Ex Parte 7,366,919 et al

Patent Trial and Appeal Board

Mar 28, 2017

95000603 (P.T.A.B. Mar. 28, 2017)

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