IBM loses at Board on a method of rescinding previously transmitted e-mail messages

In Ex parte KEOHANE , concerning U.S. patent application 10/666,816 , a representative claim was


A method of rescinding previously transmitted e-mail messages by a sender, the messages being addressed to a list of recipients, the method comprising:

storing an e-mail message addressed to a list of recipients on a computing system;
generating a notification message, the notification message for allowing recipients from the list of recipients and the sender to access the stored e-mail message;
sending the notification message to the recipients from the list of recipients and to the sender;
determining whether one of the recipients from the list of recipients has accessed the stored e-mail message; and
enabling the sender, if one of the recipients from the list of recipients has accessed the stored e-mail message and using the notification message, to preclude one of the recipients from the list of recipients that have not yet accessed the stored e-mail message from accessing the stored e-mail message.



Relevant prior art was Brogné (EP 1087321 A1; pub. Mar. 28, 2001), Milewski (US 5,930,471; July 27, 1999), and Nielsen (US 5,870,548; Feb. 9, 1999).

IBM lost.

Of relevance was an unsuccessful "teaching away" argument:

Finally, we disagree that Brogné teaches away from the claimed combination. While Brogné teaches that the sender may only modify or suppress a message when no recipient has accessed the e-mail, this is merely an alternative method. Appellants fail to point to any disclosure of Brogné that discourages modifying the message even after a recipient has accessed the message. See In re Mouttet, 686 F.3d 1322, 1333-1334 (Fed. Cir. 2012)(stating that a reference teaches away from a combination when a person of ordinary skill, upon reading the reference, would be discouraged from the combination and that mere disclosure of an alternative design is insufficient to teach away)(citations omitted). Thus, Brogné does not teach away from modifying the message even after a recipient has accessed the message.

Separately, there was no argument as to some claims:

Claims 4-6 depend from independent claim 1, but were rejected under 35 U.S.C. § 103(a) as unpatentable over Brogné, Milewski, Nielsen, and what is well known in the art. Appellants present no separate argument for patentability of claims 4-6.

**Perhaps Morgan State University could have benefitted from the method.
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Email mishap at Morgan State University