Ex Parte McGregor et al

Board of Patent Appeals and Interferences

Jan 30, 2009

09832767 (B.P.A.I. Jan. 30, 2009)

0UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARK G. MCGREGOR and BRET J. BESECKER
____________

Appeal 2008-4042
Application 09/832,767
Technology Center 3600
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Decided: February 2, 2009
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Before: MURRIEL E. CRAWFORD, HUBERT C. LORIN, and DAVID B.
WALKER, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal from the Non-Final Rejection of claims 14, 15, 17 to
19, 21 to 25, and 27. Claims 1 to 13, and 26 have been cancelled and claims
16 and 20 are objected to.
Appeal 2008-4042
Application 09/832,767
2
The claimed invention is directed to a system for generating revenue
using electronic mail. Claim 14, reproduced below, is further illustrative of
the claimed subject matter.

14. A method for generating revenue using
electronic mail, comprising the steps of:
transmitting an e-mail message addressed to
at least one e-mail recipient from a first client
computer to a host server through at least one
computer network, wherein the e-mail message
comprises an e-mail address of an e-mail user, an
e-mail address of the at least one e-mail recipient,
a subject, and a body;
appending advertisement retrieval software
means to the e-mail message transmitted from the
first client computer, wherein the advertisement
retrieval software means comprises information
about at least one of a plurality of advertisements
retrievably stored in a database;
transmitting the e-mail message from the
host server to a second client computer through the
at least one computer network based upon the e-
mail address of the at least one e-mail recipient;
and
displaying the e-mail message on the second
client computer, wherein when the e- mail message
is first displayed on the second client computer the
advertisement software retrieval means is operable
at the second client computer to retrieve at least
one of the advertisements retrievably stored in the
database for display with the e-mail message on
the second client computer.

Appeal 2008-4042
Application 09/832,767

3
The references of record relied upon by the Examiner as evidence of
obviousness are:
Park US 2001/0025254 A1 Sep. 27, 2001
Microsoft Press Computer Dictionary (3rd Ed. Microsoft Press, 1997).

Claims 14, 15, 17 to 19, 21, 22, 24, 25, and 27 stand rejected under 35
U.S.C. § 102(e) as anticipated by Park.
Claim 23 stands rejected under 35 U.S.C. § 103 as unpatentable over
Park.

OPINION
We have carefully reviewed the rejections on appeal in light of the
arguments of the Appellants and the Examiner. As a result of this review,
we have reached the conclusion that the applied prior art does not establish
the prima facie obviousness of the claimed subject matter. Therefore the
rejections on appeal are reversed. Our reasons follow.
The following comprise our finding of facts with respect to the scope
and content of the prior art and the differences between the prior art and the
claimed subject matter. Park discloses a method for advertising and
generating revenue [0022]. An electron stamp is appended to an email
before the email is sent from a first client computer [0022, 0046]. The
stamp includes advertisement [0041].
The disagreement between the Appellants and the Examiner is with
respect to whether Park discloses that the email is sent from the first client
computer without an appended advertisement. The Appellants argue that in
the claimed invention, the host server receives the email without an
Appeal 2008-4042
Application 09/832,767

4
advertisement appended, appends the advertisement to the email and then
sends the email to the second client computer. We note that the Examiner
does not argue that the claims do not require that the email is first sent by the
first client computer without the appended advertisement with the
advertisement appended by the host server. As we found above, it is clear
from the disclosure of Park that the stamp containing the advertisement is
appended to the email by the first client computer and thus does not read on
the recited limitations in independent claims 14, 18, and 21. We are thus in
agreement with Appellants that Park does not anticipate the subject matter of
independent claims 14, 18, and 21 and claims 15, 17, 19, 22, 24, 25, and 27
dependent therefrom.
We also find nothing in Park to suggest the sending of an email from a
first client computer and then appending an advertisement at the host server
after the email is sent and, as such, we will not sustain the rejection of claim
23 which is dependent on claim 21 under 35 U.S.C. § 103 as being
unpatentable over Park.
The Examiner’s decision is REVERSED.

REVERSED

hh

PAUL W. MARTIN
NCR CORPORATION, LAW DEPT.
1700 S. PATTERSON BLVD.
DAYTON, OH 45479-0001