Ex Parte Hall et al

Board of Patent Appeals and Interferences

Feb 27, 2007

09577909 (B.P.A.I. Feb. 27, 2007)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION

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for publication and is not binding precedent of the Board.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
__________

Ex parte GABRIEL J. HALL and ALAN RAMALEY
__________

Appeal No. 2006-2605
Application 09/577,909
Technology Center 2100
__________

Decided: February 27, 2007
__________

Before JAMES D. THOMAS, JEAN R. HOMERE, and JAY P. LUCAS,
Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134, Appellants have appealed to the Board
from the Examiner’s final rejection of claims 1 through 35.
Representative independent claim 1 is reproduced below:

Appeal 2006-2605
Application 09/577,909

1. A method for automatically attaching a web page as a single file to
an email note, the method comprising the steps of:

in response to an attachment event, determining whether a selected
file is a web page;

in response to a determination that the selected file is a web page,
determining whether the selected file includes at least one link to at least one
resource file; and

in response to a determination that the selected file includes at least
one link to at least one resource file, packing the selected file and the at least
one resource file into a single attachment file and attaching the attachment
file to the email note

The following references are relied on by the Examiner:
Mantha US 6,163,779 Dec. 19, 2000
(filed Sep. 29, 1997)
Gabbard US 6,205,432 B1 Mar. 20, 2001
(filed Nov. 16, 1998)
Borman US 6,226,655 B1 May 1, 2001
(filed Dec. 2, 1998)
Gupta US 6,519,646 B1 Feb. 11, 2003
(filed Sep. 1, 1998)

Claims 1, 3, 4, 7, 8, 10, 12, 13, 16 through 20, 22 through 24, and 27
through 35 stand rejected under 35 U.S.C. § 102(e) as being anticipated by
Mantha. All remaining claims on appeal stand rejected under 35 U.S.C.
§ 103. As evidence of obviousness, as to claims 2, 11, and 26, the Examiner
relies upon Mantha in view of Borman. As to claims 5, 6, 14, and 15, the
Examiner relies upon Mantha in view of Gupta, and as to claims 9, 21, and
25, the Examiner relies upon Mantha in view of Gabbard.
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Application 09/577,909

Rather than repeat the positions of the Appellants and the Examiner,
reference is made to the Brief and Reply Brief for Appellants’ positions, and
to the Answer for the Examiner’s positions.
OPINION
We reverse.
Each of independent claims 1, 10, 22, and 29 recites in some manner
packing a selected file and at least one resource file into a single attachment
file and then attaching this attachment file to an email note. Each of the
noted independent claims is rejected as being anticipated by Mantha.
As best expressed by the Examiner at page 13 of the Answer, the
Examiner is of the view that a file directory (which is a type of file since it is
self-contained) reads on the noted language of the independent claims on
appeal of packing separate and distinct files into a single file. This view of
the Examiner is derived from the teaching at column 13, lines 39 through 47
of Mantha which we reproduce here:
The file directory (for the copied pages (e.g. c:\user\copies\c1.htm,
il.jpg, etc.)) is self-contained and needs no other files or system
dependent information to view the copied page. As a result, the
invention may be used with an e-mail application to simplify the
transfer of the saved Web page. In particular, the user simply attaches
a copy of the directory contents to the e-mail and all embedded files
get transferred. This is a simple and efficient means of e-mailing a
Web page.

Thus, the Examiner apparently is of the view on the basis of this portion that
the noted file directory is one directory or one file that is attached to an
email note as claimed. We do not agree with these views expressed by the
Examiner.
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Application 09/577,909

As best shown in Figure 9 in Mantha, this reference saves a copy of
the HTML based document (a web page) and each of its associated
embedded objects, such as image files, sound files or video files, etc., on the
client hard drive such as element 70 in Figure 9. As generally expressed in
Appellants’ initial arguments at pages 6 and 7 of the principal Brief on
appeal, to the extent that Mantha at column 13 teaches that the local storage
with a container directory may have packed or otherwise packaged selected
files and their corresponding resource files as claimed all relating to a
retrieved web page, the above quoted portion at column 13 of Mantha does
not describe or suggest attaching the entire directory itself to an email note.
The noted portion at column 13 of Mantha merely indicates the user’s ability
to attach a copy of the directory contents to an email and all embedded files
to get transferred. Copying the contents of a directory including any
attached embedded or related or associated documents therewith to an email
note is not the same as the corresponding requirement of the claim of
copying the directory itself and attaching it to the email note. It appears to
us that the artisan would interpret this relatively brief teaching of email
attachment in Mantha to the conventional approach of attaching each of the
respective files separately to an email note, which is essentially part of the
prior art approach according to Appellants’ discussion of this in the earlier
portions of the Specification as filed. Mantha’s contribution in the art is that
all required information of a given web page is collected or otherwise copied
at one location within a local device for a user’s convenience.
In a corresponding manner, the brief discussion of Figure 9 of Mantha
beginning at the bottom of column 9 of this reference is worthy of note as
well. To the extent this teaching indicates that the Category page 45 of this
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Appeal 2006-2605
Application 09/577,909

figure is saved to a local storage 70 and includes a pointer 68 to a new page
62’, activation of this pointer is said to pull this new page 62’ and its linked
contents, such as any embedded objects, off of the local storage device to
retrieve the saved web page. There is no corresponding teaching that this
category page, as a single attachment file, itself in turn may be attached to an
email. Lastly, it is worthy of note as well that the only portion of Mantha
that appears to relate to emailing any document is the noted discussion at
column 13 of this reference.
Inasmuch as we have reversed the rejection of the independent claims
1, 10, 22, and 29 as being anticipated by Mantha and all the other associated
dependent claims in the first stated rejection under 35 U.S.C. § 102, the
rejection of the remaining dependent claims on appeal under 35 U.S.C.
§ 103 must necessarily also be reversed as well. Therefore, the decision of
the Examiner rejecting various claims under 35 U.S.C. §§ 102 and 103 is
reversed.
REVERSED

tdl

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