Jeffrey MURPHY

Patent Trials and Appeals Board

Mar 17, 2022

2021000620 (P.T.A.B. Mar. 17, 2022)

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. 15/441,908 02/24/2017 Jeffrey N. MURPHY SW-16-1 8481 40256 7590 03/17/2022 FERRELLS, PLLC P. O. BOX 312 CLIFTON, VA 20124-1706 EXAMINER NGUYEN, ANH ART UNIT PAPER NUMBER 2454 NOTIFICATION DATE DELIVERY MODE 03/17/2022 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): c.maddaloni@prodigy.net mike@ferrellaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ Ex parte JEFFREY N. MURPHY _______________ Appeal 2021-000620 Application 15/441,908 Technology Center 2400 _______________ Before ELENI MANTIS MERCADER, ERIC S. FRAHM, and JAMES W. DEJMEK, Administrative Patent Judges. DEJMEK, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-20. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm in part and enter a New Ground of Rejection. 1 Throughout this Decision, we use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2019). Appellant identifies the inventor, Jeffrey N. Murphy, as the real party in interest. Appeal Br. 2. Appeal 2021-000620 Application 15/441,908 2 STATEMENT OF THE CASE Introduction Appellant’s disclosed and claimed invention generally relates to person-to-person electronic communications. Spec. 2:6-9. More particularly, Appellant describes “a messaging and communications system designed to generate and deliver person-to-person messages comprised of content and feature-rich hypermedia, linked to by shortened, branded URL’s [sic] that are easily distributed by means of direct messaging and social media, or to a lesser extent by email, and provide verification when messages have, or have not, been delivered.” Spec. 8:14-18. Claim 1 is exemplary of the subject matter on appeal and is reproduced below with the disputed limitations emphasized in italics: 1. A verified method of high-value, person-to-person communication, comprising the steps of: a. selecting as an intended recipient an individual with whom at least implicit permission for person-to-person communication exists; b. creating a unique dynamic messaging link recognizable to the intended recipient of said person-to-person communication comprising a recognizable proprietary domain name associated with a person known to said intended recipient and a random hash code appended thereto; c. creating a transmissible personal hypermedia message and assigning said unique dynamic messaging link leading directly thereto and storing said transmissible personal hypermedia message on a device accessible to a network upon actuation of said unique dynamic messaging link without redirection; d. sending said individual a direct message containing said dynamic link over the imprimatur of the person known to said intended recipient and an invitation to click on said dynamic link, Appeal 2021-000620 Application 15/441,908 3 said invitation containing descriptive material relating to said transmissible personal hypermedia message; e. monitoring said device accessible to said network for transmission thereto of said dynamic link, analyzing and storing metadata accompanying transmission of said dynamic link; f. transmitting said transmissible personal hypermedia message to said recipient upon activation of said dynamic link; g. notifying the sender of said direct message of activation of said dynamic link upon receipt thereof; h. alerting the sender of said direct message if said link has not been activated within a predetermined period. The Examiner’s Rejections 1. Claims 1-4, 11-15, and 19 stand rejected under Moscaritolo et al. (US 8,560,843 B1; Oct. 15, 2013) (“Moscaritolo”); Davis et al. (US 2008/0134052 A1; June 5, 2008) (“Davis”); and King et al. (US 8,615,554 B1; Dec. 24, 2013) (“King”). Final Act. 8-16. 2. Claims 5-8, 10, 16-18, and 20 stand rejected under Moscaritolo and Davis. Final Act. 17-27. 3. Claim 9 stands rejected under Moscaritolo and King. Final Act. 27-29. ANALYSIS2 Appellant presents a set of arguments that presumably apply to all the claims followed by separate arguments organized by specified claim 2 Throughout this Decision, we have considered the Appeal Brief, filed May 27, 2020 (“Appeal Br.”); the Reply Brief, filed November 2, 2020 (“Reply Br.”); the Examiner’s Answer, mailed September 3, 2020 (“Ans.”); and the Final Office Action, mailed September 27, 2019 (“Final Act.”), from which this Appeal is taken. Appeal 2021-000620 Application 15/441,908 4 groupings. See Appeal Br. 13-22. We address Appellant’s arguments seriatim. Appellant argues that both Moscaritolo and Davis teach away from the claimed invention. Appeal Br. 13-14. In particular, Appellant asserts Moscaritolo teaches the use of redirecting links, which is “contrary to all of the present claims.” Appeal Br. 13. Appellant asserts Moscaritolo’s use of redirecting links “contradicts the entire purpose of the present invention.” Appeal Br. 13. Additionally, Appellant argues that Davis, contrary to the purpose of Appellant’s invention, intends to deceive the recipient of a message as to the sender of the message. Appeal Br. 13-14, 17. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). But “the mere disclosure of alternative designs does not teach away . . . . just because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012 (quotation marks and citations omitted). As explained in the Manual of Patent Examining Procedure, “[d]isclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.” MPEP § 2123 (II) (citing In re Susi, 440 F.2d 442 (CCPA 1971)). We disagree with Appellant that either Moscaritolo or Davis teaches away from the present invention. As an initial matter, we disagree with Appellant that all of the claims require the use of a non-redirecting link. Appeal 2021-000620 Application 15/441,908 5 Rather, only claim 1 recites “without redirection.” More specifically, claim 1 recites, in relevant part: c. creating a transmissible personal hypermedia message and assigning said unique dynamic messaging link leading directly thereto and storing said transmissible personal hypermedia message on a device accessible to a network upon actuation of said unique dynamic messaging link without redirection. Additionally, step d of claim 1 sends a direct message containing the unique dynamic messaging link3 and step f transmits the message to the recipient “upon activation of said dynamic link.” Claim 1 (emphasis added). Thus, we understand the various sub-steps of element c (i.e., creating a message, assigning a link to the message, and storing the message on a networked device) to occur upon actuation (not activation) of the link without redirection. As set forth in Moscaritolo, the creation of the message, storage of the message on a networked server, and assignment of link for the message are performed without redirection. See Moscaritolo, Fig. 3 (steps 322-326). Further, Moscaritolo describes that after the recipient client requests the shortened URL by activating (i.e., clicking) a link, which causes a web browser on the recipient client device to access the message server to retrieve the message content. Moscaritolo, col. 8, ll. 48-57, Fig. 3 (steps 332-336). Moscaritolo describes the message server may encode the message as a URI, that is, the message server replies to the client request with an http redirection using the encryption type URI. Moscaritolo, col. 8, 3 We note that claim 1 identifies the link as either a “unique dynamic messaging link” or simply a “dynamic link.” In the event of further prosecution, the claim language should be amended for consistency. Appeal 2021-000620 Application 15/441,908 6 ll. 54-67. As Moscaritolo explains, “the recipient client’s operating system invokes the URL handler for the specified encryption type URI.” Moscaritolo, col. 8, l. 67-col. 9, l. 4. After the recipient client decrypts the message, the content of the decrypted message is presented via the appropriate messaging application. See Moscaritolo, col. 9, ll. 4-7. Based on our review of Moscaritolo, we agree with the Examiner’s explanation that the “redirection” in Moscaritolo does not redirect the recipient to another third party site (see, e.g., Spec. 2:24-27), but is part of the encryption/decryption information, which is performed locally by the recipient client device. See Ans. 4. Accordingly, we do not find that Moscaritolo “contradicts the entire purpose of the present invention.” Moreover, we do not find Moscaritolo to “criticize, discredit, or otherwise discourage the solution claimed.” See SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1320 (Fed. Cir. 2015) (internal quotation omitted). Thus, we find Moscaritolo does not teach away from the claimed invention. Additionally, contrary to Appellant’s assertions, Davis does not teach away from the claimed invention either. Rather, Davis teaches a technique “towards minimizing a likelihood that the invite is interpreted as SPAM, or other undesirable message.” Davis ¶ 22. Moreover, Davis teaches that by augmenting an invitation (i.e., message) to include information that suggests the recipient recognizes the sender, the recipient is more likely to open the message. See Davis ¶ 69. Because we determine that Davis is consistent with Appellant’s claimed invention, we do not find that Davis criticizes, discredits, or discourages an ordinarily skilled artisan from the claimed solution. See SightSound, 809F.3d at 1320; see also Spec. 4:13-17 Appeal 2021-000620 Application 15/441,908 7 (explaining that the key question being addressed is “how to get the recipient to click on the link” and noting a first factor of having the link sent by one known to the recipient). Appellant also argues that Moscaritolo’s use of encryption hinders the sender from revising the message prior to transmission to the recipient. Appeal Br. 14. Moreover, Appellant asserts that Moscaritolo’s encryption may “make the message too long to be accepted by many instant messaging apps” and requires the recipient to perform some level of decryption. Appeal Br. 14-16. As an initial matter, it is well settled that mere attorney arguments and conclusory statements, which are unsupported by factual evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not evidence). Appellant relies on mere attorney argument that Moscaritolo’s encrypted messages may be too long to work with instant messaging applications. Such unsupported arguments are entitled to little probative weight and are not persuasive of error. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Further, Appellant’s arguments are not persuasive of error at least because they are not commensurate in scope to the claims. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be relied upon for patentability). The claims do not recite additional capabilities of revising a message after it had been stored, but prior to transmission to the recipient. See Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347 (Fed. Cir. 1998) (“[I]t is the claims, not the written description, which define the scope of the patent right.”). Additionally, the Appeal 2021-000620 Application 15/441,908 8 claims also do not preclude encrypted messages from being transmitted or the recipient performing a decryption step. In addition, Appellant argues there is no suggestion that the domain name of the link has been chosen to indicate the sender of the message is recognizable or is someone with whom the recipient is interested in communicating. Appeal Br. 14-15. More particularly, Appellant asserts that Moscaritolo is silent as to whether the domain name is known to the sender and that Moscaritolo “fails to suggest the use of the imprimatur of a person known to the recipient.” Appeal Br. 16. Appellant’s arguments are unavailing. As described above, Moscaritolo teaches a message server assigns a link to the message, accessible via a shortened URL. See Moscaritolo, col. 8, ll. 34-39, Fig. 3 (steps 322-326). Moscaritolo teaches the sender communicates (e.g., transmits or posts) the shortened URL to an intended recipient via a public medium. Moscaritolo, col. 8, ll. 40-44, Fig. 3 (step 328). As the Examiner explains, Davis teaches transmitting a message that suggests the sender is known to the recipient. Ans. 4-5 (citing Davis ¶¶ 66, 70-71, 78, 80). Davis generally relates to augmenting a message invitation to include information that would be known to a recipient. See Davis, Abstract. That is, Davis teaches augmenting the invite, including the message, to include information to suggest the source of the invite is someone known to the recipient (i.e., under the imprimatur of known sender). Davis ¶¶ 69-76, claims 1, 6. Davis further teaches modifying link information (which may include a URL, URL, or the like) or a source IP address to “provid[e] the invitee with recognizable message source information such that the invitee is less likely to interpret the invite message as SPAM or the like.” Davis ¶¶ 77-78. Thus, Appeal 2021-000620 Application 15/441,908 9 one of ordinary skill in the art would have been motivated to modify the shortened URL of Moscaritolo with the augmented information taught by Davis to minimize the likelihood that the recipient interprets the message (i.e., shortened URL) as SPAM or other undesirable message. See Davis ¶ 22; see also Ans. 3-8. Appellant also argues that King is limited to “send[ing] a hard copy to a recipient of an electronic message who has ignored the electronic message.” Appeal Br. 16. Further, Appellant argues that King does “nothing to help the poor recipient recognize whether the message is really of interest or to obtain the message without having to fight with the protective filters that have become so necessary in today’s electronic devices.” Appeal Br. 17. Appellant’s arguments are unpersuasive of error because they are not responsive to the rejection as articulated by the Examiner. More particularly, King is only relied on to teach notifying the sender of a message when the link has been activated and alerting the sending if the link has not been activated within a predetermined period of time. See Final Act. 12-13 (citing King, col. 6, ll. 41-44, 47-51). The Examiner’s findings are supported by a preponderance of evidence. See King, col. 6, ll. 41-44, 47-51 (describing sending a notification to the sender after a message has been opened or after a predetermined period of time if it has not been opened). For the reasons discussed supra, we do not find Appellant’s arguments persuasive of Examiner error. Appeal 2021-000620 Application 15/441,908 10 Claims 1-4 Appellant argues “none of the prior art cited suggests using a domain name that is (1) proprietary, (2) known to and recognized by the recipient and (3) associated with the sender.” Appeal Br. 18-19. Additionally, Appellant disputes the Examiner’s finding that Moscaritolo teaches that an intended recipient is selected when there is “implicit permission” for person- to-person communication. Appeal Br. 18. As discussed above, we disagree with Appellant and find that the combined teachings of Moscaritolo and Davis teach or reasonably suggest creating a dynamic messaging link comprising a recognizable proprietary domain name associated with a person known by the intended recipient. The Examiner relies on Moscaritolo to teach selecting an intended recipient with whom at least implicit permission for person-to-person communication exists. See Final Act. 8-9 (citing Moscaritolo, col. 5, ll. 7- 10, 15-27, Fig. 1); Ans. 5-6 (citing Moscaritolo, col. 1, ll. 48-50). More particularly, the Examiner finds that when the recipient client requests the message (i.e., the shortened URL) in Moscaritolo, it corresponds to implicit communication for a communication. See Ans. 5; Final Act. 9. As an initial matter, we note that there is a paucity of description in the Specification as to selecting an intended recipient with whom there is implicit permission for person-to-person communication. The Specification describes that an “invitation will be sent by an electronic method requiring at least the recipient’s implied permission” such as for a SMS message, the recipient’s phone number must be known. Spec. 4:19-21 (emphasis added). Nonetheless, the portion of Moscaritolo relied on by the Examiner to teach “implied permission” for the sender to send a message to an intended Appeal 2021-000620 Application 15/441,908 11 recipient relates to actions taken by the recipient after the message (i.e., shortened URL) has been communicated by the sender to an intended recipient. See Moscaritolo, col. 8, ll. 40-44, Fig. 3 (step 328). As such, it is not clear that the sender had implicit permission to communicate the message at the time the message was sent. Although the relationships identified in Davis (e.g., buddy lists, IM lists, address books, shared social networks), may provide the basis for implicit permission or obtaining permission for a sender to communicate a message to an intended recipient, the Examiner does not rely on Davis for such a teaching. See, e.g., Davis ¶¶ 17-21. In the event of further prosecution, we leave it to the Examiner to consider whether Davis’ teachings provide the basis for implicit permission or obtaining permission for a sender to communicate a message to an intended recipient. See, e.g., Davis ¶¶ 17-21. Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02. Constrained by the record before us, we cannot sustain the Examiner’s rejection of claims 1-4. Claims 5-8 Similar to claim 1, Appellant asserts that the Examiner has not shown that Moscaritolo teaches “obtaining permission prior to contacting a recipient.” Appeal Br. 20. For similar reasons to those discussed with respect to claim 1, we do not sustain the Examiner’s rejection of claims 5-8. Appeal 2021-000620 Application 15/441,908 12 Claim 9 Appellant relies on the arguments discussed above asserting that Moscaritolo fails to teach a proprietary domain name, custom-branded for recognition by a recipient. Additionally, Appellant relies on the arguments discussed above asserting that Moscaritolo uses redirection, contrary to claim 9. Appeal Br. 21. For the reasons discussed above, we do not find Appellant’s arguments persuasive of error. See supra. Accordingly, we sustain the Examiner’s rejection of claim 9. Claims 10-17 Regarding independent claim 10 (and its dependent claims), Appellant again asserts that the prior art fails to teach a URL having a domain name that is known and recognized by each recipient. Appeal Br. 21. In addition, Appellant asserts the claims are directed to “sending a largely similar but personalized message to each of a number of recipients by personalizing the template message” and that to personalize the messages using the approach described in Moscaritolo would be “fairly time consuming.” Appeal Br. 21. As discussed above, we find the prior art teaches a link comprising a domain name known to the intended recipient. See supra. Appellant’s general assertions that the proposed combination might not be as efficient as the claimed invention do not apprise us of Examiner error. See In re Pearson, 494 F.2d at 1405 (attorney argument is not evidence). Accordingly, we sustain the Examiner’s rejections of claims 10- 17. Appeal 2021-000620 Application 15/441,908 13 Claims 18-20 Similar to claims 10-17, Appellant asserts that claims 18-20 are directed to “sending a largely similar but personalized message to each of a number of recipients by personalizing the template message” and that to personalize the messages using the approach described in Moscaritolo would be “fairly time consuming.” Appeal Br. 21-22. As discussed above, Appellant’s general assertions that the proposed combination might not be as efficient as the claimed invention do not apprise us of Examiner error. See In re Pearson, 494 F.2d at 1405 (attorney argument is not evidence). Accordingly, we sustain the Examiner’s rejections of claims 18-20. NEW GROUND OF REJECTION Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 1-17 under 35 U.S.C. § 112(b). “The test for definiteness is whether one skilled in the art would understand the bounds of the claim when read in light of the specification.” Miles Labs., Inc. v. Shandon Inc., 997 F.2d 870, 875 (Fed. Cir. 1993). “The purpose of claims is not to explain the technology or how it works, but to state the legal boundaries of the patent grant. A claim is not ‘indefinite’ simply because it is hard to understand when viewed without benefit of the specification.” S3 Inc. v. NVIDIA Corp., 259 F.3d 1364, 1369 (Fed. Cir. 2001). However, we are mindful that even if the definition of a claim term may be supported by the specification, “the claim is still indefinite if a person of ordinary skill in the art cannot translate the definition into Appeal 2021-000620 Application 15/441,908 14 meaningfully precise claim scope.” Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008); see also Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370-71 (Fed. Cir. 2014). In particular, the scope of claim language cannot depend solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention, without sufficient guidance in the specification to provide objective direction to one of skill in the art. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1260 (Fed. Cir. 2014). Here, independent claims 1, 5, 9, and 10 depend on what may be recognizable to or known by an intended recipient-particularly, whether a messaging link and domain name are recognizable, or whether a domain name is associated with a person known to an intended recipient. For example, claim 1 recites “a unique dynamic messaging link recognizable to the intended recipient” and “a recognizable proprietary domain name associated with a person known to said intended recipient;” claim 5 recites “a recipient from a known individual” and “a domain name . . . known to said recipient;” claim 9 recites “a proprietary domain name, custom branded for recognition by a recipient;” and claim 10 recites “a domain name known to the intended recipient thereof.” Appellant’s Specification describes: the dynamic messaging link is transmitted from an individual known to and trusted by the recipient or, at least over that trusted individual’s imprimatur, and the domain name of the Dynamic Messaging link is known to and recognizable by the intended recipient as the source of messages of interest to the recipient from the trusted individual. Spec. 4:16-19. However, what a sender believes should be a recognizable messaging link, domain name, or trusted individual to an intended recipient may not be recognizable to, or trusted by, the intended recipient. Appeal 2021-000620 Application 15/441,908 15 Accordingly, because we determine that what is recognizable to, or trusted by, an intended recipient of a message depends on the subjective opinion of the sender (i.e., the one practicing the claim), without sufficient guidance in the Specification, we conclude that independent claims 1, 5, 9, and 10 are indefinite under 35 U.S.C. § 112(b). For the reasons discussed supra, we newly reject independent claim 1 under 35 U.S.C. § 112(b) for indefiniteness, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. For similar reasons we also newly reject under 35 U.S.C. § 112(b) independent claims 5, 9, and 10, which recite similar limitations. In addition, we newly reject under 35 U.S.C § 112(b) dependent claims 2-4, 6-8, and 11-17, which inherit the deficiencies of their respective base claims. CONCLUSIONS We reverse the Examiner’s decision rejecting claims 1-8 under 35 U.S.C. § 103. We affirm the Examiner’s decision rejecting claims 9-20 under 35 U.S.C. § 103. We enter a new ground of rejection rejecting claims 1-17 under 35 U.S.C. § 112(b). Appeal 2021-000620 Application 15/441,908 16 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1-4, 11- 15, 19 103 Moscaritolo, Davis, King 11-15, 19 1-4 5-8, 10, 16-18, 20 103 Moscaritolo, Davis 10, 16-18, 20 5-8 9 103 Moscaritolo, King 9 1-17 112(b) Indefiniteness 1-17 Overall Outcome 9-20 1-8 1-17 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion Appeal 2021-000620 Application 15/441,908 17 of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, Appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended. 37 C.F.R. § 1.136(a)(1)(iv); see 37 C.F.R. § 41.50(f). AFFIRMED IN PART; NEW GROUND 37 C.F.R. § 41.50(b)