Ex Parte Malik

Board of Patent Appeals and Interferences

Sep 2, 2010

09750138 (B.P.A.I. Sep. 2, 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.
09/750,138 12/29/2000 Dale W. Malik 00170; 190252-1720 6782
38823 7590 09/03/2010
AT&T Legal Department - TKHR
Attn: Patent Docketing
One AT&T Way
Room 2A-207
Bedminster, NJ 07921
EXAMINER
NEURAUTER, GEORGE C
ART UNIT PAPER NUMBER
2443
MAIL DATE DELIVERY MODE
09/03/2010 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 DALE W. MALIK
__________

Appeal 2009-000464
Application 09/750,138
Technology Center 2400
__________

Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-3, 6-8, 15, 21-23, 26-28, and 30-45.

1 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.
Appeal 2009-000464
Application 09/750,138

2
Claims 4, 5, 9-14, 16-20, 24, 25, and 29 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).

The Invention
The disclosed invention relates generally to compacting electronic
mail messages stored on a server computer (Spec. 4).
Independent claim 1 is illustrative:
1. A method for automatically managing an electronic mail
server application on a host computer, comprising:
checking an electronic mail message against a predetermined
criteria;
determining whether the message has been previously
compressed;
compacting a non-attachment portion of the electronic mail
message if the predetermined criteria is satisfied and if the message
has not been previously compressed; and
storing the compacted electronic mail message.

The Examiner rejects claims 1-3, 6-8, 15, 21-23, 26-28, and 30-45
under 35 U.S.C. § 102(e) as being anticipated by Shaffer (US Patent No.
6,842,768; Jan. 11, 2005).

ISSUE
Appellant asserts that “Shaffer fails to determine whether the file was
previously compressed” (App. Br. 6).
Did the Examiner err in finding that Shaffer discloses determining
whether the message has been previously compressed?

Appeal 2009-000464
Application 09/750,138

3
FINDINGS OF FACT
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
1. Shaffer discloses “when indicated by the connection or channel
speed and the message or attachment size, a server makes a
compressed version of the data file available for transmission” (col.
7, ll. 46-49).
2. Shaffer discloses a system to “determine when or how to compress
messages based for example on different user’s usage patterns and
based on available system resources” (col. 8, ll. 14-16).

PRINCIPLE OF LAW
35 U.S.C. § 102
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).

ANALYSIS
The Examiner points out that Shaffer discloses compressing (or
“compacting”) data based on a determination of the connection speed,
channel speed, or message size (FF 1) and also compressing messages based
on a user’s usage patterns and available system resources (FF 2). However,
Appeal 2009-000464
Application 09/750,138

4
the Examiner has not demonstrated that Shaffer also discloses determining
whether the message has been previously compressed.
The Examiner states that “Shaffer does in fact teach determining
whether an electronic mail message has been previously compressed based
upon its teachings that an uncompressed message is used to determine
whether it should be compressed” (Ans. 14). However, while the Examiner
states that Shaffer discloses using an uncompressed message to determine
whether it should be compressed, the Examiner merely points to disclosures
in Shaffer pertaining to compressing a message based on connection speed,
channel speed, message size, usage patterns and available resources. None
of these disclosures pertain to determining if a message has been previously
compressed. In fact, the Examiner has not indicated that any determination
is made at all in Shaffer of the compression status of the message prior to
compression.
In addition, while the Examiner assumes that the message in Shaffer
must be uncompressed prior to compression (but does not indicate where
this assumption is disclosed in Shaffer), we note that Shaffer discloses “two
different levels of compression” (col. 5, ll. 36-37). Given multiple levels of
compression, the Examiner has not demonstrated that prior to compression
of a message, the message cannot have been compressed to a different level
of compression, for example.
Claims 21 and 35 recite similar features as claim 1. We therefore
conclude that the Examiner erred in rejecting claims 1, 21, and 35, and
claims 2, 3, 6-8, 15, 21-23, 26-28, and 30-45, which depend therefrom.
Appeal 2009-000464
Application 09/750,138

5

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner erred in finding that Shaffer discloses determining whether the
message has been previously compressed.

DECISION
We reverse the Examiner’s decision rejecting claims 1-3, 6-8, 15, 21-
23, 26-28, and 30-45 under 35 U.S.C. § 102(e).

REVERSED

msc

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