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United States Patent and Trademark Office 



UNITED STATES DEPARTMENT OF COMMERCE 
I nilid Stall-, l'atint and Trademark Office 

Address: COMMISSIONER FOR PATENTS 



APPLICATION NO. 



10/088,784 



FILING DATE 



00/20/2002 



FIRST NAMED INVENTOR 



54120 7590 10/27/2008 

RESEARCH IN MOTION 

ATTN: GLENDA WOLFE 

BUILDING 6, BRAZOS EAST, SUITE 100 

5000 RIVERSIDE DRIVE 

IRVING, TX 75039 



ATTORNEY DOCKET NO. CONFIRMATION NO. 



1400-1072 PCI 



MACILWINEN, JOHN MOORE JAIN 



PAPER NUMBER 



DELIVERY MODE 



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) 



l/ffflrC? nVrliUli Otfff Iff ids y 


Application No. 

10/088,784 


Applicant(s) 
GILHULY ET AL. 


Examiner 

John M. Macllwinen 


Art Unit 

2442 





- 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 3 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. § 133). 
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 )KI Responsive to communication(s) filed on 22 September 2008 . 
2a )^ This action is FINAL. 2b)D 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) |EI Claim(s) 63-68, 75-77, 79-81,83,86-92, 120 and 121 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4a) Of the above claim(s) is/are withdrawn from consideration. 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) E] Claim(s) 63-68,75-77,79-81,83,86-92,120 and 121 is/are rejected. 

7) 0 Claim(s) is/are objected to. 

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

Application Papers 

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

10) D The drawing(s) filed on is/are: a)D 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) D 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) D 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. 

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

3.Q 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. 



Attach ment(s) 

1) D Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-41 3) 

2) □ Notice of Draftsperson's Patent Drawing Review (PTO-948) Paper No(s)/Mail Date. . 

3) Information Disclosure Statement(s) (PTO/SB/08) 5 ) □ Notice of Informal Patent Application 
Paper No(s)/Mail Date 9/22/2008 . 6) □ Other: . 



PTOL-T26 d (Rev e 08-06r 



Office Action Summary 



Part of Paper No./Mail Date 20080930 



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

Art Unit: 2442 

DETAILED ACTION 

Response to Arguments 

1 . Applicant's arguments filed 7/28/2008 have been fully considered. 

2. Applicant begins by arguing that that the AirMobile reference "is limited to a 'server 
push' message delivery model". However, in Section 3, page 25, AirMobile teaches that 

"Motorola AirMobile for cc:Mail software implements both the traditional e-mail 'client 
poll' and the more efficient 'server push models of message delivery." 
Applicant's arguments thus are not persuasive. 

3. Applicant next argues that AirMobile, in addition to the other references cited, do not 
teach "causing a reply message generated at the mobile communication device to be transmitted 
to the sender of a message wherein the user's first address is configured as the reply message's 
originating address". Applicant's arguments are persuasive. However, after further consideration, 
a new grounds of rejection has been made, which is detailed below. 

Claim Rejections - 35 USC §103 

4. 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. 

5. Claims 63-68, 76-81, 86, 89-91,120 and 121 rejected under 35 U.S.C. 103(a) as being 
unpatentable over Motorola AirMobile Wireless Software for Lotus cc:Mail, Version 1.1, 
hereafter AirMobile, in view of Beyda et al. (US 6,636,965 Bl), hereafter Beyda, further in view 



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

Art Unit: 2442 

of WyndMail (WyndMail for Windows CE; 1997) and comp.mail.sendmail ("Need to rewrite 
From Field on outgoing mail; May 23, 1996). 

6. Regarding claim 63, AirMobile shows a method of redirecting data messages between a 
messaging host system (Fig. 1; cc:Mail Post Office Server) and a wireless mobile 
communication device (Fig. 1, wireless cc:Mail Mobile user), comprising 

receiving a data message at the messaging host system for a user, wherein the data 
message is received from a sender (Fig. 1, Post Office Server receiving data message and storing 
it in the user's cc:Mail mailbox at The Post-Office server, pages 10-1 1) 

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 10-1 1); 

forwarding a copy of the data message (AirMobile, transferring emails or cc:mails) from 
the messaging host system (Fig. 1, Post-Office Server) to a wireless 
redirector host system (Fig. 1, AirMobile Wireless for cc:Mail Server) 

determining whether the copy of the data message should be redirected from the wireless 
redirector host system to the wireless mobile communication device (Fig. 1, pages 10-11, 25-27, 
35, determining the routing or downloading or transferring of messages to mobile user from the 
AirMobile Wireless for cc:Mail Server); and 

if the data message should be redirected, then transmitting the copy of the data message 
from the wireless redirector host system to the user's wireless mobile communication device 
(Fig. 1, pages 10-11,25-27,35). 

AirMobile further shows downloading messages from and uploading messages to the 



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

Art Unit: 2442 

users inbox, but AirMobile does not explicitly show a 1 st and a 2 nd address. AirMobile 
additionally shows where the forwarding to the wireless director is via a local area network 
connection between the messaging host system and the wireless redirector host system, but does 
not show where said local area network connection is instead a wide area network connection. 

Beyda shows where email servers can be accessed over local area network connections or 
wide area network connections, include where said email servers are involved in forwarding 
messages (col. 2 lines 38-63), thus disclosing where the forwarding to the wireless director is via 
a wide area network connection between the messaging host system and the wireless redirector 
host system. 

It would have been obvious to one of ordinary skill in the art at the time of the invention 
to modify the disclosure of AirMobile with that of Beyda in order to encompass a wider variety 
of messages processing system configurations, thus providing for additional flexibility in 
implementing the disclosed method/system. 

AirMobile in view of Beyda do not show all of where the data message received at the 
messaging host system is addressed to a first address of the user associated with the messaging 
host system and processing the copy of the data message to add a second address that is 
associated with the user's wireless mobile communication device; receiving a reply message 
from the wireless mobile communication device responsive to the data message; and causing the 
reply message to be transmitted to the sender of the data message wherein the user's first address 
is configured as the reply message's originating address. 

WyndMail shows where the data message received at the messaging host system is 
addressed to a first address of the user associated with the messaging host system (pgs. 1 and 4) 



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

Art Unit: 2442 

and 

processing the copy of the data message to add a second address that is associated with 
the user's wireless mobile communication device (pgs. 1, 3, 4); 

using the second address associated with the wireless mobile communication device via 
wireless transmission network (pgs. 1, 4); 

receiving a reply message from the wireless mobile communication device responsive to 
the data message (pg. 4); and 

causing the reply message to be transmitted to the sender of the data message wherein the 
user's first address is configured as the reply message's reply-to address (pg. 4). 

It would have been obvious to one of ordinary skill in the art at the time of the invention 
to modify the disclosure of AirMobile in view of Beyda with that of WyndMail in order to 
support additional methods of communication (WyndMail, pg. 1) as well as to better manage 
how reply messages are handled (WyndMail, pg. 4). 

AirMobile in view of Beyda and WyndMail show ensuring the desired reply-to address is 
used, but do not explicitly show where the originating address is also updated. 

comp.mail.sendmail shows updating both the reply-to address and the originating address 
(that is, the 'from' address - pg. 1 and 2) 

It would have been obvious to one of ordinary skill in the art at the time of the invention 
to modify the disclosure of AirMobile in view of Beyda and WyndMail with that of 
comp.mail.sendmail in order to ensure that the user's outgoing reply messages are fully modified 
to appear to have come from the address the user desires, thus better ensuring the transparent use 
of multiple email addresses. 



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

Art Unit: 2442 

7. Regarding claim 64, AirMobile in view of Beyda, WyndMail and comp.mail.sendmail 
further show storing the data message in a first data store associated with the messaging host 
system (AirMobile, pg. 25). 

8. Regarding claim 65, AirMobile in view of Beyda, WyndMail and comp.mail.sendmail 
further show 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). 

9. Regarding claim 66, AirMobile in view of Beyda, WyndMail and comp.mail.sendmail 
further show 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). 

10. Regarding claim 67, AirMobile in view of Beyda, WyndMail and comp.mail.sendmail 
further show 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 1 . Regarding claim 68, AirMobile in view of Beyda, WyndMail and comp.mail.sendmail 
further show 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 



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

Art Unit: 2442 

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 11-12). 

12. Regarding claim 76, AirMobile in view of Beyda, WyndMail and comp.mail.sendmail 
further show accessing a user profile database including a list of authorized users (AirMobile, 
pgs. 14-18); and checking whether the users associated with the data message is an authorized 
user to determine whether the data message should be redirected to the user's wireless mobile 
communication device (AirMobile, pgs. 15 - 22). 

13. Regarding claim 77, AirMobile in view of Beyda, WyndMail and comp.mail.sendmail 
further show accessing a filter rules database including a list of filters to be applied to data 
messages for a particular user (AirMobile, pgs. 11-12) and applying the filters to the data 
message to determine whether the data message should be redirected to the user's wireless 
mobile communication device (AirMobile, pgs. 35-38). 

14. Regarding claim 79, AirMobile in view of Beyda, WyndMail and comp.mail.sendmail 
further show where the user's wireless mobile communication device is a laptop computer 
(AirMobile, Fig.l, pgs. 10-11). 

15. Regarding claim 80, AirMobile in view of Beyda, WyndMail and comp.mail.sendmail 
further show wherein the user's wireless mobile communication device is a two-way paging 
computer (AirMobile, Fig.l, pgs. 10 - 1 1). 

16. Regarding claim 81, AirMobile in view of Beyda, WyndMail and comp.mail.sendmail 
further show where the two-way paging computer includes a wireless network interface for 



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

Art Unit: 2442 

communicating with the wireless redirector host system via the wireless transmission network 
(AirMobile, Fig.l, pgs. 10 - 1 1). 

17. Regarding claim 86, AirMobile in view of Beyda, WyndMail and comp.mail.sendmail 
further show wherein the wide area network connection coupling the messaging host system to 
the wireless redirector host system is an Internet connection (Beyda, col. 2 lines 38-63). 

18. Regarding claim 89, AirMobile in view of Beyda, WyndMail and comp.mail.sendmail 
further show configuring a user profile database for use by the wireless redirector host system in 
determining whether the data message should be redirected to the wireless mobile 
communication device (AirMobile, pgs. 17-18, 35-38) and storing, within the user profile 
database, second address associated with the user's wireless mobile communication device 
(AirMobile, pgs. 18-21, WyndMail, pg. 4). 

19. Regarding claim 90, AirMobile in view of Beyda, WyndMail and comp.mail.sendmail 
further show storing, within the user profile database, information regarding the type and 
configuration of the wireless mobile communication device (AirMobile pgs. 17-21). 

20. Regarding claim 91, AirMobile in view of Beyda, WyndMail and comp.mail.sendmail 
further show converting the data message into a compressed format (AirMobile, pgs. 35-38) and 
placing the compressed data message into an electronic envelope using the second address 
associated with the user's wireless mobile communication device (AirMobile, pgs. 1 1-12,17, 22- 
23, WyndMail, pg. 4). 

21 . Regarding claim 120, AirMobile in view of Beyda, WyndMail and comp.mail.sendmail 
further show a wireless redirector host system for directing data messages between a messaging 
host system and a wireless mobile communication device (AirMobile Fig. 1, pgs. 10-1 1) , the 



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

Art Unit: 2442 

system comprising: 

means for receiving a data message via a wide area network connection, wherein the data 
message is forwarded from the messaging host system for a user (Beyda, col. 2 lines 38-63), the 
data message originating from a sender and addressed to a first address of the user associated 
with the messaging host system (AirMobile, Fig. 1 , WyndMail, pgs. 1 and 4) 

means for processing a copy of the data message to add a second address that is 
associated with the user's wireless mobile communication device (WyndMail, pg. 4); 

means for determining whether the copy of the data message should be redirected to the 
wireless mobile communication device (Airmobile Fig. 1, pages 10-11, 25-27, 35); 

means for redirected, responsive to determining that the copy of the data message should 
be redirected, the copy of the data message to the wireless mobile communication device using 
the second address associated with the wireless mobile communication device via a wireless 
transmission network (WyndMail, pg. 1,3 and AirMobile Fig. 1, pages 10-11, 25-27, 35); 

means for receiving a reply message form the wireless mobile communication device 
responsive to the data message; and means for causing the reply message to be transmitted to the 
sender of the data message wherein the user's first address is configured as the reply message's 
originating address (WyndMail, pgs. 1, 3, 4 and comp.mail.sendmail, pgs. 1 - 2). 
22. Regarding claim 121, AirMobile in view of Beyda, WyndMail and comp.mail.sendmail 
further show a computer-accessible medium having a sequence of instructions which, when 
executed by a processing entity, effectuate the redirection of data messages between a messaging 
host system and a wireless mobile communication device (AirMobile, Fig. 1), the computer- 
accessible medium comprising: 



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

Art Unit: 2442 

a code portion for processing a copy of a data message received from the messaging host 
system via a wide area network connection (Beyda, col. 2 lines 38-63) , wherein the data 
message is originated from a sender and addressed to a first address of the user that is associated 
with the messaging system, the processing including adding a second address that is associated 
with the user's wireless mobile communication device (WyndMail, pgs. 1, 3, 4); 

a code portion for determining whether the copy of the data message should be redirected 
to the wireless mobile communication device (AirMobile, Fig. 1, pgs. 10 - 1 1, 25 - 27, 35); 

a code portion for redirecting the copy of the data message to the wireless mobile 
communication device using the second address associated with the wireless mobile 
communication device via a wireless transmission network WyndMail, pg. 1,3 and AirMobile 
Fig. 1, pages 10-11,25-27,35) and 

a code portion for causing a reply message, received from the wireless mobile 
communication device responsive to the data message, to be transmitted to the sender of the data 
message wherein the user's first address is configured as the reply message's originating address 
(WyndMail, pgs. 1, 3, 4 and comp.mail.sendmail, pgs. 1 - 2). 

23. Claim 75 is rejected under 35 U.S.C. 103(a) as being unpatentable over AirMobile in 
view of Beyda, WyndMail and comp.mail.sendmail as applied to claims 63 above, and further in 
view of Moon et al. (6,138,146), hereafter Moon. 

24. Regarding claim 75, AirMobile in view of Beyda, WyndMail and comp.mail.sendmail 
show claim 63. 

AirMobile in view of Beyda, WyndMail and comp.mail.sendmail do not show 
transmitting a deactivation message associated with the user of the wireless mobile 



Application/Control Number: 10/088,784 Page 1 1 

Art Unit: 2442 

communication device to the wireless redirector host system; and upon receiving the deactivation 
message, prohibiting the redirection of data messages for the user sending the deactivation 
message. 

Moon shows transmitting a deactivation message associated with the user of the wireless 
mobile communication device to the wireless redirector host system; and upon receiving the 
deactivation message, prohibiting the redirection of data messages for the user sending the 
deactivation message (col. 2 lines 61-68, col. 3 lines 1-5, col. 6 lines 27-33). 

It would have been obvious to one of ordinary skill in the art at the time of the invention 
to modify the disclosure of AirMobilc in view of Bcyda, WyndMail and comp.mail.sendmail 
with that of Moon in order to enable better control over which users were able to utilize the mail 
forwarding system, as well as when they could utilize said system. 

25. Claims 83, 84, 87 and 88, are rejected under 35 U.S.C. 103(a) as being unpatentable over 
AirMobile in view of Beyda, WyndMail and comp.mail.sendmail as applied to claim 63, above, 
and further in view of Cao et al. (US 6,745,230 Bl), hereafter Cao. 

26. Regarding claim 83, AirMobile in view of Beyda, WyndMail and comp.mail.sendmail 
show claim 63, as well as utilizing ISP accounts. 

AirMobile in view of Beyda, WyndMail and comp.mail.sendmail do not expliclty show 
wherein the messaging host system in an Internet Service Provider. 

Cao shows an Internet Service Provider, and also shows where said Internet Service 
Provider serves as a messaging host system (Abstract, col. 1 lines 20-60, col. 3 lines 5-8, col. 6 
lines 10-15). 

It would have been obvious to one of ordinary skill in the art at the time of the invention 



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

Art Unit: 2442 

to modify the disclosure of AirMobile in view of Beyda, WyndMail and comp.mail.sendmail 
with that of Cao in order to support a common email architecture (Cao, col. 1 lines 20-60). 

27. Regarding claim 87, AirMobile in view of Beyda, WyndMail, comp.mail.sendmail and 
Cao further show wherein the accesss mechanism for remotely configuring and reconfiguring 
(AirMobile pgs. 35-40) the filtering rules is a web-page interface (Cao, col. 4 lines 8-52, col. 5 
lines 62-68). 

28. Regarding claim 88, AirMobile in view of Beyda, WyndMail, comp.mail.sendmail and 
Cao further show wherein the access mechanism for remotely configuring and reconfiguring the 
user profile database (AirMobile pgs. 17-21) is a wcb-pagc interface (Cao, col. 4 lines 8-52, col. 
5 lines 62-68, col. 6 lines 1 1-55). 

29. Claim 92 is rejected under 35 U.S.C. 103(a) as being unpatentable over AirMobile in 
view of Beyda, WyndMail, comp.mail.sendmail as applied to claim 63 above, and further in 
view of Zondervan (US 6,076,241 Bl). 

AirMobile in view of Beyda, WyndMail, comp.mail.sendmail show claim 63. 
AirMobile in view of Beyda, WyndMail, comp.mail.sendmail do not show where the data 
message is a calendar event message. 

Zondervan shows where the data message is a calendar event message (col. 7 lines 56- 

68). 

It would have been obvious to one of ordinary skill in the art at the time of the invention 
to modify the disclosure of AirMobile in view of Beyda, WyndMail, comp.mail.sendmail with 
that of Zondervan in order to support popular and well-known uses for messaging 
software/methods (Zondervan col. 6 lines 1 1 - 67). 



Application/Control Number: 10/088,784 
Art Unit: 2442 



Page 13 



Conclusion 

30. Applicant's amendment necessitated the new ground(s) of rejection presented in this 
Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 
Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). 

A shortened statutory period for reply to this final action is set to expire THREE 
MONTHS from the mailing date of this action. In the event a first reply is filed within TWO 
MONTHS of the mailing date of this final action and the advisory action is not mailed until after 
the end of the THREE-MONTH shortened statutory period, then the shortened statutory period 
will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 
CFR 1 .136(a) will be calculated from the mailing date of the advisory action. In no event, 
however, will the statutory period for reply expire later than SIX MONTHS from the date of this 
final action. 

Any inquiry concerning this communication or earlier communications from the 
examiner should be directed to John M. Macllwinen whose telephone number is (571) 272-9686. 
The examiner can normally be reached on M-F 7:30AM - 5:00PM EST; off alternate Fridays. 

If attempts to reach the examiner by telephone are unsuccessful, the examiner's 
supervisor, Andrew Caldwell can be reached on (571) 272-3868. The fax phone number for the 
organization where this application or proceeding is assigned is 571-273-8300. 



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

Art Unit: 2442 

Information regarding the status of an application may be obtained from the Patent 
Application Information Retrieval (PAIR) system. Status information for published applications 
may be obtained from either Private PAIR or Public PAIR. Status information for unpublished 
applications is available through Private PAIR only. For more information about the PAIR 
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information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. 

/Andrew Caldwell/ 

Supervisory Patent Examiner, Art Unit 

2442 

John Macllwinen 
(571)272-9686