Ex Parte Cook et al

Board of Patent Appeals and Interferences

Nov 16, 2010

10397064 (B.P.A.I. Nov. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID P. COOK,
GARY G. LIU, and JOHN KALAN
____________

Appeal 2009-006137
Application 10/397,064
Technology Center 2400
____________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and JAY P.
LUCAS, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL 1

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 2009-006137
Application 10/397,064

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STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-12, 35, 47, and 48. The
Appellants appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction
under 35 U.S.C. § 6(b).
INVENTION
The Appellants describe the invention at issue on appeal as follows.
A system, method and computer program product for email
communications are provided that takes care of the differing
sender and recipient preferences including differing security
levels and then . . . chooses a . . . method of delivery that will
be acceptable to both the sender and the recipient.
(Spec. 6.)

ILLUSTRATIVE CLAIM
1. A method for the secure delivery of a message in a
communication system comprising:
identifying a method for delivery of a message including
considering preferences of a sender and a recipient; and
sending the message from the sender to the recipient
using the identified method.

REJECTIONS
Claims 1, 2, 4 and 35 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over U.S. Patent No. 6,023,700 ("Owens") and U.S. Patent No.
6,385,655 B1 ("Smith").
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Claims 3 and 12 stand rejected under § 103(a) as being unpatentable
over Owens; Smith; and U.S. Patent No. 6,643,684 B1 ("Malkin").
Claim 5 stand rejected under § 103(a) as being unpatentable over
Owens; Smith; and U.S. Patent No. 6,721,784 B1 ("Leonard").
Claims 6-8 stand rejected under § 103(a) as being unpatentable over
Owens; Smith; Leonard; and U.S. Patent No. 6,769,016 B2 ("Rothwell").
Claims 9-12 stand rejected under § 103(a) as being unpatentable over
Owens, Smith, and Rothwell.
Claims 47 and 48 stand rejected under § 103(a) as being unpatentable
over Owens; Smith; and U.S. Patent No. 6,584,564 B2 ("Olkin").

CLAIM GROUPING
Based on the Appellants' arguments, we will decide the appeal of
claims 1-12, 35, 47, and 48 on the basis of claim 1 alone.

ISSUE
The issue before us is whether the Examiner erred in finding that
Owens teaches sending a message in accordance with preferences of a
sender and a recipient.

FINDINGS OF FACT
Owens teaches "an electronic mail gateway for integrating
communications to facilitate access to electronic mail, voice mail, and fax
mail messages." (Col. 1, ll. 9-11.)

Appeal 2009-006137
Application 10/397,064

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ANALYSIS
The Appellants argue that "Smith and Owens, alone or in
combination, disclose delivering a message in accordance with preferences
of a single entity (a sender or a receiver), but do not disclose delivering a
message including considering preferences of two separate entities (i.e., the
sender and the recipient)." (Appeal Br. 5.)
The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001)
(citations omitted).
Here, Owens "offers a variety of features to both 'senders' and
'receivers' of messages." (Col. 3, ll. 14-15.) Regarding senders, the
reference teaches that "[s]enders use a particular communication mode (e.g.,
telephone, computer/modem) to send messages." (Id. at ll. 16-18.) Because
the senders can choose a particular communication mode to use, we agree
with the Examiner that "the sender of the message chooses their preference .
. . ." (Ans. 9.)
Regarding receivers of messages, the reference includes the following
teachings, which were cited by the Examiner. (Ans. 3.)
[A] message receiver may indicate a preferred communication
medium by selecting options that define one or more rules to be
applied automatically by an electronic mail service provider to
inbound messages. For example, a receiver may, by selecting
certain options, define a rule to request that messages initiated
via the telephone be stored in a voice mailbox and forwarded to
an e-mail mailbox for later viewing. Alternatively, a receiver
may, by selecting certain options, define a rule to request that
messages initiated via a computer/modem (i.e., e-mail
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messages) be stored in an e-mail mailbox and forwarded to a
voice mailbox for later retrieval.
(Col. 3, ll. 53-65.) Owens also describes the following additional
preferences that can be specified by the receivers.
A text-to-speech operation performed at the
telecommunications service allows the electronic mail message
to be heard by the message receiver when he or she calls the
switch to hear the message. Alternatively, the message receiver
may arrange to receive the electronic mail message at a fax
machine specified by the receiver.
(Col. 5, ll. 30-36.) Taken collectively, the aforementioned teachings
persuade us that Owens sends a message in accordance with preferences of a
sender and a recipient.
Furthermore, the Examiner and the Appellants both discuss the first
column of Owens. (Ans. 10, Appeal Br. 4-5.) We note that the same
column (ll. 42-45) explains that "[s]enders and receivers may be required to
select a medium prior to communicating so the parties are assured the
communication will be received in a timely manner." We are persuaded that
this explanation also teaches identifying a method for delivery of a message
including considering preferences of a sender and a recipient and
sending the message from the sender to the recipient using the identified
method.
Therefore, we conclude that the Examiner did not err in finding that
Owens teaches sending a message in accordance with preferences of a
sender and a recipient.

Appeal 2009-006137
Application 10/397,064

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DECISION
We affirm the rejections of claims 1-12, 35, 47, and 48. No time for
taking any action connected with this appeal may be extended under 37
C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

Tkl

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