Ex Parte Willey

Patent Trial and Appeal Board

Mar 15, 2016

12957634 (P.T.A.B. Mar. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/957,634 12/01/2010
90140 7590 03/17/2016
BlackBerry Limited (HFZ)
2200 University A venue East
Waterloo, ON N2K OA 7
CANADA
FIRST NAMED INVENTOR
William Daniel Willey
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.
1578.1256
(30799-US-CNT)
CONFIRMATION NO.
1479
EXAMINER
SHAW, PELING ANDREW
ART UNIT PAPER NUMBER
2444
NOTIFICATION DATE DELIVERY MODE
03/17/2016 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):
patdoctc@fr.com
portfolioprosecution@blackberry.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM DANIEL WILLEY
Appeal2014-000774
Application 12/957 ,634
Technology Center 2400
Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 21-30 and 41-60. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The invention relates to alerting a communication device user of
entries in a mail message distribution list that are addressed to non-secure
addresses (Spec. i-f 2). Claim 21, reproduced below, is illustrative of the
claimed subject matter:
Appeal2014-000774
Application 12/957,634
21. An apparatus comprising:
a display configured to display at least a portion of a mail
message;
a detector configured to detect a characteristic of a
distribution list entry of the mail message; and
an annunciator configured to generate a visual
annunciation when a distribution list entry has the characteristic
detected by the detector.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Seifert
Meister
Beninato
Willey
US 2004/0068543 Al
US 2004/0103162 Al
US 2006/0098650 Al
US 7 ,865,555 B2
REJECTIONS
The Examiner made the following rejections:
Apr. 8, 2004
May 27, 2004
May 11, 2006
Jan. 4, 2011
Claims 21, 24--28, 41--45, 48-53, and 56-60 stand rejected under the
non-statutory doctrine of obviousness-type double patenting over claims 1-
18 of U.S. Patent 7,865,555 B2 to Willey.
Claims 21, 24--26, 28-30, 41, 42, 48-51, and 59 stand rejected under
35 U.S.C § 102(b) as being anticipated by Meister.
Claims 22, 23, 46, and 47 stand rejected under 35 U.S.C § 103(a) as
being unpatentable over Meister and Beninato.
Claims 27, 43--45, 52-58, and 60 stand rejected under 35 U.S.C
§ 103(a) as being unpatentable over Meister and Seifert.
2
Appeal2014-000774
Application 12/957,634
ANALYSIS
The Double Patenting Rejection
Appellant does not present arguments traversing the double patenting
rejection. Therefore, we affirm, proforma, the double patenting rejection of
claims 21, 24-28, 41--45, 48-53, and 56-60.
The Anticipation Rejection
Claims 21, 24, 25, and 28-30
Appellant contends:
Meister does not, however, describe an annunciator configured
to generate a visual annunciation when a distribution list entry
has the characteristic detected by the detector. To the contrary,
Meister presents a confirmation box for every email address,
regardless of any characteristic of a distribution list entry, as set
forth in claim 21. Thus, the Examiner has erred.
(App. Br. 7). We disagree with Appellant.
In response to Appellant's arguments, the Examiner finds Meister's
claim 1 discloses the limitation "a detector configured to detect a
characteristic of a distribution list entry of the mail message," as recited in
Appellant's claim 21, as follows:
[A]n e-mail method, comprising: recogmzmg whether a
complete electronic mail message having a valid recipient
address is to be sent, after a send function has been initiated, from
a sending side to a receiving side; alerting a system user on the
sending side as to the message being sent; and allowing the user
to authorize sending of the message. Here Meister describes
detecting (recognizing) a characteristic of a distribution list entry
(incomplete or improper addresses) of the mail message (before
a message is sent).
(Ans. 4). Further, the Examiner finds Meister's dialog box 30 in Figure 2
discloses the claimed "annunciator configured to generate a visual
3
Appeal2014-000774
Application 12/957,634
annunciation when a distribution list entry has the characteristic detected by
the detector" (id.). In other words, Meister discloses detecting the
characteristic of whether a mail message has a valid recipient, and
generating a visual annunciation of this detected characteristic by providing
a user with a dialog box in order to confirm the sending of the mail message.
We agree with the Examiner's findings and are not persuaded the Examiner
erred, particularly in the absence of arguments in Appellant's Reply Brief
traversing the Examiner's finding that Meister's claim 1 discloses detecting
a characteristic of a distribution list entry.
We are, therefore, not persuaded the Examiner erred in rejecting claim
21, and claims 24, 25, and 28-30 not specifically argued separately.
Claim 26
Appellant contends "Meister does not describe or suggest that the
detector is configured to detect a domain of the mail message. In fact, the
word 'domain' is not found anywhere in the specification of ivieister. ''
(App. Br. 7). We disagree with Appellant.
Meister discloses the following examples of potential recipients of an
email: "smith.j im@companyx.com"; "ej ones@companyy.com";
"lisa@bbb.com" (Meister i-f 35). The Examiner finds, and we agree, that
sending an email in Meister requires detecting the domain in the email
address, for example, "companyx.com" in "smith.jim@companyx.com" (see
Ans. 5).
We are, therefore, not persuaded the Examiner erred in rejecting claim
26.
4
Appeal2014-000774
Application 12/957,634
Claims 41, 42, 48-51, and 59
The Examiner finds Meister discloses all the limitations of claims 41
and 59 for the same reasons as claims 21 and 25, and additionally because
Meister discloses "wherein the unauthorized agent comprises one of a virus,
a Trojan horse and an agent other than an owner of a mail client source of
the message" and "recognizing ... a send operation initiated by an
unauthorized agent" (Final Act. 6; Ans. 6-7; Meister, claims 3 and 5).
Appellant contends the Examiner failed to present a prima facie case for
claims 41 and 59 because the respective limitations "non-secure address"
and "non-secure electronic message address" are not found in claims 21 and
25, even though the Examiner rejected claims 41 and 59 "for the same
reasons as for claims 21 and 25." (App. Br. 8). Further, Appellant contends:
The Examiner's Answer confuses sending of an unauthorized
message (e.g., "a send operation initiated by an unauthorized
agent comprising one of a virus, a Trojan horse and an agent
other than an owner of a mail client source of the message") with
sending a message to a non-secure address. . . . Whether a
message is authorized is different than whether the addresses
of the message are non-secure.
(Reply Br. 2). We agree with Appellant.
The Examiner has not shown Meister discloses determining whether
an address is "non-secure" as recited in claims 41 and 59. Specifically, the
fact that Meister discloses recognizing that an unauthorized message is being
sent by a virus or other agent does not necessarily mean the message will be
sent to a non-secure address.
We are, therefore, constrained by the record to find the Examiner
erred in rejecting independent claims 41 and 59, and dependent claims 42
and 48-51 for similar reasons.
5
Appeal2014-000774
Application 12/957,634
The Obviousness Rejections
Claims 22, 23, and 27
Appellant does not present separate arguments for claims 22, 23, and
2 7, but rather relies on the same arguments presented for claim 21, from
which claims 22, 23, and 27 depend (see App. Br. 7). For the same reasons
discussed above regarding claim 21, we are not persuaded the Examiner
erred in rejecting claims 22, 23, and 27.
Claims 43-47 and 60
The Examiner has not shown the Beninato and Seifert references cure
the deficiency of Meister discussed above regarding claims 41 and 59, from
which claims 43--47 and 60 depend. We therefore must also reverse the
rejection of claims 43--47 and 60.
Claims 52-58
The Examiner finds the combination of ivieister and Seifert discloses
all the limitations of claim 52, including. Appellant contends:
Neither Meister nor Seifert provides a warning of an address
having a different domain name. As shown above, Meister
presents a confirmation box for every email address, regardless
of email address characteristics, and does not provide a warning
of an address having a different domain name. Seifert, likewise,
does not mention providing a warning. Thus, the Examiner has
erred because no combination of Meister and Seifert can result
in a system that provides a warning of an address having a
different domain name.
(App. Br. 9).
We are not persuaded by Appellant's argument that neither Meister
nor Seifert discloses "providing a warning of an address having a different
6
Appeal2014-000774
Application 12/957,634
domain name," as recited in claim 52. As the Examiner makes clear, the
rejection is based on the combination of the references. That is, the
Examiner finds Meister teaches "providing a warning of an address" and
Seifert teaches identifying "domain names from which e-mail is accepted ...
for the purpose of processing e-mail for acceptance and transmission" (see
Final Act. 9--10; Ans. 7). Appellant has failed to explain why one of
ordinary skill in the art would not have combined Meister's alert when a user
sends an email (see Meister i-f 28; Fig. 2) with Seifert's teaching of
identifying certain domain names with which email correspondence is
allowed (see Seifert i-f 11) to achieve the claimed "providing a warning of an
address having a different domain name," as proposed by the Examiner.
Rather, Appellant merely argues neither reference individually discloses the
disputed limitation (see App. Br. 9).
We are, therefore, not persuaded the Examiner erred in rejecting claim
52, and claims 53-58 not specifically argued separately.
CONCLUSIONS
Under the doctrine of non-statutory obviousness-type double
patenting, Appellant has not shown the Examiner erred in rejecting claims
21, 24--28, 41--45, 48-53, and 56-60.
Under 35 U.S.C. § 102(b), the Examiner did not err in rejecting claims
21, 24--26, and 28-30, but did err in rejecting claims 41, 42, 48-51, and 59.
Under 35 U.S.C. § 103(a), the Examiner did not err in rejecting claims
22, 23, 27, and 52-58, but did err in rejecting claims 43--47 and 60.
7
Appeal2014-000774
Application 12/957,634
DECISION
For the above reasons, the Examiner's rejections of claims 21-30, 41-
45, and 48---60 are affirmed, and the Examiner's rejection of claims 46 and
4 7 is reversed.
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 )(iv).
AFFIRMED-IN-PART
8