Ex Parte Morris

Board of Patent Appeals and Interferences

May 30, 2012

10813715 (B.P.A.I. May. 30, 2012)

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.
10/813,715 03/31/2004 Robert P. Morris I226/US 7428
49278 7590 05/30/2012
SCENERA RESEARCH, LLC
5400 Trinity Road
Suite 303
Raleigh, NC 27607
EXAMINER
DAFTUAR, SAKET K
ART UNIT PAPER NUMBER
2451
MAIL DATE DELIVERY MODE
05/30/2012 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 ROBERT P. MORRIS
____________

Appeal 2010-000907
Application 10/813,715
Technology Center 2400
____________

Before MAHSHID D. SAADAT, KALYAN K. DESHPANDE,
and BRYAN F. MOORE, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1-38, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2010-000907
Application 10/813,715

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STATEMENT OF THE CASE
Introduction
Appellant’s invention relates to user selectable electronic message
processing (see Spec. 1:2-3, 3:9-17).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A method for providing user selectable electronic
message action choices and processing, comprising the steps of:
receiving an electronic message for a client;
determining if the electronic message matches at least one
criteria of a filter, wherein at least one action is associated with the
filter; and
if the electronic message matches the criteria, displaying a
graphic associated with the action when the electronic message is
viewed at the client and executing the action if the graphic is selected.
Rejection
The Examiner rejected claims 1-38 under 35 U.S.C. § 102(b) as being
anticipated by Geiger (US 6,073,142).
Appellant’s Contentions
With respect to independent claim 1, Appellant contends (Br. 14) that
Geiger does not support a finding of anticipation because the embodiments
depicted in Figures 19 and 20 relate to “‘gating’ … where one of the
automatic actions is to send the mail for review to an administrator who is
NOT the recipient.” Appellant further contends (id.) that “[t]he buttons
illustrated in each of Figures 19 and 20 are static buttons that are presented
every time the sample screen in Figures 19 and 20 are presented.”
Additionally, Appellant concludes (Br. 15) that “[a]s the buttons are
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Application 10/813,715

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displayed as part of gatekeeper screen 1901 at log on, the buttons cannot
said to be displayed if the electronic message matches the criteria.”
Appellant further argues the patentability of independent claims
18, 35, and 37, as well as dependent claims 2-17, 19-34, 36, and 38,
based on the same reasons presented for claim 1 (Br. 16), allowing
these claims to fall with claim 1.
With respect to claims 3-5, 7-9, 11, 12, and 14, Appellant
presents arguments similar to those presented for claim 1 and further
contends that Geiger does not teach various recited features of these
claims (Br. 16-18).

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred. We disagree with Appellant’s
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken and (2) the
reasons set forth by the Examiner in the Answer in response to Appellant’s
Appeal Brief. However, we highlight and address specific findings and
arguments regarding claim 1 for emphasis as follows.
We specifically agree with the Examiner’s position relying on Figure
19 of Geiger and characterizing each of the buttons 1907, 1909, 1911, 1913,
and 1915 depicted on the gatekeeper screen 1901 as representing the claimed
graphic associated with an action (see Ans. 19-20). As further pointed out
by the Examiner (Ans. 21-22), displaying the graphic buttons in the
gatekeeper interface screen occurs when the gatekeeper logs in and gated
messages along with their corresponding reasons, or the filtering criteria
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according to the rules, are displayed as a list to be reviewed by the
gatekeeper (see also Geiger col. 23, ll. 5-15). In other words, if the
messages match a rule and are gated, the buttons are displayed and viewed
by the gatekeeper along with buttons for executing an action related to the
rule (col. 23, ll. 16-20).
Additionally, giving the claim its broadest reasonable interpretation
consistent with the Specification, In re Morris, 127 F.3d 1048, 1054 (Fed.
Cir. 1997), the Examiner properly explained (Ans. 22-23) that the claimed
“at least one action is associated with the filter” does not require any
particular relationship between the filter and the action. Therefore, the
buttons in Geiger, which are related to the rules used for gating the messages
or filters, are displayed if the messages match a rule and are gated. We also
observe that Appellant’s assertion that the gatekeeper is not the recipient of
the mail (Br. 14) is not persuasive of error in the Examiner’s position
because the claims do not require the recited “client” to be actually the
“recipient” of the message.
Furthermore, with respect to claims 3-5, 7-9, 11, 12, and 14, the
Examiner sets forth a detailed analysis including findings and reasoning
explaining how various limitations of these claims are met by Geiger’s
disclosure (Ans. 23-26). We agree with those findings and conclusions and
also adopt them as our own.

CONCLUSION
On the record before us, we conclude that, because the applied
reference teaches all the claim limitations, the Examiner has not erred in
rejecting claim 1 as being anticipated by Geiger. Therefore, we sustain the
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35 U.S.C. § 102(b) rejection of claims 1-38 for the reasons outlined by the
Examiner and highlighted above.

DECISION
The Examiner’s decision rejecting claims 1-38 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)(1)(v).

AFFIRMED

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