Ex Parte Nussey et al

Patent Trial and Appeal Board

Nov 22, 2013

11163565 (P.T.A.B. Nov. 22, 2013)

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.
11/163,565 10/23/2005 Bill Nussey 19011.1620 4564
35856 7590 11/25/2013
SMITH RISLEY TEMPEL SANTOS LLC
Two Ravinia Drive
Suite 700
ATLANTA, GA 30346
EXAMINER
BIAGINI, CHRISTOPHER D
ART UNIT PAPER NUMBER
2445
MAIL DATE DELIVERY MODE
11/25/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BILL NUSSEY and CHRIS CURTIN
____________

Appeal 2011-003487
Application 11/163,565
Technology Center 2400
____________

Before BRUCE R. WINSOR, JUSTIN BUSCH, and
PATRICK M. BOUCHER, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3-15, and 18-22, which constitute all the claims pending in this
application. Claims 2, 16, and 17 are cancelled. App. Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 The Real Party in Interest is Silverpop Systems, Inc. App. Br. 2.
Appeal 2011-003487
Application 11/163,565

2

STATEMENT OF THE CASE
Appellants’ disclosure relates to “Internet communication, and, more
particularly, to . . . communication channels for the electronic delivery of
information over the Internet . . . .” Spec. 1:20-22. More particularly,
Appellants’ disclosure relates to RSS (variously described as RDF (Resource
Description Framework) Site Summary, Rich Site Summary, or Really
Simple Syndication) feeds. Spec. 6:3-8. Claims 1 and 15, which are
illustrative, read as follows:
1. A system that provides the secured controlled delivery of
content to a user, the system comprising:
a content source that is operable to send pushed content
items directed towards a user through the use of an address
identifier for each content item and utilizing a secured
communication channel;
a content catcher residing behind a firewall other than
one protecting the content source and is operable to:
receive a pushed content item through the secured
communication channel, the pushed content being directed
towards multiple recipients with the multiple recipients being
identified uniquely by address identifiers in the received content
item;
generate a substantially unique identifier for each address
identifier, based at least in part on at least a portion of the
address identifiers within the pushed content item;
create an RSS based file for each recipient with each of
the RSS based files having a URL2 that is based at least in part
on the substantially unique identifier, thereby making each of
the RSS based files private;

2 “Acronym for Uniform Resource Locator.” MICROSOFT COMPUTER
DICTIONARY 542 (5th ed. 2002).
Appeal 2011-003487
Application 11/163,565

3
create, for at least one recipient, a plurality of RSS based
files, wherein each RSS based file has a URL that is based at
least in part on the substantially unique identifier;
convert the received pushed content item into an RSS file
type; and
place at least portions of the converted pushed content
into various RSS feed destinations for a given recipient.

15. A method for providing secured and controlled delivery
of bulk content to one or more recipients identified in the bulk
content, the method comprising the steps of:
receiving bulk content at a firewall protected system over
a secured communication channel, each content item comprised
within the bulk content being directed towards a plurality of
recipients;
in response to receiving the bulk content, for each
particular recipient that is to receive one or more items in the
bulk content, the firewall protected system determining if any
items in the bulk content have been previously received that
include certain parameters associated with a class of content;
if content items that include the certain parameters
associated with the class of content have not been previously
received:
creating a unique identifier in response to each such
content item;
creating a URL that includes at least a portion of the
unique identifier;
creating an RSS based file that is accessible via the URL;
and
placing at least a portion of the content item within the
RSS based file; and
if content items that include the certain parameters
associated with the class of content have been previously
received:
Appeal 2011-003487
Application 11/163,565

4
performing a look up of the URL that is associated with
the certain parameters associated with the class of content;
modifying an existing RSS based file accessible via the
URL by placing at least a portion of the content of the content
item within the RSS based file; and
placing substantially all of the content of the content item
into a separate markup language based file accessible by a link
associated with the portion of the content placed in the RSS
based file;
whereby utilizing an RSS reader, the content items that
include the certain parameters associated with the particular
class of content can be selectively received outside of the
firewall.

The Examiner relies on the following prior art in rejecting the claims:
Thurlow US 5,917,489 June 29, 1999
Zahariev US 6,035,104 Mar. 7, 2000
Anderson US 2002/0032742 A1 Mar. 14, 2002
Bandini ’954 US 2002/0169954 A1 Nov. 14, 2002
Bandini ’095 US 2002/0199095 A1 Dec. 26, 2002
The following documents describing MailBucket (collectively
“MailBucket”):
Dyson, Tom. MailBucket, Archived on 30 August 2004 by the
Internet Archive:
, pages 1-2 (“MailBucket A”).
Dyson, Tom, Representative Feed from MailBucket. Archived
on 10 October 2004 by the Internet Archive:
, pages 1-16 (“MailBucket B”).
Dyson, Tom, Representative Content File from MailBucket.
Archived on 15 October 2004 by the Internet Archive:
, page 1 (“MailBucket C”).
Appeal 2011-003487
Application 11/163,565

5
Dyson, Tom, Representative Content File from MailBucket
(Source View). Archived on 15 October 2004 by the Internet Archive:
, pages 1-3 (“MailBucket D”).
Dyson, Tom, Listing of MailBucket Content Files, Archived on
10 October 2004 by the Internet Archive:
, page 1 (“MailBucket E”).
Udell, Jon, “MailBucket: an email-to-RSS gateway”,
InfoWorld. 30 September 2003,
, pages
1-4 (“MailBucket F”).
“Authentication, Authorization, and Access Control”, Apache
Software Foundation. Archived on 12 October 2004 by the Internet Archive:
, pages 1-15 (“Apache”).
“What is RSS?”, Software Garden, Inc. July 6, 2004,
. (“Software Garden”).
“Blogger Help: What is my address/URL?”, Blogger, Archived by the
Internet Archive on November 18, 2004:
. (“Blogger”).
Appellants’ admitted prior art (“AAPA”).

Claim 21 stands rejected under 35 U.S.C. § 112, first paragraph (re-
codified as § 112(a)) for failing to comply with the written description
requirement. Ans. 5.
Claims 1, 3, 5, and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over MailBucket, Bandini ’954, Thurlow, and Anderson. Ans.
5-9, 24-28.
Appeal 2011-003487
Application 11/163,565

6
Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
MailBucket, Bandini ’954, Thurlow, Anderson, Blogger, and AAPA. Ans.
9.
Claims 6-9 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over MailBucket, Thurlow, Anderson, and Bandini ’095. Ans. 10-13.
Claims 10-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over MailBucket, Thurlow, and Anderson. Ans. 13-16.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over MailBucket, Bandini ’954, Thurlow, Anderson, and Software Garden.
Ans. 17-20.
Claims 18-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over MailBucket, Bandini ’954, Thurlow, Anderson, Software Garden, and
Apache. Ans. 20-22.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over MailBucket, Thurlow, and Zahariev. Ans. 22-24.
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed July 22, 2010; “Reply Br.” filed Nov. 9, 2010) and the Answer
(“Ans.” mailed Oct. 19, 2010 ) for the respective positions of Appellants and
the Examiner. Only those arguments actually made by Appellants have been
considered in this decision. Arguments that Appellants did not make in the
Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii) (2011); see also In re Baxter Travenol Labs.,
952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this [board] to
examine the claims in greater detail than argued by an appellant, looking for
[patentable] distinctions over the prior art.”).
Appeal 2011-003487
Application 11/163,565

7

REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH
Issue
The issue presented by Appellants’ contentions is as follows:
Did the Examiner err in finding that Appellants’ Specification does
not reasonably convey that Appellants had possession, at the time the
Application was filed, of “based at least in part on the presence or absence of
a predetermined content identifier, intercepting [a] pushed content item,” as
recited in claim 21? See App. Br, 29-30.
Principles of Law
[Section] 112, first paragraph, contains a written
description requirement separate from enablement . . . . Vas-
Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed.Cir.1991).
Specifically, the description must “clearly allow persons of
ordinary skill in the art to recognize that [the inventor] invented
what is claimed.” Id. at 1563 (citing In re Gosteli, 872 F.2d
1008, 1012 (Fed.Cir.1989)). In other words, the test for
sufficiency is whether the disclosure of the application relied
upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the
filing date. Id. (quoting Ralston Purina Co. v. Far-Mar-Co,
Inc., 772 F.2d 1570, 1575 (Fed.Cir.1985)); see also In re
Kaslow, 707 F.2d 1366, 1375 (Fed.Cir.1983).
. . . .“[P]ossession as shown in the disclosure” is a more
complete formulation. . . . [T]he test requires an objective
inquiry into the four corners of the specification from the
perspective of a person of ordinary skill in the art. Based on
that inquiry, the specification must describe an invention
understandable to that skilled artisan and show that the inventor
actually invented the invention claimed.
Ariad Pharmaceuticals v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc).
Appeal 2011-003487
Application 11/163,565

8
[I]t is the specification itself that must demonstrate possession
[of the claimed invention]. And while the description
requirement does not demand any particular form of disclosure,
Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d
1115, 1122 (Fed. Cir. 2008), or that the specification recite the
claimed invention in haec verba, a description that merely
renders the invention obvious does not satisfy the requirement,
Lockwood v. Am. Airlines, 107 F.3d 1565, 1571-72
(Fed.Cir.1997).
Id. at 1352.
Analysis
As support for the limitation “based at least in part on the presence or
absence of a predetermined content identifier, intercepting [a] pushed
content item . . . ,” as recited in claim 21, Appellants identify the sentence in
the Specification at page 21, lines 12-13. App. Br. 7. The identified and
immediately preceding sentences read as follows:
In operation, whenever the email utility attempts to extract
email from the email server via POP3 [(Post Office Protocol,
version 3 (see Bandini ’095, ¶ [0018]))] or IMAP [(Internet
Message Access Protocol (see id.))], particular email messages
can be intercepted and converted into RSS feeds for the user.
The email can be placed into various feeds depending on the
content, title, sending party, etc.
Spec. 21:9-13. Appellants argue that “the claimed subject matter is fully
disclosed and supported in the specification to the extent that it would have
been suggested to one skilled in the art.” App. Br. 29. Appellants further
argue as follows:
[A]s interception of pushed content is indisputably disclosed
throughout the specification and at least at page 21, one skilled
in the art would understand that it is at least inherently
disclosed that the step of interception would either be absolute
or predicated by something. Considering the last sentence of
the first paragraph appearing in the specification at page 21, it is
Appeal 2011-003487
Application 11/163,565

9
further disclosed that the intercepted “. . . email can be placed
into various feeds depending on the content, title, sending party,
etc.” Clearly, one skilled in the art would understand that
“content, title, sending party, etc.” are exemplary content
identifiers and at least suggestive of the triggers that may be
relied upon by the system to intercept an email before placing
the email content into a feed associated with the same trigger.
App. Br. 30; see also Spec. 9:17-10:7, 18:3-4, 21:9-13.
The Examiner takes the position that “[a]lthough interception
functionality is briefly discussed on page 21 of the specification, there is
nothing which indicates that the interception is performed selectively in
response to the presence or absence of a predetermined content identifier.”
Ans. 5.
We agree with the Examiner. It is undisputed that the Specification
teaches that interception occurs. App. Br. 30; Ans. 48. As Appellants point
out, the skilled artisan would have understood that interception would
“either be absolute or predicated by something.” App. Br. 30. However, the
Specification does not disclose within its four corners, to the skilled artisan,
that Appellants possessed an invention in which interception is not
“absolute” or is “predicated” on any particular event or thing, let alone on
“the presence or absence of a predetermined content identifier.” See Ariad,
598 F.3d at 1351. Although the passages of the Specification cited by
Appellants (see App. Br. 7, 30; see also Spec. 9:17-10:7, 18:3-4, 21:9-13)
may disclose predetermined content identifiers, the skilled person would
have understood the disclosure to explain how intercepted content is directed
into RSS feeds after it has been intercepted, not to disclose predicates for
intercepting content.
Appeal 2011-003487
Application 11/163,565

10
Appellants contend that “‘content, title, sending party, etc.’ are
exemplary content identifiers and at least suggestive of the triggers that may
be relied upon by the system to intercept an email before placing the email
content into a feed.” App. Br. 30 (emphases added). However, “a
description that merely renders the invention obvious does not satisfy the
[written description] requirement.” Ariad, 598 F.3d at 1352.
Appellants have failed to persuade us of error in the rejection of claim
21 under 35 U.S.C. § 112, first paragraph. Accordingly, we sustain the
rejection.

REJECTIONS UNDER 35 U.S.C. § 103(a)
COMBINABILITY OF MAILBUCKET AND THURLOW
Issue
The issue raised by Appellants’ arguments is as follows: Are
MailBucket and Thurlow analogous art? See App. Br. 10-11.
Analysis
Appellants contend that MailBucket and Thurlow are not analogous
art and are, therefore, not properly combinable. See, e.g., App. Br. 10-11.
Appellants argue, for example, that:
because the MailBucket and Thurlow arts are directed at
entirely different problems (content conversion and
dissemination vs. content reception and management), the arts
are not analogous to the extent that one skilled in the art of
MailBucket would have looked to Thurlow for system
improvements (please see Medtronic, Inc. v. Cardiac
Pacemakers, 721 F.2d 1563, 220 USPQ 97 (Fed. Cir. 1983)
holding that one of ordinary skill in a given art would only look
to the solutions of other arts when the problem sought to be
solved was the same).
Appeal 2011-003487
Application 11/163,565

11
App. Br. 15-16. However, Appellants’ argument conflates the two tests for
analogous art. In an obviousness analysis,
[t]wo separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless
of the problem addressed and, (2) if the reference is not within
the field of the inventor’s endeavor, whether the reference still
is reasonably pertinent to the particular problem with which the
inventor is involved.
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004) (emphases added). Here, MailBucket,
Thurlow, and Appellants’ claimed invention are from the same field of
endeavor: electronic content (e.g., email) handling. See MailBucket A, p. 1;
Thurlow, Abstract, col 1, ll. 14-62; Spec. 21:1-13; see also Ans. 29
(“Thurlow, like MailBucket, describes an email processing system.”).
Because MailBucket and Thurlow are both in the same field of endeavor as
Appellants’ claimed invention, they are analogous art, “regardless of the
problem addressed,” Klein, 647 F.3d at 1348. Accordingly, we find that
Thurlow and MailBucket are analogous art that a person of ordinary skill
would look to in addressing problems to be solved related to electronic
content or message (e.g., email) handling systems.
We relatedly find Appellants’ contention that one of ordinary skill in
the art would not be motivated to look to Thurlow to improve MailBucket
because MailBucket teaches a content dissemination mechanism while
Thurlow teaches an email client, i.e., a content reception mechanism (App.
Br. 10) to be unpersuasive. We note, as does the Examiner (Ans. 29 (citing
Thurlow col. 9, ll. 37-38; col. 16, ll. 63-67); see also Ans. 30-31), that
Thurlow teaches sorting messages by way of user defined rules at the email
server as well as at the email client on the user’s computer. Thus, we find
Appeal 2011-003487
Application 11/163,565

12
that Thurlow teaches sorting messages as a part of a content dissemination
mechanism, i.e., Thurlow’s server.
Appellants contend (App. Br. 11-12) the Examiner erred by not
articulating a rationale based on a teaching, suggestion, or motivation to
combine MailBucket and Thurlow found in the prior art itself. We discuss
the specific rationales articulated by the Examiner infra. We note, however,
that although the teaching, suggestion, or motivation test remains a useful
insight into obviousness, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007), “[t]he obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents,” id. at 419.
Appellants have failed to persuade us that MailBucket and Thurlow
are not properly combinable analogous art.

REJECTIONS UNDER 35 U.S.C. § 103(A) OVER MAILBUCKET, BANDINI ’954,
THURLOW, AND ANDERSON
Issues
The issues raised by Appellants’ arguments are as follows
(parenthetical letters added for ease of reference):
Does the combination MailBucket and Thurlow teach or suggest:
[(a)] creat[ing], for at least one recipient, a plurality of
RSS based files, wherein each RSS based file has a URL that is
based at least in part on the substantially unique identifier; . . .
and
[(b)] plac[ing] at least portions of the converted pushed
content into various RSS feed destinations for a given recipient;
as recited in claim 1 (App. Br. 38)? See App. Br. 13.
Appeal 2011-003487
Application 11/163,565

13
Does the combination MailBucket and Thurlow teach or suggest:
for one or more of the pushed content items having a
portion placed into a recipient specific RSS based file:
[(c)] generat[ing] an additional substantially
unique identifier; [and]
[(d)] creat[ing] a criteria specific RSS based file
having a URL that is based at least in part on the
additional substantially unique identifier;
as recited in claim 22 (App. Br. 43-44)? See App. Br. 33.
Claim 1 Analysis
The Examiner finds that MailBucket teaches the clause identified
above as clause (a), mapping clause (a) to MailBucket as follows:
create, for at least one recipient (e.g., the other users of the
MailBucket system), a plurality of RSS based files (e.g., the
RSS files for the other lists: such as “xml-dev” and “syncato-
general”), wherein each RSS based file has a URL that is based
at least in part on the substantially unique identifier (implicitly
disclosed as part of the ordinary operation of the MailBucket
system),
(Ans. 6; see also MailBucket A, p. 2). The Examiner explains that
[t]he limitation at issue requires creating a plurality of RSS
based files for at least one recipient. In other words, the
plurality of files may be “for” more than one recipient, such as
the other users of the MailBucket system. In addition, each
RSS based file has a URL based on “the substantially unique
identifier,” and the claim recites that unique identifiers are
generated for each address identifier. Thus, as in MailBucket,
each RSS based file has a URL based on a unique identifier
generated for its address identifier.
Ans. 32-33.
Appellants contend, inter alia, that “the Examiner errs by asserting
that ‘a plurality of RSS based files’ created for the single user . . . is
Appeal 2011-003487
Application 11/163,565

14
anticipated by RSS based files having URLs generated from wholly different
substantially unique identifiers derived from [different] address identifiers
. . . .” App. Br. 13-14. We agree with Appellants.
We construe clause (a) in the context of the entire claim. We note, as
does the Examiner (Ans. 33), that the recited “the substantially unique
identifier” is recited to be based on an address identifier, with “each address
identifier” having an associated “substantially unique identifier.” We further
note that the address identifiers are recited to uniquely identify recipients.
We conclude that broadest reasonable interpretation of “the substantially
unique identifier” is “the substantially unique identifier” associated with the
“address identifier” uniquely assigned to the “at least one recipient.” We
further conclude that, under the broadest reasonable interpretation of clause
(a), the plurality of RSS based files have URLs that are based on “the
substantially unique identifier” (emphasis added) for the “at least one
recipient.” In other words, multiple RSS files are created for a given
recipient and URLs for all RSS based files created for a given recipient are
based on the substantially unique identifier associated with that recipient.
Accordingly, we conclude the rejection of claim 1 is based on an erroneous
claim construction.
We are persuaded of error in the rejection of claim 1. Accordingly,
we do not sustain the rejection of claim 1 or of claims 3 and 5, which depend
from claim 1 and incorporate all of the limitations of claim 1. See App. Br.
17.
Appeal 2011-003487
Application 11/163,565

15
Claim 22 Analysis
Appellants argue claim 22 on substantially the same basis as claim 1.
See App. Br. 33-36. We do not sustain the rejection of claim 22 for
substantially the same reasons as set forth supra regarding claim 1.

REJECTION UNDER 35 U.S.C. § 103(A) OVER MAILBUCKET, BANDINI ’954,
THURLOW, ANDERSON, BLOGGER, AND AAPA
Claim 4 depends from claim 1, and incorporates all of the limitation
of claim 1. See App. Br. 17. Accordingly, we do not sustain the rejection of
claim 4 for the same reason we do not sustain the rejection of claim 1.

REJECTION UNDER 35 U.S.C. § 103(A) OVER MAILBUCKET, THURLOW,
ANDERSON, AND BANDINI ’095
Issue
The issue raised by Appellants arguments is as follows: Does the
combination of MailBucket and Thurlow teach or suggest (parenthetical
letter added for ease of reference) “[(e)] based at least in part on at least a
portion of the address identifier within the pushed content item and the
particular sending address, generat[ing] a substantially unique identifier for
the address identifier and particular sending address pair,” as recited in claim
6 (App. Br. 39)? See App. Br. 18.
Analysis
The Examiner relies on Thurlow’s rules and folders to teach the
clause identified above as clause (e). Ans. 11 (citing Thurlow, col. 9, ll. 37-
48; col. 11, ll. 1-18 (Table I)). Appellants contend as follows:
[W]hile the applicant acknowledges that a sending email
address coupled with the user’s email address could be
suggested by Thurlow’s description of typical email conditions,
Appeal 2011-003487
Application 11/163,565

16
Thurlow does not describe, suggest or teach that a substantially
unique identifier could be created from the address pair. . . .
. . . [A]ny suggestion in Thurlow regarding folder naming
would be interpreted by an artisan to be that the folder name is
determined by the email client user himself, as is known in the
art of email clients, and not as a result of an automated action
triggered by the address pair condition.
App. Br. 19 (emphases added).
Claim 6 does not recite, in so many words, that “generat[ing] a
substantially unique identifier” is an automated action or that the unique
identifier is created “from” the address pair. However, considering the claim
as a whole, it recites that generating of the identifier is “in response to” (i.e.,
triggered by) the receipt of a content item and a determination that the
content item is the first content item from a particular sending address and
that the identifier is “based on” the address pair. Accordingly, Appellants’
characterization of the claim fairly identifies a deficiency in the Examiner’s
findings. The cited passages of Thurlow do not teach or suggest that
Thurlow’s rules are created in response to any particular condition, nor do
they teach any particular basis for naming Thurlow’s folders. Therefore, we
agree with Appellants that the Examiner has failed to establish that Thurlow
teaches or suggests clause (e).
We are persuaded of error in the rejection of claim 6. Accordingly,
we do not sustain the rejection of claim 6 or of claims 7-9, which depend
from claim 6 and incorporate all of the limitations of claim 6. See App. Br.
21.

Appeal 2011-003487
Application 11/163,565

17
REJECTION UNDER 35 U.S.C. § 103(A) OVER MAILBUCKET, THURLOW, AND
ANDERSON
Issue
The issue raised by Appellants’ arguments is as follows: Has the
Examiner articulated a sufficient rationale for combining MailBucket and
Thurlow? See App. Br. 21-23.
Analysis
The Examiner finds that, “[t]he artisan would have been motivated to
make the improvements because the advantages of the finer-grained sorting
Thurlow describes (improved efficiency, ease of filing information: see col.
1, lines 13-61) would be applicable to MailBucket.” Ans. 15; see also Ans.
40. The Examiner additionally finds that the “the result of the combination
would have been predictable . . . .” Ans. 15; see also Ans. 41.
Appellants contend that the combination of MailBucket and Thurlow
is improper because they are non-analogous art. App. Br. 21-22. We find
this contention unpersuasive for the reasons discussed supra.
Appellants contend “[t]he Examiner’s suggestion . . . is merely the
opinion of the Examiner (i.e., not described, suggested or taught in the prior
art) and, as such, is an improper substantiation of a motivation.” App. Br.
22. We are not persuaded. As discussed supra, it is not a rigid requirement
that a motivation for a combination of references be found in the prior art
documents themselves. See KSR, 550 U.S. at 419. However, we find that a
fair reading of the passages of Thurlow cited by the Examiner does, in fact,
support the articulated motivation to combine.
Admittedly, the rationale articulated by the Examiner is not recited in
haec verba in Thurlow. However, Thurlow teaches, for example, “[u]sers
who send and receive a large number of e-mail messages would like an
Appeal 2011-003487
Application 11/163,565

18
effective way to process their e-mail without spending a lot of time sorting
through their inbox, deleting, filing, forwarding, and responding to their
messages.” Thurlow, col. 1, ll. 31-35. “For example, a user may want to
file all e-mail from a certain user or regarding a certain subject in a specific
folder.” Id., col. 1, ll. 38-40. Further, Thurlow teaches that it is desirable
“to process electronic messages in the most efficient manner.” Id., col. 1, ll.
61-62. Thurlow additionally teaches the following:
Rules execute specific tasks when user-defined criteria are met
and provide an effective way to process electronic messages
without requiring users to spend a lot of time sorting through
their inboxes deleting, filing, and responding to their messages.
The present invention provides an improved system and method
for creating and editing rules for processing electronic
messages, such as e-mail, meeting requests, and task requests.
Id., col. 9, ll. 17-24.
We conclude that these passages, when read together and in the
context of Thurlow’s disclosure, would have motivated the skilled person in
the manner articulated by the Examiner. Accordingly, Appellants have
failed to persuade us that the Examiner’s articulated rationale for combining
MailBucket and Thurlow was insufficient or in error. With regard to the
Examiner’s additional articulated rationale for combining MailBucket and
Thurlow, we do not reach Appellants’ arguments, as a single articulated
rationale for combining the references is sufficient to sustain the rejection.
We therefore sustain the rejection of claim 10 and of claims 11-14, which
depend from claim 10 and were argued relying on the arguments made for
claim 10 (App. Br. 23).

Appeal 2011-003487
Application 11/163,565

19
REJECTION UNDER 35 U.S.C. § 103(A) OVER MAILBUCKET, BANDINI ’954,
THURLOW, ANDERSON, AND SOFTWARE GARDEN
Issue
The issue raised by Appellants’ arguments is as follows: Does the
combination MailBucket and Thurlow teach or suggest (parenthetical letters
added for ease of reference):
[(f)] receiving bulk content . . . each content item
comprised within the bulk content being directed towards a
plurality of recipients; [and]
[(g)] in response to receiving the bulk content, for each
particular recipient that is to receive one or more items in the
bulk content, the . . . system determining if any items have been
previously received that include certain parameters associated
with a class of content;
as recited in claim 15 (App. Br. 41-42)? See App. Br. 23.
Analysis
The Examiner finds that the combination of MailBucket and
Anderson teaches the clause identified above as clause (f). Ans. 17 (see
MailBucket A, p. 1), 20 (citing Anderson, ¶¶ [0003], [0023]-[0025]). The
Examiner finds that MailBucket teaches clause (g). Ans. 17 (see
MailBucket A, pp. 1-2; F, p. 1)
The Examiner maps the recited “bulk content” to MailBucket’s
teaching of a “high traffic mailing list.” Ans. 17 (see MailBucket A, p. 1).
Appellants contend that:
[t]he element clearly recites a bulk content comprised of a
plurality of individual contents . . . . [U]nless the Examiner can
show that an email originating from a high traffic mailing list,
or any other content source for that matter, is comprised of a
plurality of individual emails then the recited element is not
fully anticipated and the prima facie burden is not met.
Appeal 2011-003487
Application 11/163,565

20
App. Br. 24. We disagree.
Appellants’ Specification does not use the phrase “bulk content.”
Appellants’ Specification defines “bulk email,” and distinguishes bulk email
from high volume email generally: “Bulk email is a type of high-volume
email that generally is focused on sending large volumes of the same
message to many recipients. High-volume email can include bulk email, but
also includes applications in which a large number of customized messages
are sent to various recipients.” Spec. 2:15-19. Appellants’ claim
specifically recites “bulk content, . . . each content item comprised within
the bulk content being directed towards a plurality of recipients,” which
Appellants argue “clearly recites a bulk content comprised of a plurality of
individual contents . . . .” App. Br. 24. However, “each” encompasses
“one” and the claim does not preclude multiple items from being sent over
time rather than simultaneously. Appellants point to related application
serial no. 11/163,563, at page 16, as relevant to the meaning of “bulk
content” (App. Br. 24). However, as pointed out by the Examiner (Ans. 42),
the phrase is not defined (or even present) in the related application.
Appellants have not persuaded us that the Examiner has given “bulk
content” an unreasonably broad interpretation in light of Appellants’
Specification.
The Examiner combines MailBucket’s teaching of directing a bulk
content item towards a recipient with Anderson to teach or suggest directing
a bulk content item towards a plurality of recipients. Appellants contend the
rejection is improper because the “‘receiving a bulk content, each content
item being directed towards a plurality of recipients’ is not a compound
recitation of subject matter that can be deconstructed into sub-elements with
Appeal 2011-003487
Application 11/163,565

21
the intent of establishing the prima facie case via multiple prior arts.” App.
Br. 24. Appellants concede that elements (i.e., claim clauses) may be
“compound” subject to rejection over multiple references. App. Br. 25.
Appellants cite no authority for the concept of indivisible limitations and, as
pointed out by the Examiner (Ans. 42) offer no explanation, beyond a naked
assertion, as to why clause (f) should be treated as an indivisible limitation.
Although we understand Appellants’ somewhat fanciful analogy to a
miniature pony (see App. Br. 25), we do not find it enlightening as to the
limitation before us.
Appellants further contend that “the Examiner must show that each
recited [presumably indivisible] element exists in a single prior art
reference.” App. Br. 25 (citing Verdegaal Bros. v. Union Oil Co. of
California, 814 F.2d 628, 631 (Fed. Cir. 1987) (stating that “a claim is
anticipated only if each and every element as set forth in the claim is found,
either expressly or inherently described, in a single prior art reference.”
(emphasis added by Appellants))). While this is a correct statement of the
law of anticipation under 35 U.S.C. § 102(a), the rejection before us is for
obviousness under 35 U.S.C. § 103(a). “[T]he [obviousness] analysis need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S.
at 418. The test of non-obviousness is not whether one reference can be
bodily inserted into another, but, rather, what the references, when
considered together, would suggest to one of ordinary skill in the art, In re
Keller, 642 F.2d 413, 425 (CCPA 1981), who is a person of ordinary
creativity and not an automaton, KSR, 550 U.S. at 421, and whose inferences
Appeal 2011-003487
Application 11/163,565

22
and creative steps we may consider, id. at 418. We are, therefore, not
persuaded of error.
Appellants argue error on the Examiner’s findings regarding claim
clause (g) relying on substantially the same arguments as made for clause
(f), which arguments are unpersuasive for the same reasons. Appellants
additionally contend the Examiner erred because “the email itself is not a
class of content and, to be consistent with its prima facie assertions relative
to clause [(f)], the Examiner must show that items within the email include
parameters associated with classes of content.” App. Br. 27.
The Examiner replies, Ans. 44-45, that Appellants have admitted
during prosecution that “a class of content” encompasses email (see
Amendment and Response to Accompany a Request for Continued
Examination at 13; filed June 18, 2009). Appellants do not dispute this
admission. See Reply Br.7. The Examiner further explains that the
“parameters [recited in clause (g)] have been interpreted as items within the
email (e.g., the "From" address in the case of MailBucket, and the various
other criteria taught by Thurlow (see Table 1 at col. 11).” Ans. 45. We find
the Examiner’s mapping of “parameters” to items within the email to be
reasonable. We further note that parameters such as Thurlow’s “sent
directly to me,” “I am on the cc line,” “from an address list,” etc., (see
Thurlow, col. 11, ll. 1-17 (Table I)) are related to the class of content, i.e.,
related to email. We are, therefore, unpersuaded of error.
Appellants contend that the Examiner has not articulated a sufficient
rationale for combining MailBucket and Thurlow. App. Br. 27-28. We find
this contention unpersuasive for the reasons discussed supra regarding claim
10.
Appeal 2011-003487
Application 11/163,565

23
We are not persuaded of error in the rejection of claim 15.
Accordingly, we sustain the rejection of claim 15.

REJECTION UNDER 35 U.S.C. § 103(A) OVER MAILBUCKET, BANDINI ’954,
THURLOW, ANDERSON, SOFTWARE GARDEN, AND APACHE
Claims 18-20 depend from claim 15, and were argued by relying on
the arguments made for claim 15. See App. Br. 28-29. Accordingly, we
sustain the rejection of claims 18-20 for the same reasons we sustain the
rejection of claim 15.

REJECTION UNDER 35 U.S.C. § 103(A) OVER MAILBUCKET, THURLOW, AND
ZAHARIEV
Claim 21
The issue raised by Appellants arguments is as follows: Does the
combination of MailBucket and Thurlow teach or suggest (parenthetical
letters added for ease of reference) “[(h)] creat[ing] an RSS based file for
each predetermined content identifier with each of the RSS based files
having a URL that is based at least in part on the substantially unique
identifier . . . ,” as recited in claim 21 (App. Br. 43)? See App. Br. 30-32.
Analysis
Appellants argue claim 21 on substantially the same basis as discussed
supra regarding claim 1. See App. Br. 30-31. We do not sustain the
rejection of claim 21 under 35 U.S.C. § 103(a) for substantially the same
reasons as set forth supra regarding claim 1.

Appeal 2011-003487
Application 11/163,565

24
ORDER
The decision of the Examiner to reject claims 10-15 and 18-21 is
affirmed.
The decision of the Examiner to reject claims 1, 3-9, and 22 is
reversed.
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). See
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

ke