Ex Parte Carter et alDownload PDFBoard of Patent Appeals and InterferencesJul 16, 201210242398 (B.P.A.I. Jul. 16, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte WILLIAM STEPHEN CARTER, HERMAN RODRIGUEZ, HYPATIA ROJAS, and NEWTON JAMES SMITH JR. ____________ Appeal 2012-007596 Application 10/242,398 Technology Center 2400 ____________ Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and JEAN R. HOMERE, Administrative Patent Judges. DIXON, Administrative Patent Judge. Appeal 2012-007596 Application 10/242,398 2 DECISION ON APPEAL STATEMENT OF THE CASE A Patent Examiner rejected claims 1-4, 7-11, 14-18, 21-25, and 28-32. Appellants appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). This appeal is related to a prior appeal in Patent Application No.10/242,398, Appeal No. 2009-000728, dated July 9, 2010, where the Board reversed the Examiner's prior art rejection. We affirm A. INVENTION The invention at issue on appeal relates to an apparatus, system and method of receiving e-mail messages sent to physical locations. (Spec. 1). B. ILLUSTRATIVE CLAIM Claim 1, which further illustrates the invention, follows. 1. A method of receiving an e-mail message comprising the steps of: requesting, by a recipient, the e-mail message, the e-mail message being addressed to a physical location; and receiving the message by the recipient, if the recipient is at the physical location to which the e-mail message is addressed. Appeal 2012-007596 Application 10/242,398 3 C. REFERENCES The Examiner relies on the following references as evidence: Pradhan US Pat. Pub. 2002/0152273 A1 Oct. 17, 2002 Jokinen US Pat. Pub. 2008/0120186 A1 May 22, 2008 D. REJECTIONS Claims 1-4, 8-11, 15-18, 22-25, and 29-32 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Pradhan. Claims 7, 14, 21, and 28 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pradhan as applied to claims 1, 8, 15 and 22 above, and further in view of Jokinen. ANALYSIS Appellants argue independent claims 1, 8, 15, and 22 and dependent claims 2-4, 9-11, 16-18, and 22-25 together as a group. (App. Br. 10 and 15). Therefore, we select independent claim 1 as the representative claim for the group and will address Appellants' arguments thereto. Appellants contend that Pradhan does not disclose the claimed "the E- mail address being addressed to a physical location." (App. Br. 12; Reply Br. 3). From our review of the portions of Pradhan identified by the Examiner with the addition of para. [00035], we find that Pradhan teaches that the virtual beacon to which the e-mail message is addressed has physical location information associated therewith. Pradhan states: The term "virtual beacon" or "virtual link", however, does not refer to any physical object such as the physical beacon. Instead, this term refers to an electronic file that contains the web address. The electronic file, however, serves the similar Appeal 2012-007596 Application 10/242,398 4 function as the physical beacon. The virtual beacon or virtual link can also be referred to as a web-sign. (Pradhan ¶ [0031] ). Pradhan states: [T]he virtual beacon 91 is essentially a location-based electronic file (i.e., the file 92 in FIG. 5). This means that the electronic file 92 contains the positional data of the physical location 45 and the web address of the web page 46. (Pradhan ¶ [0035]). We find that the designation of a virtual beacon as an address is a designation of an actual physical location as an address. Therefore, we disagree with Appellants and find that Pradhan teaches a method of receiving an e-mail message comprising the steps of "requesting…" and "receiving the message…." We further find that Pradhan ¶¶ [0045]-[0051], [0055], [0056], and [0060] teaches embodiments using e- mail communication. Appellants contend that the paragraphs relied upon by the Examiner with the addition of paragraphs [0031]-[0032] merely teach that any files directed to or from the virtual beacon are addressed to the virtual beacon and not to the physical location of that virtual beacon. (App. Br. 13-14). We disagree with Appellants. As discussed above , we find that the designation of a virtual beacon as an address is a designation of an actual physical location as an address. Appellants further contend that the Examiner's purported rationale in rejecting the claims is essentially the same rationale upon which the Examiner was reversed in Appeal no. 2009-000728. (App. Br. 13). We disagree with Appellants. We find the teachings of Pradhan are clearly more relevant to the claimed invention than the Sakata reference previously applied by the Examiner. Therefore, we find Appellants' arguments Appeal 2012-007596 Application 10/242,398 5 unpersuasive of error in the Examiner's showing of anticipation of representative independent claim 1 with respect to the feature of "the e-mail message being addressed to a physical location." Therefore, we sustain the rejection of independent claim 1 and independent claims 8, 15, and 22 and dependent claims 2-4, 9-11, 16-18, and 22-25 grouped therewith by Appellants. With respect to claims 29-32, Appellants present arguments only to dependent claims 30-32 and do not present separate arguments for dependent claim 29. Therefore, we group dependent claim 29 as falling with its parent independent claim 1. With respect to claims 30-32, Appellants contend that "Pradhan simply does not disclose an 'e-mail message being addressed to' 'a set of global positioning system coordinates, geographical coordinates, a street address, or a combination thereof.'" (App. Br. 16). We disagree with Appellants and find that Pradhan teaches the use of global positioning coordinates or geographical coordinates associated with the virtual beacon as claimed. Therefore, we find Appellants' argument to be unpersuasive of error in the Examiner's showing of anticipation of representative dependent claim 30. With respect to dependent claims 7, 14, 21, and 28, Appellants rely upon the arguments advanced with respect to the underlying independent claims and maintain that Jokinen does not teach or suggest the deficiency in Pradhan. (App. Br. 17-18). Since we found no deficiency in Pradhan, we similarly find Appellants' argument to be unpersuasive of error in the Examiner's showing of obviousness of representative claim 7. Appeal 2012-007596 Application 10/242,398 6 CONCLUSION For the aforementioned reasons, Appellants have not shown that the Examiner erred in rejecting representative independent claim 1 and representative dependent claim 30. ORDER We affirm the anticipation rejection of claims 1-4, 8-11, 15-18, 22-25, and 29-32 and the obviousness rejections of claims 7, 14, 21, and 28. AFFIRMED tkl Copy with citationCopy as parenthetical citation