Ex Parte Henry Burton et al

Board of Patent Appeals and Interferences

Mar 28, 2012

10469362 (B.P.A.I. Mar. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAMES JOHN HENRY BURTON and DALE JOHN
WILLIAMS
____________________

Appeal 2010-001317
Application 10/469,362
Technology Center 2100
____________________

Before: LANCE LEONARD BARRY, ST. JOHN COURTENAY III, and
JAMES R. HUGHES, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
The Patent Examiner rejected claims 49-52, 56-58, and 62-67. The
Appellants appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction
under 35 U.S.C. § 6(b).
INVENTION
Claim 49, which follows, is illustrative of the claimed subject matter.
49. A system for targeted e-mail messaging in a business
enterprise, comprising:
a sending workstation operable by the sender to transmit
a message to an intended recipient along a communication
network;
a receiving workstation operable by a recipient to receive
the message from the sender along the communication network;
insertion means in the form of an application program
executable on an application server positioned remote from the
sending and receiving workstations and responsive to
transmission of the message by the sending workstation to
insert by the application server at least one of a number of
different codes into the transmitted message, the codes being
saved in a register of insertable codes, such insertion being
independent of any interaction by either the sending or
receiving workstations;
a decision repository residing in the application server
the decision repository including a selection rule database
having a number of different selection rules stored therein for
selecting the desired code or codes to be inserted into the
transmitted message, the decision repository further including a
register of pre-authorized senders of the message;
a configuration facility operable by a user of the system
in which the configuration facility is operable to: add and delete
a sender from the register of pre-authorized senders; and add
and delete a code from the register of insertable codes, the
configuration facility enabling linking and de-linking of anyone
of the codes in the register of insertable codes to at least one
sender from the register of pre-authorized senders;
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a display facility operable to display the inserted code at
the receiving workstation;
in which the desired insertable code is activatable by the
recipient to access a repository of information relating to the
business enterprise; and
a detection facility operable to detect activation of the
insertable code for access to the repository of information.

REFERENCES AND REJECTIONS
Tuvey
Brown
US 2002/0019849 A1
US 2002/0078158 A1
Feb. 14, 2002
June 20, 2002

Claims 49-52, 56-58, and 62-67 stand rejected under 35 U.S.C
§103(a) as being unpatentable over Tuvey and Brown.

DISCUSSION
Based on the Appellants' arguments, we will decide the appeal of
claims 49-52, 56-58, and 62-67 on the basis of claim 49. See 37 C.F.R.
§ 41.37(c)(1)(vii). Therefore, the issues before us follow.
Did the Examiner err in finding that Tuvey teaches a register of pre-
authorized senders, as required by representative claim 49?
Did the Examiner err in finding that Tuvey teaches insertable code
that is activatable by a recipient to access a repository of information
relating to a business enterprise and a detection facility operable to detect
activation of the insertable code for access to the repository, as required by
representative claim 49?
Did the Examiner err in finding that the Appellants' present
application is not entitled to the benefit of the filing date of South African
Application No. 2001/1602 ('1602 Application)? We address the issues
seriatim.
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PRE-AUTHORIZED SENDERS
"Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims. . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art." Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933 (Fed. Cir. 2003) (internal citations omitted).
Here, we adopt the Examiner's construction of claim 49's "authorized
senders" as known senders. (Ans. 15.) We likewise adopt the finding that
Tuvey's centralized address book teaches the properly construed register of
pre-authorized senders. (Id.)
The Appellants make the following argument.
In Tuvey, the senders' details are only gathered when an e-mail
is intercepted, and such addresses are used to determine the
content of the additional information to be embedded in
subsequent messages between the same sender and receiver (see
paragraph [0047]). In the present invention, the pre-authorized
e-mail addresses are set up prior to any interception of an e-
mail.
(App. Br. 7.)
"During prosecution . . . the PTO gives claims their 'broadest
reasonable interpretation.'" In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir.
2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)).
"Moreover, limitations are not to be read into the claims from the
specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).
Here, the feature on which the Appellants rely, viz., that the pre-
authorized e-mail addresses are set up prior to any interception of an e-mail,
is absent from claim 49. We decline to read the feature into the
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representative claim. Furthermore, we find that once e-mail addresses are
added to the reference's centralized address book, the addresses represent
"pre-authorized" senders with respect to subsequent messages.
Therefore, we conclude that the Examiner did not err in finding that
Tuvey teaches a register of pre-authorized senders, as required by
representative claim 49.

ACTIVATABLE INSERTABLE CODE
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, we adopt the Examiner's findings that Paragraph 91 of Tuvey
teaches insertable code that is activatable by a recipient to access a
repository of information relating to a business enterprise. (Ans. 18.) We
also adopt the finding that Paragraph 91 of the same reference teaches a
detection facility operable to detect activation of the insertable code for
access to the repository. (Id. at 19.)
The Appellants argue that in claim 49 "[t]he detection facility and
configuration facility work together in the present invention, and the one
cannot function properly without the other." (App. Br. 8.) The feature on
which the Appellants rely, viz., that interaction of the detection facility and
configuration facility, is absent from claim 49. We decline to read this
feature into the representative claim.
Therefore, we conclude that the Examiner did not err in finding that
Tuvey teaches insertable code that is activatable by a recipient to access a
repository of information relating to a business enterprise and a detection
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facility operable to detect activation of the insertable code for access to the
repository, as required by representative claim 49.

BENEFIT OF FILING DATE OF '1602 APPLICATION
The Appellants argues that the present application is entitled to the
benefit of the filing date of the '1602 Application and that, consequently,
Brown is not prior art to the present application. (Appeal Br. 9.)
"Under section 119, and claims set forth in a United States application
are entitled to the benefit of a foreign priority date if the corresponding
foreign application supports the claims in the manner required by section
112, ¶ 1." In re Gosteli, 872 F.2d 1008, 1010 (Fed. Cir. 1989) (citing
Wertheim, 541 F.2d 257, 261-62, Kawai v. Metlesics, 480 F.2d 880, 887-89,
(CCPA 1973)).
Here, we agree with the Examiner's finding that "[t]he foreign priority
document 2001/1602 fails to disclose the concept of deleting senders and
codes from the registers." (Ans. 25.) More specifically, the '1602
Application (p. 3) mentions that a "computer program may be programmed
to allow an authorised controller to input data on the data list . . . ." The
Appellants admit that "the foreign priority document does not explicitly
disclose deleting authorized senders and codes from the registers . . . ."
(Reply Br. 5.) They argue, however, that "[i]t is inherent and apparent to
one with ordinary skill that if you have a facility to input data onto a list, you
are also able to delete data from the list." (Id.)
However, the Appellants proffer no evidence that the ability to delete
sender’s codes from the data list of the '1602 Application is necessarily
present therein and would have been so recognized by persons of ordinary
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skill. The mere allegation that "if you have a facility to input data onto a list,
you are also able to delete data from the list" (Reply Br. 5) is insufficient.
"[I]t is 'not a question of whether one skilled in the art might be able
to construct the patentee's device from the teachings of the disclosure....
Rather, it is a question whether the application necessarily discloses that
particular device.'" Lockwood v. American Airlines, Inc., 107 F.3d 1565,
1572 (Fed. Cir. 1997) (quoting Jepson v. Coleman, 314 F.2d 533, 536
(CCPA 1963)). See also Ariad Pharmaceuticals, Inc. v. Eli Lilly and
Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) ("[W]e have repeatedly stated that
actual 'possession' or reduction to practice outside of the specification is not
enough. Rather, . . . it is the specification itself that must demonstrate
possession."). "A description which renders obvious the invention for which
an earlier filing date is sought is not sufficient." Lockwood, 107 F.3d at
1572.
This reasoning is applicable here. Therefore, we conclude that the
Examiner did not err in finding the Appellants' present application is not
entitled to the benefit of the filing date of the '1602 Application.
Consequently, we agree with the Examiner's following conclusions.
Therefore, the ['1602 Application ] is not considered to provide
the necessary support for [the present application]. Therefore,
the earliest priority date of the present application is considered
to be 21 February 2002, which is the national stage entry date.
Therefore, [Brown], which was filed on 24 August 2001 is
considered to qualify as prior art since it was filed prior to 21
February 2002.
(Ans. 25-26.)

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DECISION
We affirm the rejections of claim 49 and of claims 48-52, 56-58, and
62-67, which fall therewith.
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)(iv).

AFFIRMED

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