Ex Parte Whynot

Patent Trial and Appeal Board

Mar 7, 2014

10610515 (P.T.A.B. Mar. 7, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte STEPHEN R. WHYNOT
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Appeal 2011-011701
Application 10/610,515
Technology Center 2400
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Before: EDWARD A. BROWN, JAMES P. CALVE, and
LYNNE H. BROWNE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the final rejection of
claims 1-4 and 6-21. App. Br. 5. Claim 5 is cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
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CLAIMED SUBJECT MATTER
Claims 1, 8, and 14 are independent. Claim 1 is reproduced below.
1. A method for providing network synchronization with a
unified messaging system, comprising:
receiving and storing message data for a specified
recipient;
generating an enhanced e-mail message, the message
comprising the message data and a synchronization link;
sending the enhanced e-mail message to the specified
recipient;
receiving a hypertext transfer protocol (HTTP) request
from an e-mail client associated with the recipient, the HTTP
request generated by the e-mail client in response to rendering
of the enhanced email message by the e-mail client; and
providing network synchronization based on the received
HTTP request without additional recipient interaction.

REJECTIONS
Claims 1-4, 7-11, 13-18 and 20 are rejected under 35 U.S.C. § 102(e)
as anticipated by Gifford (US 6,549,612 B2; iss. Apr. 15, 2003).
Claims 6, 12, 19 and 21 are rejected under 35 U.S.C. § 103 as
unpatentable over Gifford and Woo (US 5,948,059; iss. Sep. 7, 1999).
ANALYSIS
Claims 1-4, 7-11, 13-18 and 20 as anticipated by Gifford
The Examiner found that Gifford discloses a method for providing
network synchronization, as claimed, including generating an enhanced
email message comprising message data and a synchronization link. Ans. 3.
In particular, the Examiner found that Figure 5 of Gifford discloses the step
of generating an enriched email containing status information and reference
thereto at step 570. Ans. 3 (citing col. 15, lines 16-26). The Examiner also
found that Gifford discloses generating an enriched email with billing data
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therein and an embedded uniform resource locator (URL) link embedded in
the attached bill. Ans. 3 (citing col. 5, ll. 3-17), 12. The Examiner made
similar findings for independent claims 8 and 14. Ans. 5-6, 7-8. The
Examiner further found that Gifford discloses an enhanced email message
with an audio or video message as an attachment and a synchronization link
that comprises a hypertext transfer protocol (HTTP) uniform resource
locator (URL) with message-specific header data. Ans. 11-12. In addition,
the Examiner found that Gifford discloses an enhanced email message that
establishes a communication connection such as an HTTP connection with
an information server once the email is opened to establish a synchronization
link and also allows a recipient to see a graphical HTML, WML, or XML
attachment. Ans. 12-14 (citing col. 6, l. 62 through col. 7, l. 2).
Appellant argues that the Examiner has relied on distinctly different
embodiments and mixing and matching different portions of the
embodiments to find the recited claim elements where none of the
embodiments individually disclose all of the claimed elements. Reply Br. 2-
4. Appellant also argues that the Figure 5 embodiment of Gifford and
accompanying disclosure at column 15, lines 16-26 disclose an email
message with “status information” instead of the claimed message data and a
link back to the message. App. Br. 15. We agree. Gifford distinguishes
message data, which can comprise voice, video, or fax information, from
status information, which can include the status of an account such as phone
availability being turned off and current primary number location of a
subscriber. Col. 7, ll. 21-24 and 34-39. Appellant discloses that an
“enhanced e-mail message” means email that comprises an audio message
such as a voice message and/or a video message. Spec. 7, ll. 22-24. The
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Examiner has not established that Gifford discloses an enhanced e-mail
message with all of the claimed features arranged or combined in the same
way as recited in claims 1, 8 and 14. See NetMoneyin, Inc. v. VeriSign, Inc.,
545 F.3d 1359, 1371 (Fed. Cir. 2008) (district court erred in combining parts
of separate protocols from prior art reference and concluding that claim was
anticipated thereby).
Appellant also argues that the second embodiment involves a billing
interface that generates an email with a bill as an attachment and a URL link
is embedded in the bill so that the user must interact and select the link in the
bill to make an HTTP connection. App. Br. 15-16. Therefore, Appellant
argues that the mere rendering of the email (i.e., opening of the email) does
not generate the HTTP request as recited in claims 1, 8, and 14. App. Br.
16-17. We agree. Appellant discloses that a message in HTML format with
message data and a synchronization link are sent to an email client that
downloads and renders the HTML, whereupon the synchronization link is
fetched and an HTTP request is sent from the client to provide network
synchronization. Spec. 3, ll. 17-22.
The Examiner’s apparent attempt to remedy deficiencies in the status
information and billing embodiments of Gifford by citing to disclosures at
columns 6 through 8 does not explain how these disclosures relate to the two
specific embodiments relied upon by the Examiner. See Ans. 12-15. For
example, column 6, line 62 to column 7, line 2 of Gifford describes a rich
graphical HTML interface that establishes an HTTP connection to an
information server when an email is opened so that images, data, or
programs are loaded immediately to construct the interface displayed for the
email. Col. 6, l. 62 to col. 7, l. 5. We agree with Appellant that this
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graphical HTML interface is not message data and the Examiner has not
explained how this disclosure applies to either embodiment or provides
network synchronization. See Ans. 13-15; App. Br. 17-18. Appellant
discloses that the synchronization link comprises an HTTP URL with
message-specific header data pointing to the web server 128. Spec. 8, ll. 5-
10. Appellant also discloses that the web server 128 provides network
synchronization based on the HTTP request and enhanced email message by
marking the message as read, deleted, or processed in a suitable way. Spec.
15, ll. 26-30; see App. Br. 18-20. The Examiner has not established by a
preponderance of evidence that the dynamic and automatic loading of
information once an email is opened provides the claimed network
synchronization.
We do not sustain the rejection of claims 1-4, 7-11, 13-18 and 20.
Claims 6, 12, 19 and 21 as unpatentable over Gifford and Woo
The Examiner relied on Woo to disclose marking the message data as
read and not to overcome any deficiencies of Gifford as to claims 1, 8, and
14, as discussed supra. See Ans. 10. Thus, we do not sustain the rejection
of claims 6, 12, 19 and 21.

DECISION
We REVERSE the rejections of claims 1-4 and 6-21.

REVERSED
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