Ex Parte Ernest et al

Board of Patent Appeals and Interferences

May 30, 2012

10660337 (B.P.A.I. May. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LESLIE MARK ERNEST, CRAIG FELLENSTEIN,
RICK A. HAMILTON II, and JAMES WESLEY SEAMAN
____________

Appeal 2010-003457
Application 10/660,337
Technology Center 2400
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
GREGORY J. GONSALVES, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003457
Application 10/660,337

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-4, 7, 8, 10, and 12-27. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to managing documents attached to electronic
mail messages. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method for managing attachments documents to
electronic mail messages comprising the steps of;

receiving an electronic mail message at a destination
location;

determining whether there is an attachment document
associated with the received electronic mail message;

when the determination is that there is an attachment
document, determining an origin of the attachment to the
electronic message, by determining whether the attachment was
created at the location of the sender of the electronic message;

when the determination is that the attachment docket was
originally created at the location of the sender of the electronic
mail message, deleting the attachment document from the
electronic mail message received at the sender location of the
electronic mail message originated at the destination location of
the electronic message;

creating a link to the original document located at the
destination location of the electronic message;

deleting the attachment document when the
determination is that the attachment docket was originally
created at the location of the sender of the electronic mail
message
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Application 10/660,337

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updating the received message to reflect the deleted
attachment; and

determining if there are additional attachments
documents in the received electronic mail message.

REJECTION
Claims 1-4, 7, 8, 10, and 12-27 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Applicants regard as the invention.

ANALYSIS
The only outstanding rejection on appeal is under Section 112, second
paragraph.1 Appellants do not argue the merits of the rejection in the Appeal
Brief, rather, Appellants provide the following explanation:
The E]xaminer states that the claims in the invention are
indefinite and fail to particularly point out and properly claim
the subject matter for which A]pplicants regard] as the
invention. Applicants attempted to address the particular points
of the rejection by amending the claims. However, these
amendments were after the final rejection. As a result, the
E]xaminer did not enter the amendments to the claims. The
E]xaminer asserts that the amendments raised new grounds
and would require additional examination.

(App. Br. 6).2 We remind Appellants that the Board does not have authority
to enter amendments into the record. See 35 C.F.R. § 1.127 (2011) (“From

1 The Examiner withdrew the rejections under 35 U.S.C. §§ 102(e) and
103(a) (Ans. 2, 6-7).
2 We refer to the Supplemental Appeal Brief filed July 27, 2009.
Appeal 2010-003457
Application 10/660,337

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the refusal of the primary examiner to admit an amendment, in whole or in
part, a petition will lie to the Director under § 1.181.”).
In the Reply Brief, Appellants discuss the features of claim 1 and
argue that “the rejection of the claims should not be sustained” (Reply Br. 2-
4). However, “[t]he reply brief is not an opportunity to make arguments that
could have been made during prosecution, but were not. Nor is the reply
brief an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner's rejections, but were not.”
Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (“Informative”). We
therefore find that Appellants have waived arguments to the rejection under
Section 112, second paragraph.
Nevertheless, in the interest of completeness, we briefly address
Appellants’ Reply Brief arguments. Appellants do not separately argue the
claims (see Reply Br. 2-4), thus we select claim 1 as representative. See 37
C.F.R. § 41.37(c)(1)(vii).
Regarding claim 1, Appellants’ arguments are not persuasive of
definiteness because they are not commensurate with the scope of the claim,
and therefore fail to address the ambiguities in the language of claim 1. For
example, claim 1 does not recite that “the sender location can also be the
destination location when the sender is copying him/herself on the message
in addition to sending it to a destination,” and that “the electronic message is
received, for example the copied (CC) message” (Reply Br. 3). Claim 1 also
does not recite “reply messages contain the attachment document of the
originally sent message” (id.). That is, claim 1 does not specify whether the
claimed “electronic mail message” is a self-carbon-copied message or a
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reply message, or whether the “sender location” and “destination location”
are the same location or different locations.
Because claim 1 does not define whether the sender and destination
locations are the same, we have no way to reconcile the two deleting steps:
(1) “deleting the attachment document from the electronic mail message
received at the sender location of the electronic mail message originated at
the destination location of the electronic message,” and (2) “deleting the
attachment document when the determination is that the attachment docket
[sic] was originally created at the location of the sender of the electronic
mail message” as set forth in claim 1 (See Ans. 3-4). If we interpret the
sender and destination locations as being the same, as in Appellants’
example of a self-carbon-copied message (Reply Br. 3), then the deleting
steps are redundant because they delete the same attachment document twice
at the same location. On the other hand, if we interpret the sender and
destination locations as being different, as in Appellants’ example of a reply
message (Reply Br. 3), then it is unclear how the attachment document could
have originated at both the sender and destination locations. That is, in the
second interpretation, not only is the attachment document deleted twice, but
it also originates in two different places.
To the extent that Appellants seek to claim a method for handling two
distinct cases for deleting an attachment document—“[t]he deletion
operation is performed regardless of whether the electronic mail message
was from the original sender such as a copied (CC) message or from a reply
message from the destination location” (Reply Br. 3)—claim 1 is not drafted
in such manner, nor does it recite such specific limitations, as previously
noted.
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In light of the plausible claim interpretations discussed above, none of
which particularly points out and distinctly claims the subject matter which
Appellants regard as the invention, we are not persuaded of error in the
Examiner’s rejection of claim 1. See Ex parte Miyazaki, 89 USPQ2d 1207,
1211 (BPAI 2008) (“Precedential”) (“[I]f a claim is amenable to two or
more plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite.”).

CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1-4, 7, 8, 10, and 12-27
under 35 U.S.C. § 112, second paragraph.

DECISION
For the above reasons, we affirm the rejections of claims 1-4, 7, 8, 10,
and 12-27.
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)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED

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