Ex Parte Lee

Patent Trial and Appeal Board

Oct 28, 2014

11565613 (P.T.A.B. Oct. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ERIC A. LEE
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Appeal 2012-003895
Application 11/565,613
Technology Center 2400
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Before CAROLYN D. THOMAS, MICHAEL J. STRAUSS, and
MINN CHUNG, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner
twice rejecting claims 1–20, all the claims pending in the application. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b). The Oral Hearing
was waived.
We AFFIRM.

The present invention relates generally to a computerized messaging
system with sub-accounts for use on the internet. See Abstract.

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Claim 1 is illustrative:
1. A computerized email campaign management
system with sub accounts for use on a network including a
server with a processor and a memory, comprising:
a database stored in a computer-readable media
within the server memory having stored permissions granted to
a sub account by a master account, each permission allows the
sub account access to changing one of an aspect of: a message
and campaign;
a software module containing program code which
when executed by the processor in the server causes the server
to perform operations of accepting changes from the sub
account to content of a message based on the stored
permissions in the database granted by the master account; and
an email campaign manager containing program
code which when executed by the processor in the server causes
the server to perform operations of sending the message to a
customer over the network based upon permissions granted to
the sub account by the master account.

Appellant appeals the following rejection:
Claims 1–20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wagner (US 2003/0078830 A1, Apr. 24, 2003) and
Hoffman (US 2002/0083059 A1, June 27, 2002).

Claim Groupings
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of claim 1, as set forth below. See 37 C.F.R.
§ 41.37(c)(1)(vii).

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ANALYSIS
Issue 1: Did the Examiner err in finding that the combined art,
particularly Wagner, teaches or suggests sending the messages to a customer
over the network, as set forth in claim 1?
Appellant contends that “Wagner ‘830 does not teach the features of
an email campaign management system performing operations of sending
the message to a customer over the network” (App. Br. 9), rather Wagner
“only suggests his system has the ability to access the email distributor’s
system . . . but does not teach execution of any type of marketing campaign”
(id. at 10). Appellant contends that “Wagner may obtain data from
marketing campaigns executed by others (customer channels 70), but it does
not teach execution itself (i.e., no email sending by Wagner’s system)
(Reply Br. 4).
The Examiner finds that “one cannot obtain and analyze campaign
results without executing the marketing campaign” (Ans. 13). The
Examiner further finds that “Wagner disclosed that the system comprises a
‘fulfillment and execution’ phase, in which ‘the campaigns are run’” (id. at
14). We agree with the Examiner.
Here, the Examiner relies upon Wagner to disclose sending the
message to a customer (see Ans. 5–6). As such, we shall look for error in
the Examiner’s interpretation of Wagner.
Specifically, Wagner discloses real-time collaboration and workflow
management of marketing campaigns, including e-mail distributors (see
Wagner, ¶¶ 1, 11, and 22). Wagner further discloses that “[i]n phase 4,
fulfillment and execution, the campaigns are run” (¶ 31; see also Fig. 2). In
other words, Wagner’ system discloses a real-time marketing collaboration
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whereby a marketing campaign is launched, e.g., e-mail distribution, the data
pertaining thereto is analyzed in various ways, and the results are made
available to marketing management. The Examiner concluded, and we
agree, that one cannot obtain and analyze campaign results without
executing the marketing campaign (see Ans. 13). As such, we find
unpersuasive Appellant’s contention that Wagner fails to disclose sending
messages.
Appellant further contends that “neither Wagner ‘830 nor Hoffman
‘059 teach the type of permissions” (App. Br. 11). However, with this
argument, Appellant has not presented any substantive argument with
respect to these claims. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) (“[T]he Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.”). The Examiner predominantly relies upon the
teachings in Hoffman to disclose the permissions granted by the master
account and here, Appellant’s arguments fail to rebut the Examiner’s
specific findings pertaining thereto, or the combined teachings of Wagner
with Hoffman. Instead, Appellant merely notes that the claim elements
includes permissions and makes a naked assertion that the cited art, Wagner
and Hoffman, do not teach the type of permissions claimed, without
explaining why. We decline to examine the claims sua sponte, looking for
distinctions over the prior art. Cf. In re Baxter Travenol Labs., 952 F.2d
388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for [patentable]
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distinctions over the prior art.”). See also Ex parte Belinne, No. 2009-
004693, 2009 WL 2477843 at *3-4 (BPAI Aug. 10, 2009) (informative).

Issue 2: Did the Examiner provide a sufficient reason for combining
the cited art?
Appellant contends that “[s]ince Wagner ‘830 is already enforcing
roles in its system by allowing access to functionality through the portal by
user role, there would be no reason to add a software layer between the
primary application and its database in order to provide an additional and
wholly different set of access controls, as taught by Hoffman ‘059” (App.
Br. 12).
In response, the Examiner notes that the modification would “provide
the system of Wagner with a more granular level [of] access control and the
ability to customize user permissions as disclosed by Hoffman” (Ans. 16).
In other words, the Examiner has found actual teachings in the prior art and
has provided an articulated reason with some rational underpinning to
support the legal conclusion of obviousness. We further note that a benefit
gained from a combination is a motivation to make such a combination. See
Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d 1253, 1262 (Fed. Cir. 2012); cf.
Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000) (explaining that a Court can examine the benefits gained and lost by
making the combination in finding a motivation to combine). In essence, the
Examiner concluded that Wagner’s system would benefit from Hoffman’s
teachings. At most, it can be argued that Wagner already has access
functionalities. However, Appellant has not shown how incorporating
additional access functionalities, more or less beneficial, would discourage
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one from combining the teachings of Wagner and Hoffman. The Supreme
Court has clearly stated that “if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.” KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 417 (2007).
Appellant makes new arguments in the Reply Brief (Reply Br. 2–9).
The Examiner’s statement of rejection for claims 1–20 in the Answer
appears to be substantially the same as, if not identical to, the statement of
the rejection in the Final Rejection. Appellant thus could have presented the
new arguments in support of the dependent claim in the Appeal Brief, such
that we would have had benefit of the Examiner’s evaluation of the
argument in the responsive Answer. Appellant does not explain what good
cause there might be to consider the new arguments. Appellant’s new
arguments are thus untimely and have, accordingly, not been considered.
See Ex parte Borden, 93 USPQ2d 1473 (BPAI 2010) (informative).
In view of the above discussion, since Appellant has not demonstrated
that the Examiner erred in finding the argued limitations in the disclosure of
Wagner and Hoffman, and that there was no reason to combine, the
Examiner’s 35 U.S.C. § 103(a) rejection of representative independent claim
1, as well as claims 2–20 not separately argued by Appellant, is sustained.

DECISION
We affirm the Examiner’s § 103 rejection.
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).
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AFFIRMED

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