Ex Parte Carter et al

Board of Patent Appeals and Interferences

Jul 16, 2012

10242398 (B.P.A.I. Jul. 16, 2012)

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

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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.

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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
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Application 10/242,398

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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
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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.
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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

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