Ex Parte Duxbury et al

Patent Trial and Appeal Board

Jul 30, 2013

11014509 (P.T.A.B. Jul. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GUY DUXBURY, HASLER HAYES, and
ANOOP NANNRA
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Appeal 2011-001805
Application 11/014,509
Technology Center 2400
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Before ST. JOHN COURTENAY III, JEFFREY S. SMITH, and
JUSTIN BUSCH, Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-4, 6-10, 12, 14-23, 25-29, 31, and 33-42. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

Introduction
According to Appellants, the invention relates to a “system and
method for preventing e-mail spoofing, in which a receiving e-mail checking
server system sends a message to a confirmation server associated with a
network domain of the sending system of a received e-mail message, to
determine if the sender transmitted the message.” Abstract.

STATEMENT OF THE CASE

Exemplary Claim
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for confirming the origin of an electronic mail
message, comprising:
wherein said electronic mail message includes a
transmission time at which said electronic mail message was
transmitted by a sending system from which said electronic
mail message was originated and a digital key uniquely
associated with said message;
storing, at an electronic mail history confirmation server,
said transmission time and said digital key uniquely associated
with said electronic mail message;
receiving said electronic mail message at an incoming
electronic mail checking server responsible for confirming
electronic mail sent to a destination system;
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obtaining, by said incoming electronic mail checking
server from said electronic mail message, responsive to said
receiving said electronic mail message and an indication that
said electronic mail message is confirmable, said transmission
time and digital key from said origin confirmation field, and a
sender identifier identifying said sending system from which
said electronic mail message was originated;
generating, by said incoming electronic mail checking
server, an origin confirmation request message including said
transmission time, said digital key and said sender identifier,
wherein said origin confirmation request message requests
confirmation that said electronic mail message was transmitted
by said sending system at said transmission time;
transmitting said origin confirmation request message
from said incoming electronic mail checking server to said
electronic mail history confirmation server;
receiving said origin confirmation request message at
said electronic mail history confirmation server;
comparing, at said electronic mail history confirmation
server, said transmission time and said digital key stored in said
electronic mail history confirmation server with said
transmission time and digital key in said origin confirmation
request; and
responsive to said digital key stored in said origin
confirmation request message matching said digital key stored
in said electronic mail history confirmation server, and said
transmission time stored in said origin request message
sufficiently matching said transmission time stored in said
electronic mail history confirmation server, generating an
affirmative origin confirmation message and transmitting said
origin confirmation message from said electronic mail history
confirmation server to said incoming electronic mail checking
server, wherein said affirmative origin confirmation message
indicates that said electronic mail message was transmitted by
said sending system at said transmission time.

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References
Akimoto US 6,847,994 B1 Jan. 25, 2005
Nemovicher US 2002/0007453 A1 Jan. 17, 2002

Rejections
Claims 1-4, 6-10, 14-21, 23, 25-29, 33-38, and 39-40 stand rejected
under 35 U.S.C. § 102(e) as being anticipated by Nemovicher et al. Ans. 4-
11.
Claims 12, 22, 31, 41, and 42 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Nemovicher and Akimoto. Ans. 12-13.

ANALYSIS
Appellants argue Nemovicher does not disclose “generating, by said
incoming electronic mail checking server, an origin confirmation request
message including said transmission time, said digital key and said sender
identifier, wherein said origin confirmation request message requests
confirmation that said electronic mail message was transmitted by said
sending system at said transmission time” and “transmitting said origin
confirmation request message from said incoming electronic mail checking
server to said electronic mail history confirmation server” where “said
transmission time and said digital key [are] uniquely associated with said
electronic mail message.” App. Br. 20-24; Reply 4-8.
Appellants acknowledge that a portion of Nemovicher relates to
verifying a sender’s identity. App. Br. 21-22 and 24. However, Appellants
assert Nemovicher verifies a sender’s identity using a different method than
Appellants’ claimed method. App. Br. 23-24. Specifically, Appellants argue
Nemovicher uses a subscriber database and public keys associated with the
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sender to verify the sender, whereas Appellants’ claimed system generates a
“confirmation request message” containing a unique message key and
transmission time, transmits the message to a mail checking server, and
receives a message back from the mail checking server indicating that the
sender has been verified. App. Br. 23-24.
The Examiner finds the Abstract of Nemovicher shows that
Nemovicher relates to the same field as Appellants’ claims, namely
electronic mail communication. Ans. 16. The Examiner further finds Figure
3 and its accompanying description in paragraphs [0051] and [0052] teach
an email message that is generated and “transmitted securely over the
internet from sender to receiver.” Ans. 17. The Examiner also finds Figure 6
and the accompanying description in paragraphs [0071]-[0074] teach an
email message that is a package including various keys (i.e., “encrypted
random key, public key, encrypted senders public key and senders digital
signature”). Ans. 19. The Examiner next finds Figure 7 and the
accompanying disclosure in paragraphs [0075]-[0082] teaches “the email
message being transmitted at given time . . . that time and date stamp has
been associated in the verified email message in order to track the email
message securely and tampered proof.” Ans. 22. Appellants do not contest
these findings.
The Examiner then generally finds Figures 11 and 14 and the
accompanying description in paragraphs [0092]-[0098] “reads on the claim
language.” Ans. 22. Finally, the Examiner finds Nemovicher discloses all
argued limitations, stating Nemovicher discloses “identifying the sender and
receiver . . . and confirming the status in mail history if any of previous
email was sent and received by same sender.” Ans. 26-27.
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Appellants argue that while Nemovicher relates to a secure mail
system, Nemovicher’s verification method is different from the claimed
method. Reply 4-6. Specifically, Appellants reiterate their argument that
Nemovicher does not generate an “origin confirmation message” because the
verified message cited by the Examiner does not include a transmission time
(of when the message was transmitted by the sending system) and does not
request confirmation that the message was transmitted at the transmission
time. Reply 5-6. Appellants also argue Nemovicher’s return receipt message
does not meet the recited “origin confirmation message” because
Nemovicher’s return receipt is generated at the recipient system and sent to
the sending system to indicate that either the original message was received
and read or an error occurred. Reply 7.
We agree with Appellants. While we agree with the Examiner that
Nemovicher and Appellants’ claims are both directed to a secure mail
system that includes sender verification, Appellants’ argument focuses on
the specific limitations relating to how the mail message is verified. We do
not see anything in the cited passages of Nemovicher disclosing generating
or transmitting a message that includes both a transmission time indicating
when the sending system transmitted the message and a unique key
associated with the message. See Ans. 5 (citing Abstract, Figs. 11-14A-C,
and ¶¶ [0020], [0021], and [0092]-[0098]), 22-26. As pointed out by
Appellants, the messages generated in Nemovicher are either messages
including the original content and encryption keys or the return receipt
message.
Claim 1 recites both an “electronic mail message” and a separate
“origin confirmation request message,” which includes a timestamp and a
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Unique ID. While it is possible that aspects of a method implementing
Nemovicher’s re-verification of the message at a later time would render the
claims obvious, that issue is not before us. See Nemovicher ¶ [0111].
Therefore, given the anticipation rejection before us, we are constrained to
find Nemovicher does not disclose “generating, by said incoming electronic
mail checking server, an origin confirmation request message including said
transmission time, said digital key and said sender identifier, wherein said
origin confirmation request message requests confirmation that said
electronic mail message was transmitted by said sending system at said
transmission time” or “transmitting said origin confirmation request message
from said incoming electronic mail checking server to said electronic mail
history confirmation server,” as recited in independent claim 1. Thus, we
cannot sustain the Examiner’s rejection of claim 1. Independent claims 20,
39, and 40 include similar limitations and dependent claims 2-4, 6-10, 12,
14-19, 21-23, 25-29, 31, 33-38, 41, and 42 ultimately depend from claim 1
or claim 20 and therefore include the same or similar limitations. Therefore,
we cannot sustain the rejections of claims 2-4, 6-10, 12, 14-23, 25-29, 31,
and 33-42.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We agree with Appellants’
contentions.
DECISION
For the above reasons, the Examiner’s rejections of claims 1-4, 6-10,
12, 14-23, 25-29, 31, and 33-42 is reversed.
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REVERSED

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