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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. 



10/088,784 



06/26/2002 



7590 



10/04/2005 

David B Cochran 

Jones Day Reavis & Pogue 

North Point 

90 1 Lakeside Avenue 

Cleveland, OH 44114-1190 



Barry J. Gilhuly 



555255012323 



9501 



EXAMINER 



NGUYEN, HAI V 



ART UNIT 



PAPER NUMBER 



2142 

DATE MAILED: 10/04/2005 



Please find below and/or attached an Office communication concerning this application or proceeding. 



PTO-90C (Rev. 10/03) 



unice Action aunimary 


Application No. 

10/088,784 


Applicant(s) 
GILHULY ETAL 


Examiner 

Hai V. Nguyen 


Art Unit 

2142 





- The MAILING DATE of this communication appears on the cover sheet with the correspondence address « 
Period for Reply 

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 03 MONTH(S) OR THIRTY (30) DAYS, 
WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION. 

- Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed 
after SIX (6) MONTHS from the mailing date of this communication. 

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication. 

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 1 33). 
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any 
earned patent term adjustment. See 37 CFR 1 .704(b). 

Status 

1 Responsive to communication(s) filed on 26 June 2002 . 
2a)D This action is FINAL. 2b)S This action is non-final. 

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is 

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 O.G. 213. 

Disposition of Claims 

4) ^3 Claim(s) 63-112 is/are pending in the application. 

4a) Of the above claim(s) is/are withdrawn from consideration. 

5) D Claim(s) is/are allowed. 

6) ^ Claim(s) 63-112 is/are rejected. 

7) D Claim(s) is/are objected to. 

8) D Claim(s) are subject to restriction and/or election requirement. 

Application Papers 

9) D The specification is objected to by the Examiner. 

10)^ The drawing(s) filed on 26 June 2002 is/are: a)S accepted or b)D objected to by the Examiner. 

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a). 

Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d). 
1 1 )□ The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152. 

Priority under 35 U.S.C. § 119 

12)E3 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f). 
a)D All b)D Some * c)D None of: 

1 .□ Certified copies of the priority documents have been received. 

2.D Certified copies of the priority documents have been received in Application No. . 



3.^ Copies of the certified copies of the priority documents have been received in this National Stage 
application from the International Bureau (PCT Rule 17.2(a)). 
See the attached detailed Office action for a list of the certified copies not received. 



Attachment(s) 

1) Notice of References Cited (PTO-892) 

2) □ Notice of Draftsperson's Patent Drawing Review (PTO-948) 

3) ^ Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08) 

Paper No(s)/Mail Date 11/05/04:5/13/03: . ^ 



4) CH Interview Summary (PTO-413) 

Paper No(s)/Mail Date. . 

5) [Zl Notice of Informal Patent Application (PTO-152) 
-fi^£) ^ Other: See Continuation Sheet 



U.S. Patent and Trademark Office 
PTOL-326 (Rev. 7-05) 



Office Action Summary 



Part of Paper No./Mail Date 16092005 



* 



Continuation Sheet (PTOL-326) Application No. 10/088,784 



Continuation of Attachment(s) 6). Other: IDSs received on 3/27/03; 1 1/29/02; 9/03/02. 



2 



^Application/Control Number: 10/088,784 Page 2 

Art Unit: 2142 

DETAILED ACTION 

1 . This Office Action is in response to the application filed on 26 June 2002. 

2. Claims 1-62 are cancelled. 

3. Claims 63-1 1 2 are presented for examination. 

Double Patenting 

4. The nonstatutory double patenting rejection is based on a judicially created 
doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the 
unjustified or improper timewise extension of the "right to exclude" granted by a patent 
and to prevent possible harassment by multiple assignees. See In re Goodman, 1 1 
F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 

USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 
1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 
418 F.2d 528, 1 63 USPQ 644 (CCPA 1 969). 

A timely filed terminal disclaimer in compliance with 37 CFR 1 .321(c) may be used to overcome an actual or 
provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is 
shown to be commonly owned with this application. See 37 CFR 1 .130(b). 

Effective January 1 , 1 994, a registered attorney or agent of record may sign a terminal disclaimer. A 
terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b). 

5. Claims 63-101 are rejected under the judicially created doctrine of obviousness- 
type double patenting as being unpatentable over claims 1-58 of U.S. Patent No. 
6,701,378 B1. Although the conflicting claims are not identical, they are not patentably 
distinct from each other because: 



Application/Control Number: 10/088,784 Page 3 

Art Unit: 2142 

In the instant application: 

Claim 63 recites that: 

A method of redirecting data messages from a messaging host system to a 
wireless mobile communication device, comprising the steps of: 

transmitting a data message to the messaging host system, wherein the 
messaging host system stores the data message in a first message store associated 
with a user of the wireless mobile communication device; 

detecting the data message at the messaging host system; 

forwarding a copy of the data message from the messaging host system to a 
wireless redirector host system via a wide area network connection between the 
messaging host system and the wireless redirector host system; 

storing the data message in a second message store associated with the user of 
the wireless mobile communication device at the wireless redirector host system; 

determining whether the data message stored in the second message store 
should be redirected from the wireless redirector host system to the; user's wireless 
mobile communication device; and 

if the data message should be redirected, then packaging the data message into 
an electronic envelope and transmitting the electronic envelope from the wireless 
redirector host system to the user's wireless mobile communication device via a 
wireless gateway coupling the wireless redirector host system to a wireless 
transmission network. 



Application/Control Number: 10/088,784 Page 4 

Art Unit: 2142 

In the patent # 6 .701 ,378 B1 : 

Claims 5, 8, 6, and 20 recite that: 

"A method of transmitting messages originating from a wireless device with a first 
electronic mail account maintained at a messaging host system,.." (claim 5) 
"detecting the message in the first electronic mail account;" (claim 8) 
"forwarding a copy of the message to the wireless redirector host system;" (claim 8) 
"placing the original message in an electronic envelope addressed to a second 
electronic mail account maintained at the wireless redirector host system." (claim 6) 
"determining whether the message should be redirected from the wireless redirector 
host system to the wireless device; and 

"if the message should be redirected, then packaging the message into an electronic 
envelope and transmitting the electronic envelope to the wireless device." (claim 8). 
wherein the wireless redirector host system is coupled to the wireless data network via 
a wireless gateway system (claim 20). 

In the instant application: 

Claim 93 recites that: 

"The method of redirecting E-mail messages from a messaging host system to a user's 
wireless mobile device, comprising the steps of: 

detecting an E-mail message for the user at the messaging host system; 
storing the E-mail message in a first message store at the messaging host system; 
forwarding a copy of the E-mail message from the messaging host system to a wireless 
redirector host system via a wide area network connection; 



Application/Control Number: 10/088,784 Page 5 

Art Unit: 2142 

receiving the forwarded E-mail message at the wireless redirector host system and 
storing the E-mail message in a second message store at the wireless redirector host 
system; 

applying a set of user-defined filtering rules that determine whether or not to redirect the 
stored E-mail message from the wireless redirector host system to the user's wireless 
mobile device via a wireless network coupled to the wireless redirector host system; and 

if the filtering rules determine that the E-mail message is of the type that should 
be redirected, then redirecting the E-mail message to the user's wireless mobile device 
by packaging the E-mail message in an electronic envelope that includes the wireless 
network address of the user's wireless mobile device. 
In the patent # 6,701 ,378 B1 : 
Claims 26, 1 , and 6 recite that: 

"detecting a message for the user of the wireless device at the messaging host system;" 
(claim 26) 

"storing the original electronic mail message in the first electronic mail account;" (claim 
1) 

"forwarding a copy of the message from the messaging host system to the wireless 
redirector host system;" (claim 26) 

"receiving the forwarding message at the wireless redirector host system" (claim 26) 
and placing the original message in an electronic envelope addressed to a second 
electronic mail account maintained at the wireless redirector host system." (claim 6) 



Application/Control Number: 10/088,784 Page 6 

Art Unit: 2142 

"applying a set of user-defined filtering rules that determine whether or not to redirect 
the message to the user's wireless device via wireless network coupled to the wireless 
redirector host system; and" (claim 26) 

"if the filtering rules determine that the message is if the type that should be redirected, 
then redirecting the message to the user's wireless device by packaging the message in 
an electronic envelope that includes the wireless network address of the user's wireless 
device." (claim 26) 

6. Claim 93-1 12 are provisionally rejected under the judicially created doctrine of 
obviousness-type double patenting as being unpatentable over claims 51-62, 71-74, 76- 
78, 81 of copending Application No. 09/928,983. Although the conflicting claims are not 
identical, they are not patentably distinct from each other because: 

In the instant application: 

Claim 93 recites that: 

"The method of redirecting E-mail messages from a messaging host system to a user's 

wireless mobile device, comprising the steps of: 

detecting an E-mail message for the user at the messaging host system; 

storing the E-mail message in a first message store at the messaging host system; 

forwarding a copy of the E-mail message from the messaging host system to a wireless 

redirector host system via a wide area network connection; 



Application/Control Number: 10/088,784 Page 7 

Art Unit: 2142 

receiving the forwarded E-mail message at the wireless redirector host system and 
storing the E-mail message in a second message store at the wireless redirector host 
system; 

applying a set of user-defined filtering rules that determine whether or not to redirect the 
stored E-mail message from the wireless redirector host system to the user's wireless 
mobile device via a wireless network coupled to the wireless redirector host system; and 

if the filtering rules determine that the E-mail message is of the type that should 
be redirected, then redirecting the E-mail message to the user's wireless mobile device 
by packaging the E-mail message in an electronic envelope that includes the wireless 
network address of the user's wireless mobile device. 
In the co-pending application # 09/928.983: 
Claim 51 recites that: 

"The method of redirecting E-mail messages from a messaging host system to a user's 

wireless mobile device, comprising the steps of: 

detecting an E-mail message for the user at the messaging host system; 

forwarding a copy of the E-mail message from the messaging host system to a wireless 

redirector host system; 

receiving the forwarded E-mail message at the wireless redirector host system and 
applying a set of user-defined filtering rules that determine whether or not to redirect the 
stored E-mail message from the wireless redirector host system to the user's wireless 
mobile device via a wireless network coupled to the wireless redirector host system; and 



Application/Control Number: 10/088,784 Page 8 

Art Unit: 2142 

if the filtering rules determine that the E-mail message is of the type that should 
be redirected, then encrypting the E-mail message to form an encrypted E-mail 
message and redirecting the encrypted E-mail message to the user's wireless mobile 
device by packaging the encrypted E-mail message in an electronic envelope that 
includes the wireless network address of the user's wireless mobile device. 

In the instant application: 

Claim 1 02 recites that: 

"A system for redirecting data messages from a network to a user's wireless mobile 
device, comprising: 

a messaging host system coupled to the network for receiving data messages 
associated with a particular user and for storing and forwarding the received data 
messages to a predetermined address on the network; and 

a redirector host system associated with the predetermined address for receiving 
and storing the forwarded data messages from the messaging host system and for 
redirecting those data messages to tile user's wireless mobile device via a wireless 
gateway coupling the redirector host system to a wireless transmission network. 
In the co-pending application # 09/928,983: 
Claim 60 recites that: 

A system for redirecting data items from a network to a user's wireless mobile device, 
comprising: 



Application/Control Number: 10/088,784 Page 9 

Art Unit: 2142 

a messaging host system coupled to the network for receiving data items associated 
with a particular user and for forwarding the received data items to a predetermined 
address on the network; and 

a redirector host system associated with the predetermined address for receiving the 
forwarded data items from the messaging host system and for encrypting and 
redirecting the forwarded data items to the user's wireless mobile device, (claim 60) 

In the instant application: 

Claim 112 recites that: 

A method of operating a host system configured to redirect E-mail messages from the 
Internet to a user's wireless mobile device, comprising the steps of: 

receiving an E-mail message from the Internet for a particular user; 

accessing a user profile database to determine whether the particular user is an 
authorized user of the host system; 

if the user is an authorized user, then accessing a filter rules database to apply a 
set of user-defined filtering rules to the E-mail message that determine whether the E- 
mail message is the type of message that should be redirected to the user's wireless 
mobile device; and 

if the E-mail message clears the filtering rules, then repackaging the E-mail 
message into an electronic envelope including the address of the user's wireless mobile 
device and forwarding the electronic envelope to a wireless gateway system for 



Application/Control Number: 10/088,784 Page 10 

Art Unit: 2142 

transmission onto a wireless data network associated with the user's wireless mobile 
device. 

In the co-pending application # 09/928,983: 

Claim 81 recites that: 

A method of operating a host system configured to redirect E-mail messages from the 
Internet to a user's wireless mobile device, comprising the steps of: 

receiving an E-mail message from the Internet for a particular user; 

accessing a user profile database to determine whether the particular user is an 
authorized user of the host system; 

if the user is an authorized user of the host system, then accessing a filter rules 
database to apply a set of user-defined filtering rules to the E-mail message that 
determine whether the E-mail message is the type of message that the user wants to 
have redirected to its wireless mobile device; and 

if the filtering rules determine that the E-mail message should be redirected, then 
encrypting the E-mail message and repackaging the encrypted E-mail message into an 
electronic envelope including the address of the user's wireless mobile device and 
forwarding the electronic envelope to a wireless gateway system for transmission onto a 
wireless data network associated with the user's wireless mobile device. 

This is a provisional obviousness-type double patenting rejection because the 
conflicting claims have not in fact been patented. Accordingly, this instant claims 93, 
102, 1 12 claimed is various obviousness of the claims 51, 60, 81 of that co-pending 
application. The elements of "encrypting data items" or "encrypting an e-mail message" 



Application/Control Number: 10/088,784 Page 11 

Art Unit: 2142 

are absent in this instant claims 93, 102, 1 12 respectively which is an addition or an 
option selected by the user or the administrator before transmitting out the e-mail 
message in the co-pending application. Thus, "encrypting the data item" or "encrypting 
the e-mail message" is well-known to ordinary skill in the networking art (see patent # 
6,571,290, claim 16), 

7. Claim 63-1 12 are provisionally rejected under the judicially created doctrine of 
obviousness-type double patenting as being unpatentable over claims 1-4, 66-13, 15- 
22, 24-49, 51-54 of copending Application No. 09/671,162. Although the conflicting 
claims are not identical, they are not patentably distinct from each other because: 

In the instant application: 

Claim 63 recites that: 

A method of redirecting data messages from a messaging host system to a 
wireless mobile communication device, comprising the steps of: 

transmitting a data message to the messaging host system, wherein the 
messaging host system stores the data message in a first message store associated 
with a user of the wireless mobile communication device; 

detecting the data message at the messaging host system; 

forwarding a copy of the data message from the messaging host system to a 
wireless redirector host system via a wide area network connection between the 
messaging host system and the wireless redirector host system; 



Application/Control Number: 10/088,784 Page 12 

Art Unit: 2142 

storing the data message in a second message store associated with the user of 
the wireless mobile communication device at the wireless redirector host system; 

determining whether the data message stored in the second message store 
should be redirected from the wireless redirector host system to the user's wireless 
mobile communication device; and 

if the data message should be redirected, then packaging the data message into 
an electronic envelope and transmitting the electronic envelope from the wireless 
redirector host system to the user's wireless mobile communication device via a 
wireless gateway coupling the wireless redirector host system to a wireless 
transmission network. 

In the co-pending application # 09/671,162: 

Claims 1 , 2 recite that: 

A method of redirecting data items from a messaging host system to a user's 
mobile device, comprising the steps of: 

detecting a new data item for the user at the messaging host system; 

forwarding a copy of the new data item to a redirector host system; 

storing the new item in a user's inbox coupled to the messaging host system 
(claim 2); 

determining whether the new data item should be redirected from the redirector 
host system to the user's mobile device; and 



Application/Control Number: 10/088,784 Page 13 

Art Unit: 2142 

if the new data item should be redirected, then packaging the new data item into 
an electronic envelope and transmitting the electronic envelope to the user's mobile 
device. 

In the instant application: 

Claim 93 recites that: 

"The method of redirecting E-mail messages from a messaging host system to a user's 

wireless mobile device, comprising the steps of: 

detecting an E-mail message for the user at the messaging host system; 

storing the E-mail message in a first message store at the messaging host system; 

forwarding a copy of the E-mail message from the messaging host system to a wireless 

redirector host system via a wide area network connection; 

receiving the forwarded E-mail message at the wireless redirector host system and 

storing the E-mail message in a second message store at the wireless redirector host 

system; 

applying a set of user-defined filtering rules that determine whether or not to redirect the 
stored E-mail message from the wireless redirector host system to the user's wireless 
mobile device via a wireless network coupled to the wireless redirector host system; and 

if the filtering rules determine that the E-mail message is of the type that should 
be redirected, then redirecting the E-mail message to the user's wireless mobile device 
by packaging the E-mail message in an electronic envelope that includes the wireless 
network address of the user's wireless mobile device. 



Application/Control Number: 10/088,784 Page 14 

Art Unit: 2142 

In the co-pending application # 09/671.162: 

Claims 34, 2 recite that: 

"The method of redirecting E-mail messages from a messaging host system to a user's 

wireless mobile device, comprising the steps of: 

detecting an E-mail message for the user at the messaging host system; 

storing the new item in a user's inbox coupled to the messaging host system (claim 2); 

forwarding a copy of the E-mail message from the messaging host system to a wireless 

redirector host system; 

receiving the forwarded E-mail message at the wireless redirector host system and 
applying a set of user-defined filtering rules that determine whether or not to redirect the 
stored E-mail message from the wireless redirector host system to the user's wireless 
mobile device via a wireless network coupled to the wireless redirector host system; and 

if the filtering rules determine that the E-mail message is of the type that should 
be redirected, then redirecting the E-mail to the user's wireless mobile device by 
packaging the E-mail message in an electronic envelope that includes the wireless 
network address of the user's wireless mobile device. 

In the instant application: 

Claim 102 recites that: 

"A system for redirecting data messages from a network to a user's wireless mobile 
device, comprising: 



Application/Control Number: 10/088,784 Page 15 

Art Unit: 2142 

a messaging host system coupled to the network for receiving data messages 
associated with a particular user and for storing and forwarding the received data 
messages to a predetermined address on the network; and 

a redirector host system associated with the predetermined address for receiving 
and storing the forwarded data messages from the messaging host system and for 
redirecting those data messages to tile user's wireless mobile device via a wireless 
gateway coupling the redirector host system to a wireless transmission network. 
In the co-pending application # 09/671,162: 
Claim 43 recites that: 

"A system for redirecting data items from a network to a user's wireless mobile device, 
comprising: 

a messaging host system coupled to the network for receiving data items 
associated with a particular user and for storing and forwarding the received data 
messages to a predetermined address on the network; and 

a redirector host system associated with the predetermined address for receiving 
and storing the forwarded data items from the messaging host system and for 
redirecting those data items to tile user's wireless mobile device via a wireless gateway 
coupling the redirector host system to a wireless transmission network. 



Application/Control Number: 10/088,784 Page 16 

Art Unit: 2142 

In the instant application: 

Claim 112 recites that: 

A method of operating a host system configured to redirect E-mail messages from the 
Internet to a user's wireless mobile device, comprising the steps of: 

receiving an E-mail message from the Internet for a particular user; 

accessing a user profile database to determine whether the particular user is an 
authorized user of the host system; 

if the user is an authorized user, then accessing a filter rules database to apply a 
set of user-defined filtering rules to the E-mail message that determine whether the E- 
mail message is the type of message that should be redirected to the user's wireless 
mobile device; and 

if the E-mail message clears the filtering rules, then repackaging the E-mail 
message into an electronic envelope including the address of the user's wireless mobile 
device and forwarding the electronic envelope to a wireless gateway system for 
transmission onto a wireless data network associated with the user's wireless mobile 
device. 

In the co-pending application # 09/671,162: 

Claim 54 recites that: 

A method of operating a host system configured to redirect E-mail messages from the 
Internet to a user's wireless mobile device, comprising the steps of: 

receiving an E-mail message from the Internet for a particular user; 



Application/Control Number: 10/088,784 Page 17 

Art Unit: 2142 

accessing a user profile database to determine whether the particular user is an 
authorized user of the host system; 

if the user is an authorized user, then accessing a filter rules database to apply a 
set of user-defined filtering rules to the E-mail message that determine whether the E- 
mail message is the type of message that should be redirected to the user's wireless 
mobile device; and 

if the E-mail message clears the filtering rules, then repackaging the E-mail 
message into an electronic envelope including the address of the user's wireless mobile 
device and forwarding the electronic envelope to a wireless gateway system for 
transmission onto a wireless data network associated with the user's wireless mobile 
device. 

This is a provisional obviousness-type double patenting rejection because the 
conflicting claims have not in fact been patented. Accordingly, this instant claims 63, 93, 
1 02, 1 1 2 claimed are obviousness of the claims 1 , 2, 34, 43, 54 of that co-pending 
application. 

Claim Rejections - 35 USC § 102 

8. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102(b) 
that form the basis for the rejections under this section made in this Office action: 

A person shall be entitled to a patent unless - 

(b) the invention was patented or described in a printed publication in this or a foreign country or in public 
use or on sale in this country, more than one year prior to the date of application for patent in the United 
States. 

9. Claims 63-82, 89-90, 92-93, 96-98, 101, 102, 106-109, and 112 rejected under 
35 U.S.C. 102(b) as being anticipated by AirMobile Communication Server Guide 



Application/Control Number: 10/088,784 Page 18 

Art Unit: 2142 

.("AirMobile Software For Lotus cc:Mail Wireless", User Guide version 1.1, 1995, 
hereafter "AirMobile"). 

10. As to claim 63, AirMobile discloses a method of redirecting data messages from 
a messaging host system (Fig. 1; cc:Mail Post Office Server) to a wireless mobile 
communication device (Fig. 1, wireless cc:Mail Mobile user), comprising the steps of: 

transmitting a data message to the messaging host system, wherein the 
messaging host system stores the data message in a first message store associated 
with a user of the wireless mobile communication device (Fig. 1, Post Office Server 
receiving data message from user and storing it in the user's cc:Mail mailbox, pages 10- 
11); 

detecting the data message at the messaging host system (Fig. 1, Post Office 
Server recognizes the incoming data message from the user once the user has 
registered with his mailbox with the cc:Mail Post Office Server, pages 10-11); 

forwarding a copy of the data message from the messaging host system to a 
wireless redirected host system (Fig. 1, AirMobile Wireless for cc:Mail Server) via a wide 
area network connection between the messaging host system and the wireless 
redirector host system; 

storing the data message in a second message store (cc:Mail Server's user 
mailbox account) associated with the user of the wireless mobile communication device 
at the wireless redirector host system. 



Application/Control Number: 10/088,784 Page 19 

Art Unit: 2142 

determining whether the data message stored in the second message store 
should be redirected from the wireless redirector host system to the user's wireless 
mobile communication device; and 

if the data message should be redirected, then packaging the data message into 
an electronic envelope and transmitting the electronic envelope from the wireless 
redirector host system to the user's wireless mobile communication device via a 
wireless gateway coupling the wireless redirector host system to a wireless 
transmission network (Fig. 1, pages 10-11, 25-27, 35 describing the messaging system 
and the filtering of messages at the redirector host system). 

11. As to claim 64, AirMobile discloses wherein the data message is an e-mail 
message and the first data store is an e-mail inbox associated with an electronic mail 
system (AirMobile, page 10). 

12. As to claim 65, AirMobile discloses, wherein the detecting step includes the steps 
of: determining whether a data message has been received at the messaging host 
system for a particular user of a wireless mobile communication device (AirMobile, page 
10); and checking a forwarding file coupled to the messaging host system to determine 
whether the particular user's data messages should be forwarded to the wireless 
redirector host system (AirMobile, page 10). 

13. As to claim 66, AirMobile discloses, wherein the forwarding file includes a list of 
network addresses associated with the wide area network connection where the user's 
data messages should be forwarded by the messaging host system (AirMobile, page 
10). 



Application/Control Number: 10/088,784 Page 20 

Art Unit: 2142 

14. As to claim 67, AirMobile discloses, further comprising the steps of: 
configuring a set of filtering rules for use by the wireless redirector host system in 

determining whether the data message should be redirected to the user's wireless 
mobile communication device (AirMobile, page 11-12)] and 

providing an access mechanism that allows the user to remotely configure and 
reconfigure the filtering rules by connecting to the wireless redirector host system from a 
remote terminal (AirMobile, page 11-12)). 

1 5. As to claim 68, AirMobile discloses, further comprising the steps of: 
configuring a user profile database for use by the wireless redirector host system 

in determining whether the data message should be redirected to the user's wireless 
mobile communication device (AirMobile, page 11-12)\ and providing an access 
mechanism that allows a system administrator of the messaging host system to 
remotely configure and reconfigure the user profile database by connecting to the 
wireless redirector host system from a remote terminal (AirMobile, page 1 1-12). 

16. As to claim 69, AirMobile discloses, further comprising the steps of receiving the 
electronic envelope at the user's wireless mobile communication device; extracting the 
data message from the electronic envelope; and storing the data message within a 
memory of the mobile device (AirMobile, an electronic envelope is inherently necessary 
to send messages between the host and the mobile device, pages 26-27). 

1 7. As to claim 70, AirMobile discloses, further comprising the steps of 
generating a reply data message at the wireless mobile communication device; 

packaging the reply data message into an electronic envelope and transmitting the 



Application/Control Number: 10/088,784 Page 21 

Art Unit: 2142 

electronic envelope to the wireless redirector host system (AirMobile, page 26 
describing messages transmitted by the wireless mobile device, pages 26-27). 

1 8. As to claim 71 , AirMobile discloses, wherein the electronic envelope is addressed 
using an electronic address of the wireless redirector host system (AirMobile, page 26 
describing messages transmitted by the wireless mobile device to the director server 
will necessarily be addressed using the address of the redirector host system, pages 
26-27). 

1 9. As to claim 72, AirMobile discloses, further comprising the steps of: 
extracting the reply data message from the electronic envelope at the wireless 

redirector host system (AirMobile, Fig. 1, pages 10-11, 25-27, 35); 

reconfiguring the addressing information associated with the reply data message; 
and transmitting the reconfigured reply data message from the wireless redirector host 
system to the messaging host system (AirMobile, Fig. 1, pages 10-11, 25-27, 35). 

20. As to claim 73, AirMobile discloses, further comprising the steps of: 
receiving the reconfigured reply data message at the messaging host system; 

and storing the reply data message in the first message store associated with the user 
of the wireless mobile communication device (AirMobile, Fig. 1, pages 10-11, 25-27, 
35). 

21 . As to claim 74, AirMobile will necessarily complete the claimed steps of: 
receiving a reply received at the redirector host system, reconfiguring the addressing 
information associated with the reply, and transmitting the reconfigured reply data 
message to a destination using an electronic address included in the reply data 



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Art Unit: 2142 

message (i.e., the messages sent from the mobile device are intended for outside 
recipients, so it must include the address of those recipients and must have addresses 
reconfigured upon redirection at the redirection host system). 

22. Claims 75-82 are disclosed in the same sections of AirMobile discussed 
previously. 

23. Claims 89-90 are disclosed on pages 17 of AirMobile. 

24. Claims 93 has similar limitations of claim 63, 67; therefore, it is rejected under the 
same rationale as in claims 63, 67. 

25. Claim 94 is similar limitations of claim 67; therefore, it is rejected under the same 
rationale as in claim 67. 

26. As to claim 96, AirMobile further discloses an interface for redefining or turning 
on or off the filtering mechanism that includes an activation/deactivation switch to 
turning on or off the operation of the Wireless redirector host system for a particular user 
(i.e., the "Enable" feature, see Figs. 2-5, for example). 

27. As to claim 97, AirMobile discloses accessing a user profile database coupled to 
the wireless redirector host system to verify that the user associated with the E-Mail 
message is an authorized user (AirMobile, "password", page 17). 

28. As to claim 98, AirMobile discloses providing an access mechanism that allows a 
system administrator of the messaging host system to remotely configure and 
reconfigure the user profile database (AirMobile, pages 11-12). 

29. As to claim 101 , AirMobile discloses, wherein the wireless redirector host system 
and the wireless mobile device communicate through a wireless gateway system and a 



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wireless communication network (AirMobile, Fig. 1, wherein the "Mobidem" serves as 
the gateway). 

30. As to claim 102, AirMobile discloses a system for redirecting data messages from 
a network to a user's wireless mobile device, comprising: 

a messaging host system coupled to the network for receiving data messages 
associated with a particular user and for storing and forwarding the received data 
messages to a predetermined address on the network (AirMobile "Note")\ and 

a redirector host system associated with the predetermined address for receiving 
and storing the forwarded data messages from the messaging host system and for 
redirecting those data messages to the user's wireless mobile device via a wireless 
gateway coupling the redirector host system to a wireless transmission network 
(AirMobile "Note"). 

31 . As to claim 106, AirMobile discloses, wherein the redirector host system further 
includes a redirector software program for determining whether certain data messages 
should be redirected to the user's wireless mobile device; a filter rules database 
containing filtering rules to apply to the received data messages for a particular user; 
and a user profile database containing a list of authorized users (AirMobile, Fig. 1, 
AirMobile Wireless for cc:Mail Server; pages 10-12). 

32. As to claim 107, AirMobile discloses a wireless data store for storing the 
forwarded data messages (AirMobile, Fig. 1, AirMobile Wireless for cc:Mail Server; 
pages 11-15). 



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Art Unit: 2142 

33. As to claim 108, AirMobile discloses the data messages are Email messages and 
messaging host system is an E-mail server (AirMobile, Fig. 1, Post Office server; pages 
10-15). 

34. Claim 109 is similar limitations of claim 67; therefore, it is rejected under the 
same rationale as in claim 67. 

35. Claim 112 has similar limitations of claims 93, 97; therefore, it is rejected under 
the same rationale as in claims 93, 97. 

Claim Rejections - 35 USC § 103 

36. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all 
obviousness rejections set forth in this Office action: 

(a) A patent may not be obtained though the invention is not identically disclosed or described as set 
forth in section 102 of this title, if the differences between the subject matter sought to be patented and 
the prior art are such that the subject matter as a whole would have been obvious at the time the 
invention was made to a person having ordinary skill in the art to which said subject matter pertains. 
Patentability shall not be negatived by the manner in which the invention was made. 

37. Claims 83-86, 99, 100, and 103 are rejected under 35 U.S.C. 103(a) as being 
unpatentable over AirMobile, and further in view of Nelson U.S. patent # 6,061,718. 

38. As to claims 83-84, AirMobile does not explicitly disclose, wherein the messaging 
host system is run by an Internet Service Provider (ISP). Nonetheless, it is well known 
to use e-mail over the Internet on an e-mail service run by an ISP, as evidenced by 
Nelson (Nelson, col. 5, line 65- col. 6, line 4). Thus, it would have been obvious for the 
e-mail system taught by AirMobile to be run by an ISP because that would increase 
business with the ISP and would allow users to access mail from anywhere in the world. 

39. As to claim 85, 99, the combined system of AirMobile and Nelson will perform the 
steps of including a forwarding database for detecting whether new data message 



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Art Unit: 2142 

received at the mail server should be forwarded to a wireless redirector host system, 
and for determining the electronic network address of the wireless redirector host 
system (AirMobile, page 13, "Note"). 

40. As to claims 86, 1 00, and 1 03, the combined system of AirMobile and Nelson will 
necessarily connect the messaging host system (i.e., ISP server) and redirector host 
system over the Internet. 

41. Claims 87, 88, 95, 110, and 111 are rejected under 35 U.S.C. 103(a) as being 
unpatentable over AirMobile, and further in view of Birrell U.S. patent # 6,185,551. 

42. As to claims 87, 88, 95, 1 1 0, and 111, AirMobile discloses, remotely configuring 
and reconfiguring the filtering rules and profile database using an interface, but does not 
disclose using a web-based interface. Nonetheless, the use of web-based interfaces for 
e-mail systems is well-known, as evidenced by Birrell (Birrell, title, "Web-based 
electronic mail service..."). It would have been obvious to use a web-based system as 
the interface in AirMobile because the Web is ubiquitous and accessible worldwide. 

43. Claim 91 is rejected under 35 U.S.C. 103(a) as being unpatentable over 
AirMobile, and further in view of LookSmart ("Motorola Brings AirMobile Software 
Products to the DCPD Network; Motorola Provides Mobile Corporate cc:Mail Users with 
Flexibility to Use Any Major Wireless data Network", Business Wire, January 1996). 

44. As to claim 91 , LookSmart describes that AirMobile uses compression. It would 
have been obvious to include compression in the AirMobile system to save network 
bandwidth. 



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Art Unit: 2142 

45. Claim 92 is rejected under 35 U.S.C. 103(a) as being unpatentable over 
AirMobile, and further in view of Hertzog et al., U.S Provisional Patent Application # 
60/132,560. 

46. As to claim 92, AirMobile does not explicitly disclose, the data message is a 
calendar event message. Nonetheless, it is well known to send an e-mail message as 
calendar event message, as evidenced by Hertzog (Hertzog, pages 27-28). Thus, it 
would have been obvious for the e-mail system taught by AirMobile to be included by a 
calendar event message because that would increase business with the users and 
would allow users to access mail from anywhere in the world. 

47. Claims 104-105 are rejected under 35 U.S.C. 103(a) as being unpatentable over 
AirMobile, and further in view of Infotech ("The Perils of E-Mail: Unsolicited 
Messages!", Infotech Update, New York, August 1997). 

48. As to claim 104, AirMobile discloses at the messaging host system a program for 
transmitting user data messages and a forwarding file containing a list of authorized 
user's of the system and the predetermined address to which the messaging host 
system will forward each user's data messages (all of this is inherently part of the Post 
Office server in order to forward messages received at Post Office server to the 
appropriate AirMobile server, see Fig. 1, pages 11-13). However, AirMobile does not 
explicitly disclose what program is used for the message forwarding, and thus does not 
disclose a "sendmail" program. Nonetheless, sendmail programs for message 
forwarding are well known, as evidenced by Infotech (Infotech, see page 1, last 



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Art Unit: 2142 

paragraph). It would have been obvious to forward the messages in the AirMobile 
system to avoid the need to create an entirely new mail forwarding program. 

49. As to claim 105, the Post Office message host system taught by AirMobile will 
necessarily store the data messages of users having accounts on the messaging host 
system. 

50. Further references of interest are cited on Form PTO-892, which is an 
attachment to this action. 



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Art Unit: 2142 



Conclusion 



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Hai V. Nguyen 
Examiner 
Art Unit 2142 




PRIMARY EXAMINER