Ex Parte Oehrke

Board of Patent Appeals and Interferences

Jul 31, 2007

09594070 (B.P.A.I. Jul. 31, 2007)

The opinion in support of the decision being entered
today is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TERRY L. OEHRKE
____________________

Appeal 2007-1044
Application 09/594,070
Technology Center 2100
____________________

Decided: July 31, 2007
____________________

Before LANCE LEONARD BARRY, MAHSHID D. SAADAT, and JAY P.
LUCAS, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-19, which are all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
Appellant’s invention relates to messaging in computer networks for
guaranteed messaging service on an internet provider (IP) network
(Specification 1). According to Appellant, instead of returning a message as
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Application 09/594,070

undeliverable, the message is rerouted to a relay server (Specification 2)
which attempts to re-send or re-route the message (id.).
Independent Claim 1 reads as follows:
1. A method for providing a messaging service on a computer network,
the method comprising the steps of:
(a) routing a message to a messaging server;
(b) providing the message to a relay server when the message is
undeliverable to the messaging server; and
(c) re-routing the message from the relay server to the messaging
server when operational.

The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Nelson US 5,974,122 Oct. 26, 1999
Doshi US 6,130,875 Oct. 10, 2000
(filed Oct. 29, 1997)
McDowell US 6,438,583 B1 Aug. 20, 2002
(filed Jun. 23, 1999)

The Examiner rejected claims 1-4, 7-12, and 15-19 under 35 U.S.C.
§ 103(a) as being unpatentable over McDowell and Nelson and claims 5, 6,
13, and 14 under 35 U.S.C. § 103(a) as being unpatentable over McDowell,
Nelson, and Doshi.

We reverse.

ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103. The issue turns on whether there
is a legally sufficient justification for combining the disclosures of
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McDowell and Nelson and if so, whether the combination teaches the
claimed subject matter. Specifically, the issue is:
whether storing the undeliverable facsimile in the messaging platform
of Nelson and attempting to deliver it later, when combined with the
teachings of McDowell, is the same as providing a message to a relay
server when the message is undeliverable and rerouting the message
to the messaging server when operational, as recited in the claims.

FINDINGS OF FACT
The following findings of fact (FF) are believed to be supported by a
preponderance of the evidence.
1. McDowell relates to a method and apparatus for re-routing of e-
mail messages destined for a prior address to the new address of an intended
recipient (Abstract).
2. Instead of ignoring an undeliverable message, McDowell re-
routes the e-mail sent to an old Internet Service Provider (ISP) to a re-route
server that sends the message to the new address on another ISP (col. 1, ll.
48-55). Alternatively, the old ISP may forward the message directly to the
other ISP (col. 1, ll. 59-61).
3. As shown in Figures 1A-14B, the reroute server always re-
routes the message to the new ISP without attempting to send it to the old
ISP because the address on the old ISP is not operational anymore as the
user is no longer a subscriber to the old ISP (col. 1, ll. 51-53). For example,
Figure 1 shows that the message is sent to a re-route server which in turn
sends it to the new ISP based on the forwarding information present in the
old ISP (col. 7. ll. 11-33).
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4. If the undeliverable message to the old ISP has a valid re-route
request, the message is passed to the re-route server where the new address
for the recipient is determined from stored information and used for
forwarding the message to the recipient’s new address (col. 8, ll. 1-13).
5. Nelson describes a facsimile system wherein the facsimile
message is stored on a messaging platform only if the destination is
unavailable at the first time and is transmitted a second time when the
destination becomes available (Abstract; col. 1, l. 65 through col. 2, l. 7).
6. Nelson further shows in Figure 3 the facsimile routing through
a communications network that includes originating Service Switching Point
(SSP) 216 corresponding to the originating fax machine and destination SSP
208 corresponding to the destination fax machine 206 (col. 4, ll. 26-33). If
the destination condition is “busy” or “no answer” at the first time, the
originating SSP routes the telephone call and the facsimile message to a
messaging platform 214 which stores the message and attempts transmitting
at a later time (col. 4, ll. 50-65 and col. 6, ll. 6-26).

PRINCIPLES OF LAW
A claimed invention is unpatentable as obvious “if the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” See 35 U.S.C. § 103(a) (2002); In re Dembiczak,
175 F.3d 994, 998, 50 USPQ2d 1614, 1616 (Fed. Cir. 1999).
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“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161,
82 USPQ2d 1687, 1691 (Fed. Cir. 2007) (quoting KSR Int’l v. Teleflex, Inc.,
127 S. Ct. 1727, 1739-40, 82 USPQ2d 1385, 1395 (2007)). “One of the
ways in which a patent's subject matter can be proved obvious is by noting
that there existed at the time of invention a known problem for which there
was an obvious solution encompassed by the patent's claims.” KSR, 127
S. Ct. at 1742, 82 USPQ2d at 1397. Design incentives and market forces as
well as implementing a predictable variation may also help the person of
ordinary skill in the art to recognize the obviousness of claimed
combinations of elements of prior art. KSR, 127 S. Ct. at 1740, 82 USPQ2d
at 1396.
Alternatively, a holding of obviousness can be based on a showing
that there was “an apparent reason to combine the known elements in the
fashion claimed.” KSR, 127 S. Ct. at 1740-41, 82 USPQ2d at 1396. In other
words, “there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” Id.,
127 S. Ct. at 1741, 82 USPQ2d at 1396 (quoting In re Kahn, 441 F.3d 977,
987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)). However, this reasoning is
not limited to the problem the patentee was trying to solve; “any need or
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed,” KSR, 127 S. Ct. at 1742, 82 USPQ2d at 1397
(emphasis added).
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Furthermore, a reference may be understood by the artisan as
suggesting a solution to a problem that the reference does not discuss. See
KSR, 137 S. Ct. at 1742, 82 USPQ2d at 1397 (“Common sense teaches . . .
that familiar items may have obvious uses beyond their primary purposes,
and in many cases a person of ordinary skill will be able to fit the teachings
of multiple patents together like pieces of a puzzle. . . . A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”).
Further, a rejection based on section 103 must rest upon a factual
basis rather than conjecture, or speculation. “Where the legal conclusion [of
obviousness] is not supported by the facts it cannot stand.” In re Warner,
379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967). See also In re Lee,
277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002) and In re
Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).

ANALYSIS
The rationale argued by the Examiner for combining the references is
based on the common goal of ensuring the delivery of messages when the
delivery to the destination fails (Answer 4 and 8). Appellant contends that
the references are directed to different kinds of problems and do not share a
common goal (Br. 10; Reply Br. 6). We agree with Appellant. While
McDowell attempts to re-route e-mail messages to a recipient who is no
longer a subscriber of an old ISP (FF 1 & 2) and Nelson describes resending
of facsimile messages to a number which was busy the first time (FF 5), the
problems the two references solve and the mechanism by which the
messages are re-routed are not the same.
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We also agree with Appellant (Reply Br. 6-7) that McDowell’s re-
routing the e-mail message that was sent to the correct address in the correct
ISP but to a recipient who is no longer a subscriber differs from Nelson’s re-
routing a facsimile message to a number that is busy. McDowell merely
forwards the e-mail message to a re-route server only if the new address of
the subscriber can be identified, either based on the forwarding information
(FF 3) or if the re-route server has the information in the storage (FF 4).
Nelson on the other hand, sends the facsimile message to the correct number
or subscriber and if the number is busy or does not answer, sends the
message to the message platform to be temporarily stored (FF 5).
Therefore, the specific problem encountered by each of the references
is caused by different failures and have different solutions. McDowell,
attempts to re-route the message to the ISP where the recipient is currently
subscribed to whereas Nelson stores the massage for later delivery to the
same number. In that regard, the only predictable result that may be
achieved by storing the e-mail in McDowell and resending it to the same old
ISP is that the message will still be undeliverable since the recipient no
longer subscribes to the old ISP.
Additionally, the Examiner’s explanation (Answer 9) as to why the
facsimile service network of Nelson may include servers notwithstanding,
the differences between the cause of messages being undeliverable and the
mechanism for re-routing the messages of McDowell and Nelson would not
have prompted a person of ordinary skill in the relevant field to combine the
elements in the way the instant claims require. Thus, we find that
Examiner’s rejection rests on less than a preponderance of evidence and
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thus, fails to provide sufficient reasons for finding claims 1-4, 7-12, and 15-
19 unpatentable for obviousness under 35 U.S.C. § 103(a) over McDowell
and Nelson.
With respect to the rejection of claims 5, 6, 13, and 14 over the
combination of McDowell and Nelson with Doshi, we note that the
Examiner has not pointed to any teachings in Doshi that would have
overcome the deficiency of McDowell and Nelson combination as discussed
above. Thus, we do not sustain the 35 U.S.C. § 103 rejection of claims 5, 6,
13, and 14 as being unpatentable over McDowell, Nelson, and Doshi.

DECISION
The decision of the Examiner rejecting claims 1-19 under 35 U.S.C.
§ 103 is reversed.

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REVERSED

eld

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