Ex Parte Sykes

Board of Patent Appeals and Interferences

Aug 14, 2012

11304927 (B.P.A.I. Aug. 14, 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.
11/304,927 12/15/2005 George H. Sykes JR. 8446-000003/US/COA 5345
28997 7590 08/14/2012
HARNESS, DICKEY, & PIERCE, P.L.C
7700 Bonhomme, Suite 400
ST. LOUIS, MO 63105
EXAMINER
TIV, BACKHEAN
ART UNIT PAPER NUMBER
2451
MAIL DATE DELIVERY MODE
08/14/2012 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 GEORGE H. SYKES, JR.
_____________

Appeal 2010-004531
Application 11/304,927
Technology Center 2400
______________

Before ROBERT E. NAPPI, DEBRA K. STEPHENS, and
DAVID M. KOHUT, Administrative Patent Judges.

NAPPI, Administrative Patent Judge

DECISION ON APPEAL
Appeal 2010-004531
Application 11/304,927

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This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1 through 9, 11 through 15, and 17 through 20.

We affirm-in-part.
INVENTION
The invention is directed to method of archiving and verifying
electronic communications. See page 1 of Appellant’s Specification. Claim
1 is representative of the invention and reproduced below:
1. A method of sending a verifiable email message,
the method comprising:
receiving a confidential email message having a body
portion that
includes the text of the confidential message;
addressing the email message, either as an addressee or a
copy, to a
third party that will index the email message according to at
least one of sender, date, recipient, and subject;
storing an exact copy of the e-mail message for at least a
period of time specified by the sender for the purpose of
archiving the sender's email message;
sending an e-mail notification of the receipt of the email
message from the third party to the sender; and
sending a normal email to at least one addressee
notifying the at least one addressee that a confidential email
message is waiting for delivery to the addressee at the third
party's Internet website, wherein the normal email to the at least
one addressee includes instructions on how to establish a secure
internet connection to receive the confidential email message,
but does not include any text of the body of the confidential
email message.

REFERENCES
Appeal 2010-004531
Application 11/304,927

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MAXWELL US 5,805,810 Sep. 8, 1998
KARA WO 99/21330 Apr. 29, 1999
ROMNEY US 6,085,322 Jul. 4, 2000
NG US 6,640,301 B1 Oct. 28, 2003
MEISTER US 6,671,718 B1 Dec. 30, 2003
JANACEK US 6,684,248 B1 Jan. 27, 2004

REJECTION AT ISSUE
The Examiner has rejected claims 1, 7 through 9, 11, 12, 15 and 17
through 20 under 35 U.S.C. § 103(a) over Ng and Janacek. Final Rejection
2-5.1
The Examiner has rejected claim 4 under 35 U.S.C. § 103(a) over Ng
and Janacek and Kara. Final Rejection 5-6.
The Examiner has rejected claim 2 under 35 U.S.C. § 103(a) over Ng
and Janacek, Maxwell and Official Notice. Final Rejection 6-9.
The Examiner has rejected claims 3 and 6 under 35 U.S.C. § 103(a)
over Ng and Janacek and Maxwell. Final Rejection 9-10.
The Examiner has rejected claim 5 under 35 U.S.C. § 103(a) over Ng
and Janacek and Kara. Final Rejection 10.

ISSUES

1 Throughout this opinion we refer to the Final Rejection dated May 29,
2008 and the Examiner’s Answer mailed on May 13, 2009
Appeal 2010-004531
Application 11/304,927

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Rejection of claims 1, 7 through 9, 11, 12, 15 and 17 through 20
Appellant argues on pages 13 and 14 of the Brief,2 that the Examiner’s
rejection of independent claims 1, 7 through 9, 11, 12, 15, and 17 through 20
is in error. Appellant’s arguments present us with three issues:
a) Has Appellant shown conception and reduction for practice prior
to the priority date of Janacek to remove the reference from being
considered prior art?
b) Did the Examiner error in finding the combination of the
references teach the claimed feature of sending a normal e-mail
notifying the recipient that a confidential e-mail is waiting for
deliver where the normal e-mail does not include a body portion of
the confidential e-mail?
c) Did the Examiner provide a sufficient rationale to combine the
references?

Rejection of claims 3 and 6
Appellant’s arguments on page 20 of the Brief with respect to these
claims present us with the same issues as claim 1.

2 Throughout this opinion we refer to Appellant’s Appeal Brief dated
November 10, 2008.
Appeal 2010-004531
Application 11/304,927

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Rejection of claims 4 and 5
Appellant’s arguments on page 17 of the Brief, directed to the
rejection of claim 4 present us with the issue: did the Examiner err in finding
that the combination of Ng, Janacek, and Kara teach that the sender is
charged based upon the size of the email and the duration of storage?

Rejection of claim 2
Appellant’s arguments on page 18 of the Brief directed to the
rejection of claim 2 present us with the issue: did the Examiner provide
evidence to support application of Official Notice that a skilled artisan
would know to provide a written verification that a document is an exact
copy of the original document?

Rejection of claims 13 and 14
Appellant’s arguments on page 19 of the Brief directed to the
rejection of claim 13 and 14 present us with the issue: did the Examiner err
in finding the combination of the references teaches alerting the sender a
copy of the email message that was stored is about to be deleted if the sender
does not extend the time?

ANALYSIS
Rejection of claims 1, 7 through 9, 11, 12, 15 and 17 through 20
We have reviewed Appellant’s arguments in the Brief, the
Examiner’s rejection and the Examiner’s response to the Appellant’s
arguments. We disagree with Appellant’s conclusion that the Examiner
erred in rejecting claims 1, 7 through 9, 11, 12, 15, and 17 through 20. We
Appeal 2010-004531
Application 11/304,927

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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 Examiner’s Answer in response to Appellant’s Appeal
Brief.
With regard to the first issue, in addition to the Examiner’s findings
we note that the Declaration of John C. Burton and George Sykes do not
show a nexus between the claimed feature (of a normal email with
instructions to establish a secure connection but does not include any text of
the body of the confidential email message) prior to the priority date of
Janacek. Appellant admits that Janacek has support for this feature as of
April 18, 2000. Brief 8. The only supporting documentation from prior to
this date, is Exhibit B, showing purchase of a domain name, and Exhibit D
which is text of an email program. A review of Exhibit D does not readily
show the disputed claim limitation nor has Appellant provided an
explanation of where the disputed claim limitation is taught. Accordingly,
we concur with the Examiner that Appellant has not shown conception and
reduction to practice prior to the priority date of Janacek to remove the
reference from being considered prior art.
With regard to the second issue, Appellant’s arguments are directed to
Ng not teaching the limitation directed to the normal email not including a
body portion of the confidential email. Brief 13-14. However, the
Examiner’s rejection relies upon Janacek to teach this feature. Final
Rejection 4. As such Appellant’s arguments has not persuaded us the
Examiner erred in finding the combination of the references teach the
claimed feature of sending a normal email notifying the recipient that a
Appeal 2010-004531
Application 11/304,927

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confidential e-mail is waiting for delivery, where the normal e-mail does not
include a body portion of the confidential e-mail.
With regard to the third issue, Appellant argues that the Examiner has
not provided sufficient reason to combine the teachings of Ng and Janacek,
and further Appellant has proposed that such a modification would result in
a device different than claimed. Brief 15-16. The Examiner has provided a
rationale for combining the references, citing the disclosure of Janacek to
support this rationale. Answer 6. We consider the Examiner to have shown
that the combination is merely using a known process to perform its known
function. Further, while Appellant may consider there to be other
combinations of the references, such other combinations do not render the
combination proposed by the Examiner to in error. Thus, we consider the
Examiner to have presented sufficient rationale to combine the references.
As Appellant’s arguments directed to the three issues raised with
respect to the rejection of claims 1, 7 through 9, 11, 12, 15 and 17 through
20 have not persuaded us of error we, sustain the Examiner’s rejection of
these claims.

Rejection of claims 3 and 6
As discussed above, Appellant’s arguments with respect to these
claims present us with the same issues as claim 1. Accordingly, we sustain
the Examiner’s rejection of claims 3 and 6 for the reasons discussed with
respect to claim 1.

Appeal 2010-004531
Application 11/304,927

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Rejection of claims 4 and 5.
Appellant argues that “Kara merely discloses storage of a credit
associated with a sender or a receiver and does not disclose a charge based
on the memory storage size of the email [as claimed].” Brief 17. The
Examiner has cited to page 16 of Kara as teaching charging based upon
storage size, however we have reviewed the cited disclosure of Kara and
concur with Appellant that Kara does not teach charging based upon size of
the email (size of storage to store email). Accordingly, Appellant has
persuaded us of error in the Examiner’s rejection of claim 4. Thus, we will
not sustain the Examiner’s rejection of claim 4 or of claim 5 which depends
thereupon (the Examiner has not made a finding that the additional teaching
of Maxwell makes up for the noted deficiency in the rejection of claim 4).

Rejection of claim 2.
Appellant’s arguments center on the Examiner not providing evidence
to support the taking of Official Notice. Brief 18. The Examiner took
Official Notice that it was known to provide written verification to enable
manual validation. Final Rejection 7. In response to Appellant’s challenge
of this Official Notice, the Examiner provided as evidence a patent to
Romney. Answer 8. Appellant’s arguments have not addressed this
evidence by the Examiner, thus we find no error in the Examiner’s taking of
Official Notice and we sustain the Examiner’s rejection of claim 2.

Appeal 2010-004531
Application 11/304,927

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Rejection of claims 13 and 14
Appellant’s arguments have persuaded us that the Examiner erred in
finding that the combination of the references teaches alerting the sender a
copy of the email message that was stored is about to be deleted if the sender
does not extend the time as recited in claim 13. The Examiner finds that
Meister teaches this feature in figures 2-4. Answer 8. We disagree, the
button item 48 in figure 2, and step 92 in figure 92, are merely options for
the user to delete an e-mail and not a notification that an email is about to be
deleted. See Meister, col.4, ll. 41-45. Thus, we will not sustain the
Examiner’s rejection of claim 13 or claim 14 which depends thereupon.

ORDER
We reverse the Examiner’s rejections of claims 4, 5, 13, and 14. We
affirm the Examiner’s rejections of claims 1 through 3, 6 through 9, 11, 12,
15, and 17 through 20.
The decision of the Examiner to reject claims 1 through 9, 11 through
15, and 17 through 20 is affirmed in part.

AFFIRMED-IN-PART

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