Ex Parte Brogne et al

Board of Patent Appeals and Interferences

Jan 15, 2009

09667779 (B.P.A.I. Jan. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NICOLAS BROGNE, JEAN-PIERRE KELLES,
EMMANUEL SUTTER, and ANDREAS C. LEMKE
____________

Appeal 2008-1917
Application 09/667,779
Technology Center 2400
____________

Decided: January 15, 2009
____________

Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and ST. JOHN
COURTENAY III, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-12, which are all the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse, and enter a new ground of rejection as permitted by
37 C.F.R. § 41.50(b).
Appeal 2008-1917
Application 09/667,779

Claim 1 is illustrative.
1. A method of manipulating a sent e-mail addressed by a sender to a
plurality of addressees, said sent e-mail comprising an address header and a
body, wherein said method comprises:

routing a modification message over a data network to a server that
operates independently from any e-mail processing means associated with
each of said addressees and on which at least the body of said sent e-mail is
stored, said modification message being sent by said sender and for
modifying said e-mail body; and

modifying said e-mail body at said server according to said
modification message if said e-mail body has not been accessed on said
server by any of said addressees, wherein the modification of said e-mail
body is denied to all addressees if at least one addressee has accessed said e-
mail body on said server, and wherein the modification of said e-mail body
occurs at said server independently of any e-mail processing means
associated with each of said addressees.

The Examiner relies on the following references as evidence of
unpatentability.
Nielsen US 5,870,548 Feb. 9, 1999
Uchida US 6,327,610 B2 Dec. 4, 2001
(filed Jun. 24, 1998)

Claims 1, 2, 11, and 12 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Nielsen.
Claims 3-10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nielsen and Uchida.

2
Appeal 2008-1917
Application 09/667,779

I. The Standing Rejections
Instant claim 1 recites routing a modification message over a data
network to a server, the message being sent by a sender of an e-mail body
that is stored on the server, and modifying the e-mail body at the server
according to the modification message if the e-mail body has not been
accessed on the server by any of the addressees, “wherein the modification
of said e-mail body is denied to all addressees if at least one addressee has
accessed said e-mail body on said server . . .” (emphasis added).
In Appellants’ invention as disclosed in the initial filing, action by the
sender, not an addressee, effects modification of the e-mail body, provided
that an addressee has not read the e-mail. (See Spec. 9:11-26; Fig. 3, steps
321-324.) The language “to all addressees” was added to claim 1 (and other
claims) during prosecution, and may be considered misleading, as the
language implies there is a scenario in which an addressee may effect
modification of the e-mail body on the server. Appellants concede that the
language is inaccurate, in an amendment after final (filed May 23, 2006),
which proposed to delete “to all addressees” from the claims. We also
observe that although Appellants’ “Summary of Claimed Subject Matter” in
the Appeal Brief correctly notes it is the sender that can modify the e-mail
body of an earlier sent message, Appellants at the time of filing the Reply
Brief seem to have been misled by their own claim language -- “There is no
suggestion in Nielsen of the concept of preventing the addressees from
modifying an email in response to a modification message sent by the
sender.” (Reply Br. 5.)
3
Appeal 2008-1917
Application 09/667,779

The Examiner did not enter the proposed amendment after final.
However, the Examiner has not entered a § 112 rejection against the claims.
In our review of the instant rejections over prior art, we will interpret the “to
all addressees” recitation in the claim 1 phrase of “wherein the modification
of said e-mail body is denied to all addressees if at least one addressee has
accessed said e-mail body on said server” such that the result of the
modification is denied to all addressees, rather than the capability of
modifying the e-mail body being denied to the addressees. We enter a new
ground of rejection against the claims, infra.
In any event, Nielsen describes allowing a sender to modify or cancel
a previously sent e-mail message (Figs. 6A-6D) provided that the addressee
has not seen the message (Fig. 10A, elements 1011 and 1017, delete the
message; Fig. 11A, elements 1117 and 1108, replace the message with the
modified version). See Nielsen, col. 7, l. 40 - col. 9, l. 22; col. 11, l. 11 - col.
15, l. 39.
However, we agree with Appellants that the Examiner has not shown
that Nielsen describes, at least, providing a modification message to a server,
and modifying the e-mail body at the server according to the modification
message, where modification of the e-mail body is denied (to a sender, to an
addressee, or to anybody) if at least one addressee has accessed the e-mail
body on the server.
The Examiner’s rejection of claim 1 reads this claimed “server” on
Nielsen’s sending e-mail system 200 in “Prior Art” Figure 2. Nielsen’s
Figure 2 illustrates the problem in the prior art (with respect to Nielsen) that
once an e-mail message leaves e-mail system 200 and enters Internet 205,
the message cannot be deleted or modified. See Nielsen col. 6, ll. 17-43.
4
Appeal 2008-1917
Application 09/667,779

Nielsen’s description of the prior art in Figure 2 is not what is presently
claimed by Appellants.
In Nielsen’s system, software and databases at the message recipient’s
e-mail system determine whether a previously sent message may be
modified or deleted. See Nielsen col. 11, ll. 16-43; Fig. 4, elements 409 and
411. In neither the sender’s nor the receiver’s system as described, however,
do we find denying modification of an e-mail body on a server if at least one
addressee has accessed the e-mail body on that server.
“Anticipation requires the presence in a single prior art reference
disclosure of each and every element of the claimed invention, arranged as
in the claim.” Lindemann Maschinenfabrik GmbH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984). We thus cannot sustain
the § 102 rejection of claim 1 over Nielsen.
Each remaining claim on appeal recites or incorporates by reference
limitations similar to those of claim 1 that we have discussed. Uchida as
applied in combination with Nielsen in the § 103(a) rejection of claims 3
through 10 does not remedy the basic deficiencies in the rejection. We
therefore cannot sustain the rejection of any claim on appeal.

II. New Ground of Rejection
As permitted by 37 C.F.R. § 41.50(b), we reject claims 1-12 under
35 U.S.C. § 112, second paragraph, as failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.
As Appellants acknowledge, the recitation of “to all addressees,” as
appearing in representative claim 1 and discussed supra, reflects an
5
Appeal 2008-1917
Application 09/667,779

inaccurate description of Appellants’ invention. (See Appellants’ proposed
amendment and Remarks filed May 23, 2006.)1

CONCLUSION
The rejection of claims 1, 2, 11, and 12 under 35 U.S.C. § 102(e) as
being anticipated by Nielsen and the rejection of claims 3-10 under
35 U.S.C. § 103(a) as being unpatentable over Nielsen and Uchida are
reversed.
In a new ground of rejection, we reject claims 1-12 under 35 U.S.C.
§ 112, second paragraph.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2007). 37 C.F.R. § 41.50(b) provides “[a] new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

1 We need not consider whether the claimed subject matter lacks adequate
written description (§ 112, first paragraph) support. Based on Appellants’
intent to cancel “to all addressees” from the claims, whether the rejection
lies under the first or the second paragraph of § 112 does not matter.
6
Appeal 2008-1917
Application 09/667,779

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REVERSED -- 37 C.F.R. § 41.50(b)

rwk

Sughrue Mion Zinn MacPeak & Seas PLLC
2100 Pennsylvania Avenue NW
Washington DC 20037-3213

7