Ex Parte Cai et al

Board of Patent Appeals and Interferences

May 30, 2012

11018270 (B.P.A.I. May. 30, 2012)

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.
11/018,270 12/21/2004 Yigang Cai 39-5-6 1838
7590 05/30/2012
Werner Ulrich
501 Forest Avenue
Unit 406
Glen Ellyn, IL 60137
EXAMINER
GOODCHILD, WILLIAM J
ART UNIT PAPER NUMBER
2433
MAIL DATE DELIVERY MODE
05/30/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YIGANG CAI, SHEHRYAR S. QUTUB, and ALOK SHARMA
____________

Appeal 2010-001283
Application 11/018,2701
Technology Center 2400
____________

Before LANCE LEONARD BARRY, HOWARD B. BLANKENSHIP, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 5-7, 11, and 12, which are all the claims remaining in
the application. Claims 2-4 and 8-10 were cancelled during prosecution.
We have jurisdiction under 35 U.S.C. § 6(b).

1 Application filed December 21, 2004. The real party in interest is Lucent
Technologies Inc.
Appeal 2010-001283
Application 11/018,270

2
We affirm.
Invention
Appellants’ invention relates generally to detecting unwanted spam
messages based on the message content. (Spec. 1:21-22.)2
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. In a telecommunications network a method for
detecting unwanted (spam) messages, comprising the steps of:
storing a dynamically variable weighting factor, a fixed
index, and a limit for each property of a potential message;
storing a suspected spam message;
deriving properties of the stored spam message;
calculating the product of the number of occurrences of
each property, its weighting factor and its index;
forming a distributed spam profile from the products or
from predetermined groups of products;
determining whether said distributed spam profile
includes any product or group of products that exceeds a spam
threshold;
determining whether a sum of the members of the
distributed spam profile exceeds a spam threshold; and
if either of the thresholds are exceeded, classifying a
message as a spam message.

2 We refer to Appellants’ Specification (“Spec.”) and Appeal Brief (“Br.”)
filed April 20, 2009. We also refer to the Examiner’s Answer (“Ans.”)
mailed July 31, 2009.
Appeal 2010-001283
Application 11/018,270

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Rejection on Appeal3
The Examiner rejects claims 1, 5-7, 11, and 12 under 35 U.S.C.
§ 103(a) as being unpatentable over Kircher (US Pat. Pub. No.
2003/0195937 A1 published Oct. 16, 2003) and Murray (US Pat. Pub. No.
2005/0080855 A1 published Apr. 14, 2005 (filed Oct. 9, 2003)).
Grouping of Claims
Based on Appellants’ arguments in the Brief, we will decide the
appeal on the basis of representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUE
Under § 103, did the Examiner err in finding that the combination of
Kircher and Murray would have collectively taught or suggested “storing a
dynamically variable weighting factor, a fixed index, and a limit for each
property of a potential message” within the meaning of independent claim 1
(emphasis added), and the commensurate limitation recited in independent
claim 7?

ANALYSIS
Claims 1 and 7
Appellants contend, inter alia, the following:
However, the "dynamically variable quantity" of paragraph 12
is different from Appellants' "dynamically variable weighting
factor"; the latter refers to "a weighting factor which changes

3 The Final Office Action contained a rejection of claims 7, and 11-12 under
35 U.S.C. §101. The Examiner withdrew the § 101 rejection in the Answer.
(Ans. 7.). Therefore, the § 101 rejection is not before us.
Appeal 2010-001283
Application 11/018,270

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dynamically, depends on traffic volume and message/content
types". (Disclosure, page 3, lines l and 2.) In contrast, Kircher's
"dynamically variable quantity" refers to "determinable
attributes" (i.e., fixed indexes), and "user-defined parameters"
(also fixed indexes); similarly, the various attributes of
paragraph 15 are also fixed indexes.
(Br. 9.) In particular, Appellants argue a specific definition for the claimed
phrase “dynamically variable weighting factor,” which requires both traffic
volume and message/content types. (Br. 9.) We disagree for the reasons
that follow.
Here, we find the portion of the Specification pointed to by Appellants
is merely exemplary and does not provide a person of ordinary skill in the
art with clear and precise notice of the meaning argued by Appellants in the
Brief. Kraft Foods, Inc. v. Int’l. Trading Co., 203 F.3d 1362, 1366 (Fed.
Cir. 2000) (“A claim term should be given its ordinary meaning unless the
specification or prosecution history provide a special, different meaning or
definition. (Id. at 1367 (internal citations omitted)). ‘[A]ny special definition
given to a word must be clearly defined in the specification.’” (Id. (quoting
Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed.Cir.1995)
(internal citations omitted)))). We further note that:
"Though understanding the claim language may be aided by
explanations contained in the written description, it is important
not to import into a claim limitations that are not part of the
claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim
language is broader than the embodiment."
Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004). We conclude that Kircher and Murray teach or suggest a
“dynamically variable weighting factor” dependent on at least a
message/content type and, therefore, teach the “dynamically variable
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Application 11/018,270

5
weighting factor” as claimed for the same reasons stated by the Examiner.
(Ans. 6.) Further, we note that Appellants failed to file a Reply Brief to
rebut the findings and responsive arguments made by the Examiner in the
Answer.
Based upon our review of the record, Appellants have not persuaded
us that the Examiner erred in determining that the cited combination of
references would have taught or suggested storing a “dynamically variable
weighting factor” as recited in independent claims 1 and 7. Accordingly, we
affirm the Examiner’s rejection of independent claims 1 and 7.
Claims 5, 6, 11, and 12
In the Brief, Appellants attempt to separately argue dependent claims
5 and 11, and, 6 and 12 respectively. (Br. 10-11.) While Appellants recite
the language of the exemplary dependent claims (id.), we note that a
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim. See 37
C.F.R. § 41.37(c)(1)(vii).
We find Appellants’ conclusory argument (i.e., “Appellants do not
find support for . . . in this paragraph. Accordingly, Appellants submit that
the grounds for the Examiner’s rejection have been overcome”) is
insufficient to persuade us of error in the Examiner’s findings of
obviousness. (See Br. 10.) This form of argument is ineffective in
demonstrating error in the Examiner’s findings or legal conclusions to
establish the patentability of the claims on appeal. See Ex parte Belinne, No.
2009-004693, 2009 WL 2477843 at *3-4 (BPAI Aug. 10, 2009)
(informative); see also 37 C.F.R. § 41.37(c)(1)(vii).
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Application 11/018,270

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Based upon our review of the record, we conclude that the Examiner
did not err in rejecting dependent claims 5, 6, 11, and 12. Accordingly, we
sustain the Examiner’s rejection of claims 5, 6, 11, and 12.

CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1, 5-7, 11, and 12 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claims 1, 5-7, 11, and 12 under
35 U.S.C. § 103(a).

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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