Ex Parte Farrell et alDownload PDFPatent Trial and Appeal BoardJul 25, 201812890774 (P.T.A.B. Jul. 25, 2018) Copy Citation 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 07/27/2018 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 07/27/2018 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, PATRICK JOSEPH O'SULLIVAN, FRED RAGUILLAT, and CAROL SUE ZIMMET Appeal2017-010747 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 26-46, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b ). Claims 1-25 are cancelled. App. Br. 2 We reverse. 1 Appellants identify IBM Corporation as the real party in interest. App. Br. 1. Appeal2017-010747 Application 12/890,774 RELATED PROCEEDINGS The instant application was the subject of Appeal 2014-007490, decided April 4, 2016, in which the Examiner's rejection of claims 1-25 was affirmed. App. Br. 1, 32 et seq.; see generally '490 Dec 'n. 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. ,r 5. Claim 26, which is illustrative, reads as follows: 26. A computer-implemented method performed within a moderating system, comprising: receiving a request to forward, to a second user, an electronic message originally received by a first user and including a message header and a message body; selecting, based upon content contained within the message body, an approval entity from a plurality of approval entities; receiving, from the selected approval entity, an indication that the electronic message is approved to be forwarded to the second user; and forwarding, based upon the indication, the electronic message to the second user. The Re} ections2 The Examiner relies on the following prior art in rejecting the claims: 2 A rejection of claims 26--46 under 35 U.S.C. § 101 as being directed to non-statutory subject matter (see Final Act. 3) is withdrawn by the Examiner (Ans. 2-3) and is not before us. 2 Appeal2017-010747 Application 12/890,774 Bulfer et al. ("Bulfer") Cai et al. ("Cai") Toomey Beattie et al. ("Beattie") US 2006/0036701 Al Feb. 16, 2006 US 2007/0226367 Al Sept. 27, 2007) US 7,730,137 Bl June 1, 2010 US 8,028,162 B2 Sept. 27, 2011 Claims 26-31, 33-38, and 40-45 3 stand rejected under 35 U.S.C. § I03(a)4 as being unpatentable over Cai in combination with Beattie, and in combination with Bulfer, in addition or in the alternative. See Final Act. 4-- 9. Claims 32, 39, and 46 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Cai in combination with Beattie, with Bulfer, in addition or in the alternative, and with Toomey. See Final Act. 9. The Record Rather than repeat the arguments here, we refer to the Briefs ("App. Br." filed Apr. 14, 2017; "Reply Br." filed Aug. 15, 2017 for the positions of Appellants; the Final Office Action ("Final Act." mailed Nov. 17, 2016) and Examiner's Answer ("Ans." mailed June 15, 2017) for the reasoning, findings, and conclusions of the Examiner; the Specification ("Spec." filed Sept. 27, 201 O); and the Decision in the prior related case ("' 490 Dec 'n"). 3 Claims 33 and 40 are omitted from the summary statement of the rejection (Final Act. 4) but are included in the detailed grounds of rejection (Final Act. 7). We view this apparent discrepancy as typographical, clerical, or ministerial in nature and of no consequence. 4 All rejections are under the provisions of 35 U.S.C. in effect prior to the effective date of the Leahy-Smith America Invents Act of 2011 ("pre-AIA"). Final Act 2. 3 Appeal2017-010747 Application 12/890,774 ISSUE The dispositive issue presented by Appellants' arguments is whether Cai, when combined with Beattie or Bulfer, teaches of suggests "selecting, based upon content contained within the message body, an approval entity from a plurality of approval entities," as recited in claim 26. ANALYSIS The Examiner maps Cai' s forwarding control indicator to "content contained within the message body" that causes a message to be processed by an approval entity before being allowed to be forwarded to a second user, as recited in claim 26. Final Act. 5 ( citing Cai, Abstract, ,r,r 12-13, 27-31, 33, 35, 41, 45--47, 49-52, 55, Figs. 1-3). The Examiner relies on Beattie and Bulfer, together or individually, to teach selecting "selecting ... an approval entity from a plurality of approval entities." Final Act. 6-7 (citing Beattie, Abstract, col. 2, 11. 6-28, col. 3, 1. 66-col. 5, 1. 12, col. 6, 1. 42---col. 8, 1. 32, Figs. 2, 6, 19, 26; Bulfer ,r 18, Figs. 1-2). The Examiner explains that Cai discloses including the forward control indicator in the header as an option; but does not prohibit ( or exempt) incorporating the forward control indicator in the body of the electronic message. Cai discloses (for example in par. [0028]) ". . . The forwarding control indicator may be included in the header of the electronic message, such as ... " In fact, Cia clearly teaches incorporating/including the forward control indicator in the electronic message (" ... a forwarding control indicator is included in the electronic message ... " (Abstract), " ... , access device 121 includes a forwarding control indicator in the electronic message . .. " [0028], " ... Alternatively, access device 121 may automatically include a forwarding control indicator in this electronic messages, such as . .. " [0029], [0031] 4 Appeal2017-010747 Application 12/890,774 ... " ... , the email application includes a forwarding control indicator in the email message . .. [0052]. Ans. 10 (brackets and ellipses in original). Appellants point out that claim 26 recites "that the electronic message includes a message body and a message header and the selection of the approval authority is based upon content contained within the message body." App. Br. 16. Appellants argue that "this language clearly distinguishes over Cai, which describes that the 'forward control indicator' is found with[in] the header of the message- not within the message body." App. Br. 16-17. We agree with Appellants. Consistent with claim 26, both Appellants' Specification and Cai teach that an electronic message may include a message header (see, e.g., Spec. ,r 26; Cai ,r 41) and a message body (see, e.g., Spec. ,r 30; Cai ,r 41). See also '490 Dec 'n 4--5. As we previously decided, the Examiner is correct that Cai clearly teaches that Cai' s "forward control indicator" is located in Cai's electronic message. See id. However, to the extent that the passages of Cai relied on by the Examiner teach a specific location within the electronic message for the "forward control indicator," Cai only teaches locating it in the electronic message header. See Cai ,r,r 28, 35, 41--42, 45- 46, 52-55; see also id. Claims 2, 9. We find no reference in Cai to the possibility of including the "forward control indicator" in the body of the electronic message. See id. ,r,r 41, 46. To be sure, the Examiner is correct that Cai uses permissive language ( e.g., "The forwarding control indicator may be included in the header of the electronic message." (Cai ,r 28 (emphasis added))) (see Ans. 10), however, this permissive language appears to make optional the inclusion or non-inclusion of the "forward control indicator" in the message, rather than addressing where in the 5 Appeal2017-010747 Application 12/890,774 message such an indicator would be located, particularly given the complete absence of any specific mention in Cai of including the indicator in the body of the message. Likewise, the fact that Cai does not explicitly preclude that the "forward control indicator" can be placed in the electronic message body (see id.) does not amount to teaching or suggestion that it can or should be placed in the electronic message body. CONCLUSION On the record before us, Appellants have demonstrated error in the rejection of claim 26. Accordingly, we do not sustain the rejection of (1) independent claim 26; (2) independent claims 33 and 40, which include substantially the same limitation as discussed supra and were rejected on substantially the same bases (see Final Act. 7); and (3) claims 27-32, 34--39, and 41--46, which depend, directly or indirectly, from claims 26, 33, and 40 respectively. DECISION The decision of the Examiner to reject claims 26--46 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation