Ex Parte Farrell et al

Patent Trial and Appeal Board

Mar 31, 2016

12890774 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/890,774 09/27/2010 Colm Farrell
52021 7590 04/04/2016
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CAM920100005US 1_8150-0077 9090
EXAMINER
TABOR, AMARE F
ART UNIT PAPER NUMBER
2434
NOTIFICATION DATE DELIVERY MODE
04/04/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte COLM FARRELL, LIAM HARPUR,
PA TRICK JOSEPH 0' SUL LIV AN, FRED RAGUILLAT,
and CAROL SUE ZIMMET
Appeal2014-007490
Application 12/890,774
Technology Center 2400
Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and
NATHAN A. ENGELS, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is IBM Corporation.
App. Br. 1.
Appeal2014-007490
Application 12/890,774
STATEMENT OF THE CASE
The Invention
Appellants' invention relates to electronic messaging systems and,
more specifically, to a method of secure electronic message conveyance.
See Spec. i-f 5.
Claims 1, 9, 14, and 22 are independent. Claim 1 is illustrative of the
subject matter on appeal:
1. Within a system comprising a processor and a memory, a
method of secure electronic message conveyance, the method
compnsmg:
via the processor, receiving a request to forward an
electronic message originally received by a first user to at least
a second user;
via the processor, based on content contained in the
electronic message, selecting from a plurality of approval
entities at least one approval entity that is to determine whether
the electronic message is approved to be forwarded to the at
least a second user;
via the processor, receiving from the selected approval
entity an indication that indicates whether the electronic
message is approved to be forwarded to the second user; and
responsive to the selected approval entity approving the
forwarding of the electronic message to the second user, via the
processor, automatically forwarding the electronic message to
the second user.
App. Br. 23 (Claims App'x).
Rejections on Appeal
Claims 1, 2, 6-11, 14, 15, and 19-24 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Cai et al. (US 2007/0226367 Al; published
Sept. 27, 2007) ("Cai") and Beattie et al. (US 8,028, 162 B2; issued Sept. 27,
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2011) ("Beattie"), or in the alternative, Bulfer et al. (US 2006/0036701 Al,
published Feb. 16, 2006) ("Bulfer"). See Final Act. 3-8.
Claims 3-5, 12, and 16-18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cai, Beattie, and Zheng (WO 2010/066617 Al; published
June 17, 2010). See Final Act. 8-10.
Claims 13 and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cai, Beattie, and Bulfer. See Final Act. 10-12.
ISSUES
The issues presented by Appellants' contentions are as follows:
Under§ 103(a), did the Examiner err in finding that Cai's forward
control indicator teaches or suggests "content contained in the electronic
message," as recited in claim 1?
Under§ 103(a), did the Examiner err in finding that Beattie's process
of selecting an authorized administrator's email address from a plurality of
authorized administrator email addresses teaches or suggests "based on
content contained in the electronic message, selecting from a plurality of
approval entities at least one approval entity that is to determine whether the
electronic message is approved to be forwarded to the at least a second
user," as recited in claim 1?
Under§ 103(a), did the Examiner err because Bufler does not teach or
suggest "a plurality of approval entities," as recited in claim 1?
Is Beattie analogous art with regard to the invention of claim 1?
Has the Examiner provided "some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness," KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citation omitted), with
regard to claim 1?
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Application 12/890,774
Under§ 103(a), did the Examiner err because Cai's processing of data
in real time does not teach or suggest "automatically editing the content of
the electronic message," as recited in claim 2?
ANALYSIS
CLAIMS 1, 3-14, AND 16-25
Content Contained in the Electronic Message
The Examiner finds Cai' s forward control indicator teaches "content
contained in the electronic message." See Ans. 11; Cai Abstract. The
Examiner explains "content" is broad and includes any information
contained in an electronic message, including Cai's forward control
indicator, which is included in the electronic message. See Ans. 11-12. To
the contrary, Appellants contend Cai's forward control indicator, which
"may be included in the header of the electronic message," is not "content
contained in the electronic message" because, as commonly understood by
one of skill in the art, "content" refers only to the body of the message, not
the header. See App. Br. 11-12; Cai i-f 28.
We are unpersuaded of error because Appellants' interpretation of
"content contained in the electronic message" is unduly narrow and not
commensurate with the broadest reasonable interpretation in view of
Appellants' Specification. Contrary to Appellants' contentions, Appellants
do not cite, nor do we find, any passage in the Specification that limits
"content contained in the electronic message" to the body the electronic
message. See App. Br. 12; Reply Br. 7-8. Therefore, we find the broadest
reasonable interpretation of "content contained in the electronic message" to
encompass information in the body as well as the header of the electronic
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message. This interpretation is consistent with the Specification, which
discloses "the request can be indicated by a field within the electronic
message, for example within a header or footer of the electronic message."
Spec. i-f 39 (emphasis added). Accordingly, we find no error in Examiner's
broad, but reasonable, interpretation of "content contained in the electronic
message" as encompassing Cai' s forward control indicator, which is
included in the electronic message and may be in the message's header. See
Ans. 12; App. Br. 12. This analysis is consistent with Appellants' extrinsic
evidence, which discloses that message "content" consists not only of the
body or text of a message, but also its header. See Reply Br. 3, n.1 (citing
http:! /en. wikipedia.org/wiki/ Simple_Mail_Transfer_Protocol, which states
"the content of the message ... consists of a message header and a message
body separated by an empty line.").
Selecting at Least One Approval Entity
Appellants contend the Examiner erred in finding that Beattie teaches
or suggests "based on content contained in the electronic message, selecting
from a plurality of approval entities at least one approval entity that is to
determine whether the electronic message is approved to be forwarded to the
at least a second user," as recited in claim 1. See App. Br. 14--15; Reply Br.
4. Appellants argue Beattie selects an approver email address but does not
teach or suggest that the email address is selected "based on content
contained in the electronic message." See App. Br. 14--15; Reply Br. 4. We
disagree.
As the Examiner finds, prior to issuing a digital certificate, Beattie
teaches that a user may request approval from an authorized administrator by
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selecting the authorized administrator's email address from a plurality of
authorized administrator email addresses. See Final Act. 5 (citing Beattie
Fig. 6). In response to the user's selection, Beattie' s system inserts the
selected email address into an approval email and delivers the email to the
selected email address to request approval from the authorized administrator
to issue the digital certificate. See Beattie Figs. 6, 11 (illustrating approver
e-mail); col. 5, 11. 5-7. By inserting the selected email address in the
approval email ("based on content contained in the electronic message"),
Beattie' s system is selecting one of a plurality of authorized administrators
("selecting from a plurality of approval entities at least one approval entity")
to determine whether an email with a digital certificate is approved to be
forwarded to the SSL requestor ("to determine whether the electronic
message is approved to be forwarded to the at least a second user"). See
Beattie Fig. 2; col. 5, 11. 7-12. Accordingly, because Beattie teaches the
disputed limitation, we are unpersuaded of error.
A Plurality of Approval Entities
We are unpersuaded by Appellants' contention that Bulfer does not
teach or suggest "a plurality of approval entities," as recited in claim 1 (see
App. Br. 18-19; Reply Br. 5-6), because, as discussed above, the Examiner
properly finds that Beattie teaches this limitation. See Final Act. 5 (citing
Beattie Fig. 6); see In re Bush, 296 F.2d 491, 496 (CCPA 1961) (sustaining
a multiple reference rejection under 35 U.S.C. § 103(a) by relying on one
reference alone); In re Boyer, 363 F.2d 455, 458 n.2 (CCPA 1966).
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Analogous Art
Appellants contend "Beattie is nonanalogous art that cannot be
properly applied against the claimed invention" because "Beattie is not
directed to secure electronic message conveyance for forwarded electronic
messages," but rather "to identifying, processing, and issuing server-based
digital certificates." App. Br. 15-16. We disagree.
In an obviousness analysis,
[t ]wo separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004)); see also KSR, 550 U.S. at 420 ("Under
the correct analysis, any need or problem known in the field of endeavor at
the time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.").
Beattie controls the communication of electronic messages (e.g.,
emails comprising digital certificates) between entities. See Ans. 13 (citing
Beattie Fig. 2, which illustrates an approver controlling the communication
of an email comprising a digital certificate from a certificate authority to an
SSL requestor). Similarly, both Cai and Appellants' invention concern
control of the communication of electronic messages (e.g., emails or text
messages) between entities. See Cai Abstract ("[s]ystems and methods
... that control whether a recipient of an electronic message is allowed to
forward the electronic message to third parties." (parenthetical omitted)); i-f
2); Spec. i-fi-12, 5 ("selecting ... at least one approval entity that is to
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determine whether the electronic message [originally received by a first
user] is approved to be forwarded to the at least a second user"). Because
Appellants' invention, Beattie, and Cai are all in the same field of endeavor,
we find Beattie is analogous art regardless of the specific problems
addressed in each. See Nat'! Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357
F.3d 1319, 1339 (Fed. Cir. 2004) ("A finding that two inventions were
designed to resolve different problems ... is insufficient to demonstrate that
one invention teaches away from another."). Accordingly, we are
unpersuaded of error.
Rational Underpinning
Appellants contend the Examiner's proposed underpinning to support
the legal conclusion of obviousness is erroneous because Beattie's
processing of digital certificates has nothing to do with selecting an approval
entity from a plurality of approval entities. See App. Br. 13. We are
unpersuaded of error because Appellants do not persuasively address or
rebut the Examiner's specific finding that modifying Cal to include the
teachings of Beattie "is beneficial to . . . issue ... secure digital certificates
to the requester." See Final Act. 5 (citing Beattie Abstract). By identifying
this benefit of Beattie, we conclude the Examiner has provided "some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness," KSR, 550 U.S. at 418, and that the reasoning
and underpinning are supported by the cited references, in particular by
Beattie. See Final Act. 5 (citing Beattie Abstract); accord Beattie col. 4, 11.
33--45 ("[T]he Requestor cannot divert or 'short circuit' the approval process
by directing the email message requesting official approval of the certificate
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issuance request to the Requestor or to an unauthorized person. This
provides a security element of the automated process and system of the
present invention.").
Conclusion
For the reasons discussed above, we find no error in the Examiner's
rejection of claim 1. Accordingly, we sustain the rejection of claim 1 as well
as claims 3-12, 14, and 16-24, which Appellants argue as standing or falling
together with claim 1 (see App. Br. 10, 20). We also sustain the rejection of
claims 13 and 25 for the same reasons as for claim 1 because Appellants do
not present separate arguments for these claims. See generally App. Br. 5-
21; Reply Br. 2-8.
CLAIM2
Appellants additionally contend Cai's processing of data in real time
does not teach or suggest "automatically editing the content of the electronic
message," as recited in claim 2. See App. Br. 20. We are unpersuaded of
error because Appellants do not persuasively rebut the Examiner's finding
that Cai teaches the disputed limitation by including a forwarding control
indicator in the electronic message. See Ans. 14 (citing Cai Fig. 2, item
204). As discussed above, Cai's forward control indicator teaches "content
contained in the electronic message." See discussion of claim 1 supra.
Therefore, as the Examiner finds, by including the forwarding control
indicator in the electronic message, Cai' s system "automatically edit[ s] the
content of the electronic message." See id.
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Application 12/890,774
Because Cai teaches the disputed limitation, we find no error in the
Examiner's rejection of claim 2. Accordingly, we sustain the rejection of
claim 2 as well as claim 15, which Appellants ague as standing or falling
together with claim 2. See App. Br. 10.
DECISION
The decision of the Examiner to reject claims 1-25 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l) (2013).
See 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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