formatted and transmitted to the merchant via an email
message). In fact, a significant portion of Talati pertains to using email as a
traceable delivery system. (See Talati, col. 8, l. 21 – col. 12, l. 46; Figs. 11-
16). As Talati indicates, using email in this manner not only facilitates
exchanging information, but also enables processing complex transactions
and sharing information between multiple entities (Talati, col. 8, ll. 22-25).
In view of these collective teachings, the skilled artisan would have
had ample reason on this record to enable the user to send the first message
via email as claimed. For this additional reason, we will sustain the
(“Most people are aware of the MAILTO tag in HTML, which allows you to
send mail to a particular address by clicking on a link.”).
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Examiner’s rejection of representative claim 1 based on the collective
teachings of Gifford and Talati.
Likewise, we will sustain the Examiner’s rejection of claims 2, 4-6,
13, 14, 16-18, 22, 23, 25-27, and 41 as they fall with representative claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii).
We will also sustain the Examiner's rejections under 35 U.S.C.
§ 103(a) of (1) claims 3, 15, 24 over the teachings of Gifford in view of
Talati and further in view of APA; (2) claims 7, 19, and 28 over the
teachings of Gifford in view of Talati and further in view of Joseph; and (3)
claims 8-12, 20, 21, 29, and 30 over the teachings of Gifford in view of
Talati and further in view of Schuster. We find that (1) the Examiner has
established at least a prima facie case of obviousness for these claims on
Pages 7-11 of the Answer, and (2) Appellant has not persuasively rebutted
the Examiner's prima facie case. In this regard, Appellant merely noted that
the additional references to APA, Joseph, and Schuster fail to cure the
deficiencies of Gifford and Talati in connection with the previous arguments
raised with respect to the independent claims (Br. 9). The rejection is
therefore sustained.
DECISION
We have sustained the Examiner's rejections with respect to all claims
on appeal. Therefore, the Examiner’s decision rejecting claims 1-30 and 41
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).
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Application 09/920,481
AFFIRMED
eld
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