Ex Parte 7,366,919 et alDownload PDFPatent Trial and Appeal BoardMar 28, 201795000603 (P.T.A.B. Mar. 28, 2017) Copy Citation 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. 95/000,603 01/27/2011 7,366,919 1762030.00123US1 4276 69417 7590 03/28/2017 WTT MERHAT E/SYMANTEC CORPORATION Wilmer Cutler Pickering Hale and Dorr LLP 1875 Pennsylvania Avenue, NW WASHINGTON, DC 20006 EXAMINER SAGER, MARK ALAN ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 03/28/2017 PAPER 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) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD M86 SECURITY, INC. Requester v. SYMANTEC, CORPORATION Patent Owner Appeal 2015-007682 Reexamination Control No. 95/000,603 Patent 7,366,919 B1 Technology Center 3900 Before RICHARD M. LEBOVITZ, DAVID M. KOHUT, and ERIC B. CHEN, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION UNDER 37 C.F.R. § 41.77(f) Appeal 2015-007682 Reexamination Control No. 95/000,603 Patent 7,366,919 B1 BACKGROUND This is a Decision under 37 C.F.R. § 41.77(f) for the present inter partes reexamination ofU.S. Patent No. 7,366,919 B1 (“the ’919 Patent”). On November 14, 2013, we issued a Decision on Appeal (Appeal No. 2013- 008705, “Dec. on App.”), which contains the following new grounds of rejection for claims 1—3, 5—7, 15, 17—24, and 26—37 pursuant to 37 C.F.R. § 41.77(b): Claims 1, 15, 22, and 26—28 under 35 U.S.C. § 103(a) as obvious over Costello and McElligott (Dec. on App. 4—7); Claim 2 under 35 U.S.C. § 103(a) as obvious over Voticky, Costello, and McElligott {id. at 7—8); Claims 3, 17—21, and 23 under 35 U.S.C. § 103(a) as obvious over Costello, McElligott, and Donaldson {id. at 8); Claim 5 under 35 U.S.C. § 103(a) as obvious over Costello, McElligott, and Barnes or, in the alternative, over Costello, McElligott, and Huang {id. at 8-9); Claims 6 and 7 under 35 U.S.C. § 103(a) as obvious over Costello, McElligott, Bames, and Donaldson or, in the alternative, over Costello, McElligott, Huang, and Donaldson {id. at 10); Claims 31, 33, 36, and 37 under 35 U.S.C. § 103(a) as obvious over the Voticky and Costello {id. at 10-11); Claims 29, 32, and 34 under 35 U.S.C. § 103(a) as obvious over Voticky, Costello, and Donaldson {id. at 11—12); and Claims 30 and 35 under 35 U.S.C. § 103(a) as obvious over Voticky, Costello, and Huang {id. at 12). 2 Appeal 2015-007682 Reexamination Control No. 95/000,603 Patent 7,366,919 B1 On December 16, 2013, Patent Owner exercised its option under 37 C.F.R. § 41.77(b)(1) to file a response requesting reopening of prosecution (Amendment and Response Requesting Reopening of Prosecution, “Req. to Reopen”), including evidence and amendments to claims 1, 24, and 27—37. Req. to Reopen 1,2, 5—10. On January 16, 2014, Requester submitted comments on Patent Owner’s response pursuant to 37 C.F.R. § 41.77(c) (Third Party Requester’s Comments on the Patent Owner’s Amendment and Request to Reopen Prosecution, “3PR Comments”), including a second Declaration by Dr. Nenad Medvidovic (“2nd Medvidovic Decl.”). Requester challenged Patent Owner’s arguments and amendments (3PR Comments 1—2), and asserted the following new grounds of unpatentability for the amended claims1: Amended claims 29—36 are impermissibly broadening under 35 U.S.C. § 314(a) (pre-AIA) (id. at 4-6); 1 Requester also asserts that amended claims 31 and 34 fail to include the required markings under 37 C.F.R. § 1.530(f). 3PR Comments 6—7. Whether amended claims include the requisite markings is a nonsubstantive, procedural issue that is reviewable by petition under 37 C.F.R. § 1.181, not an appealable issue within the jurisdiction of the Board. See In re Hengehold, 440 F.2d 1395, 1403—1404 (CCPA 1971) (stating that there are a host of various kinds of decisions an examiner makes in the examination proceeding — mostly matters of a discretionary, procedural or nonsubstantive nature — which have not been and are not now appealable to the Board when they are not directly connected with the merits of issues involving rejections of claims, but traditionally have been settled by petition to the Commissioner and holding that “the kind of adverse decisions of examiners which are reviewable by the board must be those which relate, at least indirectly, to matters involving the rejection of claims”). 3 Appeal 2015-007682 Reexamination Control No. 95/000,603 Patent 7,366,919 B1 Amended claims 1, 24, 27, and 29-37 fail to comply with the written description requirement under 35 U.S.C. § 112, first paragraph {id. at 7—10); Amended claim 30 is obvious under 35 U.S.C. § 103(a) over Voticky, Costello, and Huang {id. at 13—15); Amended claims 29, 33, and 36 are obvious under 35 U.S.C. § 103(a) over Voticky, Costello, and Donaldson {id. at 15—21); Amended claims 24 and 35 are obvious under 35 U.S.C. § 103(a) over Voticky, Costello, McElligott, Donaldson, GeoBytes, Dodge, and Parekh {id. at 21—25); and Amended claims 1—3, 5—7, 15, 17—23, 26—28, 31, 32, 34, and 37 are obvious under 35 U.S.C. § 103(a) over Voticky, Costello, McElligott, Huang, Donaldson, Parekh, and Dodge {id. at 25—36). On February 25, 2014, we issued an Order (Order Remanding Inter Partes Reexamination under 37 C.F.R. § 41.77(d) to the Examiner, “Order”) granting in part Patent Owner’s request to reopen prosecution. In particular, we did not enter Patent Owner’s arguments and/or evidence pertaining to newly added claims 29-37 because the new claims impermissibly broaden the scope of the claimed subject matter and thus do not constitute a proper amendment under 37 C.F.R. § 41.77(b). Order 2—3. On March 11, 2014, Patent Owner filed a Petition under 37 C.F.R. §§ 41.3 and/or 1.181—183 requesting correction of the Board’s Order remanding the inter partes reexamination to the Examiner to include consideration of the amendments, arguments, and evidence pertaining to new claims 29-37. On June 10, 2014, the Board issued a Decision granting Patent Owner’s Petition, and on August 8, 2014, we issued a revised Order (Revised Order Remanding Inter 4 Appeal 2015-007682 Reexamination Control No. 95/000,603 Patent 7,366,919 B1 Partes Reexamination under 37 C.F.R. § 41.77(d) to the Examiner, “Revised Order”) granting Patent Owner’s request to reopen prosecution and remanding the inter partes reexamination to the Examiner for consideration of all of the arguments and evidence pertaining to the claims, including new claims 29-37. The Examiner issued a Determination under 37 C.F.R. § 41.77(d) (“Ex. Det.”) on November 25, 2014. The Examiner determined that Patent Owner’s response overcomes the Board’s new grounds of rejection for claims 1—3, 5—7, 15, 17—24, 26—28, and 31—37, but does not overcome the new grounds of rejection for claims 29 and 30. Ex. Det. 23—24, 25. In addition, the Examiner agreed with Requester that claims 1—3, 5—7, 15, 17— 24, 26—28, and 31—37, as amended, are unpatentable pursuant to some of the Requester’s proposed new grounds of unpatentability. Id. at 24, 25. Thus, the status of the claims in the Examiner’s Determination is as follows: Claims 31 and 33 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement (id. at 9—10); Claims 30 and 35 are rejected under 35 U.S.C. § 103(a) as obvious over Voticky, Costello, and Huang {id. at 15); Claim 29, 33, and 36 are rejected under 35 U.S.C. § 103(a) as obvious over Voticky, Costello, and Donaldson {id. at 16—18); Claims 24 and 35 are rejected under 35 U.S.C. § 103(a) as obvious over Voticky, Costello, McElligott, Donaldson, GeoBytes, Dodge, and Parekh {id. at 19-20); and Claims 1—3, 5—7, 15, 17—23, 26—28, 31, 32, 34, and 37 are rejected under 35 U.S.C. § 103(a) as obvious over Voticky, Costello, McElligott, Huang, Donaldson, Parekh, and Dodge {id. at 21—23). 5 Appeal 2015-007682 Reexamination Control No. 95/000,603 Patent 7,366,919 B1 On December 24, 2014, Patent Owner filed a response to the Examiner Determination’s (Patent Owner’s Comments under 37 C.F.R. § 41.77(e) on Examiner’s Determination, “PO Comments”), including evidence and amendments to claims 1, 6, 7, 19, 24, 27, and 29-37. PO Comments 1—2, 3—4, 6, 7—12. Requester did not submit comments in response to the Examiner’s Determination.2 In accordance with 37 C.F.R. § 41.77(f), this proceeding has returned to us to reconsider the matter and issue a new decision. This Decision under 37 C.F.R. § 41.77(f) is deemed to incorporate our earlier decisions, except as indicated. DISCUSSION3 Issues and Claims before the Board in this Decision under 37 C.F.R. §41.77(f) Patent Owner argues that the Examiner’s Determination should not consider the proposed new grounds of unpatentability in Requester’s comments pursuant to 37 C.F.R. § 41.77(c). PO Comments 20—22. Patent Owner further contends that if the Board determines that the Examiner’s Determination adopts Requester’s new grounds of unpatentability, then the Board should permit entry of amendments and evidence submitted with 2 On November 12, 2014, and before the Examiner Determination, Requester gave notice of withdrawal from the inter partes reexamination. 3 On November 19, 2014, Patent Owner filed a Petition under 37 C.F.R. § 1.983 seeking waiver of 37 C.F.R. § 1.955 to permit an interview with the Examiner. Patent Owner argues that the Petition is relevant as it could promote an understanding of the Examiner’s position. PO Comments 2. On June 23, 2015, the Office issued a Decision dismissing the Petition, thus rendering Patent Owner’s argument moot. 6 Appeal 2015-007682 Reexamination Control No. 95/000,603 Patent 7,366,919 B1 Patent Owner’s response under § 41.77(e). Id. at 22. For the reasons discussed below, we disagree with Patent Owner. Beginning with the issue of whether we should enter the amendments and evidence included with Patent Owner’s response to the Examiner’s Determination, Patent Owner argues that § 41.77(e) does not prohibit entry of amendments or evidence. PO Comments 22. Patent Owner further argues that the evidence and amendments should be entered under 37 C.F.R. §1.116(b) because the amendments could reduce issues for the Board. Id. (citing MPEP § 2673(111)). Patent Owner’s arguments are not persuasive. As an initial matter, Patent Owner’s reliance on 37 C.F.R. § 1.116(b) and MPEP § 2673(111) is misplaced because both of these provisions regard amendments and evidence prior to appeal. Moreover, our Rules expressly limit a patent owner’s ability to amend the claims and submit evidence after appeal, and 37 C.F.R. § 41.63 specifically provides: § 41.63 Amendments and affidavits or other evidence after appeal. (a) Amendments filed after the date of filing an appeal pursuant to § 41.61 canceling claims may be admitted where such cancellation does not affect the scope of any other pending claim in the proceeding. (b) All other amendments filed after the date of filing an appeal pursuant to § 41.61 will not be admitted except as permitted by § 41.77(b)(1). (c) Affidavits or other evidence filed after the date of filing an appeal pursuant to § 41.61 will not be admitted except as permitted by reopening prosecution under § 41.77(b)(1). Patent Owner’s response to the Examiner’s Determination is governed by § 41.77(e), and the amendments submitted with Patent Owner’s response do 7 Appeal 2015-007682 Reexamination Control No. 95/000,603 Patent 7,366,919 B1 not cancel claims. Thus, in accordance with § 41.63, the amendments and evidence included therewith are not admissible. Turning to the issue of the Examiner’s consideration of Requester’s proposed new grounds of unpatentability, Patent Owner argues that 37 C.F.R. § 41.77(d) limits the Examiner’s Determination to the Board’s new grounds of rejection and, therefore, does not permit consideration of Requester’s proposed new grounds. PO Comments 20-21. Patent Owner further asserts that the Board remanded the proceeding to the Examiner “for consideration of the arguments and/or evidence pertaining to the claim amendments as these filings pertain to the new grounds of rejection as enumerated in our prior Decision dated November 14, 2013.” Id. (citing Revised Order 3). Patent Owner’s arguments are not persuasive. Although the Examiner is tasked with determining whether Patent Owner has overcome the new grounds of rejection in our Decision on Appeal, the Examiner is not precluded from considering issues of patentability as they arise. BlackLight Power, Inc. v. Rogan, 295 F.3d 1269, 1274 (Fed. Cir. 2002) (“The PTO’s responsibility for issuing sound and reliable patents is critical to the nation.”). Here, Requester’s proposed new grounds raise issues of patentability regarding Patent Owner’s amended claims under § 41.77(b)(1). The Examiner’s consideration of Requester’s proposed new grounds is reasonable because the determination of patentability is within the Examiner’s authority and in fulfillment of the Examiner’s obligation to properly examine the patent under reexamination. 8 Appeal 2015-007682 Reexamination Control No. 95/000,603 Patent 7,366,919 B1 Patent Owner further contends that the Examiner’s Determination does not adopt Requester’s proposed new grounds of unpatentability because the Determination specifically uses the phrases “should be adopted” or “should not be adopted.” PO Comments 21. Patent Owner further argues that because the Examiner did not adopt Requester’s proposed new grounds in the Determination, the Board must designate any adoption of a new ground as a new ground of rejection to provide Patent Owner an opportunity to respond. Id. at 21—22 (citations omitted). We disagree. The Examiner’s use of the word “should” in regard to the adoption of Requester’s proposed new grounds is inapposite because Patent Owner was nonetheless on notice that the claims under reexamination are unpatentable. Furthermore, Patent Owner had an opportunity to respond to the Examiner’s Determination in accordance with 37 C.F.R. § 41.77(e). In view of the foregoing, we do not enter the amendments and evidence included with Patent Owner’s response under 37 C.F.R. § 41.77(e),4 and we do not consider any arguments regarding these amendments and evidence. The claims before us are the amended claims submitted with Patent Owner’s request to reopen prosecution pursuant to § 41.77(b)(1),5 which the Examiner entered (Ex. Det. 1). Furthermore, we determine that the Examiner acted within the Examiner’s authority when considering and adopting Requester’s proposed new grounds of unpatentability, and 37 C.F.R. § 41.77(a) governs whether we designate the affirmance of the Examiner’s adoption of Requester’s new ground as a new 4 Filed December 24, 2014. 5 Filed December 16, 2013. 9 Appeal 2015-007682 Reexamination Control No. 95/000,603 Patent 7,366,919 B1 ground of rejection. Thus, in this Decision under § 41.77(f), we review all of the Examiner’s determinations for the claims as amended under § 41.77(b)(1), including the determinations regarding the new grounds of rejection in our Decision on Appeal and Requester’s proposed grounds of unpatentability, and this Decision generally follows the order of issues addressed in the Examiner’s Determination. Cited References as Prior Art Patent Owner argues the Examiner and Requester have not provided sufficient proof that the cited references by Requester were published prior to the priority date of the ’919 Patent (April 25, 2003) such that the references are not proper prior art. PO Comments 23—25. Patent Owner specifically addresses GeoBytes {id. at 23—24), Barnes {id. at 24), Costello {id.), Spamassasin (id. ), and Faas (id. ). The Examiner did not rely on Barnes, Spamassasin, or Faas in the Examiner’s Determination, so we need not address Patent Owner’s arguments regarding these references. With regard to GeoBytes, Patent Owner points out that GeoBytes has a copyright date, but no publication date, and asserts that a copyright date reflects when a document was created or edited and provides no credible information on publication. PO Comments 23. Patent Owner also points out that each page of GeoBytes is labeled “Private & Confidential,” and that neither Requester nor Examiner verified the publication of reference. Id. Patent Owner’s arguments are not persuasive. While the GeoBytes document is labeled “Private & Confidential,” each page also states “Copyright © 2000, 2001, 2002 geobytes, inc.” The copyright notice has 10 Appeal 2015-007682 Reexamination Control No. 95/000,603 Patent 7,366,919 B1 been regarded as sufficient to establish a threshold showing that a document was a printed publication as of the date of the copyright notice, i.e., 2002. See International Business Machines Corporation v. Intellectual Ventures II LLC, IPR2014-00681, Paper 11 (October 30, 2014) at 13-14; see also FLIR Systems, Inc. v. Leak Surveys, Inc., IPR2014-00411, Paper 9 (September 5, 2014) at 18-19 (“On the record before us, we are persuaded that the Copyright notice prima facie establishes a prior art date of 2002”). At least, we consider it evidence that the GeoBytes document was published as of 2002. Additionally, Patent Owner fails to address Requester’s evidence regarding the availability of GeoBytes. The ’919 Patent discloses “[t]he conversion of the actual IP address 23 into geo-location data at step 12 may be performed by a software program such as Geobytes.” ’919 Patent, col. 2, 11. 64—66. Requester’s expert testified that the “GeoBytes [publication] is a 2002 description of the same software utilized by the ‘919 Patent that performs the conversion of IP address to geolocation data along with the associated confidence number.” 3rd Medvidovic Decl. 1 8 (dated Jan. 16, 2014) (citing ’919 Patent 2:64—3:6). Patent Owner did not provide evidence to the contrary. Thus, Patent Owner’s arguments do not apprise us of error regarding the Examiner’s reliance on GeoBytes as prior art. In regard to Costello, Patent Owner argues that its publication has not been verified. PO Comments 24. According to Patent Owner, Costello includes a URL, which does not work, and a “quick search” of Internet Archive shows captures going back only to 2007, which is after the priority date of the ’919 Patent. We do not find Patent Owner’s arguments 11 Appeal 2015-007682 Reexamination Control No. 95/000,603 Patent 7,366,919 B1 persuasive. The URL link set forth in Costello includes “2002,” and Costello expressly states “March 5, 2002, Posted: 8:41 a.m. EST.” As such, the Examiner did not err in relying on Costello as prior art. Patent Owner’s Arguments under 37 C.F.R. § 41.77(b)(1) Requester argued that Patent Owner’s request to reopen prosecution is improper because the Declaration of Markus Jakobsson, Ph.D. (dated Dec. 24, 2014) presents substantially the same arguments as a previous Declaration by Dr. Jakobsson and, therefore, does not constitute “new evidence not previously of record” under 37 C.F.R. § 41.77(b)(1). 3PR Comments 1—3. The Examiner disagreed with Requester and determined that Patent Owner’s request to reopen prosecution complies with § 41.77(b)(1). Ex. Det. 6. In making this determination, the Examiner referred to the Board’s Orders remanding the inter partes reexamination to the Examiner, and the Examiner also pointed out that the latter Declaration of Dr. Jakobsson includes arguments directed to the amended claims under § 41.77(b)(1), which were not previously of record. Id. at 5—6. Absent any response to the Examiner’s Determination by Requester, we agree with the Examiner that Patent Owner’s request to reopen prosecution complies with § 41.77(b)(1). Claims 29—3 6 as Impermissibly Broadening Requester proposed that claims 29-36 should be rejected under 35 U.S.C. § 314(a) (pre-AIA) because Patent Owner’s removal of certain limitations impermissibly broadened the scope of the invention. 3 PR 12 Appeal 2015-007682 Reexamination Control No. 95/000,603 Patent 7,366,919 B1 Comments 4—6. The Examiner referred to the Board’s explanation in the Revised Order remanding this matter to the Examiner and did not adopt this rejection. Ex. Det. 7. As set forth above, Requester did not file a response to the Examiner’s Determination, and we agree with the Examiner’s refusal to adopt this rejection for the reasons set forth on pages 2—3 of the Revised Order. Claims 1, 24, 27, and 29—37 as Failing to Comply with the Written Description Requirement Requester argued that claims 1, 24, 27, and 29-37 should be rejected under 35U.S.C. § 112, first paragraph, for failing to comply with the written description requirement. 3PR Comments 7—10. In the Determination, the Examiner addressed these claims in two groups, and we similarly do so here. Claims 31 and 33 Requester pointed out that the amendments to these claims omitted the term “suspected” such that the claims recite “spam,” as opposed to “suspected spam.” 3PR Comments 7. Requester asserted that there is no support in the Specification for augmenting a composite spam score upon automatically ascertaining that the e-mail contains spam, as recited in the claims. Id. at 7—8. According to Requester, the Specification teaches that augmenting a composite spam score is part of the post-decision processing of optional step 17 and that optional step 17 is no longer allowed when spam is present. Id. at 7 (citing Spec. 3:61—4:6). The Examiner agreed with Requester and determined that claims 31 and 33 do not comply with the written description requirement. Ex. Det. 9—10. 13 Appeal 2015-007682 Reexamination Control No. 95/000,603 Patent 7,366,919 B1 Patent Owner contends that there is written description support for claims 31 and 33. PO Comments 19. In doing so, Patent Owner acknowledges that the Specification teaches that if the post-decision processing of optional step 17 is not done, the declaration is that spam is present. Id. (citing Spec. 4:4—6). Patent Owner, however, argues that this teaching “does not necessarily preclude the converse—i.e., if post-decision processing is done, it does not require that you declare suspected spam is present.” Patent Owner further asserts that “Figure 1 is one embodiment of the disclosure,” and Patent Owner refers to a portion of the Specification explaining that the description is not limited embodiments expressly described therein. Id. (citing Spec. 1:57—58,6:58—65). Patent Owner also argues that “it may be possible to perform post-decision processing without declaring suspected spam.” Id. Patent Owner’s arguments are not persuasive. Claim 31 recites “upon automatically ascertaining that the e-mail contains spam, augmenting a composite spam score,” and claim 33 includes a similar limitation. As the Examiner found, the Specification discloses performing post-decision processing, i.e. augmenting a composite spam score, at step 17 when an e- mail contains suspected spam and not using step 17 when spam is present. Spec. 3:60-4:6; Ex. Det. 9. This cited portion of the Specification teaches performing post-decision processing (“augmenting a composite spam score”) only when an e-mail contains suspected spam, and Patent Owner has not pointed to any disclosure in the Specification that supports performing- decision processing when an e-mail contains spam, as recited in these limitations. Instead, Patent Owner points to the passage of the Specification 14 Appeal 2015-007682 Reexamination Control No. 95/000,603 Patent 7,366,919 B1 explaining that the description is non-limiting and contends that it may be possible to perform post-decision processing without declaring suspected spam. The mere possibility that that post-decision processing may be performed without declaring suspected spam does not convey with reasonable clarity to those skilled in the art that the inventors were in possession the claimed invention. See Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1379 (Fed. Cir. 2009) (“Adequate written description means that the applicant, in the specification, must ‘convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the [claimed] invention.”’) (citation omitted) (brackets in original), reh ’g en banc denied Sept. 18, 2009. (Ariad Pharmaceuticals, Inc. v. EliLilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (“[A] description that merely renders the invention obvious does not satisfy the [written] requirement.”).) In view of the foregoing, the Examiner did not err in determining that there is insufficient written description support for claims 31 and 33. Accordingly, we maintain the rejection of claims 31 and 33 under 35 U.S.C. §112, first paragraph. Claims 1, 24, 27, 29, 30, 32, and 34—37 The Examiner disagreed with Requester and determined that these claims comply with the written description requirement. Ex. Det. 10—13. Absent any rebuttal by Requester, we see no error in the Examiner’s refusal to adopt the rejection of these claims under 35 U.S.C. § 112, first paragraph, for the reasons set for in the Examiner’s Determination (id.). Claim 30 as obvious over Voticky, Costello, and Huang 15 Appeal 2015-007682 Reexamination Control No. 95/000,603 Patent 7,366,919 B1 The Examiner determined that claim 30, as amended under 37 C.F.R. § 41.77(b)(1), does not overcome the new ground of rejection in the Board’s Decision on Appeal. Ex. Det. 15. Patent Owner argues that the cited prior art, either alone or in combination, fails to disclose or suggest the limitations reciting “converting the actual IP address into actual geo-location data, wherein the actual geo-location data indicates a presence within a pre selected radius of a geographical point” and “wherein the determining step comprises deriving the actual IP address from a mail transfer agent that is trusted by a recipient computer, wherein the mail transfer agent is trusted by the recipient computer if the recipient computer has never been spoofed via the mail transfer agent.” PO Comments 17—18. These arguments are not persuasive because they are not commensurate with the claims before us on appeal. Patent Owner amended claim 30 to include these limitations in response to the Examiner’s Determination, and as set forth above, these amendments are not entered. Accordingly, Patent Owner does not apprise us of error in the Examiner’s determination that claim 30 is obvious over Voticky, Costello, and Huang. Thus, we agree with the Examiner that Patent Owner has not overcome the Board’s new ground of rejection for claim 30. Claims 29, 33, and 36 as obvious over Voticky, Costello, and Donaldson Claim 29 In response to the Decision on Appeal, Patent Owner amended claim 29 and argued that the amended claim overcomes the Board’s new ground of rejection. Req. to Reopen 6—7, 26—27. In particular, amended claim 29 16 Appeal 2015-007682 Reexamination Control No. 95/000,603 Patent 7,366,919 B1 includes the limitation “automatically ascertaining, using the mail transfer agent that processes the e-mail and using the actual geo-location data, whether the e-mail contains spam,” and Patent Owner alleged that none of the cited references discloses this limitation. Id. at 26—27. In contrast, Requester argued that the combined teachings of Voticky, Costello, and Donaldson would result in the disputed limitation. 3PR Comments 16. The Examiner agreed with Requester and determined that Patent Owner’s arguments do not overcome the new ground of rejection for claim 29. Ex. Det. 16. Patent Owner presently argues that Donaldson, Voticky, and Costello contain no disclosure or suggestion of a mail transfer agent (MTA) ascertaining using actual geo-location data that an e-mail is spam, as required by claim 29. PO Comments 17. According to Patent Owner, Donaldson does not disclose the claim limitation because the filtering of Donaldson is directed to blacklists and whitelists. Id. (citing Donaldson, pp. 11, 12, 14, 20, Fig. 24). Patent Owner asserts that Costello fails to disclose an MTA, and that Voticky fails to cure the deficiencies of Donaldson and Costello. Id. We do not find Patent Owner’s arguments persuasive because Patent Owner is responding to the rejection by attacking the references separately, even though the rejection is based on the combined teachings of the references. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)) (“Non obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of 17 Appeal 2015-007682 Reexamination Control No. 95/000,603 Patent 7,366,919 B1 references.”). Here, the Examiner agreed with Requester that Voticky and Costello teach the use of the actual geo-location data to automatically ascertain whether the e-mail contains spam. Ex. Det. 14—15.6 The Examiner further agreed with Requester that Donaldson teaches automatically ascertaining whether the e-mail contains spam using an MTA computer. Ex. Det. 16 (citing Donaldson, Abstract, pp. 16—17, 19, 29, Figs. 10-11). The facts cited by the Examiner and Requester support the findings. Patent Owner does not apprise us of error in the Examiner’s determination that the combined teachings of Voticky, Costello, and Donaldson would result in the claimed step of “automatically ascertaining, using the mail transfer agent that processes the e-mail and using the actual geo-location data, whether the e-mail contains spam,” as recited in claim 29. Patent Owner’s remaining arguments for claim 29 are the same as the arguments for claim 30. PO Comments 17—18. As discussed above, these arguments are directed to claim amendments that have not been entered, and, therefore, are not persuasive of Examiner error. In view of the foregoing, Patent Owner does not apprise us of error in the Examiner’s determination that claim 29 is unpatentable under 35 U.S.C. § 103(a) as obvious over Voticky, Costello, and Donaldson. We agree with the Examiner that Patent Owner has not overcome the Board’s new ground of rejection as to claim 29. Claims 33 and 36 6 The Examiner makes this determination in the analysis for claim 30, not claim 29, because Requester’s assertions regarding this limitation of claim 29 incorporate by reference the assertions for the similar limitation in claim 30. 3PR Comments 16. 18 Appeal 2015-007682 Reexamination Control No. 95/000,603 Patent 7,366,919 B1 Our Decision on Appeal included a new ground of rejection for claims 33 and 36 under 35 U.S.C. § 103(a) as obvious over Voticky and Costello. Dec. on App. 10-11. In response, Patent Owner amended the claims (Req. to Reopen 8, 9, 23—25), and the Examiner determined that Patent Owner’s response overcomes the new ground of rejection (Ex. Det. 16). Absent any rebuttal from Requester regarding whether claims 33 and 36 overcome the Board’s new ground rejection, we agree with the Examiner. Requester, however, proffered that claims 33 and 36 are unpatentable under 35 U.S.C. § 103(a) as obvious over Voticky, Costello, and Donaldson. 3PR Comments 15, 17—21. The Examiner agreed with Requester. Ex. Det. 16—18. Patent Owner makes the same arguments for claim 33 as for claim 29. Namely, Patent Owner argues that Voticky, Costello, and Donaldson contain no disclosure of a MTA ascertaining, using actual geo-location data, that an e-mail is spam, and that the filtering of Donaldson is directed to blacklists and whitelists. PO Comments 25 (citing Donaldson, pp. 11, 12, 14, 20, Fig. 24). Patent Owner’s arguments for claim 33 are likewise not persuasive. Similar to claim 29, claim 33 recites “using the actual geo-location data, automatically ascertaining, via a proxy situated in front of a mail transfer agent computer that processes the e-mail, whether the e-mail contains spam.” As set forth above, the Examiner found that Voticky and Costello teach the use of the actual geo-location data to automatically ascertain whether the e-mail contains spam. Ex. Det. 14—15. The Examiner further found that Donaldson teaches a proxy in front of a MTA computer. Id. at 16 (citing Donaldson pp. 17, 19, 79, 88, Figs. 8, 9, 12—19). Thus, the 19 Appeal 2015-007682 Reexamination Control No. 95/000,603 Patent 7,366,919 B1 Examiner relied on the combined teachings of Voticky, Costello, and Donaldson, and Patent Owner has not addressed why this combination would not result in this limitation of claim 33. Patent Owner makes additional arguments for claims 33 and 36. PO Comments 25—26. These arguments, however, are directed to claim amendments that have not been entered, and, therefore, are not persuasive of Examiner error. In view of the foregoing, Patent Owner has not apprised us of error in the Examiner’s determination that claims 33 and 36 are unpatentable under 35 U.S.C. § 103(a) as obvious over Voticky, Costello, and Donaldson. Accordingly, we maintain the Examiner’s rejection of claims 33 and 36. Claims 24 and 35 as obvious over Voticky, Costello, McElligott, Donaldson, GeoBytes, Dodge, and Parekh Our Decision on Appeal included new grounds of rejection for claims 24 and 35. Namely, we determined that claim 24 is unpatentable under 35 U.S.C. § 103(a) as obvious over Costello and McElligott (Dec. on App. 4—6) and claim 35 is unpatentable as obvious over Voticky, Costello, and Huang {id. at 12). In response, Patent Owner amended the claims (Req. to Reopen 5—6, 9, 15—16, 30), and the Examiner determined that Patent Owner’s response overcomes the new grounds of rejection (Ex. Det. 20). Absent any rebuttal from Requester regarding whether claims 24 and 35 overcome the Board’s new ground rejection, we agree with the Examiner as the determination is supported by adequate evidence. Requester alleged, however, that claims 24 and 35 are unpatentable under 35 U.S.C. § 103(a) as obvious over Voticky, Costello, McElligott, 20 Appeal 2015-007682 Reexamination Control No. 95/000,603 Patent 7,366,919 B1 Donaldson, GeoBytes, Dodge, and Parekh. 3PR Comments 21—25. The Examiner agreed with Requester and determined that claims 24 and 35 are obvious over Voticky, Costello, and Donaldson. Ex. Det. 19—20. With regard to claim 24, Patent Owner contends that Donaldson, GeoBytes, Dodge, and Parekh do not cure the deficiency of Costello and McElligott, namely the failure to disclose using confidence levels associated with geo-location data to indicate exceeding a preselected threshold and using the geo-location data to ascertain whether an e-mail contains spam. PO Comments 28—29. In particular, Patent Owner argues that Donaldson does not teach using geo-location data to automatically ascertain whether an e-mail contains spam. Id. at 28. Patent Owner also alleges that GeoBytes does not disclose determining whether an e-mail is spam based on a confidence level. Id. Patent Owner asserts that Dodge does not teach automatically determining, using geo-location data, whether e-mail contains suspected spam. Id. at 29. Patent Owner further asserts that Parekh does not mention spam, nor does Parekh teach ascertaining whether the e-mail contains suspected spam based on the determination that the confidence number exceeds the pre-selected threshold. Id. Patent Owner’s arguments are not persuasive because they are not responsive to the proposed combination. Claim 24 recites “using the actual geo-location data and based on the determination that the confidence number exceeds the pre-selected threshold, automatically ascertaining whether the e- mail contains suspected spam.” The Examiner did not rely on one single reference to teach this limitation, as Patent Owner’s arguments suggest. Rather, the Examiner relied on the combined teachings. Specifically, as discussed supra in regard to claim 29, the Examiner relied on Voticky and 21 Appeal 2015-007682 Reexamination Control No. 95/000,603 Patent 7,366,919 B1 Costello to teach the use of the actual geo-location data to automatically ascertain whether the e-mail contains suspected spam. Ex. Det. 14—15. The Examiner further found that Dodge, GeoBytes, and Parekh teach “determining that the confidence number exceeds a pre-selected threshold.” Id. at 19 (citing Dodge p. 4,7 GeoBytes p. 3, Parekh 6:7—8:62, 10:58—11:15). Thus, the Examiner relied on the combined teachings of these references to meet the claimed limitation, and Patent Owner does not address why the combination would not teach what is claimed. Claim 35 includes a similar limitation, and Patent Owner makes the same arguments for claim 35 as for claim 24. PO Comments 29—30. For the same reasons set forth above in regard to claim 24, Patent Owner’s arguments do not address the proposed combination, and, therefore, are not persuasive. Patent Owner makes additional arguments for claims 24 and 35. PO Comments 26—28, 29. These arguments, however, are directed to claim amendments that have not been entered, and, therefore, are not persuasive of Examiner error. In view of the foregoing, Patent Owner has not apprised us of error in the Examiner’s determination that claims 24 and 35 are unpatentable under 35 U.S.C. § 103(a) as obvious over Voticky, Costello, McElligott, Donaldson, GeoBytes, Dodge, and Parekh. Accordingly, we maintain the Examiner’s rejection of claims 24 and 35. 7 Dodge does not contain page numbering. We refer to the first page as page 1 and to the remaining pages as numbered consecutively. 22 Appeal 2015-007682 Reexamination Control No. 95/000,603 Patent 7,366,919 B1 Claims 1—3, 5—7, 15, 17—23, 26—28, 31, 32, 34, and 37 as obvious over Voticky, Costello, McElligott, Huang, Donaldson, Parekh, and Dodge Our Decision on Appeal included new grounds of rejection for claims 1—3, 5—7, 15, 17—23, 26-28, 31, 32, 34, and 37. Dec. on App. 13. In response, Patent Owner amended the claims (Req. to Reopen 2—10), and the Examiner determined that Patent Owner’s response overcomes the new grounds of rejection (Ex. Det. 22—23). Absent any rebuttal from Requester regarding whether these claims overcome the Board’s new grounds of rejection, we agree with the Examiner as it is fact-based and supported by adequate reasoning. Requester, however, asserted that these are unpatentable under 35 U.S.C. § 103(a) as obvious over Voticky, Costello, McElligott, Huang, Donaldson, Dodge, and Parekh. 3PR Comments 25—36. The Examiner agreed with Requester. Ex. Det. 21—23. Patent Owner argues that the cited prior art fails to disclose certain limitations of these claims. PO Comments 31—33. These arguments are in regard to limitations that have not been entered, and therefore, are not commensurate with claims before us on appeal. Accordingly, Patent Owner has not apprised us of error in the Examiner’s determination that claims 1—3, 5—7, 15, 17—23, 26—28, 31, 32, 34, and 37 are unpatentable under 35 U.S.C. § 103(a) as obvious over Voticky, Costello, McElligott, Huang, Donaldson, Parekh, and Dodge, and we maintain the Examiner’s rejection of these claims. 23 Appeal 2015-007682 Reexamination Control No. 95/000,603 Patent 7,366,919 B1 CONCLUSIONS The Examiner did not err in refusing to adopt Requester’s proposed rejection of claims 29-36 under 35 U.S.C. § 314(a) as impermissibility broadening. The Examiner did not err in adopting Requester’s proposed rejection of claims 31 and 33 under 35 U.S.C. § 112, first paragraph, for failing to comply with the written description requirement. The Examiner did not err in refusing to adopt Requester’s proposed rejection of claimsl, 24, 27, 29, 30, 32, and 34—37 under 35 U.S.C. § 112, first paragraph, for failing to comply with the written description requirement. The Examiner did not err in determining that claim 30 does not overcome the Board’s new grounds of rejection under 35 U.S.C. § 103(a) as obvious over Voticky, Costello, and Huang. The Examiner did not err in determining that claim 29 does not overcome the Board’s new grounds of rejection under 35 U.S.C. § 103(a) as obvious over Voticky, Costello, and Donaldson. The Examiner did not err in adopting Requester’s proposed rejection of claims 33 and 36 under 35 U.S.C. § 103(a) as obvious over Voticky, Costello, and Donaldson. The Examiner did not err in adopting Requester’s proposed rejection of claims 24 and 35 under 35 U.S.C. § 103(a) as obvious over Voticky, Costello, McElligott, Donaldson, GeoBytes, Dodge, and Parekh. 24 Appeal 2015-007682 Reexamination Control No. 95/000,603 Patent 7,366,919 B1 The Examiner did not err in adopting Requester’s proposed rejection of claims 1—3, 5—7, 15, 17—23, 26—28, 31, 32, 34, and 37 under 35 U.S.C. § 103(a) as obvious over Voticky, Costello, McElligott, Donaldson, GeoBytes, Dodge, and Parekh. In accordance with 37 C.F.R. § 41.79(a)(4), the “[pjarties to the appeal may file a request for rehearing of the decision within one month of the date of: . . . [t]he new decision of the Board under § 41.77(f).” A request for rehearing must be in compliance with 37 C.F.R. § 41.79(b). Comments in opposition to the request and additional requests for rehearing must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under 37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a) of this section, for requesting further rehearing under paragraph (d) of this section, and for submitting comments under paragraph (c) of this section may not be extended. An appeal to the United States Court of Appeals for the Federal Circuit under 35 U.S.C. §§ 141—144 and 315 and 37 C.F.R. § 1.983 for an inter partes reexamination proceeding “commenced” on or after November 2, 2002 may not be taken “until all parties’ rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See also MPEP § 2682 (8th ed., Rev. 8, July 2010). Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g). 25 Appeal 2015-007682 Reexamination Control No. 95/000,603 Patent 7,366,919 B1 AFFIRMED;37 C.F.R, $ 41.77(f) 26 Copy with citationCopy as parenthetical citation