Ex Parte Shaw

Board of Patent Appeals and Interferences

Aug 29, 2012

09862065 (B.P.A.I. Aug. 29, 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.
09/862,065 05/21/2001 Mark D. Shaw SHAW-02 7240
29633 7590 08/30/2012
ROGERS TOWERS, P.A.
1301 RIVERPLACE BOULEVARD, SUITE 1500
JACKSONVILLE, FL 32207
EXAMINER
ALVAREZ, RAQUEL
ART UNIT PAPER NUMBER
3682
MAIL DATE DELIVERY MODE
08/30/2012 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 MARK D. SHAW
____________

Appeal 2011-004854
Application 09/862,065
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU
R. MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1 to 6. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2011-004854
Application 09/862,065

2
Claim 1 is illustrative:
.
1. A method for providing and tracking embedded e-mail
advertising transmitted over a global computer communications
system, comprising the steps of:

creating a subscriber network of host e-mail accounts
on individual host computers incommunication with a network
computer of an advertising entity over a global computer
communications network,

wherein each of said host e-mail accounts transmits e-
mail messages from the host computer to third parties by e-mail
without passing said e-mail messages through said network
computer;

downloading embedding and tracking software to each
said host computer from said network computer;

providing advertising to said host computers from said
network computer to be embedded within said e-mail messages
transmitted to said third parties by said host computers, tracking
said e-mail messages containing said embedded e-mail
advertising, and compensating said host e-mail accounts in
relation to the volume of said e-mail messages containing said
embedded e-mail advertising transmitted to said third parties by
said host computers.

Appellant appeals the following rejections:
1. Claims 1-6 under 35 U.S.C. § 102(e) as anticipated by Rothschild (US
2001/0047294 A1, pub. Nov. 29, 2001 ).

Appeal 2011-004854
Application 09/862,065

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ANALYSIS
The Appellant argues that Rothchild does not disclose a system
wherein the e-mails that are transmitted to third parties by the host
computers are not passed through the advertising entity network computer.
We agree.
The Examiner finds that website 110 is a network computer as recited
in claim 1. Ans. 4. The Examiner relies on Figure 3 for depicting this
subject matter and maintains that the e-mail message is not passed through
the network computer (website 110) to attach the advertisements, but rather
after the e-mail is submitted. However, this finding still does not respond to
the requirement of claim 1 of the email is passed to third parties, without
passing through said network; not that the advertisement is attached without
sending the email through the network.
We find that Rothchild discloses that the e-mail is sent via the web-
site 110 and is sent by the advertising application 114 [0048; 0078].
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 1 and dependent claims 2 and 3. We will also not sustain the
rejection as it is directed to claim 4 and claims 5 and 6 dependent thereon
because claim 4 also requires that the e-mail be transmitted without passing
through the network computer.

DECISION
We reverse the Examiner’s § 102 rejections.

ORDER
REVERSED
Appeal 2011-004854
Application 09/862,065

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JRG