Ex Parte Tosey

Patent Trial and Appeal Board

Mar 19, 2013

10638254 (P.T.A.B. Mar. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte JOSEPH PETER ROBERT TOSEY
_____________

Appeal 2010-009349
Application 10/638,254
Technology Center 2400
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Before ROBERT E. NAPPI, JOHN G. NEW, and HUNG H. BUI,
Administrative Patent Judges.

NAPPI, Administrative Patent Judge

DECISION ON APPEAL
Appeal 2010-009349
Application 10/638,254

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This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 4, 6 through 8, 17 through 21, 26 through 29, 31 through
33, 42, 44, 46, and 48.

We affirm.
INVENTION
The invention is directed a method of efficiently receiving notification
of e-mail from a server. See paragraph 0010 of Appellant’s Specification.
Claim 1 is representative of the invention and reproduced below (note the
italicized portion is not in claim before us but is added to resolve an
ambiguity in the claim):

1. A method for efficiently receiving notification of new e-mail from a
mail server, the method comprising:
requesting information regarding a most recently assigned unique
identifier corresponding to a mail client from the mail server,
the most recently assigned unique identifier assigned by the
mail server to an e-mail most recently received by the mail
server;
comparing the most recently assigned unique identifier to a unique
identifier associated with a most recently received mail item at
the mail client; and
retrieving new mail for the mail client from the mail server if the most
recently assigned unique identifier is not equal to the unique
identifier associated with the most recently received mail item
at the mail client.

Appeal 2010-009349
Application 10/638,254

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REJECTIONS AT ISSUE
The Examiner has rejected claims 1, 2, 17, 18, 26, 27, 42, 44, 46, and
48 under 35 U.S.C. § 103(a) as unpatentable over Kennedy (U.S. 6,330,589
B1) and Morton (U.S. 2005/0289612 A1). Answer 4-71.
The Examiner has rejected claims 3, 4, 7, 8, 19, 20, 21, 28, 29, 32, and
33 under 35 U.S.C. § 103(a) as unpatentable over Kennedy, Morton and
Appellant’s discussion of known systems in the background of the invention.
Answer 6-7.
The Examiner has rejected claims 6 and 31 under 35 U.S.C. § 103(a)
as unpatentable over Kennedy, Morton, Appellant’s discussion of known
systems in the background of the invention, and Talaugon (U.S.
2004/0078621 A1). Answer 7-8.

ISSUES
Appellant argues on pages 4 through 16 of the Appeal Brief that the
Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) is in error.2 These
arguments present us with the issues:
1) Did the Examiner err in finding that the combination of Kennedy
and Morton teach or suggest requesting information regarding a
most recently assigned unique identifier corresponding to a mail
client from the mail server as claimed?

1 Throughout this opinion we refer to the Examiner’s Answer mailed on
April 30, 2010.
2 Throughout this opinion we refer to Appellant’s Appeal Brief dated
February 18, 2010, and Reply Brief dated June 18, 2010.
Appeal 2010-009349
Application 10/638,254

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2) Did the Examiner err in finding that the combined teachings of
Kennedy and Morton disclose comparing the most recently
assigned unique identifier to a unique identifier associated with a
most recently received mail item at the mail client as claimed?

Appellant also presents arguments on page 18 of the Appeal Brief that
the Examiner’s rejections of claims 26 through 29, 31 through 33, and 48,
which are in a means plus function format, are in error. These arguments
present us with the additional issue:
3) Did the Examiner err by using the same citations from Kennedy
and Morton to show that both method claim limitations and means
plus function claim limitations are taught by the references?
Appellant’s arguments directed to the rejections of the remainder of
the claims rely upon the same rationale as asserted with respect to claim 1
and do not present us with additional issues.

ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejection and the Examiner’s response to the Appellant’s
arguments. We disagree with Appellant’s conclusions with respect to each
of the three issues raised.
In response to the first and second issues, the Examiner has provided a
well-reasoned rationale. Answer 9-15. In particular, the Examiner shows
that in at least one example of Kennedy the client device request an
identifier, which is the most recent identifier of an e-mail received by the
mail server and compares it to the identifier of the most recent e-mail
Appeal 2010-009349
Application 10/638,254

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received by the client device in order to determine if there is a download.
Answer 9-13. Further, the Examiner finds that Morton teaches a system
where the last message ID number, which is the equivalent to the unique
identifier associated with a most recently received mail item at the client
device, is used to determine which messages have a higher ID number and
only download those messages. Answer 14-15. We concur with the
Examiner’s findings.
Appellant’s argument that Morton merely looks to what has already
been downloaded from the mail server and not the most recently assigned
unique identifier, has not persuaded us of error in the Examiner’s rejection.
Reply Brief 8. Morton teaches using an indication of the last e-mail
downloaded to the client device to determine which e-mails to download and
downloads the e-mails with a higher ID number. Paragraphs 0146 and
0156. As discussed above, the Examiner has found, and we concur, that the
last e-mail downloaded is a unique identifier associated with a most recently
received mail item at the client device. Further, downloading e-mails with a
higher ID number as discussed in paragraphs 0146 and 0156 implicitly
includes a comparison to determine that there are e-mails with a higher
number, which meets the claimed comparison.
Further, we are not persuaded by Appellant’s argument that Kennedy
may teach an identifier that turns out to be the most recent identifier. The
Examiner’s finding ignores the requirement that the request be made
regarding a most recently assigned unique identifier. Reply Brief 4. This
argument is not persuasive as the rejection is based upon the combination of
references, and Morton discloses using an identifier of the most recently
assigned unique identifier.
Appeal 2010-009349
Application 10/638,254

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Thus, Appellant’s arguments directed to the first two issues raised in
the Appeal Brief have not persuaded us of error in the Examiner’s rejection.

With respect to the third issue, the Examiner finds that the combined
teachings of Kennedy and Morton discussed with respect to claim 1 also
disclose similar means-plus-function limitations of claim 26 through 29, 31
through 33, and 48. Appellant argues that the Examiner cannot show that
the means-plus–function limitations of these claims are drawn to identical
subject matter as the method claims. Appeal Brief. 18. We are not
persuaded of error by this argument, as the Examiner has not found that the
method claims are identical to the means plus function claims. Rather, the
Examiner has made findings regarding what the art teaches and applied
those same findings to both the method claims and the means plus function
claims (what the Examiner has done is similar to how Appellant shows that
the disclosure in the Specification provides support for both method and
means plus function claims (see Appeal Brief pages 7 and 8 which provide
virtually identical description of method and means plus function claims)).
Further, with respect to Appellant’s argument that the Examiner has
not shown that the references teach the corresponding structure we are not
persuaded of error. Appellant, on page 8 of the Appeal Brief, refers to
elements the flow charts of Figures 3 and 5 and citations to paragraphs 0023,
0030 and 0032 of the Specification (note paragraphs 0030 and 0032 do not
exist in Appellant’s originally filed Specification). As is clear from these
figures, the “means” are software commands depicted as elements of a flow
chart. The Examiner’s findings regarding Kennedy and Morton are also
directed to software commands depicted as elements of a flow chart.
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Therefore, in as much as Appellant’s Specification provided structure to
support the means plus function language, so too do the teachings of
Kennedy and Morton as cited by the Examiner. Thus, Appellant’s
arguments directed to the third issue have not persuaded us of error in the
Examiner’s rejection.
As Appellant’s arguments directed to the three issues raised in the
Appeal Brief have not persuaded us of error in the Examiner’s rejections, we
sustain the Examiner’s rejections of claims 1 through 4, 6 through 8, 17
through 21, 26 through 29, 31 through 33, 42, 44, 46, and 48 under 35
U.S.C. § 103(a).

DECISION
The decision of the Examiner to reject claims 1 through 4, 6 through
8, 17 through 21, 26 through 29, 31 through 33, 42, 44, 46, and 48 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)(iv).

AFFIRMED

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