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United States Patent and Trademark Office 



UNITED STATES DEPARTMENT OF COMMERCE 
I nilid Stall-, Patent and Trademark Office 

Address: COMMISSIONER FOR PATENTS 



APPLICATION NO. 



FILING DATE 



FIRST NAMED INVENTOR 



ATTORNEY DOCKET NO. CONFIRMATION NO. 



10/088,784 



00/20/2002 



54120 7590 04/03/2009 

RESEARCH IN MOTION 

ATTN: GLENDA WOLFE 

BUILDING 6, BRAZOS EAST, SUITE 100 

5000 RIVERSIDE DRIVE 

IRVING, TX 75039 



1400-1072 PCI 



MACILWINEN, JOHN MOORE JAIN 



PAPER NUMBER 



NOTIFICATION DATE | DELIVERY MODE 
04/03/2009 ELECTRONIC 



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. 

Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the 

following e-mail address(es): 

portfolioprosecution@rim.com 



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 17 February 2009 . 
2a )□ This action is FINAL. 2b)^ 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) 63-68,75-81,83,86-90,92 and 120 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) |EI Claim(s) 63-68. 75-77. 78-81. 83. 86-90, 92 and 120 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) ^| 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 . 6) □ Other: . 



PTOL-T26 d (Rev e 08-06r 



Office Action Summary 



Part of Paper No./Mail Date 2009031 1 



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

Art Unit: 2442 

DETAILED ACTION 

Response to Arguments 

1 . Applicant's arguments filed 2/17/2009 have been fully considered; the Examiner 
agrees that the previously cited prior art did not explicitly teach repackaging the data 
messages adding and removing added outer envelopes as recited in the presently 
presented claim language. However, after further consideration, a new grounds of 
rejection has been made further in view of Selgas (US 6,571 ,290 B2). Said rejection is 
discussed in further detail below. 

Claim Rejections - 35 USC § 103 

2. The following is a quotation of 35 U.S.C. 1 03(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. 

3. Claims ««<63-68, 76-81, 86, 89-90, and 120»»» are 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 
B1), hereafter Beyda, further in view of WyndMail (WyndMail for Windows CE; 1997) 
and comp.mail.sendmail ("Need to rewrite From Field on outgoing mail; May 23, 1996), 
further in view of Selgas et a. (US 6,571 ,290 B2), hereafter Selgas. 

4. 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 



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

Art Unit: 2442 

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 
10-11) 

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 (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 

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 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 



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

Art Unit: 2442 

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; 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) and 

processing the copy of the data message to add a second address that is 



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

Art Unit: 2442 

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 
(P9- 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 

AirMobile in view of Beyda, WyndMail and comp.mail.sendmail do not explicitly 
show where said copy of the data message is repackaged in an outer envelope. 
AirMobile in view of Beyda, WyndMail and comp.mail.sendmail do show receiving a 
reply message from the wireless mobile communication device (Wynd, pg. 4), but do 
not explicitly show where the reply message is repackaged in an outer envelope having 
an address associated with the wireless redirector host system, nor do they show 
removing said outer envelope of the repackaged reply message at the wireless 
redirector host system. 

Selgas shows a method of transmitting messages, including where messages 
are repackaged in an outer envelopes, as well as where messages sent by users, such 
as reply messages, are repackaged in an outer envelope having an address associated 
with the redirector host system (represented by the 'broker' in Selgas) as well as 
removing the outer envelope of the repacked reply message at said redirector host 
system (Selgas, col. 25 Iine10 — col. 26 line 42, Figs. 10, 11, 13 and 14). 

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 and 
comp.mail.sendmail with that of Selgas, and thus explicitly incorporate message 
repackaging in said outer envelopes at the wireless message redirector/broker in order 
to add additional security when transferring messages in the system of AirMobile in view 
of Beyda, WyndMail and comp.mail.sendmail. 

AirMobile in view of Beyda, WyndMail, comp.mail.sendmail and Selgas thus 
show all of claim 63. 



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

Art Unit: 2442 

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

6. Regarding claim 65, AirMobile in view of Beyda, WyndMail, comp.mail.sendmail 
and Selgas 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). 

7. Regarding claim 66, AirMobile in view of Beyda, WyndMail, comp.mail.sendmail 
and Selgas 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). 

8. Regarding claim 67, AirMobile in view of Beyda, WyndMail, comp.mail.sendmail 
and Selgas 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). 



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

Art Unit: 2442 

9. Regarding claim 68, AirMobile in view of Beyda, WyndMail, comp.mail.sendmail 
and Selgas 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 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). 

1 0. Regarding claim 76, AirMobile in view of Beyda, WyndMail, comp.mail.sendmail 
and Selgas 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). 

1 1 . Regarding claim 77, AirMobile in view of Beyda, WyndMail, comp.mail.sendmail 
and Selgas 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). 

12. Regarding claim 79, AirMobile in view of Beyda, WyndMail, comp.mail.sendmail 
and Selgas further show where the user's wireless mobile communication device is a 
laptop computer (AirMobile, Fig.1, pgs. 10-11). 



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

Art Unit: 2442 

1 3. Regarding claim 80, AirMobile in view of Beyda, WyndMail, comp.mail.sendmail 
and Selgas further show wherein the user's wireless mobile communication device is a 
two-way paging computer (AirMobile, Fig.1 , pgs. 10-11). 

14. Regarding claim 81 , AirMobile in view of Beyda, WyndMail, comp.mail.sendmail 
and Selgas further show where the two-way paging computer includes a wireless 
network interface for communicating with the wireless redirector host system via the 
wireless transmission network (AirMobile, Fig.1, pgs. 10-11). 

15. Regarding claim 86, AirMobile in view of Beyda, WyndMail, comp.mail.sendmail 
and Selgas 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). 

16. Regarding claim 89, AirMobile in view of Beyda, WyndMail, comp.mail.sendmail 
and Selgas 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). 

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



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

Art Unit: 2442 

18. Regarding claim 120, AirMobile in view of Beyda, WyndMail, comp.mail.sendmail 
and Selgas 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. 10-11) , the 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. 

I, WyndMail, pgs. 1 and 4) 

means for processing a copy of the data message to repackage it with an outer 
envelope (Selgas, col. 25 line 10 - col. 26 line 40) having add a second address that is 
associated with the user's wireless mobile communication device (WyndMail, pg. 4); 

means for redirecting, responsive to determining that the repackaged (Selgas, 
col. 25 line 10 - col. 26 line 40) copy of the data message should be redirected, the 
repackaged 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- 

I I , 25-27, 35); 

means for receiving a reply message that is repackaged in an outer envelope 
(Selgas, Figs. 10, 13, 14) form the wireless mobile communication device the outer 
envelope having an address associated with the wireless redirector hosts system 
(Selgas, col. 25 lines 10-16); 



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

Art Unit: 2442 

and means for removing the outer envelope of the repackaged reply message 
(Selgas, col. 25 lines 38 - 55, col. 26 lines 25 - 42) and 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). 

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

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

AirMobile in view of Beyda, WyndMail, comp.mail.sendmail and Selgas do not 
show 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. 

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 AirMobile in view of Beyda, WyndMail, 



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

Art Unit: 2442 

comp.mail.sendnnail and Selgas 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. 

21 . Claims 83, 87 and 88, are rejected under 35 U.S.C. 1 03(a) as being 
unpatentable over AirMobile in view of Beyda, WyndMail, comp.mail.sendmail and 
Selgas as applied to claim 63, above, and further in view of Cao et al. (US 6,745,230 
B1), hereafter Cao. 

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

AirMobile in view of Beyda, WyndMail, comp.mail.sendmail and Selgas do not 
explicitly 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 to modify the disclosure of AirMobile in view of Beyda, WyndMail, 
comp.mail.sendmail and Selgas with that of Cao in order to support a common email 
architecture (Cao, col. 1 lines 20-60). 

23. Regarding claim 87, AirMobile in view of Beyda, WyndMail, comp.mail.sendmail, 
Selgas and Cao further show wherein the access 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). 



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

Art Unit: 2442 

24. Regarding claim 88, AirMobile in view of Beyda, WyndMail, comp.mail.sendmail, 
Selgas and Cao further show wherein the access mechanism for remotely configuring 
and reconfiguring the user profile database (AirMobile pgs. 17-21) is a web-page 
interface (Cao, col. 4 lines 8-52, col. 5 lines 62-68, col. 6 lines 11-55). 

25. Claim 92 is rejected under 35 U.S.C. 103(a) as being unpatentable over 
AirMobile in view of Beyda, WyndMail, comp.mail.sendmail and Selgas as applied to 
claim 63 above, and further in view of Zondervan (US 6,076,241 B1). 

AirMobile in view of Beyda, WyndMail, comp.mail.sendmail and Selgas show 
claim 63. 

AirMobile in view of Beyda, WyndMail, comp.mail.sendmail and Selgas 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 and Selgas with that of Zondervan in order to support popular and 
well-known uses for messaging software/methods (Zondervan col. 6 lines 11 - 67). 

Conclusion 

Any inquiry concerning this communication or earlier communications from the 
examiner should be directed to John M. Macllwinen whose telephone number is (571 ) 



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

Art Unit: 2442 

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. 

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 system, see http://pair-direct.uspto.gov. Should 
you have questions on access to the Private PAIR system, contact the Electronic 
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USPTO Customer Service Representative or access to the automated 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