Ex Parte Bahar

Board of Patent Appeals and Interferences

May 7, 2012

09978224 (B.P.A.I. May. 7, 2012)

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.
09/978,224 10/16/2001 Reuben Bahar 133/117 4472
7590 05/07/2012
CAHILL VON HELLENS & GLAZER PLC
ALLTEN: MARVIN A GLAZER
155 PARK ONE
2141 E HIGHLAND AVENUE
PHOENIX, AZ 85016
EXAMINER
BILGRAMI, ASGHAR H
ART UNIT PAPER NUMBER
2443
MAIL DATE DELIVERY MODE
05/07/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte REUBEN BAHAR
____________________

Appeal 2010-0034251
Application 09/978,224
Technology Center 2400
____________________

Before JEAN R. HOMERE, THU A. DANG, and ANDREW J. DILLON,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Appellant, Inc. (App. Br. 2.)

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Application 09/978,224

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 184-189, 191-213, 215-229, 231-234, 236-243, 248-255,
258-271, 279, 327-340, and 346-348. Claims 1-183, 190, 214, 230, 235,
244-247, 256, 257, 272-278, 280-326, 341-345 have been canceled. (App.
Br. 2-3.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s Invention
Appellant invented a method and system for allowing a sending party
to identify an individual who accessed an e-mail delivered to a destination e-
mail address. In particular, prior to accessing the delivered email, the
individual attempting to access the email is prompted to provide biometric
data identifying him/her as the e-mail recipient. Upon supplying the
requested biometric data, the identified recipient is allowed to access the e-
mail, and the identity of the recipient is sent back to the sending party.
(Spec. 17, l. 20- spec. 18, l. 12, Fig. 1.)
Illustrative Claim
Independent claim 236 further illustrates the invention as follows:

236. A method for verifying whether an e-mail received by a
recipient was accessed by an intended recipient, said method
comprising:

a) receiving an e-mail at a recipient e-mail address;

b) detecting an access event, and prompting the party
associated with said access event to input recipient data prior
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Application 09/978,224

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to allowing the requested access, said recipient data including
identifying data related to the party associated with said
requested access;

c) permitting said e-mail to be accessed after the party
associated with said access event inputs said recipient data; and

d) sending identifying data relating to the party
associated with said access event for reference by a sending
party to identify the party who accessed said e-mail.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Flynn US 6,618,747 B1 Sep. 9, 2003
Choi US 6,629,131 B1 Sep. 30, 2003
Kanevsky US 6,836,846 B1 Dec. 28, 2004

Rejections on Appeal2
The Examiner rejects the claims on appeal as follows:

2 The Examiner repeats in the Answer the 101and 112, second paragraph
rejections previously entered in the Final rejection. (Ans. 3-4.) In response,
Appellants indicate that the affected claims had been amended to overcome
the cited rejections. (Reply Br. 2-3.) While the Advisory Action of
5/14/2009 indicates that Appellant’s after final amendments have been
entered, and they address the 101 and 112 deficiencies, it nonetheless
indicates that the final rejection is still valid without making any changes
thereto. Consequently, we conclude that all the rejections made in the final
action that have not been thereafter expressly withdrawn by the Examiner
are pending before us for review.
Appeal 2010-003425
Application 09/978,224

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1. Claims 248-255, 279, and 346-348 stand rejected under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
2. Claim 236 stands rejected under 35 U.S.C. § 112, Second
paragraph as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
3. Claims 184-189, 191-213, 215-229, 231-234, 236-243, 248-
255, 258-271, 279, 327-340, and 346-348 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Choi, Flynn and
Kanevsky.
ANALYSIS
We consider Appellant’s arguments seriatim as they are presented in
the principal Brief, pages 8-17.
Obviousness Rejection
Representative Claim 236
Dispositive Issue: Has Appellant shown that the Examiner erred in
finding that the combined disclosures of Choi, Kanevsky and Flynn teaches
or suggests permitting said e-mail to be accessed after the party associated
with said access event inputs said recipient data , as recited in independent
claim 236?
Appellant argues that the Examiner erred in rejecting claim 236 as
being unpatentable over the combination of Choi, Kanevsky and Flynn
proposed combination does not teach or suggest the claim limitations
emphasized above. According to Appellant, while Kanevsky discloses
permitting a party to access an e-mail after the party has provided the
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Application 09/978,224

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requested identification data, such access will only be provided if the
identification data matches that of the intended recipient, whereas the
disputed limitation will provide access to anyone who has provided the
identification data irrespective of their being the intended recipient or not.
(App. Br. 13-14, Reply Br. 3-5.) In response, the Examiner finds that
proposed combination teaches the disputed limitations. (Ans. 11-13.)
We do not find error in the Examiner’s ultimate conclusion of
obviousness. In particular, while we agree with Appellant that the disputed
claim limitations do not require the access requesting party’s identification
data to match that of the intended e-mail recipient before the party can be
allowed to access the e-mail, the disputed limitations do not preclude it. In
other words, we find the disputed claim language at issue here is broad
enough to encompass providing access to the e-mail to any requestor
including the intended recipient so long the requestor has supplied the
requested data beforehand. Consequently, Kanevsky’s disclosure of allowing
a requestor whose identification data matches that of the intended recipient
to access the e-mail only after having supplied the requested identification
data suffices to teach the disputed limitations. Accordingly, because
Appellant’s claim does not preclude the further step provided in Kanevsky
of matching the requester’s provided info with that of the intended recipient
before the access can be given, we find unavailing Appellant’s argument that
Kanevsky is not properly combinable with Choi and Flynn. It follows that
Appellant has not shown error in the Examiner’s finding that rejection of
claim 236.
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Application 09/978,224

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Claims 184-189, 191-213, 215-229, 231-234, 237-243, 248-255, 258-
271, 279, 327-340, and 346-348 not argued separately fall therewith. See 37
C.F.R. § 41.37(c)(1)(vii).
101 and 112, 2nd paragraph rejections
We affirm pro forma the Examiner’s rejections as set forth above
because Appellant has not provided any substantive arguments addressing
the merits of those rejections in the Briefs.3
DECISION
We affirm the Examiner’s rejections of claims 184-189, 191-213,
215-229, 231-234, 236-243, 248-255, 258-271, 279, 327-340, and 346-348
as set forth above.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Vsh

3 See supra note 2.