Ex Parte Kaghazian

Board of Patent Appeals and Interferences

Sep 15, 2010

10393573 (B.P.A.I. Sep. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/393,573 03/20/2003 Leila Kaghazian US00 0213A 4464
24738 7590 09/15/2010
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
PO BOX 3001
BRIARCLIFF MANOR, NY 10510-8001
EXAMINER
NGUYEN, THU HA T
ART UNIT PAPER NUMBER
2453
MAIL DATE DELIVERY MODE
09/15/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LEILA KAGHAZIAN
____________
Appeal 2009-005915
Application 10/393,5731
Technology Center 2400
____________

Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP,
and JEAN R. HOMERE, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL2

1 Filed on March 20, 2003. This application is a divisional of application
09/642,713, filed August 21, 2000. The real party in interest is Koninklijke
Philips Electronics N.V. (App. Br. 3.)
2 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.
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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 13, 14, and 19 through 40. (App. Br. 3;
Reply Br. 2.) Claims 1 through 12 and 15 through 18 have been cancelled.
(Id.) We have jurisdiction under 35 U.S.C. § 6(b) (2008).
We affirm.
Appellant’s Invention
Appellant invented a method for “sending an email with portions of
content information selected from a previous email or from another
electronic document[,] such as a Web page.” (Spec. 1, ll. 4-6.)
Illustrative Claim
Independent claim 19 further illustrates the invention as follows:
19. A method for enabling a user, via a mobile communication
device, to operate on an electronic document having information
content, the method comprising:
enabling the user, in a foreground process of the mobile
communication device, to provide first indications, the first
indications indicating at least one portion of the information content
of the electronic document;
preparing, responsive to the first indications, in a background
process, a new electronic document
enabling the user, in a foreground process of the mobile
communication device, to provide second indications, the second
indications indicating a processing as to the new electronic document;
and
performing, responsive to the second indications, in a
background process, the processing as to the new electronic
document.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
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Mertama 6,629,130 B2 Sep. 30, 2003
(filed Apr. 29, 1999)
McMillan 6,789,108 B1 Sep. 7, 2004
(filed Aug. 8, 2000)

Rejection on Appeal
The Examiner rejects claims 13, 14, and 19 through 40 under 35
U.S.C. § 103(a) as being unpatentable over the combination of McMillan
and Mertama.
Appellant’s Contentions
Appellant contends that McMillan only discloses a user receiving a
message as a commercial and does not teach “enabling the user,” as recited
in independent claim 19. (App. Br. 5.) In particular, Appellant argues that
when a user receives the commercial, McMillan discloses that the
commercial is automatically played or displayed. (Id.) Therefore, Appellant
alleges that McMillan fails to teach “enabling the user, in a foreground
process, of the mobile communication device, to provide first indications,
the first indications indicating at least one portion of the information content
of the electronic document,” as recited in independent claim 19. (Id.)
Further, Appellant contends that McMillan’s disclosure of a customer that
provides content for creating a commercial is completely different from the
claimed “user.” (Id.) In particular, Appellant argues that McMillan only
discloses that the customer provides information useful in creating the
commercial, whereas the claimed “user” is enabled to provide indications of
at least a portion of information in an electronic document. (Id. at 5-6.)
Additionally, Appellant alleges that McMillan’s disclosure of a
customer creating content utilized in a commercial and sending such content
to a user does not teach “preparing, responsive to the first indications, in a
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background process, a new electronic document,” as recited in independent
claim 19. (Id. at 6.) In particular, Appellant contends that the Examiner
incorrectly equates the claimed “electronic document” as being the same as
the claimed “new electronic document” without regard for the actual claim
language as a whole. (Reply Br. 3-4.) Appellant also argues that McMillan
fails to teach preparing the commercial in a background process. (App. Br.
6.) Finally, Appellant alleges that McMillan’s disclosure of utilizing
servlets operated by a self-launching email servant does not teach enabling a
user to provide second indications indicating “a processing as to the new
electronic document,” as claimed. (Id.) In particular, Appellant contends
that McMillan’s disclosure of an email attached file is illogical because it
would be impossible for a user to prepare, responsive to sending an email, an
email attached for the sent email. (Reply Br. 5.)
Examiner’s Findings and Conclusions
The Examiner finds that McMillan discloses a system that allows the
user or customer to prepare and send emails to other users and, therefore,
teaches enabling a user to provide a first indication. (Ans. 11-12.) The
Examiner also finds that McMillan’s disclosure of creating an email or
electronic document, in conjunction with Mertama’s disclosure of operating
an electronic document via a mobile communication device, teaches
“enabling the user, in a foreground process, of the mobile communication
device, to provide first indications, the first indications indicating at least
one portion of the information content of the electronic document,” as
claimed. (Id. at 12.)
Further, the Examiner finds McMillan’s disclosure of preparing text,
email, audio, video, or an electronic commercial teaches preparing the
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content in a background process, as claimed. (Id. at 13.) Additionally, the
Examiner finds that McMillan’s disclosure of opening an attached file (i.e.,
video, audio, or text file) in an email, in conjunction with Mertama’s
disclosure of operating an electronic document via a mobile communication
device, teaches “enabling the user, in a foreground process of the mobile
communication device, to provide second indications, the second indications
indicating a processing as to the new electronic document,” as claimed. (Id.
at 13-14.) The Examiner also finds that McMillan’s disclosure of a user
opening an email and clicking on an attached file amounts to processing,
displaying, or playing the attached file in the background of the client
computer. (Id. at 14.) Therefore, the Examiner finds that McMillan teaches
“processing as to the new electronic document,” as claimed. (Id.)

II. ISSUE
Has Appellant shown that the Examiner erred in concluding that the
combination of McMillan and Mertama renders independent claim 19
unpatentable? In particular, the issue turns on whether the proffered
combination teaches:
(a) “enabling the user, in a foreground process of the mobile
communication device, to provide first indications, the first indications
indicating at least one portion of the information content of the electronic
document,” as recited in independent claim 19;
(b) “preparing, responsive to the first indications, in a background
process, a new electronic document,” as recited in independent claim 19; and
(c) “enabling the user, in a foreground process of the mobile
communication device, to provide second indications, the second indications
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indicating a processing as to the new electronic document,” as recited in
independent claim 19.

III. FINDINGS OF FACT
The following Findings of Fact (“FF”) are shown by a preponderance
of the evidence.
McMillan
1. McMillan discloses preparing, disseminating, and tracking
electronic mail and corresponding content, such as graphical presentations.
(Col. 1, ll. 8-12.)
2. McMillan’s figures 1 and 17 depict a system (10) which
operates by process (100) to distribute email and corresponding content
(e.g., video, audio, text, etc.) from the servers (12-15) to user computers
(25). (Col. 3, ll. 15-19.)
3. McMillan’s figure 2 depicts a content preparation step (200).
(Id. at ll. 61-62.) McMillan discloses that the content preparation step (200)
includes the following: “a content development step 210, an encoded
element preparation step 220, a job property development step 230, and a
special conditions preparation step 240.” (Id. at ll. 62-65.)
4. McMillan’s figure 5 depicts the content development step
(210). (Col. 4, l. 1.) In particular, McMillan discloses that the content may
include any type of information, such as FLASH program files. (Id. at ll. 2-
4.) Further, at step 215, McMillan discloses creating a text file which
corresponds with selected content. (Id. at ll. 51-52.) McMillan discloses
that the text file may include a message pertaining to the content or
identifying a related website. (Id. at ll. 52-54.)
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5. McMillan’s figure 6 depicts the encoded element preparation
step (220). (Col. 5, l. 3.) In particular, McMillan discloses that the content
prepared and processed in step (210), is sent to an internal content server,
whereby a server internal to the content creator refines the content before
distribution. (Id. at ll. 4-8.)
6. McMillan’s figure 8 depicts the special conditions preparation
step (240). (Col. 6, l. 16.) McMillan discloses that this step allows the
customer to add any special requirements to the content (e.g., FLASH file,
email, etc.). (Id. at ll. 16-18.) For example, McMillan discloses that the
customer may want to change supporting text every week in order to keep
the content current. (Id. at ll. 30-33.) Accordingly, the present process
(100) is capable of supplying additional data and content such that the email
and content contained therein can be customized to the desires of a particular
user. (Id. at ll. 55-58.)
Mertama
7. Mertama generally relates to processing an electronic mail
messages. (Col. 1, ll. 6-8.)
8. Mertama’s figure 2 depicts outputting an electronic mail
message form an electronic mail server (11) to a user terminal (10). (Col. 4,
ll. 49-53.) In particular, Mertama discloses outputting the electronic mail
message as text, graphics, voice, or a combination thereof. (Id. at ll. 65-67.)
Further, Mertama discloses outputting the electronic mail message to
portable terminals, such as mobile stations or computers. (Col. 5, ll. 25-27;
col. 7, ll. 40-44.)

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IV. ANALYSIS
Claim 19
Independent claim 19 recites, in relevant parts:
1) enabling the user, in a foreground process of the mobile
communication device, to provide first indications, the first
indications indicating at least one portion of the information content
of the electronic document; 2) preparing, responsive to the first
indications, in a background process, a new electronic document; and
3) enabling the user, in a foreground process of the mobile
communication device, to provide second indications, the second
indications indicating a processing as to the new electronic document.

As detailed in the Findings of Fact section, McMillan discloses
preparing and distributing emails and corresponding content (e.g., video,
audio, or text) to user computers. (FFs 1-2.) In particular, McMillan
discloses that the preparation of content includes developing the content,
encoding the content, and customizing the content. (FF 3.) Further,
McMillan discloses that content development may include creating a text
file that corresponds with selected content, whereby the text file includes a
message pertaining to the selected content or identifies a related website.
(FF 4.) Additionally, once the content is prepared and processed, McMillan
discloses that the content can be refined before distribution. (FF 5.) Further,
McMillan discloses that a customer may customize emails and
corresponding content (i.e., add additional data or content) based on the
desires of a particular recipient. (FF 6.)
We find that McMillan’s disclosure teaches that a user can select
content (e.g., video, audio, or text), customize such content, incorporate the
customized content into an email, and distribute the email to a desired
recipient or recipients. In particular, we find that McMillan’s disclosure
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teaches that the content can be embodied in a new file or document, the new
document can be attached to an email, and the email can be sent to a
designated recipient or recipients.
Next, Mertama discloses outputting emails containing text, graphics,
voice, or a combination thereof from electronic mail servers to portable
terminals, such as mobile stations or computers. (FF 7-8.) We agree with
the Examiner that Mertama’s disclosure teaches utilizing mobile stations or
computers to operate an electronic document. (Ans. 12 & 14.) In summary,
we find that an ordinarily skilled artisan would have readily appreciated that
Mertama’s mobile stations or computers would have enabled a user to
control the execution of the multiple processes (i.e., foreground-background)
set forth in McMillan. Moreover, we find nothing in Appellant’s claim
language that precludes “at least one portion of the information content of
the electronic document” from being the entire electronic document since
the expression “at least” generally requires one or more. Accordingly, we
find that an ordinarily skilled artisan would have understood that Mertama’s
mobile stations or computers enable a user, in a foreground process, to select
content or text from an electronic document (i.e., the entire electronic
document or portions of the electronic document). Thus, we find that the
proffered combination teaches “enabling the user, in a foreground process of
the mobile communication device, to provide first indications, the first
indications indicating at least one portion of the information content of the
electronic document,” as recited in independent claim 19.
Further, we find that upon selecting content or text from an electronic
document, an ordinarily skilled artisan would have also understood that
Mertama’s mobile stations or computers enable a user, in a background
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process, to embody such content or text in a new document and attach the
new document to an email. Thus, we find that the proffered combination
teaches or fairly suggests “preparing, responsive to the first indications, in a
background process, a new electronic document,” as recited in independent
claim 19. Additionally, upon attaching the new document to an email, an
ordinarily skilled artisan would have appreciated that Mertama’s mobile
stations or computers would enable a user, in a foreground process, to send
the email with the attached new document to a designated recipient or
recipients. In particular, we find that the ordinarily skilled artisan would
have understood that the process of sending the email with the attached new
document to a designated recipient or recipients amounts to processing a
new electronic document. Thus, we find that the proffered combination also
teaches or fairly suggests “enabling the user, in a foreground process of the
mobile communication device, to provide second indications, the second
indications indicating a processing as to the new electronic document,” as
recited in independent claim 19. It follows that Appellant has not shown
that the Examiner erred in concluding that the combination of McMillan and
Mertama renders independent claim 19 unpatentable.
Claim 13
Appellant contends that McMillan only discloses creating a
commercial utilizing a sound file and does not teach enabling the user to
provide one or more tags, whereby the one or more tags indicate a portion of
the sound file. (App. Br. 7.) Appellant also argues that McMillan only
discloses that the commercials include video or audio content sent by the
user. (Id.) Therefore, Appellant alleges that McMillan does not teach
“enabling the user to provide first indications comprises enabling the user to
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provide one or more tags as the electronic document, wherein the electronic
document includes a sound file and the one or more tags indicate a portion
of the sound file,” as recited in dependent claim 13. (Id.) We do not agree.
As set forth above, McMillan’s disclosure teaches that a user can
select audio content, customize such content, and incorporate the customized
content into an email. We find that an ordinarily skilled artisan would have
appreciated that Mertama’s mobile stations or computers enable a user to
select audio content from an audio file, customize the selected audio content
accordingly, embody such content into a new audio file, and attached the
new audio file to an email. Moreover, we find that the ordinarily skilled
artisan would have understood that selecting and customizing audio content
from an audio file amounts to selecting or tagging specific portions of audio
content in an audio file. Thus, we find that the proffered combination
teaches or fairly suggests the disputed limitation. It follows that Appellant
has not shown that the Examiner erred in concluding that the combination of
McMillan and Mertama renders dependent claim 13 unpatentable.
Claim 14
Appellant contends that McMillan’s disclosure fails to teach both tags
and a new email message that includes the portion of the sound file only as
indicated by the one or more tags. (App. Br. 7-8.) Therefore, Appellant
alleges that McMillan does not teach “wherein the new electronic document
comprises a new email message that includes the portion of the sound file
only as indicated by the one or more tags; and performing the processing
comprises sending the new email message,” as recited in dependent claim
14. (Id.) We do not agree.
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As set forth above, we find that an ordinarily skilled artisan would
have appreciated that Mertama’s mobile stations or computers enable a user
to embody the selected or tagged audio content into a new audio file, attach
the new audio file to an email, and send the email with the attached new
audio file to a designated recipient or recipients. Thus, we find that the
proffered combination teaches or fairly suggests the disputed limitation. It
follows that Appellant has not shown that the Examiner erred in concluding
that the combination of McMillan and Mertama renders dependent claim 14
unpatentable.
Claims 20 through 40
Appellant does not set forth any substantive arguments, but rather
makes a general allegation that the proffered combination does not teach the
language of dependent 20 through 40. (App. Br. 8; Reply Br. 5-6.)
Appellant is reminded that a statement that merely points out what the claim
recites will not be considered as an argument for separate patentability of a
claim. See 37 C.F.R. § 41.37(c)(1)(vii). Therefore, Appellant’s arguments
are unpersuasive. It follows that Appellant has not shown that the Examiner
erred in concluding that the combination of McMillan and Mertama renders
dependent claims 20 through 40 unpatentable.

V. CONCLUSION OF LAW
Appellant has not shown that the Examiner erred in rejecting claims
13, 14, and 19 through 40 as being unpatentable under 35 U.S.C. § 103(a).

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VI. DECISION
We affirm the Examiner’s decision to reject claims 13, 14, and 19
through 40.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

Vsh

PHILIPS INTELLECTUAL PROPERTY & STANDARDS
PO BOX 3001
BRIARCLIFF MANOR, NY 10510-8001