Ex Parte Adams et alDownload PDFPatent Trial and Appeal BoardFeb 29, 201612806591 (P.T.A.B. Feb. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/806,591 08/17/2010 75322 7590 03/02/2016 BlackBerry Limited (Fitch Even) Patent Team 2200 University A venue East Waterloo, ON N2K OA 7 CANADA FIRST NAMED INVENTOR Neil Patrick Adams UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 9169-98698 1715 EXAMINER KHAN,SIDRA ART UNIT PAPER NUMBER 2443 NOTIFICATION DATE DELIVERY MODE 03/02/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): portfolioprosecution@blackberry.com ptoboca@fggbb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ExparteNEIL PATRICK ADAMS and VAN QUY TU Appeal2013-005102 Application 12/806,591 Technology Center 2400 Before STEPHEN C. SIU, JEREMY J. CURCURI, and IRVINE. BRANCH, Administrative Patent Judges. BRANCH, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1-3 and 5-20. Claim 4 is cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellants' claimed subject matter provides for obtaining a forwarded portion of a second email message, previously archived by an email server associated with a user, this is contained in a first email message without intervention of the user. Abstract. Claim 1 is illustrative: 1. A method, comprising the step of: conveying a first email message associated with a mobile communication device of a user, wherein the first email message comprises a forwarded portion of a second email Appeal2013-005102 Application 12/806,591 message that has been previously archived by an email server associated with the user; wherein the step of conveying comprises the step of: obtaining, without intervention of the user, the forwarded portion of the second email message. THE REJECTIONS The Examiner rejected claims 1-3, 5-9, and 15-20 under 35 U.S.C. § 103(a) as unpatentable over Kaghazian (US 2008/0016169 Al; Jan. 17, 2008) in view of Reddy (US 2008/0155035 Al; June 26, 2008). Ans. 4--12. 1 The Examiner rejected claims 10-14 under 35 U.S.C. § 103(a) as unpatentable over Kaghazian, Reddy, and Kulkarni (US 2007 /0067399 Al; Mar. 26, 2007). Id. at 13-16. THE OBVIOUSNESS REJECTION OVER KAGHAZIAN AND REDDY Claims 1-3; 5-9; and 15-20 The Examiner finds the Kaghazian teaches or suggests all elements of claim 1, except that Kaghazian does not disclose "obtaining, without intervention of the user, the forwarded portion of the second email message." For this, the Examiner cites Reddy. Ans. 4--6. Appellants argue the Examiner erred because Kaghazian "offers no teachings with respect to an email message that has been previously archived by an email server" and that "Kaghazian is utterly silent with respect to archiving or even temporarily storing an 'email' by an email server." App. 1 Throughout this Opinion, we refer to (1) the Appeal Brief filed January 14, 2013 ("App. Br."); (2) the Examiner's Answer mailed February 12, 2013 ("Ans."); and (3) the Reply Brief filed February 20, 2013 ("Reply Br."). 2 Appeal2013-005102 Application 12/806,591 Br. 9. Appellants reason that, because Kaghazian does not disclose "a second email message that has been previously archived by an email server," "it is impossible for Kaghazian to meet any of the remaining claim requirements." Id. at 11. The Examiner responds to Appellants' arguments, reaffirming that "Kaghazian teaches a method of selective sending of portions of an electronic content and forwards that particular portion of an email message that has been previously archived." Ans. 17 (citing Kaghazian Figs. 2, 5, and 7; and i-fi-f l, 8, 10, 12, 19, 22, 23, and 24). Kaghazian discloses a server (Fig. 7, ref. no. 708) that saves emails from one user to another (i-f 24). The Examiner interprets "saving" to the claimed "archiving." Ans. 17. Kaghazian also discloses a user marking up such an email and forwarding the marked up portions only to another user in a subsequent email (i-f 19). In other words, the Examiner finds that Kaghazian discloses "conveying a first email message associated with a mobile communication device of a user, wherein the first email message comprises a forwarded portion of a second email message that has been previously archived by an email server associated with the user," as recited in claim 1. We see no error. We are unpersuaded by Appellants' rebuttal that "those skilled in the art will consider Kaghazian' s more casual approach to storage to be inconsistent with the ordinary meaning of 'archiving."' Reply Br. 2. Kaghazian discloses that the server (708) keeps a local copy of the email "at least temporarily" (i-f 24), which, casual or not, includes indefinite storage. Appellants do not offer an alternative definition of "archive" to demonstrate 3 Appeal2013-005102 Application 12/806,591 inconsistency with respect to the Examiner's interpretation that Kaghazian's "saving" is the claimed "archiving." Ans. 17. We also are unpersuaded of error by Appellants' rebuttal that "regardless of whether Kaghazian makes use of 'archived' email content[], it is clear that Kaghazian does not espouse an approach that includes obtaining a portion to be forwarded 'without intervention of the user'." Reply Br. 4--5. The Examiner does not cite Kaghazian for claim 1 's "obtaining, without intervention of the user, the forwarded portion of the second email message." For this limitation, the Examiner cites Reddy. Ans. 5---6. Accordingly, we are unpersuaded of error in the Examiner's rejection of claim 1. We sustain the Examiner's decision to reject claim 1 and, because Appellants base their arguments as to the remaining claims on arguments presented with respect to claim 1 (App. Br. 11-12), we sustain the Examiner's rejections of all pending claims. DECISION The Examiner's decision rejecting claims 1-3 and 5-20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 4 Copy with citationCopy as parenthetical citation