Ex Parte Hosoda

Patent Trial and Appeal Board

Oct 31, 2016

12403016 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/403,016 03/12/2009
71799 7590 11/02/2016
Mr, Ryoichi Harada
2100 Pennsylvania Ave., NW
SUITE 560
Washington, DC 20037-3213
FIRST NAMED INVENTOR
HIRONORI HOSODA
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
J-09-0165 8868
EXAMINER
BLOOMQUIST, KEITH D
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
11/02/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
necipca@necam.com
kanako.miyazawa@necam.com
jiro.hashimoto@necam.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIRONORI HOSODA
Appeal2014-008846
Application 12/403,016
Technology Center 2100
Before: ELENI MANTIS MERCADER, SCOTT B. HOW ARD, and
JOHN D. HAMANN, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
8 and 10. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2014-008846
Application 12/403,016
THE INVENTION
The claimed invention is directed to an HTML mail making system
capable of making outgoing HTML mails have the style in compliance with
the company's Corporate Identity (i.e., CI) policy. Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An HTML mail making system comprising:
a Web server including a CPU and that manages a Web
page available on the Internet and used for a company activity, a
style of the Web page being defined by CSS definition syntax,
the style including a company's own brand image; and
an information processing machine including a CPU and
that is used by an employee of the company in order to create an
HTML mail, the information processing machine being
configured to acquire the CSS definition syntax by accessing the
Web server before creating the HTML mail, and to standardize a
style of the HTML in accordance with the style of the Web page
based on the CSS definition so that the company's own brand
image is expressed in the HTivIL email.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sasakuma
Chu
Williams
Shunji
Yasuko
US 2004/0111670 Al
US 2005/0273707 Al
US 2008/0033851 Al
JP 2007-272814
JP 2007-334481
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June 10, 2004
Dec. 8, 2005
Feb. 7,2008
Oct. 18,2007
Dec. 27, 2007
Appeal2014-008846
Application 12/403,016
REJECTIONS
The Examiner made the following rejections:
1. Claims 1-3, 5, 7, and 10 stand rejected under 35 U.S.C § 103(a) as
being unpatentable over Yasuko, Williams, and Chu.
2. Claims 4 and 6 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Yasuko, Williams, Chu, and Sasakuma.
3. Claim 8 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Yasuko, Williams, Chu, and Shunji.
ANALYSIS
We adopt the Examiner's findings in the Answer and the Final Action
and we add the following primarily for emphasis.
Appellant argues that Yasuko attempts to improve accessibility by an
end user (i.e., registered person) when a web server transmits an e-mail
newsletter such as an HTML mail to the user (see i-f 11) (App. Br. 4).
Appellant asserts Yasuko solves this problem by generating the e-mail
newsletter (HTML mail) based on setting information on a content display
screen registered by each user when making a web access (see i-fi-113, 16)
(App. Br. 4). According to Appellant, the combination of Yasuko, Williams,
and Chu teaches a web server including means for requesting a user to
perform a setting operation to process setting information in order to acquire
setting information (App. Br. 4). Appellant asserts that in contradistinction,
the information processing machine according to Appellant's claimed
invention, does not necessarily require a previous setting by an employee
when acquiring Cascading Style Sheets (i.e., CSS) definition syntax and the
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Appeal2014-008846
Application 12/403,016
CSS definition syntax is acquired automatically only by the information
processing machine accessing the company's home page (Ans. 4).
We agree with the Examiner that additional processing is not
precluded from the recited language of claim 1 (see Ans. 8). Nothing in the
claim language excludes setting operations.
Appellant further argues that the claimed invention differs in the
problems it solved as compared to Yasuko in view of Williams and Chu
(App. Br. 4) and that the main effect of the claimed invention is that it
greatly contributes to the company's CI (Corporate Identity) policy without
additional new investment and greatly reduces work of making mails by
employees (App. Br. 5).
According to Appellant, the claimed invention makes the style of each
HTML mail created by each terminal comply with the style of the
company's home page that reflects the company's brand image when the
company transmits an outgoing HTML mail through a terminal used by an
employee of the company (App. Br. 4). Appellant asserts that Yasuko in
view of Williams and Chu aims to improve accessibility by an end user
when a Web server transmits an e-mail newsletter such as an HTML mail to
the user (App. Br. 4).
We do not agree with Appellant's argument. At the outset, our
reviewing court guides it is irrelevant that the prior art and the present
invention may have different purposes. See Nat 'l Steel Car, Ltd. v.
Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004). It is
sufficient that references suggest doing what Appellant did, although the
Appellant's particular purpose was different from that of the references. In
re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (citing Jn re Gershon, 372
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Appeal2014-008846
Application 12/403,016
F.2d 535, 538-39 (CCPA 1967)). "Obviousness is not to be determined on
the basis of purpose alone." In re Graf, 343 F.2d 774, 777 (CCPA 1965).
We also agree with the Examiner's finding that the underlying
technology described in Yasuko involves applying CSS syntax to HTML
email messages to ensure they follow a similar format (Ans. 9; i-fi-13--4 and
27). The underlying problem is the same which is ensuring that a large
number of HTML mail messages exhibit uniformity to reinforce a brand
(Ans. 8-9).
Accordingly, we affirm the Examiner's rejection of claim 1 and for
the same reasons the rejections of claims 2-8 and 10 which were not
separately argued.
DECISION
For the above reasons, the Examiner's rejection of claims 1-8 and 10
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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