Ex Parte Davis et al

Board of Patent Appeals and Interferences

Mar 27, 2012

10796161 (B.P.A.I. Mar. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOHN FRED DAVIS, KEVIN DAVID HIMBERGER,
CLARK DEBS JEFFRIES, and GARRETH JOSEPH JEREMIAH
____________________

Appeal 2010-000189
Application 10/796,1611
Technology Center 2400
____________________

Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal from the Examiner’s rejection of claims 1-16 and
21-28. Claims 17-20 have been canceled. We have jurisdiction under 35
U.S.C. § 6(b).

1 Application filed March 9, 2004. The real party in interest is International
Business Machines Corp. (Br. 1.)
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We affirm.
Appellants’ Invention
The invention at issue on appeal concerns a system, program product,
and method for blocking unwanted electronic mail (e-mail) messages.
(Spec. 3:3-17; Abstract.)2
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A method of blocking unwanted e-mails, said method
comprising the steps of:
determining that an e-mail is unwanted;
determining a source IP address of said unwanted e-
mail; and
determining a registrant of said source IP address of said
unwanted e-mail and querying an entity that manages
registration of IP addresses to determine other source IP
addresses registered to said registrant of the source IP address
of said unwanted e-mail, and in response, blocking subsequent
e-mails from said other IP addresses.
Rejection on Appeal
The Examiner rejects claims 1-16 and 21-28 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of U.S. Patent Pub. No.
2004/0177120 Al published Sep. 9, 2004 (filed Mar. 7, 2003) (“Kirsch”) and

2 We refer to Appellants’ Specification (“Spec.”) and Appeal Brief (“Br.”)
filed March 23, 2009. We also refer to the Examiner’s Answer (“Ans.”)
mailed June 25, 2009. Appellants’ originally filed Specification does not
include line numbers – we begin our numbering at the first word at the top of
each page.
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The Spamhaus Project – The Spamhaus Block List (“SBL”), available at
http://web.archive.org/web/20011211165406/http://www.spamhaus.org/sbl/
6/12/2008 (“Spamhaus”).

ISSUE
Based on our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us follows:
Does the Examiner err in concluding that Kirsch in combination with
Spamhaus would have collectively taught or fairly suggested: (1)
“determining a source IP address of said unwanted e-mail;” (2) “determining
a registrant of said source IP address . . . and querying an entity that
manages registration of IP addresses to determine other source IP addresses
registered to said registrant;” and (3) “in response, blocking subsequent e-
mails from said other IP addresses” as recited in claim 1?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the Analysis that follows. We also find that the following
enumerated findings of fact (FF) are supported by at least a preponderance
of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir.
1988) (explaining the general evidentiary standard for proceedings before
the Office).
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Appellants’ Claim & Specification
1. Appellants’ claim 1 recites, in relevant part, “querying an entity
that manages registration of IP addresses to determine other source IP
addresses registered to said registrant.” (Br. 13, claim 1.) Appellants
explain that: “The range finder program 130 is also coupled by a network to
an existing/known Internet service company called ‘Internet Assigned
Number Authority’ company or ‘IANA’ 138 (or a similar Internet service)”
(Spec. 8:7-9 (emphasis added); see Br. 2 (citing same)). Appellants do not
explicitly define “an entity that manages registration of IP addresses to
determine other source IP addresses registered to said registrant” (claim 1)
either in the claim or in their Specification.

ANALYSIS
Appellants argue independent claim 1 together with independent
claims 9 (see below) and 21 and dependent claims 2, 4-7, 10, 12-16, 22, and
24-28 as a group based on claim 1. (Br. 3-12.) Appellants also provide
additional nominal arguments with respect to dependent claim 3 (Br. 8),
dependent claim 8 (Br. 9), independent claim 9 (Br. 9-11), dependent claim
11 (Br. 11), and dependent claim 23 (Br. 12). We find, however, these
nominal arguments simply restate the claim language or reiterate the
arguments made with respect to claim 1. Therefore, we select claim 1 as
representative of Appellants’ arguments and groupings. 37 C.F.R.
§ 41.37(c)(1)(vii). See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(“[W]e hold that the Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief . . . .”); In re Nielson, 816
F.2d 1567, 1572 (Fed. Cir. 1987). We consider only those arguments that
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Appellants have actually raised in their Brief. Arguments that Appellants
could have made but chose not to make in the Brief have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants have the opportunity on appeal to the BPAI to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
The Examiner sets forth a detailed explanation of the obviousness rejection
in the Examiner’s Answer with respect to each of the claims (Ans. 4-10)
and, in particular, claim 1 (id. at 4-5, 8-9). Therefore, we look to the
Appellants’ Brief to show error in the proffered findings and conclusions.
See Kahn, 441 F.3d at 985-86.
Claim 1
The Examiner rejects Appellants’ independent claim 1 as being
obvious over the combination of Kirsch and Spamhaus. (Ans. 4-5, 8-9.)
Specifically, the Examiner finds that Kirsh teaches filtering electronic mail
messages (e-mail) (determining that an e-mail is unwanted), determining a
source IP address of the unwanted e-mail, and blocking unwanted e-mail
messages. (Ans. 4-5, 8-9 (citing Kirsch, ¶¶ [0025] and [0036]; Fig. 3).) The
Examiner further finds that Spamhaus teaches determining a registrant of the
determined source IP address and querying a website/service (an entity that
manages registration of IP addresses) to determine other source IP addresses
registered to the registrant of the source IP address.
Appellants contend that:
[i]n contrast to present claim 1, Kirsch . . . does not teach that a
registrant of the source IP address of the unwanted e-mail is
determined, and an entity that manages registration of IP
addresses is queried to determine other source IP addresses
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registered to the registrant of the source IP address of the
unwanted e-mail, and in response, subsequent e-mails from the
other IP addresses are blocked.
(Br. 5.) Appellants further contend that:
Spamhaus states that individual IP addresses of spammers are
identified and put in a list, but there is no teaching of the feature
of claim 1 where a registrant of the source IP address of the
unwanted e-mail is determined, and an entity that manages
registration of IP addresses is queried to determine other source
IP addresses registered to the registrant of the source IP address
of the unwanted e-mail, and in response, subsequent e-mails
from the other IP addresses are blocked.
(Br. 6; see id. at 7-8.) In summary, Appellants assert that “[n]either Kirsch
nor Spamhaus teach or suggest the steps of identifying the registrant of
an e-mail and then using the registrant information to identify from a
registration management entity other IP addresses registered to the
same registrant (and blocking them as well). (Br. 7-8).
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s conclusion that the subject matter of
Appellants claim 1 is unpatentable over the combination of Kirsch and
Spamhaus. Accordingly, we sustain the Examiner’s rejection of claim 1 for
the reasons set forth in the Answer, which we incorporate herein by
reference. (Ans. 4-5, 8-9.)
As explained by the Examiner, Kirsch describes determining a source
IP address of the unwanted e-mail and filtering the unwanted e-mail. (Ans.
4-5, 8-9 (citing Kirsch, ¶¶ [0025] and [0036].) As further explained by the
Examiner, Spamhaus describes a website or web service listing the IP
addresses of known spammers as well as the name of the company that owns
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the IP addresses (the registrant). (Ans. 4-5, 8-9.) We agree with the
Examiner that the combination of Kirsch and Spamhaus teaches each feature
of Appellants’ claim.
Appellants appear to assert that Spamhaus does not teach or suggest
“an entity that manages registration of IP addresses to determine other
source IP addresses registered to said registrant” (claim 1). We disagree.
Appellants do not explicitly define “an entity that manages registration of IP
addresses to determine other source IP addresses registered to said
registrant” either in the claim or in their Specification. (FF 1.) Appellants
do, however, explain that such an entity may be an “existing/known Internet
service company” such as the “Internet Assigned Number Authority” or “a
similar Internet service.” (FF 1.) In view of Appellants’ disclosure, we
broadly but reasonably construe such an entity to be an Internet web site or
service that performs the claimed functionality of allowing one to determine
IP addresses registered to a registrant or vice versa. Thus, we view
Spamhaus as broadly teaching or at least suggesting such an entity.
Accordingly, we conclude, as did the Examiner, that the combination of
Kirsch and Spamhaus would have taught or fairly suggested the disputed
features of representative claim 1.
We find Appellants’ contrary arguments unpersuasive of error in the
Examiner’s rejection for the reasons explained above. Further, we note that
Appellants attempt to attack the references individually, instead of
addressing the combination of references. (Br. 5-7.) See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) (noting that one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references) (citing In re Keller, 642 F.2d 413, 425
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(CCPA 1981)). Further still, Appellants failed to file a Reply Brief to rebut
the findings and responsive arguments made by the Examiner in the Answer.
It follows that Appellants do not persuade us of error in the Examiner’s
obviousness rejection of representative claim 1. Appellants also do not
persuade us of error in the Examiner’s obviousness rejection of independent
claims 9 and 21 and dependent claims 2-8, 10-16, and 22-28 not separately
argued with particularity (supra). Accordingly, we affirm the Examiner’s
obviousness rejection of claims 1-16 and 21-28.

CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1-16 and 21-28 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claims 1-16 and 21-28 under
35 U.S.C. § 103(a).

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

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