Ex Parte Harris

Board of Patent Appeals and Interferences

Nov 29, 2010

10890721 (B.P.A.I. Nov. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SCOTT C. HARRIS
____________

Appeal 2009-012527
Application 10/890,721
Technology Center 2400
____________

Before HOWARD B. BLANKENSHIP, JAY P. LUCAS, and
THU A. DANG, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 10/890,721

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-4, 7-10, 12-17, and 19, which are all the claims
remaining in the application. We have jurisdiction under 35 U.S.C. § 6(b).
An oral hearing was conducted on September 22, 2010.
We reverse the Examiner’s rejections, pro forma, and enter a new
ground of rejection as permitted by 37 C.F.R. § 41.50(b).

Invention
Appellant’s invention relates to the detection of undesired electronic
communication, such as “spam” emails. Abstract.

Representative Claims
1. A system, comprising:

a first part for receiving an electronic communication;
and

a second part for testing said electronic communication
to determine if said electronic communication is undesired
based on the presence of specified electronic content, wherein
said electronic content includes specified words with letters in
specified orders forming a specified letter order, wherein said
testing comprises determining that specified undesired
electronic content is present if 80% or more, but less than
100%, of the specified letter order is present within the
electronic communication.

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10. A method, comprising:

receiving an electronic communication;

detecting the presence of words which are not in a
language of the electronic communication; and

determining the electronic communication is undesirable
by determining that there are words which are not in the
language of the electronic communication, and using the
existence of said words which are not in the language of the
communication to establish that said communication is
undesirable.

17. A method, comprising:

receiving an electronic communication;

comparing words within the electronic communication
with a list of words that represent at least one of words or
phrases that are likely to represent undesired electronic
communication; and

establishing the electronic communication is likely being
undesirable when either (a) the words match the list of words,
or (b) when the words do not match the list of words but differ
therefrom only by a specified percentage less than 100%.

Examiner’s Rejections
Claims 1-4, 7, 17, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Aronson (US 6,654,787 B1) and Hetherington (US
2002/0010714 A1).
Claims 8-10 and 12-16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Aronson, Hetherington, and Smadja (US 6,621,930
B1).
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Application 10/890,721

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The Examiner rejected claims 10 and 12-16 under 35 U.S.C. § 112,
second paragraph in the Final Rejection. In an apparent oversight, the
Answer (at 4-5) repeats the § 112 rejection but quotes base claim 10 as it
stood at the time of the final rejection, not as the claim stands on appeal (as
amended after final, Oct. 4, 2007; amendment entered in accordance with
the Advisory Action mailed Nov. 14, 2007). To the extent that the
Examiner’s rejection under § 112 may be present in this proceeding, we
dismiss the rejection as moot because claim 10 no longer contains the
language upon which the rejection was based.

DISCUSSION
I.
The Standing Rejections
We reverse, pro forma, the Examiner’s rejections of the claims over
the prior art, because the claims are indefinite under 35 U.S.C. § 112, second
paragraph. Rejections of claims over prior art should not be based on
speculation and assumptions as to the scope of the claims. See In re Steele,
305 F.2d 859, 862 (CCPA 1962). We enter a new ground of rejection
against all the claims on appeal, infra.

II.
Definiteness
The function of claims is (1) to point out what the invention is in such
a way as to distinguish it from the prior art; and (2) to define the scope of
protection afforded by the patent. In re Vamco Machine & Tool, Inc., 752
F.2d 1564, 1577 n.5 (Fed. Cir. 1985). The legal standard for definiteness is
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whether a claim reasonably apprises those of skill in the art of its scope. In
re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). The inquiry is merely
to determine whether the claims do, in fact, set out and circumscribe a
particular area with a reasonable degree of precision and particularity. In re
Moore, 439 F.2d 1232, 1235 (CCPA 1971). The definiteness of the
language employed must be analyzed -- not in a vacuum, but in light of the
teachings of the prior art and of the particular application disclosure as it
would be interpreted by one possessing the ordinary level of skill in the
pertinent art. Id.

New Ground of Rejection -- 35 U.S.C. § 112, Second Paragraph
We reject claims 1-4, 7-10, 12-17, and 19 under 35 U.S.C. § 112,
second paragraph, as being indefinite. Claims 1, 10, and 17 are independent.
We address each in turn.

Claim 1
Instant claim 1 recites an electronic communication that is determined
to be “undesired based on the presence of specified electronic content.” The
(specified) electronic content “includes specified words with letters in
specified orders forming a specified letter order.” The claim goes on to
recite testing that comprises “determining that specified undesired electronic
content is present if 80% or more, but less than 100%, of the specified letter
order is present within the electronic communication.” However, because
the “specified letter order” is defined in terms of what is present in the
electronic communication, 100 per cent of the “specified letter order” will
always be present in the communication. There can thus never be a
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determination that specified undesired electronic content is present in the
communication. The claim is, at the least, internally inconsistent, and is
certainly indefinite.

Claim 10
Independent claim 10 recites a method that comprises detecting the
presence of words “which are not in a language of the electronic
communication.” The claim goes on to recite “determining the electronic
communication is undesirable by determining that there are words which are
not in the language of the electronic communication.”
Appellant’s Summary of Claimed Subject Matter (App. Br. 3) points
to page 3, lines 16 through 23 of the Specification for a description of claim
10. However, the cited text does not explain, or mention, a “language” of an
electronic communication. The Specification states (at 2) that a rules-based
system may have rules that relate to the form of the email, such as “whether
the e-mail originates from undesirable locations, such as from an Asian
country and includes Asian or other non-English-language script.”
We find no explanation with respect to what might be a “language” of
an electronic communication. If we assume there is only one “language” of
a particular electronic communication (e.g., based on English language
words and characters), there would never be a determination that the
electronic communication is undesirable. Moreover, it is unclear how words
can be detected “which are not in a language” of the communication, when
the language associated with the detected words would seem to be “a
language” of the communication.
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If we assume that a “language” of the electronic communication is
determined by the first-detected indication of language (e.g., English), then
the electronic communication may be determined to be undesirable in the
event that non-English language script (e.g., Asian) is detected. By that
interpretation, however, the electronic communication may be determined to
be undesirable when English language words or letters are detected after
Asian language script is detected. The electronic communication may also
be determined to be undesirable when 99 per cent of the communication is in
Asian language script, and additionally determined to be undesirable when
99 per cent of the communication is in English language words or letters.
Further, in the terms of claim 10, would an electronic communication
containing a Latin phrase in English language lettering (e.g., “prima facie”)
result in a determination that the communication is undesirable? Or would it
not?
The metes and bound of detecting the presence of words “which are
not in a language of the electronic communication” and determining that the
communication is undesirable by determining that “there are words which
are not in the language” of the communication can thus not be ascertained in
claim 10.2

Claim 17
Independent claim 17 recites comparing words within an electronic
communication with a list of words, and establishing that an electronic
communication is “likely being undesirable” when “either (a) the words

2 Claim 8, which depends from claim 1, suffers a deficiency similar to that
of independent claim 10.
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match the list of words, or (b) when the words do not match the list of words
but differ therefrom only be a specified percentage less than 100%.”
As an initial matter, claim 17 is unclear in establishing whether both
of “(a)” and “(b)” are required. As drafted, it appears that the claim includes
within its scope a method that establishes the likelihood of an undesirable
communication by checking only that “the words match the list of words.”
In any event, according to Appellant, the Specification describes the
subject matter of claim 17 at page 3, lines 12 through 20. See App. Br. 3.
The cited text describes a test in which a specified percentage (e.g., 80%) of
a “letter order” is present, even if separated by other characters. Claim 17,
however, does not contain the word “letter” or “order.”
The Specification text (3:12-20) for claim 17 also speaks of a “test,”
which is “not specifically a rule,” that may include determining too high a
percentage of “garbage words” in an e-mail. The “garbage words” can be
detected by “too may punctuation marks” within the words, and by
“comparing the words with a dictionary.” Claim 17 does not recite detecting
punctuation marks. Claim 17 does recite “comparing words,” but does not
mention a “dictionary.”
Claim 17 does not explain to what the “specified percentage less than
100%” may refer. The quoted language does not appear to refer to “letter
order,” because words within the electronic communication are compared
for a match with “a list of words.” Nor does the language appear to relate to
detecting punctuation marks or comparing words with a dictionary, also
because words within the electronic communication are compared for a
match with “a list” of words.
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Claim 17 seems to relate to determining when the words do not match
the list of words “but differ therefrom” only by a specified percentage less
than 100 per cent -- such as two compared words being identical but two
other compared words being completely different (e.g., “cat” and “dog”).
The words thus might differ from the “list of words” by 50 per cent. Such
an embodiment, however, does not appear to be disclosed, and certainly not
in the Specification text relied upon by Appellant.
Moreover, neither the claim nor the written description specifies how
the “percentage” is to be calculated when comparing words within an
electronic communication with “a list” of words. Would the percentage be
based on the number of words that “do not match the list of words” --
whatever “matching” words with a “list of words” is to mean. Or would it
be based on how many letters within individual words differ from letters in
individual words that might appear in the “list?” If so, does the percentage
change when additional individual words differ from other individual words
that appear in the “list?” Or would the percentage be based on how many
letters differ overall with respect to the words in the electronic
communication and the “list” of words? Or on the relative number of words
that are in the communication and on the list? Or on the relative number of
words that are in the communication and not on the list? Or would the
calculation be based on some other measure of “percentage?”
We are thus unable to ascertain the subject matter that is embraced by
claim 17.

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DECISION
The Examiner’s rejections of claims 1-4, 7-10, 12-17, and 19 under 35
U.S.C. § 103(a) are reversed, pro forma.
In a new ground of rejection, we reject claims 1-4, 7-10, 12-17, and
19 under 35 U.S.C. § 112, second paragraph, as being indefinite.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (2009). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that 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 proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

REVERSED -- 37 C.F.R. § 41.50(b)

Appeal 2009-012527
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SCOTT C HARRIS
Law Office of Scott C Harris, Inc
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