Ex Parte 7,366,919 et al

Patent Trial and Appeal Board

Nov 14, 2013

95000603 (P.T.A.B. Nov. 14, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/000,603 01/27/2011 7,366,919 1762030.00123US1 4276
69417 7590 11/14/2013
WILMERHALE/SYMANTEC CORPORATION
Wilmer Cutler Pickering Hale and Dorr LLP
1875 Pennsylvania Avenue, NW
WASHINGTON, DC 20006
EXAMINER
SAGER, MARK ALAN
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/14/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

M86 SECURITY, INC.
Requester

v.

SYMANTEC, CORPORATION
Patent Owner
____________

Appeal 2013-008705
Reexamination Control No. 95/000,603
Patent 7,366,919 B1
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, DAVID M. KOHUT, and ERIC B.
CHEN Administrative Patent Judges.

KOHUT, Administrative Patent Judge

DECISION ON APPEAL
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Requester M86 Security, Inc. appeals under U.S.C. §§ 134 and 315
(2002) the Examiner’s decision not to adopt rejections of claims 1-3, 5-7, 15,
17-24, and 26-37 that had been proposed by the Requester. We have
jurisdiction under 35 U.S.C. §§ 134 and 315 (2002). An oral hearing was
conducted with the Requester and Patent Owner on October 30, 2013.

STATEMENT OF THE CASE
This proceeding arose from a request by M86 Security, Inc. for an
inter partes reexamination of U.S. Patent 7,366,919 B1, titled “Use of Geo-
Location Data for Spam Detection,” and issued to Sobel et al. on April 29,
2008 (the ’919 patent).
The ’919 patent describes a system for determining when e-mail
contains spam.
Claim 1 on appeal reads as follows:
1. A computer implemented method for detecting
suspected spam in e-mail originating from a sending
computer, said method comprising the steps of:
determining an actual IP address of the sending
computer;
converting the actual IP address into actual geo-
location data; and
using the actual geo-location data, ascertaining
whether the e-mail contains suspected spam.

Appellant, who is the Third Party Requester, proposes rejections of
the claims over the following prior art references:
Donaldson WO 01/38999 A1 May 31, 2001

Voticky WO 01/80535 A1 Oct. 25, 2001
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Sam Costello, EmailTrackerPro tries to find spammers, March 5, 2002,
CNN.com/SCI-TECH, available at
http://archives.cnn.com/2002/TECH/ptech/03/05/email.tracker.pro.idg/index
.html.

Bill Barnes, E-Mail Impersonators: How to identify “spoofed” e-mail,
March 12, 2002, The Slate Group, available at
http://www.slate.com/articles/technology/webhead/2002/03/email_imperson
ators.html.

Huang U.S. 2003/0231207 A1 Dec. 18, 2003

McElligott U.S. 2004/0093566 A1 May 13, 2004

Requester appeals the Examiner’s refusal to adopt the following
rejections:
Claims 1, 2, 22, and 24 under 35 U.S.C. § 102(b) as anticipated by
Voticky.
Claims 1, 15, 22, 24, 27, and 28 under 35 U.S.C. § 103(a) as obvious
over the combination of Costello and McElligott.
Claims 3, 6, 7, 17-21, and 23 under 35 U.S.C. § 103(a) as obvious
over the combination of Costello, McElligott, and Donaldson.
Claims 1 and 5 under 35 U.S.C. § 103(a) as obvious over the
combination of Barnes, Voticky, Costello, and McElligott.
Claims 29, 32, and 34 under 35 U.S.C. § 103(a) as obvious over the
combination of Voticky and Donaldson.
Claims 30 and 35 under 35 U.S.C. § 103(a) as obvious over the
combination of Voticky and Huang.
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Claims 31, 33, 36, and 37 under 35 U.S.C. § 103(a) as obvious over
the combination of Voticky and Costello.
ISSUE
Did the Examiner err in finding that Costello does not teach
“ascertaining whether the e-mail contains suspected spam,” as required by
each of the independent claims?

ANALYSIS

Issue 4: Claims 1, 15, 22, 24, 27, and 28 as obvious over the combination of
Costello and McElligott

Independent claim 1 is drawn to a “computer implemented method for
detecting suspected spam in e-mail originating from a sending computer”
that comprises three recited steps, including a step of using actual geo-
location data, obtained from the actual IP address, to “ascertain [ ] whether
the e-mail contains suspected spam.”
First, we note that the Examiner finds (RAN 12) and Requester agrees
(3PR App. Br. 8) that the claim term “actual IP address” does not exclude a
“claimed IP address” since Patent Owner does not limit the term in the
claims. Patent Owner uses an exemplary embodiment of the ’919 patent to
show a difference between an actual IP address and a claimed IP address.
PO Resp. Br. 3. However, we agree with Examiner and Requester that
neither Patent Owner’s claims nor Specification requires the terms to have a
different definition. As such, we find Examiner’s interpretation of “actual IP
address” to include “claimed IP address” to be reasonable. RAN 12.
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In the Original Inter Partes Reexamination Request on page 13 and as
explained in Exhibit D-2,1 Requester proposed an obviousness rejection of
claims 1, 15, 22, 24, 27, and 28 based on the combination of Costello and
McElligott. The Examiner did not adopt the Requester’s rejection, because
the Examiner determined there was insufficient evidence to support a
finding that Costello teaches ascertaining whether an email contains spam
using geo-location data. RAN 5, 17, and 20-21. Patent Owner further adds
that Costello teaches that the system can track the message based upon its
geographic info, but only when the e-mail is a “known spam e-mail.” PO
Resp. Br. 9-10. Thus, Patent Owner argues (PO Resp. Br. 9-10), and the
Examiner finds (RAN 5), that Costello does not make any spam
determination, as required by the claims.
Requester argues that the Examiner’s determination is in error, since
Costello is used to determine “the hallmark of spammers” using the IP
address and geographic information. 3PR App. Br. 15. Requester contends
that Costello uses the IP address an email was sent from and a geographical
location where the email originated to determine whether the email is spam.
3PR App. Br. 14. To support this position, Requester cited a published case
study2 which was said to show an actual use of the eMailTrackerPro
program from Costello. Comments from 3PR, dated August 28, 2012, p. 4.

1 The Examiner indicates that claims 5 and 26 were added based upon their
dependency on independent claims 1 and 24 (respectively). RAN 21.
However, we address each of these claims individually below.
2 “eMailTrackerPro and VisualRoute nab the bad guy,” 1997-2002,
Visualware Inc., available at
http://www.visualware.com/resources/casestudies/emt1.html. (Hereinafter
referred to as “Case Study”).
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This case study describes how an email was received with an email address
that indicates it was from the Netherlands, because it ends in NL. Case
Study, pg. 2. The program used the IP address to determine that the email
was actually sent from Kansas. Case Study, pg. 2. Thus, the email was
determined to be misdirected based upon the geo-location data, and the
program therefore, was able to ascertain the email as spam. Based on
Costello’s explicit disclosure and the evidence provided by Requester as
discussed on pages 4-5 of their Comments dated August 28, 2012, and
considered by the Examiner (RAN 4), we find that a preponderance of the
evidence supports Requester’s contention that Costello teaches ascertaining
whether an email is spam based upon the geo-location data.3
Independent claims 24 and 27 contain similar limitations to claim 1.
Claims 15, 22, and 28 are dependent upon claim 1. We find that the
undisputed limitations of claims 15, 22, and 28 are taught by Costello as
indicated in Requester’s Exhibit D-2. For the reasons discussed supra, we
conclude that the Examiner erred in not adopting the rejection of claims 1,
15, 22, 24, 27, and 28 as obvious over the combination of Costello and
McElligott under 35 U.S.C. § 103(a). A reversal of an Examiner’s decision
not to adopt a rejection is a new grounds of rejection.

3 The Examiner found that the declaration by Dr. Markus Jakobsson, PhD,
dated May 17, 2011, was “sufficient to overcome the rejection of claims 1,
3, 5-7, 15, 17-24, and 26-28 based upon Costello, McElligott (and
Donaldson.)” RAN 4. However, we do not find the declaration to be
persuasive since it does not take into consideration the evidence discussed
above.
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New Ground: Dependent Claim 26 as obvious over the combination of
Costello and McElligott

Claim 26 is dependent upon claim 24 and contains similar limitations
to claim 15. We reject claim 26 for the same reasons as claim 24 and for the
same reasons as provided in the Requester’s rejection of claim 15 as
indicated in Requester’s Exhibit D-2, as the latter contains similar
limitations. As our analysis deviates from Requester’s, we designate our
analysis to be a new ground of rejection of claim 26 under 35 U.S.C.
§ 103(a) as obvious over the combination of Costello and McElligott.

New Ground of Rejection: Dependent Claim 2 as obvious over Voticky,
Costello, and McElligott

Requester proposed a rejection of claim 2 under 35 U.S.C. § 102(b) as
anticipated by Voticky. Claim 2 is dependent upon claim 1. The evidence
supports the Examiner’s (RAN 14) and Patent Owner’s (PO Resp. Br. 8)
positions that Voticky fails to anticipate claim 1 since Voticky does not
convert an IP address into geo-location data.4 However, as indicated supra,
we find that the evidence provided by Requester regarding Case Study
supports that Costello teaches converting an IP address into geo-location
data. Additionally, we find that the undisputed limitations of claim 2 are
taught by Voticky as indicated in Requester’s Exhibit D-1. Since we have

4 Examiner (RAN 12) and Patent Owner (PO Resp. Br. 5-7) address the
validity of Requester’s expert testimony regarding the claimed IP address
and Voticky’s machine number. This issue is moot since the evidence
supports that one of Voticky’s personalized identifiers is an IP address (Req.
Reb. Br. 5) and since Costello uses an IP address to determine geo-location
data (see discussion with respect to Issue 4).
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changed Requester’s rejection in regard to this claim, we designate our
analysis to be a new ground of rejection of claim 2 under 35 U.S.C. § 103(a)
as obvious over the combination of Voticky, Costello, and McElligott.

Issue 5: Claims 3, 17-21, and 23 as obvious over the combination of
Costello, McElligott, and Donaldson5

Requester proposed a rejection of claims 3, 17-21, and 23 under 35
U.S.C. § 103(a) as obvious over the combination of Costello, McElligott,
and Donaldson. The Examiner refused to adopt the rejection of these claims
because Donaldson does not make up for the deficiencies of Costello and
McElligott argued above with respect to Issue 4 and claim 1. RAN 21.
Patent Owner agrees with the Examiner. PO Resp. Br. 12. However, as
indicated above, we find that the evidence supports a finding that Costello
and McElligott teach all of the limitations of claim 1. Additionally, we find
that the undisputed limitations of claims 3, 17-21, and 23 are taught by
Donaldson as indicated in Requester’s Exhibit D-2. Since we have changed
Requester’s rejection in regard to these claims, we designate our analysis to
be a new ground of rejection of claims 3, 17-21, and 23 under 35 U.S.C. §
103(a) as obvious over the combination of Costello, McElligott, and
Donaldson.

New Ground: Claim 5 as obvious over Costello, McElligott, and Barnes or
Costello, McElligott, and Huang

5 Claims 6 and 7 are dependent upon claim 5 and are addressed separately
below.
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Claim 5 is dependent upon claim 1. We find that the Examiner erred
in not adopting the rejection of claim 1 as obvious over Costello and
McElligott. Claim 5 additionally recites “wherein the actual IP address is
determined from a return path header associated with the e-mail.” The
Examiner finds (RAN 21-22) and Patent Owner agrees (PO Resp. Br. 13)
that Requester has not indicated what Barnes teaches that the other
references lack nor does Requester provide a rationale for the combination.
However, Requester has provided a detailed explanation of what Barnes
teaches on pages 38-39 of Requester’s comments submitted June 16, 2011.
3PR App. Br. 19-21. Specifically, Requester indicates that Barnes teaches a
header that details an e-mail’s transmission history which is used to
determine an actual IP address. 3PR App. Br. 20. Additionally, Requester
indicates that Huang teaches using an e-mail return path header to determine
an IP address. Exhibit D-8 (Corrected Version).6 The evidence, therefore,
supports a finding that both Barnes and Huang teach the limitation of claim
5. Additionally, Requester presents a rationale for the combinations that we
find reasonable. Comments from 3PR dated June 16, 2011, pg. 39; Exhibit
D-8 (Corrected Version). Since we have changed Requester’s rejection in
regard to this claim, we designate our analysis to be a new ground of
rejection of claim 5 under 35 U.S.C. § 103(a) as obvious over the
combination of Costello, McElligott, and Barnes or in the alternative over
Costello, McElligott, and Huang.

6 The disputed limitation is found and addressed with respect to claim 30.
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New Ground: Claims 6 and 7 as obvious over Costello, McElligott, Barnes,
and Donaldson or Costello, McElligott, Huang, and Donaldson

Claims 6 and 7 are dependent upon claim 5. Requester’s proposed
rejections did not include all of the references for the rejection of claim 5 in
the statement of rejection for claims 6 and 7. As indicated above, we find
that Costello, McElligott, and Barnes or Costello, McElligott, and Huang
teach all of the limitations of claim 5. Additionally, we find that the
undisputed limitations of claims 6 and 7 are taught by Donaldson as
indicated in Requester’s Exhibit D-2. As our analysis deviates from
Requester’s, we designate our analysis as a new ground of rejection of
claims 6 and 7 under 35 U.S.C. § 103(a) as obvious over the combination of
Costello, McElligott, Barnes, and Donaldson or Costello, McElligott,
Huang, and Donaldson.

Issue 10: Independent claims 31, 33, 36, and 37 as obvious over the
combination of Voticky and Costello

The Examiner finds that Costello does not make up for the
deficiencies of Voticky with regard to claims 31, 33, 36, and 37. RAN 23.
Specifically, the Examiner finds that Voticky fails to teach an IP address and
fails to teach converting an actual IP address into actual geo-location data.
RAN 12 and 14. We disagree with the Examiner that Voticky fails to teach
an IP address. Voticky, on page 15, specifically indicates that its
personalized identifier can be an IP address. See 3PR App. Br. 8. However,
the evidence supports the Examiner’s (RAN 14) and Patent Owner’s (PO
Resp. Br. 8) positions that Voticky fails to teach converting an IP address
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into actual geo-location data, because the reference fails to indicate the
conversion step. Instead, Voticky teaches a priority code is determined
based upon a personalized identifier compared to a database, where the
personalized identifier includes an IP address or a geographic path. See
Voticky, pgs. 5, 9, and 15. However, as indicated supra, we find that
evidence provided by the Requester regarding the Case Study provides
adequate evidence that Costello teaches converting an IP address into geo-
location data. Additionally, we find that the undisputed limitations of claims
31, 33, 36, and 37 are taught by Voticky and/or Costello as indicated in
Requester’s Exhibit D-8 (Corrected Version). As our analysis deviates from
Requester’s, we designate our analysis to be a new ground of rejection of
claims 31, 33, 36, and 37 under 35 U.S.C. § 103(a) as obvious over the
combination of Voticky and Costello.

New Ground: Independent claims 29, 32, and 34 as obvious over the
combination of Voticky, Costello, and Donaldson

Requester proposed a rejection of claims 29, 32, and 34 under 35
U.S.C. § 103(a) as obvious over the combination of Voticky and Donaldson.
The Examiner finds (RAN 22) and Patent Owner agrees (PO Resp. Br. 13)
that Donaldson does not make up for the deficiencies with Voticky.
However, as indicated above, we find that Costello makes up for the
deficiencies in Voticky. Additionally, we find that the undisputed
limitations of claims 29, 32, and 34 are taught by Donaldson as indicated in
Requester’s Exhibit D-8 (Corrected Version). Since we have changed
Requester’s rejection in regard to these claims, we designate our analysis to
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be a new ground of rejection of claims 29, 32, and 34 under 35 U.S.C.
§ 103(a) as obvious over the combination of Voticky, Costello, and
Donaldson.

New Ground: Independent claims 30 and 35 as obvious over the
combination of Voticky, Costello, and Huang

Requester proposed a rejection of claims 30 and 35 under 35 U.S.C.
§ 103(a) as obvious over the combination of Voticky and Huang. The
Examiner finds (RAN 23) and Patent Owner agrees (PO Resp. Br. 14) that
Huang does not make up for the deficiencies with Voticky. However, as
indicated above, we find that Costello makes up for the deficiencies in
Voticky. Additionally, we find that the undisputed limitations of claims 30
and 35 are taught by Donaldson as indicated in Requester’s Exhibit D-8
(Corrected Version). Since we have changed Requester’s rejection in regard
to these claims, we designate our analysis to be a new ground of rejection of
claims 30 and 35 under 35 U.S.C. § 103(a) as obvious over the combination
of Voticky, Costello, and Huang.

CONCLUSION
The Examiner erred in finding that Costello does not teach
“ascertaining whether the e-mail contains suspected spam,” as required by
each of the independent claims.
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DECISION
We reverse the Examiner’s decision not to adopt the rejection of
claims 1, 15, 22, 24, 27 and 28 under 35 U.S.C. § 103(a) as obvious over the
combination of Costello and McElligott.
Claim 2 is newly rejected under 35 U.S.C. § 103(a) as obvious over
the combination of Voticky, Costello, and McElligott.
Claims 3, 17-21, and 23 are newly rejected under 35 U.S.C. § 103(a)
as obvious over the combination of Costello, McElligott, and Donaldson.
Claim 5 is newly rejected under 35 U.S.C. § 103(a) as obvious over
the combination of Costello, McElligott, and Barnes or in the alternative
over Costello, McElligott, and Huang.
Claims 6 and 7 are newly rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Costello, McElligott, Barnes, and
Donaldson or in the alternative over Costello, McElligott, Huang, and
Donaldson.
Claims 31, 33, 36, and 37 are newly rejected under 35 U.S.C. § 103(a)
as obvious over the combination of Voticky and Costello.
Claims 29, 32, and 32 are newly rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Voticky, Costello, and Donaldson.
Claims 30 and 35 are newly rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Voticky, Costello, and Huang.
The decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b). Section 41.77(b) provides that “a new ground of rejection . . .
shall not be considered final for judicial review.” That section also provides
that Patent Owner, WITHIN ONE MONTH FROM THE DATE OF THE
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DECISION, must exercise one of the following two options with respect to
the new grounds of rejection to avoid termination of the appeal proceeding
as to the rejected claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner. Such a
response must be either an amendment of the claims so rejected
or new evidence relating to the claims so rejected, or both.

(2) Request rehearing. The owner may request that
the proceeding be reheard under § 41.79 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.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c), respectively. Under 37
C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a) of
this section, for requesting further rehearing under paragraph (c) of this
section, and for submitting comments under paragraph (b) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
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2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 7, July 2008).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

REVERSED
37 C.F.R. § 41.77(b)

Wilmerhale/Symantec Corporation
Wilmer Cutler Pickering Hale and Dorr LLP
1875 Pennsylvania Avenue, NW
Washington, DC 20006

Third Party Requester:

M86 Security, Inc.
Kramer Levin Naftalis & Frankel, LLP
Intellectual Property Department
1177 Avenue of the Americas
New York, NY 10036