Ex Parte Aoki

Board of Patent Appeals and Interferences

Sep 13, 2010

10253662 (B.P.A.I. Sep. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KAZUMA AOKI
____________

Appeal 2009-012524
Application 10/253,662
Technology Center 2600
____________

Before JOHN C. MARTIN, JOSEPH F. RUGGIERO, and
CARLA M. KRIVAK, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing
was held on July 21, 2010
We reverse.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-012524
Application 10/253,662

2
STATEMENT OF THE CASE
Appellant’s claimed invention is an electronic mail receiving device
that outputs received email messages in response to a specified output
method (Spec. ¶ [0001]; [0034]).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. An electronic mail receiving device that receives an
electronic mail message transmitted to an address specified by a
sender, via a communication line, and can output the received
electronic mail message by at least two output units,
comprising:

an output condition setting unit that sets an output condition to
specify one of the output units, which output the received
electronic mail message, in accordance with a command
entered from outside;

an output method specifying unit that determines whether the
received electronic mail data includes data corresponding to the
output condition, and specifies the output unit, which outputs
the electronic mail message, according to the output condition,
when the electronic mail message includes the data
corresponding to the output condition; and

an output control unit that outputs the received electronic mail
message by the output unit specified by the output method
specifying unit.

REFERENCES
Harkins US 5,513,126 Apr. 30, 1999
Ho US 6,061,502 May 9, 2000
Wakabayashi US 6,785,018 B2 Aug. 31, 2004

Appeal 2009-012524
Application 10/253,662

3
The Examiner rejected claims 1-4, 17 and 20 under 35 U.S.C.
§ 102(b) based upon the teachings of Harkins.
The Examiner rejected claims 9, 10, and 14-16 under 35 U.S.C.
§ 103(a) based upon the teachings of Harkins.
The Examiner rejected claims 11-13 under 35 U.S.C. § 103(a) based
upon the teachings of Harkins and Wakabayashi.
The Examiner rejected claims 5-8, 18, and 19 under 35 U.S.C.
§ 103(a) based upon the teachings of Harkins and Ho.
The Examiner finds Harkins teaches a receiver profile that establishes
properties and modes for the receipt of information by a receiver on a
network. The receiver can also control sender access including permitting
senders to override the receiver profile. (Ans. 12-13; Harkins, col. 4, ll. 42-
53) The Examiner finds profile properties 153 include profile categories
such as facsimile, color printer, etc., which correspond to Appellant’s output
units (Ans. 3, 13; Harkins, col. 8, ll. 42-54). Specifically, the Examiner
reads claim 1’s “output condition setting unit” on the profile properties
display 153 of Figure 4, which is used to identify preferred forms the
documents should take when sent to (and thus received by) the user (Ans.
12-13; Harkins, col. 8, ll. 29-46). As shown in Figure 4, the choices offered
by the profile properties include, for example, e-mail (i.e., “E-Net
Address”), “Page Printer,” and “Color Printer.” We agree with Appellant
that the Examiner’s reliance on the profile properties display for the claimed
“output condition setting unit” is misplaced (Reply Br. 6). These profile
properties do not determine how a received message is to be output at the
receiver. Instead, they permit a user to identify the types of message(s) that
the user prefers to receive. The only information in Figure 4 regarding
Appeal 2009-012524
Application 10/253,662

4
messages to be sent to the “E-Net Address” is its address:
“Smith@RIT.com@Internet#.” Similarly, the only information provided in
Figure 4 regarding messages to be sent to the “Page Printer” or the “Color
Printer” are their respective addresses: “DocuTech@RIT.com@Internet#”
and “Tektronix Phaser II@RIT.com@Inernet#.”
Because Harkins does not teach all the features of claims 1 and 17,
Harkins does not anticipate these claims or claims 2-4 and 20 that depend
therefrom. Further, because the Examiner’s obviousness rejection of the
remaining claims, including independent claim 9 and dependent claims 5-8,
10-16, 17, and 18, is based on the incorrect premise that the profile
properties display depicted in Harkin’s Figure 4 determines how a received
message is to be output at the receiver, these claims are also not obvious
over the combination of Harkins with Ho or Wakabayshi.

DECISION
The Examiner’s decision rejecting claims 1-20 is reversed.

REVERSED

KIS

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