Ex Parte Jakobsson et al

Board of Patent Appeals and Interferences

Apr 30, 2009

09538663 (B.P.A.I. Apr. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte BJORN MARKUS JAKOBSSON 8
and 9
JOY COLETTE MUELLER 10
___________ 11
12
Appeal 2009-0395 13
Application 09/538,663 14
Technology Center 3600 15
___________ 16
17
Decided:1 April 30, 2009 18
___________ 19
20
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R. 21
MOHANTY, Administrative Patent Judges. 22
23
FETTING, Administrative Patent Judge. 24
25
26
DECISION ON APPEAL27

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

28
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STATEMENT OF THE CASE 1
Bjorn Markus Jakobsson and Joy Colette Mueller (Appellants) seek 2
review under 35 U.S.C. § 134 of a final rejection of claims 1-6, 8-13, and 3
15-20, the only claims pending in the application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
We REVERSE and ENTER A NEW GROUND OF REJECTION 7
PURSUANT TO 37 C.F.R § 41.50(b). 8
The Appellants invented a method for controlling incoming or 9
received email and protecting against spam email (Specification Page 2, 10
lines 3-5). 11
An understanding of the invention can be derived from a reading of 12
exemplary claims 1-4, which are reproduced below [bracketed matter and 13
some paragraphing added]. 14
1. A method for preventing receipt by receivers of 15
unwanted electronic mail messages (email) sent by 16
senders in a communication system, comprising 17
the steps of: 18
[1] determining whether email to a particular 19
receiver comprises valid message authentication 20
code (MAC) information; 21
[2] filtering out at a gateway of the 22
communication system email directed to the 23
particular receiver that does not comprise valid 24
MAC information; and 25
[3] providing the particular receiver with email 26
directed to the particular receiver that comprises 27
valid MAC information. 28
29
2. The method of claim 18, wherein the step of 30
registering the particular sender comprises the 31
steps of: 32
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[1] establishing by the particular sender a 1
cookie which indicates to the particular receiver 2
whether the particular sender has satisfied the 3
requirement to allow the particular sender to 4
become a registered sender to the particular 5
receiver; 6
[2] establishing an address related to an address 7
associated with the particular receiver which will 8
inform the particular sender that the particular 9
receiver desires that the particular sender be able to 10
send email to the particular receiver; and 11
[3] establishing by the particular receiver a key 12
which is forwarded to the particular sender by the 13
particular receiver to inform the particular sender 14
that the particular sender is authorized to send 15
email to the particular receiver and is now a 16
registered sender and for use by the particular 17
sender whenever the particular sender wishes to 18
send email to the particular receiver. 19
20
3. The method recited in claim 2, wherein said step 21
of establishing the address comprises generating a 22
pseudorandom function with a keyed hash function 23
using an input number comprising a unique serial 24
number for use in generating an identifier for email 25
between the particular sender to the particular 26
receiver. 27
28
4. The method recited in claim 2, wherein said step 29
of establishing an address comprises sending email 30
from the particular receiver to the particular sender 31
using public key encryption. 32
33
34
The Appellants filed an Appeal Brief in support of the appeal on 35
November 16, 2008. An Examiner’s Answer to the Appeal Brief was 36
mailed on February 21, 2008. A Reply Brief was filed on April 21, 2008. 37
38
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PRIOR ART 1
The Examiner relies upon the following prior art: 2
Greenstein US 6,266,692 B1 Jul. 24, 2001 3
Cockrill US 6,473,740 B2 Oct. 29, 2002 4
Kirsch US 6,546,416 B1 Apr. 8, 2003 5
6
REJECTIONS 7
Claims 1, 10, and 17-20 stand rejected under 35 U.S.C. § 102(e) as 8
anticipated by Greenstein. 9
Claims 2, 3, and 11 stand rejected under 35 U.S.C. § 103(a) as 10
unpatentable over Greenstein and Official Notice. 11
Claims 4-6, 8, 9, 12, 13, 15, and 16 stand rejected under 35 U.S.C. 12
§ 103(a) as unpatentable over Greenstein, Official Notice, and Kirsch. 13
14
ISSUES 15
The issues pertinent to this appeal are 16
• Whether the Appellants have sustained their burden of showing that 17
the Examiner erred in rejecting claims 1, 10, and 17-20 under 35 18
U.S.C. § 102(e) as anticipated by Greenstein. 19
o This issue turns on whether Greenstein describes a MAC that is 20
a keyed one-way function of an input as defined by the claimed 21
invention. 22
• Whether the Appellants have sustained their burden of showing that 23
the Examiner erred in rejecting claims 2, 3, and 11 under 35 U.S.C. § 24
103(a) as unpatentable over Greenstein and Official Notice. 25
o This issue turns on whether Greenstein describes generating a 26
pseudorandom function with a keyed hash function as required by 27
claims 3 and 11. 28
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• Whether the Appellants have sustained their burden of showing that 1
the Examiner erred in rejecting claims 4-6, 8, 9, 12, 13, 15, and 16 2
under 35 U.S.C. § 103(a) as unpatentable over Greenstein, Official 3
Notice, and Kirsch. 4
o This issue turns on whether Kirsch describes sending a user an 5
encrypted key that has been encrypted using public key 6
encryption as per claims 5, 12, and 13. 7
8
FACTS PERTINENT TO THE ISSUES 9
The following enumerated Findings of Fact (FF) are believed to be 10
supported by a preponderance of the evidence. 11
Facts Related to Claim Construction 12
01. The Specification contains a lexicographic definition of a 13
“message authentication code (MAC).” A MAC is defined as a 14
keyed one-way function of an input wherein a secret key is known 15
by both the generator and the verifier of the MAC (Specification 16
Page 9, lines 2-4). 17
Facts Related to Appellants’ Disclosure 18
02. The Specification admits that MACs are known to those skilled 19
in the art and have been used in the past to authenticate emails. 20
The Specification opines that they have not been used to avoid 21
spam or categorize incoming email, but provides no evidence to 22
support this (Specification Page 9, lines 5-7). 23
Greenstein 24
03. Greenstein is directed to a system and method for filtering 25
incoming emails (column 1, lines 6-8). Greenstein is concerned 26
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with the accurate filtering of unwanted emails without 1
compromising system resources (column 2, lines 9-12). 2
04. The system includes an email blocking process that requires all 3
senders to be pre-approved and in possession of a passcode in 4
order to send messages to users (column 2, lines 15-20). Senders 5
are enabled to request a valid passcode from a user prior to 6
sending a message to that user (column 2, lines 59-64). 7
05. The passcode maybe a phrase chosen by the user, an ASCII 8
character stream, or a randomly generated binary key (column 2, 9
lines 29-32). 10
06. A common passcode can be assigned to all senders. 11
Alternatively, individual passcodes may be given to each sender 12
and kept on a virtual key-ring. The passcodes can be changed at 13
anytime, thereby preventing receiving emails from any sender at 14
anytime (column 2, lines 43-46). 15
07. The passcode is inserted into a predefined field in the header of 16
an email message (column 2, lines 32-34). 17
08. The system includes an email server to manage all of the 18
incoming messages for a user. The email server checks the 19
passcode of each received message against the passcode of the 20
user. If the passcodes match, the email server approves the 21
message and sends the email to the user’s mail inbox (column 3, 22
lines 38-51). 23
09. If the sender provides an incorrect passcode, the email server 24
deletes the email (column 3, lines 61-63). 25
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Cockrill 1
10. Cockrill is directed to a method of facilitating transactions 2
between users and multiple merchants (column 1, lines 6-10). 3
11. The method includes reading a customer cookie, which is 4
stored on the customer’s computer (column 10, lines 66-67). 5
12. A cookie is defined as a unique identifier of the customer, such 6
as the customer’s email address (column 11, lines 1-5). This 7
identifier can be used to authenticate the user (column 11, lines 5-8
10). 9
Kirsch 10
13. Kirsch is directed to a system and method for detecting and 11
blocking unsolicited commercial email (column 1, lines 9-12). 12
Kirsch is concerned, with respect to detecting and blocking 13
unsolicited email, a balance between the speeds provided by 14
automation and the accuracy provided by manual inspection of 15
email addresses (column 3, lines 25-27). 16
14. Kirsch generates a challenge request that requires an unknown 17
sender to perform a task, such as entering a code or answering a 18
question, in order to validate the sender (column 6, lines 29-41). 19
The challenge request includes a text statement and a digital 20
signature (column 6, lines 23-25). 21
15. The digital signature is formed utilizing conventional encoding 22
and encryption techniques, including public key encryption 23
(column 6, lines 56-58). The signature value is generated based 24
on a check-sum generated utilizing the challenge request 25
statement as the source text (column 6, lines 59-61). 26
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16. The sender is required to respond to the challenge request. The 1
sender’s response is analyzed to determine whether the response is 2
valid. If the response is invalid, the message and the response are 3
discarded and the email address is added to a rejected email 4
addresses list. Conversely, if the response is valid, the user 5
receives the message and the previously unknown email address is 6
added to the accepted email addresses list (column 7, lines 21-35). 7
Facts Related To The Level Of Skill In The Art 8
17. Neither the Examiner nor the Appellants has addressed the level 9
of ordinary skill in the pertinent art of email management. We 10
will therefore consider the cited prior art as representative of the 11
level of ordinary skill in the art. See Okajima v. Bourdeau, 261 12
F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific 13
findings on the level of skill in the art does not give rise to 14
reversible error ‘where the prior art itself reflects an appropriate 15
level and a need for testimony is not shown’”) (quoting Litton 16
Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 17
(Fed. Cir. 1985)). 18
Facts Related To Secondary Considerations 19
18. There is no evidence on record of secondary considerations of 20
non-obviousness for our consideration. 21
22
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PRINCIPLES OF LAW 1
Claim Construction 2
During examination of a patent application, pending claims are 3
given their broadest reasonable construction consistent with the 4
specification. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In 5
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). 6
Limitations appearing in the specification but not recited in the claim 7
are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 8
1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the 9
specification” without importing limitations from the specification into the 10
claims unnecessarily). 11
Although a patent applicant is entitled to be his or her own 12
lexicographer of patent claim terms, in ex parte prosecution it must be 13
within limits. In re Corr, 347 F.2d 578, 580 (CCPA 1965). The applicant 14
must do so by placing such definitions in the specification with sufficient 15
clarity to provide a person of ordinary skill in the art with clear and precise 16
notice of the meaning that is to be construed. See also In re Paulsen, 30 17
F.3d 1475, 1480 (Fed. Cir. 1994) (although an inventor is free to define the 18
specific terms used to describe the invention, this must be done with 19
reasonable clarity, deliberateness, and precision; where an inventor chooses 20
to give terms uncommon meanings, the inventor must set out any 21
uncommon definition in some manner within the patent disclosure so as to 22
give one of ordinary skill in the art notice of the change). 23
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Anticipation 1
"A claim is anticipated only if each and every element as set forth in 2
the claim is found, either expressly or inherently described, in a single prior 3
art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 4
628, 631 (Fed. Cir. 1987). "When a claim covers several structures or 5
compositions, either generically or as alternatives, the claim is deemed 6
anticipated if any of the structures or compositions within the scope of the 7
claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351 (Fed. 8
Cir. 2001). "The identical invention must be shown in as complete detail as 9
is contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 10
1226, 1236 (Fed. Cir. 1989). The elements must be arranged as required by 11
the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology 12
is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). 13
Obviousness 14
A claimed invention is unpatentable if the differences between it and 15
the prior art are “such that the subject matter as a whole would have been 16
obvious at the time the invention was made to a person having ordinary skill 17
in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 550 18
U.S. 398, 399 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). 19
In Graham, the Court held that that the obviousness analysis is 20
bottomed on several basic factual inquiries: “[(1)] the scope and content of 21
the prior art are to be determined; [(2)] differences between the prior art and 22
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 23
in the pertinent art resolved.” 383 U.S. at 17-18. See also KSR, 550 U.S. at 24
406-07. “The combination of familiar elements according to known 25
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methods is likely to be obvious when it does no more than yield predictable 1
results.” Id. at 416. 2
“When a work is available in one field of endeavor, design incentives 3
and other market forces can prompt variations of it, either in the same field 4
or a different one. If a person of ordinary skill can implement a predictable 5
variation, § 103 likely bars its patentability.” Id. at 417. 6
“For the same reason, if a technique has been used to improve one 7
device, and a person of ordinary skill in the art would recognize that it would 8
improve similar devices in the same way, using the technique is obvious 9
unless its actual application is beyond his or her skill.” Id. 10
“Under the correct analysis, any need or problem known in the field 11
of endeavor at the time of invention and addressed by the patent can provide 12
a reason for combining the elements in the manner claimed.” Id. at 420. 13
ANALYSIS 14
Claims 1, 10, and 17-20 rejected under 35 U.S.C. § 102(e) as 15
anticipated by Greenstein 16
The Examiner found that Greenstein anticipates claims 1, 10, and 17 17
(Answer Pages 4-5). 18
The Appellants contend that (1) Greenstein describes a single 19
passcode that is used by all senders, which is different from the claimed 20
message authentication code (MAC) feature (Br. Page 5, second paragraph 21
and Reply Brief Page 2, third paragraph), (2) Greenstein fails to describe the 22
feature where a sender becomes a registered sender by satisfying a 23
requirement as per claims 17 and 19 (Br. Page 7, first paragraph and Reply 24
Br. Page 4, first paragraph), and (3) Greenstein fails to describe and teaches 25
away from the feature of registering the particular sender when the particular 26
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sender is determined not to be a registered sender of email to the particular 1
receiver as per claims 18 and 20 (Br. Page 7, fourth paragraph and Reply Br. 2
Page 5, fourth paragraph). 3
The Appellants first contend that (1) Greenstein describes a single 4
passcode that is used by all senders, which is different from the claimed 5
MAC feature (Br. Page 5, second paragraph and Reply Brief Page 2, third 6
paragraph). The Appellants specifically argue that the claimed invention has 7
disclosed a special definition for a MAC and Greenstein’s description of a 8
passcode is not the same as a MAC as per this special definition (Br. Page 5, 9
first paragraph). 10
We agree with the Appellants. The claimed invention defines a MAC 11
as a keyed one-way function of an input wherein a secret key is known by 12
both the generator and the verifier of the MAC (FF 01). Greenstein 13
describes the use of a passcode, which is a secret phrase or message in the 14
header of an email message that is only known to the sender and verified by 15
the receiver of the message (FF 05 – FF 07). The passcode can be 16
individualized for each sender and can be changed at anytime (FF 06). As 17
such, the passcode is specific to each message since it can be changed at 18
anytime. However, Greenstein fails to describe the use of a keyed one-way 19
function to generate the passcode. Since there is no evidence that Greenstein 20
generates the passcode using a one-way function, Greenstein does not 21
anticipate independent claims 1 and 10. 22
The Appellants further contend (2) Greenstein fails to describe the 23
feature where a sender becomes a registered sender by satisfying a 24
requirement of claims 17 and 19 (Br. Page 7, first paragraph and Reply Br. 25
Page 4, first paragraph). We disagree with the Appellants. Greenstein 26
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requires senders to be pre-approved or request a passcode from a user (FF 1
04). Satisfying a condition in order to become pre-approved is functionally 2
the same as satisfying a requirement to become a registered sender. 3
Requesting a passcode from a user is also satisfying a requirement to 4
become a registered sender since the requesting of a passcode is an act that 5
must be completed before being enabled to send a message to the user. As 6
such, Greenstein does describe this feature. 7
The Appellants additionally contend (3) Greenstein fails to describe 8
and teaches away from the feature of registering the particular sender when 9
the particular sender is determined not to be a registered sender of email to 10
the particular receiver of claims 18 and 20 (Br. Page 7, fourth paragraph and 11
Reply Br. Page 5, fourth paragraph). 12
We agree with the Appellants. The Examiner found that column 3, 13
lines 52-67 describes this feature (Answer Page 10). This passage merely 14
describes holding a single email until a user accepts or rejects that single 15
email. This does not describe registering an unregistered user. As such, 16
Greenstein does not anticipate claims 18 and 20. 17
The Appellants have sustained their burden of showing that the 18
Examiner erred in rejecting claims 1, 10, and 17-20 under 35 U.S.C. § 19
102(e) as anticipated by Greenstein for the above reasons. 20
21
NEW GROUND OF REJECTION 22
The following new grounds of rejection are entered pursuant to 23
37 C.F.R. § 41.50(b). Claims 1, 10, 17, and 19 are rejected under 35 U.S.C. 24
§ 103(a) as unpatentable over Greenstein and Admitted Prior Art. Claims 18 25
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and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over 1
Greenstein, Admitted Prior Art, and Kirsch. 2
As discussed above, Greenstein fails to describe the features of a 3
MAC, where a MAC is a keyed one way function of an input. The 4
Specification admits that the use of a MAC, as defined by the claimed 5
invention, was known in the art for authenticating email messages (FF 01 6
and FF 02). The Specification further opines that MACs have not been used 7
to avoid SPAM or categorize emails, but provides no evidence of this (FF 8
02). Thus we consider, but accord this opinion no weight in assessing the 9
patentability of claim 1. 10
Greenstein is concerned with accurate filtering of unwanted emails 11
(FF 03). Greenstein accomplishes this by authenticating email messages by 12
performing the verification of a phrase or text, such as a passcode, which in 13
turn increases the ability to block SPAM (FF 04). A person of ordinary skill 14
in the art would have recognized that the use of a MAC, already known for 15
use in authenticating email messages, would have been simply a more secure 16
implementation of Greenstein in validating incoming emails in order to 17
avoid the receipt of SPAM and would increase the accuracy of the filtering 18
of emails. It would have been obvious, at the time of the invention, to 19
combine Greenstein and the Admitted Prior Art in order to increase the 20
accuracy of the blocking of emails and avoiding receipt of SPAM. 21
Additionally, although Greenstein and the Admitted Prior Art fail to 22
describe the feature of registering the particular sender when the particular 23
sender is determined not to be a registered sender of email to the particular 24
receiver as per claims 18 and 20, Kirsch describes this feature. 25
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Kirsch describes a SPAM control system (FF 13). This system holds 1
emails from unknown email addresses and submits a challenge request to the 2
senders of these emails (FF 14). The challenge request requires a response 3
from the senders and the response from the senders is validated (FF 16). 4
When an invalid response is received, the system discards the email and 5
adds the email address to the rejected email addresses list (FF 16). When a 6
valid response is received, the user receives the message and the previously 7
unknown email address is added to the accepted email addresses list (FF 16). 8
This describes the claim limitation at issue because the act of moving 9
an email address to the accepted email addresses list is an act of registering 10
the sender of that email with the email controlling system. 11
Furthermore, the moving of the email address to the accepted list is 12
done in response to the sender satisfying a requirement; the requirement 13
being to submit a valid response to the challenge request. A person of 14
ordinary skill in the art would have recognized that this feature would reduce 15
the amount of processing time and storage space used in Greenstein, since 16
Greenstein is also holding on to unknown emails until a user accepts or 17
rejects the emails. It would have been obvious to combine Greenstein and 18
Kirsch in order to minimize the amount of unwanted or unsolicited email 19
received by a user. 20
None of the remaining limitations are under contention and we 21
accordingly adopt the Examiner’s findings as to how the prior art describes 22
those limitations. 23
24
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FURTHER ANALYSIS OF EXAMINER’S REJECTIONS AND NEW 1
GROUNDS OF REJECTION 2
Claims 2, 3, and 11 rejected under 35 U.S.C. § 103(a) as unpatentable 3
over Greenstein and Official Notice 4
Claims 2, 3, and 11 stand rejected under 35 U.S.C. § 103(a) as 5
unpatentable over Greenstein and Official Notice. The Examiner’s official 6
notice does not overcome the deficiencies in the rejection of the parent 7
claims 1 and 10. Thus, we will not sustain the Examiner’s rejection. 8
We enter a new ground of rejection of claim 2 under 35 U.S.C. § 9
103(a) as unpatentable over Greenstein, Admitted Prior Art, Kirsch, and 10
Official Notice. 11
We first analyze the Examiner’s findings under contention as to 12
claims 2, 3, and 11. The Examiner found that Greenstein describes all of the 13
limitations of claims 2, 3, and 11 except limitation [1] of claim 2 (Answer 14
Page 6). The Examiner found that this feature is old and well-known in the 15
art at the time of the invention by taking Official Notice of this feature and 16
found that one of ordinary skill in the art would have been known to modify 17
Greenstein to include this feature in order to increase the speed because 18
cookies enable faster authentication (Answer Page 6). 19
The Appellants contend: 20
(1) The Examiner has improperly taken Official Notice of the 21
fact that cookies were old and well-known at the time of invention as 22
per claim 2 (Br. Page 8, fourth paragraph). 23
(2) The Examiner’s taking of Official Notice of the use of 24
cookies in combination with Greenstein fails to describe a cookie that 25
indicates to the particular receiver whether the particular sender has 26
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satisfied the requirement to allow the particular sender to become a 1
registered sender to the particular receiver as per limitation [1] of 2
claim 2 (Br. Page 9, first paragraph). Specifically, the Examiner’s 3
characterization of Greenstein’s establishing of addresses is argued as 4
incorrect because Greenstein separates the address fields from the 5
passcodes field in messages (Br. Page 9, third paragraph). 6
(3) There is no motivation to modify Greenstein to include the 7
use cookies and the Examiner used impermissible hindsight (Br. Page 8
10, second and third paragraphs). 9
(4) Greenstein fails to describe establishing an address by 10
generating a pseudorandom function of claims 3 and 11 (Br. Page 11, 11
third paragraph and Reply Br. Page 7, first paragraph). 12
The Appellants first contend (1) the Examiner has improperly taken 13
Official Notice of the facts that cookies were old and well-known at the time 14
of invention as per claim 2 (Br. Page 8, fourth paragraph). The Appellants 15
contend that the Examiner has failed to provide documentary evidence in 16
support of the Official Notice. 17
We disagree with the Appellants. The Examiner provided Cockrill in 18
support of taking Official Notice. Cockrill describes storing unique 19
identification information of a user in a cookie (FF 12). The Appellants fail 20
to respond to the Examiner finding that Cockrill supports the previously 21
asserted Official Notice. As such, the Appellants’ argument is not found to 22
be persuasive. 23
The Appellants further contend (2) the Examiner’s taking of Official 24
Notice of the use of cookies in combination with Greenstein fails to describe 25
a cookie that indicates to the particular receiver whether the particular sender 26
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has satisfied the requirement to allow the particular sender to become a 1
registered sender to the particular receiver as per limitation [1] of claim 2 2
(Br. Page 9, first paragraph). 3
We disagree with the Appellants. As discussed above, Cockrill was 4
submitted in support of the Official Notice. Cockrill describes the use of 5
cookies to store unique identification information of a user, such as an email 6
address (FF 12). Kirsch specifically identifies a valid or invalid sender 7
based on the sender’s email address (FF 16). A sender is either on an 8
accepted list or rejected list (FF 16). If the sender is on the accepted list, the 9
sender has also satisfied a requirement by validly responding to a challenge 10
request (FF 14). As such, the combination of the cookie, the email address 11
made available by the cookie, and the determination of whether a sender is 12
registered by satisfying a requirement, as described by Kirsch, describes 13
limitation [1] of claim 2 as a whole. As such, the Examiner’s taking of 14
Official Notice of the use of cookies in combination with the remaining art is 15
sufficient to describe limitation [1] in combination with the cited prior art. 16
The Appellants further contend (3) there is no motivation to modify 17
Greenstein to include a feature to use cookies and the Examiner used 18
impermissible hindsight (Br. Page 10, second and third paragraphs). We 19
disagree with the Appellants. The Examiner found that one of ordinary skill 20
in the art would have been motivated to modify Greenstein to include the use 21
of cookies in order to lead to the faster authentication of emails (Answer 22
Page 6). 23
We agree with the Examiner. Greenstein and Kirsch are both 24
concerned with reducing system resources and expediting the processing of 25
information (FF 03 and FF 13). The use of cookies accomplishes this task 26
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by providing needed information quickly. A person of ordinary skill in the 1
art, at the time of the invention, would have recognized this advantage 2
provided by cookies and would have found it predictable to modify 3
Greenstein and Kirsch to include this advantage. As such, Greenstein and 4
Kirsch are concerned with the same problem and one of ordinary skill in the 5
art would have been led to combine their teachings with the use of cookies. 6
The Appellants also contend (4) Greenstein fails to describe the 7
establishing of an address by generating a pseudorandom function with a 8
keyed hash function of claims 3 and 11 (Br. Page 11, third paragraph and 9
Reply Br. Page 7, first paragraph). 10
We agree with the Appellants. The Examiner found that Greenstein 11
describes a randomly generated binary key and a randomly generated binary 12
key describes the feature of claims 3 and 11 (Answer Pages 6 and 12). A 13
randomly generated binary key is merely a text and is not the same as 14
establishing of an address by generating a pseudorandom function with a 15
keyed hash function. As such, we find no evidence that any of the cited 16
references describe claims 3 and 11. 17
We adopt the Examiner’s uncontested findings in our rejection. 18
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Claims 4-6, 8, 9, 12, 13, 15, and 16 rejected under 35 U.S.C. § 103(a) as 1
unpatentable over Greenstein, Official Notice, and Kirsch 2
Claims 4-6, 8, 9, 12, 13, 15, and 16 stand rejected under 35 U.S.C. § 3
103(a) as unpatentable over Greenstein and Official Notice, and Kirsch. The 4
Examiner’s official notice does not overcome the deficiencies in the 5
rejection of the parent claims 1 and 10. Thus, we will not sustain the 6
Examiner’s rejection. 7
We enter a new ground of rejection of claims 4-6, 8, 9, 12, 13, 15, and 8
16 under 35 U.S.C. § 103(a) as unpatentable over Greenstein, Admitted 9
Prior Art, Kirsch, and Official Notice. 10
We first analyze the Examiner’s findings under contention as to 11
claims 4-6, 8, 9, 12, 13, 15, and 16. The Examiner found that Greenstein 12
and the Official Notice taken describe all of the limitations of these claims 13
except for the limitations of “establishing an address comprises sending 14
email from the particular receiver to the particular sender using public key 15
encryption” of claims 4 and 12 and determining whether the message has 16
valid MAC information of claims 8-9 and 15-16 (Answer Page 7). The 17
Examiner found that Kirsch describes these limitations and one of ordinary 18
skill in the art would have been motivated to combine Kirsch to Greenstein 19
and the Official Notice in order to authenticate emails effectively while 20
filtering emails (Answer Page 7). 21
The Appellants contend that (1) there is no motivation to combine 22
Greenstein, the Official Notice, and Kirsch and the Examiner used 23
impermissible hindsight (Br. Page 12, third and fifth paragraphs and Br. 24
Page 15, last paragraph), (2) Greenstein, Kirsch, and the Official Notice fail 25
to describe the registration of a sender comprises sending to a particular user 26
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21
by a particular receiver an encrypted key, wherein the encrypted key is a 1
member of a set of encrypted keys as per claims 5 and 13 (Br. Page 14, first 2
paragraph), and (3) Greenstein, Kirsch, and the Official Notice fail to 3
describe a registering module sets up an encrypted address for sending email 4
from the particular receiver to the particular sender using public key 5
encryption of claim 12 (Br. Page 15, second paragraph and Reply Br. Page 6
7, last paragraph). 7
The Appellants first contend (1) there is no motivation to combine 8
Greenstein, the Official Notice, and Kirsch and the Examiner used 9
impermissible hindsight (Br. Page 12, third and fifth paragraphs and Br. 10
Page 15, last paragraph). We disagree with the Appellants. The Appellants 11
asserted this same argument above in support of claims 2, 3, and 11. We 12
found this argument to be unpersuasive supra and so find this argument to 13
be unpersuasive here as well. 14
The Appellants further contend (2) Greenstein, Kirsch, and the 15
Official Notice fail to describe the registration of a sender comprising 16
sending to a particular user by a particular receiver an encrypted key, 17
wherein the encrypted key is a member of a set of encrypted keys as per 18
claims 5 and 13 (Br. Page 14, first paragraph). 19
We disagree with the Appellants. Kirsch describes sending a 20
challenge request to a sender that includes a digital signature (FF 14). The 21
digital signature is generated using conventional encoding and encryption 22
techniques, including public key encryption (FF 15). The digital signature is 23
based on a check-sum generated using the challenge request as the source 24
text (FF 15). That is, each digital signature is unique since it is based on the 25
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22
text of the challenge request and as such is one of many possible digital 1
signatures. As such, Kirsch describes this feature of claims 5 and 13. 2
The Appellants additionally contend (3) Greenstein, Kirsch, and the 3
Official Notice fail to describe a registering module that sets up an encrypted 4
address for sending email from the particular receiver to the particular 5
sender using public key encryption of claim 12 (Br. Page 15, second 6
paragraph and Reply Br. Page 7, last paragraph). We disagree with the 7
Appellants. 8
As discussed above, Kirsch describes sending a challenge request to a 9
sender and the challenge request includes a task to be performed and a 10
digital signature (FF 14). The digital signature is generated using 11
conventional encoding and encryption techniques, including public key 12
encryption (FF 15). The sender’s response to the challenge request must 13
include the digital signature (FF 16). That is, the sender registration process 14
includes sending the sender a key that is encrypted using public key 15
encryption. As such, Kirsch does describe the additional feature recited in 16
claim 12. 17
We adopt the Examiner’s uncontested findings in our rejection. 18
19
CONCLUSIONS OF LAW 20
The Appellants have sustained their burden of showing that the 21
Examiner erred in rejecting claims 1, 10, and 17-20 under 35 U.S.C. § 22
102(e) as anticipated by Greenstein. 23
The Appellants have sustained their burden of showing that the 24
Examiner erred in rejecting claims 2, 3, and 11 under 35 U.S.C. § 103(a) as 25
unpatentable over Greenstein and Official Notice. 26
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23
The Appellants have sustained their burden of showing that the 1
Examiner erred in rejecting claims 4-6, 8, 9, 12, 13, 15, and 16 under 35 2
U.S.C. § 103(a) as unpatentable over Greenstein, Official Notice, and 3
Kirsch. 4
A new ground of rejection is entered 37 C.F.R. § 41.50(b). Claims 1, 5
10, 17, and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable over 6
Greenstein and Admitted Prior Art. Claims 18 and 20 are rejected under 35 7
U.S.C. § 103(a) as unpatentable over Greenstein, Admitted Prior Art, and 8
Kirsch. Claims 2, 4-6, 8, 9, 12, 13, 15, and 16 are rejected under 35 U.S.C. 9
§ 103(a) as unpatentable over Greenstein, Admitted Prior Art, Kirsch, and 10
Official Notice. 11
12
DECISION 13
To summarize, our decision is as follows: 14
• The rejection of claims 1, 10, and 17-20 under 35 U.S.C. § 102(e) as 15
anticipated by Greenstein is not sustained. 16
• The rejection of claims 2, 3, and 11 under 35 U.S.C. § 103(a) as 17
unpatentable over Greenstein and Official Notice is not sustained. 18
• The rejection of claims 4-6, 8, 9, 12, 13, 15, and 16 under 35 U.S.C. § 19
103(a) as unpatentable over Greenstein, Official Notice, and Kirsch is 20
not sustained. 21
• New grounds of rejection are entered pursuant to 22
37 C.F.R. § 41.50(b). 23
o Claims 1, 10, 17, and 19 are rejected under 35 U.S.C. § 103(a) 24
as unpatentable over Greenstein and Admitted Prior Art. 25
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24
o Claims 18 and 20 are rejected under 35 U.S.C. § 103(a) as 1
unpatentable over Greenstein, Admitted Prior Art, and Kirsch. 2
o Claims 2, 4-6, 8, 9, 12, 13, 15, and 16 are rejected under 35 3
U.S.C. § 103(a) as unpatentable over Greenstein, Admitted 4
Prior Art, Kirsch, and Official Notice. 5
• No new ground of rejection has been entered for claims 3 and 11. The 6
rejection of claims 3 and 11 is not sustained. 7
Our decision is not a final agency action. 8
In addition to affirming the Examiner's rejection(s) of one or more 9
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R. 10
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection 11
pursuant to this paragraph shall not be considered final for judicial review.”12
This Decision contains a new rejection within the meaning of 37 13
C.F.R. § 41.50(b) (2007). 14
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO 15
MONTHS FROM THE DATE OF THE DECISION, must exercise one of 16
the following two options with respect to the new rejection: 17
(1) Reopen prosecution. Submit an appropriate amendment of 18
the claims so rejected or new evidence relating to the claims 19
so rejected, or both, and have the matter reconsidered by the 20
Examiner, in which event the proceeding will be remanded 21
to the Examiner. . . . 22
(2) Request rehearing. Request that the proceeding be reheard 23
under § 41.52 by the Board upon the same record. . . . 24
Should the Appellants elect to prosecute further before the examiner 25
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek 26
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, 27
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25
the effective date of the affirmance is deferred until conclusion of the 1
prosecution before the Examiner unless, as a mere incident to the limited 2
prosecution, the affirmed rejection is overcome. 3
If the Appellants elect prosecution before the Examiner and this does 4
not result in allowance of the application, abandonment or a second appeal, 5
this case should be returned to the Board of Patent Appeals and Interferences 6
for final action on the affirmed rejection, including any timely request for 7
rehearing thereof. 8
No time period for taking any subsequent action in connection with 9
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 10
11
AFFIRMED-IN-PART; 37 C.F.R. 41.50(b) 12
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hh 20
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