Ex Parte Aboel-Nil et al

Patent Trial and Appeal Board

Jul 30, 2013

10655656 (P.T.A.B. Jul. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SAMY MAHMOUD ABOEL-NIL, SATIN MIRCHANDANI,
MICHAEL NONEMACHER, IGOR POSTELNIK, MICHAEL
ROSENFELT, and CHRIS SCHARFF
____________

Appeal 2011-001042
Application 10/655,656
Technology Center 2400
____________

Before MARC S. HOFF, DAVID M. KOHUT,
and DAVID C. McKONE, Administrative Patent Judges.

McKONE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1 and 4-53, which constitute all the claims pending in this
application. See App. Br. 2.1 Claims 2, 3, and 54-58 are cancelled. See id.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 Throughout this opinion, we refer to the Appeal Brief filed July 7, 2009,
(“App. Br.”), as supplemented on April 29, 2010, the Examiner’s Answer
mailed July 30, 2010 (“Ans.”), and the Reply Brief filed September 30, 2010
(“Reply Br.”).
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THE INVENTION
Appellants’ invention relates to redirecting email during an unplanned
outage. See Spec. 1:16-20. Claim 1, which is illustrative of the invention,
reads as follows:
1. A method for providing backup electronic
messaging services during unplanned outages,
comprising the steps of:
redirecting email messages from a primary server
to a secondary server when said primary server is
unavailable;
notifying intended recipients of said email
messages that the redirection of said email messages has
been implemented;
providing said intended recipients with access to
said email messages on a secondary server while said
primary server is unavailable;
notifying said intended recipients when said
primary server is again available; and
incorporating said email messages received while
said primary server was unavailable into said intended
recipient’s primary email file so as to create a continuous
email history.

THE REJECTIONS
The Examiner relies on the following prior art in rejecting the claims:
Quinn US 5,944,786 Aug. 31, 1999
Ouchi US 6,553,407 B1 Apr. 22, 2003
(filed Dec. 12, 2001)
Elder US 2004/0039889 A1 Feb. 26, 2004
(filed Aug. 20, 2002)
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Burton-Krahn US 2004/0153709 A1 Aug. 5, 2004
(filed July 3, 2003)
Frietas US 7,092,998 B2 Aug. 15, 2006
(Jan. 16, 2001)
Claims 17-29 and 42-53 stand rejected on a new ground of rejection
under 35 U.S.C. § 112, second paragraph, as indefinite. See Ans. 4-8.
Claims 1, 4, 6-11, 14, 15, 17, 19-24, 27, 28, 30, 32-36, 39, 40, 42, 44-
48, 51, and 52 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Ouchi, Burton-Krahn, and Quinn. See Ans. 8-46.
Claims 5, 12, 13, 18, 25, 26, 31, 37, 38, 43, 49, and 50 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Ouchi, Burton-Krahn, Quinn,
and Elder. See Ans. 46-55.
Claims 16, 29, 41, and 53 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ouchi, Burton-Krahn, Quinn, and Frietas. See Ans. 55-
59.

ISSUES
The dispositive issues raised by Appellants’ contentions are:
(1) Whether the Specification discloses sufficient structure
corresponding to the means-plus-function limitations of independent claims
17 and 42, such that claims 17 and 42 are definite under 35 U.S.C. § 112,
second paragraph. See Reply Br. 4-9.
(2) Whether Ouchi, Burton-Krahn, and Quinn teach “redirecting
email messages from a primary server to a secondary server,” as recited in
independent claim 1. See App. Br. 4-5.
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Appellants’ contentions raise additional issues. Since the resolution
of the identified issues is dispositive of the appeal, we do not reach the
additional issues.

ANALYSIS
REJECTION OF CLAIMS 17-29 AND 42-53
UNDER 35 U.S.C. § 112, SECOND PARAGRAPH
Independent claims 17 and 42 recite several means-plus-function
limitations under 35 U.S.C. § 112, sixth paragraph. In a new ground of
rejection instituted in the Examiner’s Answer, the Examiner concludes that
each of these means-plus-function limitations is indefinite for failure of the
Specification to describe corresponding structure. See Ans. 7. Specifically,
the Examiner concludes that the Specification does not describe any
software instructions or algorithms for performing the recited functions of
these means-plus-function limitations. See id.
“If one employs means-plus-function language in a claim, one must
set forth in the specification an adequate disclosure showing what is meant
by that language. If an applicant fails to set forth an adequate disclosure, the
applicant has in effect failed to particularly point out and distinctly claim the
invention as required by the second paragraph of section 112.” Default
Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291,
1298 (Fed. Cir. 2005) (citation, internal quotation marks, and brackets in
original omitted). “In cases involving a computer-implemented invention in
which the inventor has invoked means-plus-function claiming, [the Federal
Circuit] has consistently required that the structure disclosed in the
specification be more than simply a general purpose computer or
microprocessor.” Aristocrat Techs. Australia PTY Ltd. v. Int’l Game Tech.,
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521 F.3d 1328, 1333 (Fed. Cir. 2008). For example, “[w]hen dealing with a
‘special purpose computer-implemented means-plus-function limitation,’
[the Federal Circuit] require[s] the specification to disclose the algorithm for
performing the function.” Function Media, L.L.C. v. Google, Inc., 708 F.3d
1310, 1318 (Fed. Cir. 2013).
For each of the following means-plus-function limitations, Appellants
contend that the corresponding structure is “an email application residing on
a primary server” for performing the recited function and/or “functionality
that resides within the email application”:
 means for managing users’ email activity through a software
application residing on a primary server (claim 17). See Reply Br.
4-5 (citing Spec. 5:21-23);
 means for determining the email addresses that reside on said
primary server (claim 17). See Reply Br. 5 (citing Spec. 5:19-6:4);
 means for creating on a secondary server email addresses
redundant to said email addresses that reside on said primary
server (claim 17). See Reply Br. 5 (citing Spec. 6:5-11);
 means for redirecting said inbound email messages addressed to
said email addresses that reside on said primary server from said
primary server to said email addresses that reside on said
secondary server at such time as said email addresses that reside on
said primary server are not detectable to said inbound email
messages, thereby providing continuous access for said users to
said inbound email messages and a means for generating outbound
email messages from said users’ existing email address (claim 17).
See Reply Br. 5-6 (citing Spec. 5:21-23; 6:5-11);
 means for redirecting said inbound email messages sent to said
email addresses that reside on said secondary server from said
secondary server to said email addresses that reside on said
primary server after said time at which said email addresses that
reside on said primary server are again detectable to inbound email
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messages (claim 17). See Reply Br. 6-7 (citing Spec. 5:21-23; 6:5-
11);
 means for synchronizing said inbound email messages received on
said secondary server from said time as said email addresses that
reside on said primary server are not detectable to said inbound
email messages until the time said email addresses that reside on
said primary server are again detectable to inbound email messages
with the existing messages in said software application, thereby
completing the email message history within said software
application (claim 17). See Reply Br. 7 (citing Spec. 5:21-23; 6:5-
11);
 software means for managing users’ email (claim 42). See Reply
Br. 7-8 (citing Spec. 5:21-23);
 means for redirecting inbound email messages from a primary
server to a secondary server when said primary server is
unavailable (claim 42). See Reply Br. 8 (citing Spec. 5:21-23); and
 means for incorporating said email messages received while said
primary server was unavailable into said software means for
managing users’ email so as to create a complete email history
(claim 42). See Reply Br. 8-9 (citing Spec. 5:21-23).
First, we note that the Appellants’ cites to the Specification do not
show an email application that performs any of these claimed functions other
than “determining the email addresses that reside on said primary server.”
See Spec. 5:19-6:11. Indeed, claim 17, for example, is limited to a system
for processing email “during an unplanned outage.” Appellants have not
explained how an email application on a primary server would redirect an
incoming email message during an unplanned outage of the primary server.
As another example, regarding the “means for determining” of claim 17, the
Specification states that “email addresses that reside on a primary server are
monitored using a means independent from the email application used to
process email messages to create a registry of existing email addresses 301,”
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Spec. 8:22-9:1, suggesting that the recited determining function is not
performed by the email application.
Second, assuming that an email application is described as performing
these recited functions, the portions of the Specification Appellants cite
(Spec. 5:19-6:11) do not provide any details regarding the implementation of
the “email application 240.” Instead, the email application is “simply an
abstraction that describes” certain functions – in other words it “is
essentially a black box that performs a recited function. But how it does so
is left undisclosed.” Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371,
1383 (Fed. Cir. 2009). “It is well settled that simply disclosing software,
however, without providing some detail about the means to accomplish the
function, is not enough.” Function Media, 708 F.3d at 1318 (citation,
internal quotation marks, and brackets in original omitted).
Appellants argue that, from the Specification’s description, “a person
of ordinary skill in the art would be able to recognize the structure in the
specification and associate it with the corresponding function in the claim”
that, “[i]n most if not all of the cases, the recited means is the software
equivalent of specific off-the-shelf parts,” and that “[t]here are any number
of commercially available software routines that perform these functions
when executed on a processor and would have been known to, and
immediately recognized by, any person of ordinary skill in the art.” Reply
Br. 9. However, “it is well established that proving that a person of ordinary
skill could devise some method to perform the function is not the proper
inquiry as to definiteness—that inquiry goes to enablement.” Function
Media, 708 F.3d at 1319 (emphasis omitted) (citing Blackboard, 574 F.3d at
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1385). Thus, we agree with the Examiner that the Specification fails to
describe corresponding structure for each of these limitations.
For the “means for assessing the time at which said email addresses
that reside on said primary server are again detectable to said inbound email
messages” of claim 17, Appellants contend that the corresponding structure
is “periodically pinging the email addresses residing on the primary server
and evaluating whether a response is received.” Reply Br. 6 (citing Spec.
7:16-20). We note that the corresponding structure identified by Appellants
is not structure at all. Rather, it is simply another function. Moreover, the
portion of the Specification cited by Appellants (Spec. 7:16-20) does not
identify any structure that performs periodically pinging. Thus, we agree
with the Examiner that the Specification does not disclose structure
corresponding to the “means for assessing” of claim 17.
Given the above-noted ambiguities, we find it unnecessary to reach
the remaining means-plus-function limitations of claims 17 and 42. In sum,
we agree with the Examiner that the Specification fails to describe
corresponding structure for several means-plus-function limitations of
claims 17 and 42 and therefore claims 17 and 42 are indefinite.
Accordingly, we sustain the rejection of (1) claims 17 and 42; (2) claims 18-
29, which depend on claim 17 and therefore incorporate its indefinite
limitations; and (3) claims 43-53, which depend on claim 42 and therefore
incorporate its indefinite limitations.

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REJECTION OF CLAIMS 1, 4, 6-11, 14, 15, 17, 19-24, 27, 28, 30, 32-36, 39, 40,
42, 44-48, 51, AND 52 UNDER 35 U.S.C. § 103(a)
Claims 1, 4, 6-11, 14, 15, 30, 32-36, 39, and 40
Claim 1 recites, inter alia, “redirecting email messages from a primary
server to a secondary server when said primary server is unavailable.” The
Examiner finds that Burton-Krahn teaches this limitation. See Ans. 9-10
(citing Burton-Krahn, ¶ 0061). Burton-Krahn teaches a technique for
providing transparent fault protection that employs master and back-up
servers, each running duplicate applications. See Burton-Krahn, Abstract.
Appellants argue that Burton-Krahn teaches sending email messages
to both the master and back-up servers. See App. Br. 4 (citing Burton-
Krahn, ¶¶ 0058-59). Both paragraphs 0058 and 0059 state that “[b]oth the
Master and the Back-up servers receive the same input from the network,”
supporting Appellants’ contention. According to Appellants, Burton-Krahn
teaches redundancy rather than the redirection of email messages. See App.
Br. 4. “[R]edirect” means “[t]o change the direction or course of.” THE
AMERICAN HERITAGE COLLEGE DICTIONARY 1166 (4th ed. 2004). Given this
ordinary meaning, we agree with Appellants that sending duplicate email
messages to master and back-up servers is not redirecting email messages
from a master server to a back-up server.
The Examiner responds by construing “redirecting email messages
from a primary server to a secondary server when said primary server is
unavailable” to mean “after the primary server becomes unavailable, the
responsibility of maintaining e-mail message delivery is redirected to the
secondary server.” Ans. 54. We conclude that this construction is
unreasonable. Claim 1 recites “redirecting email messages” themselves, not
redirecting responsibility of maintaining e-mail message delivery. The
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Examiner fails to explain why a construction that deviates from the plain
language of claim 1 is appropriate. See Phillips v. AWH Corp., 415 F.3d
1303, 1312 (Fed. Cir. 2005) (en banc) (“We have frequently stated that the
words of a claim are generally given their ordinary and customary meaning.”
(citation and internal quotation marks omitted)).
In sum, we are persuaded that the Examiner erred in finding that
Burton-Krahn teaches redirecting email messages from a primary server to a
secondary server. Accordingly, we do not sustain the rejection of (1)
independent claim 1; (2) independent claims 4 and 30, which include
recitations substantially the same as that we find not to be taught in Burton-
Krahn; (3) claims 6-11, 14, and 15, which depend on claim 4; and (4)
claims 32-36, 39, and 40, which depend on claim 30.

Claims 17, 19-24, 27, 28, 42, 44-48, 51, and 52
As explained above, claims 17, 19-24, 27, 28, 42, 44-48, 51, and 52
are indefinite. The prior art rejections for these claims must fall and be
reversed pro forma because they necessarily are based on speculative
assumptions as to the meanings of these claims. See In re Steele, 305 F.2d
859, 862-63 (CCPA 1962). Accordingly, we do not sustain the rejection of
claims 17, 19-24, 27, 28, 42, 44-48, 51, and 52.

REMAINING OBVIOUSNESS REJECTIONS
Claims 5, 12, 13, 16, 31, 37, 38, and 41
Claims 5, 12, 13, and 16 depend on claim 4; claims 31, 37, 38, and 41
depend on claim 30. Thus, each includes a recitation substantially the same
as that we find to not be taught by the cited prior art. The Examiner also
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does not rely on Elder or Frietas to cure the above-noted deficiency of
Burton-Krahn. See Ans. 46-59. Accordingly, we do not sustain the
rejection of claims 5, 12, 13, 16, 31, 37, 38, and 41.

Claims 18, 25, 26, 29, 43, 49, 50, and 53
As explained above, claims 18, 25, 26, 29, 43, 49, 50, and 53 are
indefinite. The prior art rejections for these claims must fall and be reversed
pro forma because they necessarily are based on speculative assumptions as
to the meanings of these claims. See Steele, 305 F.2d at 862-63.
Accordingly, we do not sustain the rejection of claims 18, 25, 26, 29, 43, 49,
50, and 53.

DECISION
The decision of the Examiner to reject claims 17-29 and 42-53 under
35 U.S.C. § 112, second paragraph, is affirmed. The decision of the
Examiner to reject claims 1 and 4-53 under 35 U.S.C. § 103(a) is reversed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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