Ex Parte Katsikas

Patent Trial and Appeal Board

Aug 19, 2016

12882130 (P.T.A.B. Aug. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/882, 130 09/14/2010
25096 7590 08/23/2016
PERKINS COIE LLP - SEA General
PATENT-SEA
P.O. BOX 1247
SEATTLE, WA 98111-1247
FIRST NAMED INVENTOR
Peter L. Katsikas
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
032052-8021.USOS 2337
EXAMINER
REZA, MOHAMMAD W
ART UNIT PAPER NUMBER
2436
NOTIFICATION DATE DELIVERY MODE
08/23/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER L. KATSIKAS
Appeal2015-002172
Application 12/882,130
Technology Center 2400
Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and
JON M. JURGOV AN, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 36-53.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Howell V Investments
LLC (App. Br. 2).
2 Claims 1-35, 54, and 55 have been canceled.
Appeal2015-002172
Application 12/882, 130
STATEMENT OF THE CASE
Introduction
Appellant's invention relates to a system for eliminating unauthorized
electronic mail (Spec. Title). Exemplary claim 36 under appeal reads as
follows:
36. A system, comprising:
one or more hardware processors and one or more
computer memories together providing:
an email proxy pre-processing module that is configured
to allow designation of a proxy email address that is associated
with a primary email address but distinct from the primary email
address to receive email from email addresses not on an
authorized senders list,
wherein the authorized senders list maintains email
addresses authorized to have emails sent to the primary email
address received by the primary email address,
wherein, upon receiving incoming email addressed to the
proxy email address from an email address not on the authorized
senders list, the email proxy preprocessing module is further
configured to accept the email and to unconditionally add the
email address from which the incoming email was received to
the authorized senders list.
The Examiner's Rejections
Claims 36-53 stand rejected on the ground of nonstatutory
obviousness-type double patenting (OTDP) as being unpatentable over
claims 1-29 of U.S. Patent No. 7,822,977 (Final Act. 2-3). 3
3 The Examiner has withdrawn this OTDP rejection in view of Appellant's
terminal disclaimer filed July 8, 2014 (Ans. 9).
2
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Application 12/882, 130
Claims 36-53 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dickie (US 6,643,687 Bl; Nov. 4, 2003) and Fleming (US
6,249,805 Bl; June 19, 2001) (Final Act. 8-15).
Appellant's Contentions
Appellant contends the following:
( 1) Fleming's methods of adding an email address to the authorized
senders list (i.e., manually adding an address, automatically adding
recipients to whom the user has sent email, or adding all senders of emails
that the user has sorted into a particular folder) each involve a condition that
must be satisfied for the address to be added to the list, whereas claim 3 6
requires the email module is "configured to accept the email and to
unconditionally add the email address from which the incoming email was
received to the authorized senders list" (emphasis added) (App. Br. 4--10;
Reply Br. 2-5). In the context of claim 36, "unconditionally'; means, upon
receiving an email, no further conditions are imposed by the email module's
logic that would bar the email module from adding the email address from
the authorized senders list (Reply Br. 5).
(2) The combination of Dickie and Fleming does not teach the email
proxy pre-processing module of claim 36, because Dickie's use of a proxy
email address does not teach modifying an authorized senders list, and
Fleming's email addressed to a user does not teach receiving an incoming
email addressed to a proxy email address (App. Br. 7; Reply Br. 5).
(3) The combination of Dickie and Fleming is improper, because:
(a) the Examiner has not provided a reason why one of ordinary
skill in the art would be motivated to create a new method of adding
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users to Fleming's authorized senders list based on Dickie's
forwarding of messages received at a proxy address (App. Br. 1 O;
Reply Br. 6);
(b) using Dickie's hidden proxy email address would render
Fleming inoperable for its intended purpose, as Fleming would not
have access to the sender's address to add that address to the access
list (Reply Br. 7); and
( c) one of ordinary skill in the art would not have combined the
different systems of Dickie, which uses an intermediate proxy email
server to look up the actual recipient email address, and Fleming,
which uses a system that can monitor user actions such as moving
mail to a different folder. 4
ANALYSIS
We have reviewed the Examiner;s rejections in light of Appellant;s
arguments (App. Br. 4--12; Reply Br. 2-8) that the Examiner erred. We
disagree with Appellant's above contentions (1}-(3). We adopt as our own
1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken (Final Act. 8-15) and 2) the reasons set forth by
the Examiner in the Examiner's Answer (Ans. 9-16) in response to
Appellant's Appeal Brief. We concur with the conclusions reached by the
4 Independent claims 47 and 52 are argued on the same basis as independent
claim 36 (App. Br. 11-12), and separate patentability is not argued for the
dependent claims (id.). Except for our ultimate decision, these claims are
not discussed further.
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Application 12/882, 130
Examiner. We highlight and address specific findings and arguments for
emphasis as follows.
Issue 1: Under § 103, did the Examiner err by finding Fleming
teaches an email module "configured to accept the email and to
unconditionally add the email address from which the incoming email was
received to the authorized senders list," as recited in claim 36?
Regarding Appellant's contention (1), the Examiner finds Appellant's
Specification does not describe "unconditionally" adding an email address to
the authorized list (Ans. 10).5 Appellant's Specification does, however,
describe conditionally accepting an email from an unknown sender (Spec.
20: 1-10, table describing Fig. I IA: "Senders sending email to this address
with reach the end-user if the proper conditions are met;" conditions include,
e.g., the maximum number of senders that may use the recipients address),
and subsequently adding that email address to the authorized senders list
once the email is accepted (Spec. 18:30-19:19). Therefore, we agree with
the Examiner's finding that the broadest reasonable interpretation consistent
with Appellant's disclosure of an email module "configured to accept the
5 In the event of further prosecution of this application, we leave it to the
Examiner to consider whether Appellant has demonstrated possession of
"unconditionally adding the email address" for claims 36-53 under 35
U.S.C. § 112, 1st Paragraph, the written description requirement. Although
the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no
inference should be drawn when the Board elects not to do so. See Manual
of Patent Examining Procedure (MPEP) § 1213.02 (9th Ed., Rev. 07.2015,
Nov. 2015).
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email and to unconditionally add the email address ... to the authorized
senders list" does not preclude Fleming's email module that is configured to
accept and unconditionally add an incoming email from an unknown sender
address to a Junk Mail folder, which encompasses an authorized senders list
as later determined by the user (Ans. 12-13 (citing Fleming col. 4:37--44)).
See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (claim language is
given its broadest reasonable interpretation during prosecution).
Accordingly, we are not persuaded of Examiner error in the rejection of
claim 36.
Issue 2: Under § 103, did the Examiner err by finding the
combination of Dickie and Fleming teaches the email proxy pre-processing
module of claim 36?
Appellanf s contention (2) is not persuasive of Examiner error in the
rejection, because Appellant is essentially attacking the Dickie and Fleming
references individually where the rejection is based on their combination.
See In re Keller, 642 F.2d 413, 426 (CCPA 1981) ("[O]ne cannot show non-
obviousness by attacking references individually where ... the rejections are
based on combinations of references."). The Examiner finds, and we agree,
that a skilled artisan would recognize the combination of Dickie's proxy
email address system, which allows a user to receive email at proxy email
address that is associated with, but distinct from, a primary email address
(Final Act. 4--5; Ans. 14 (citing Dickie col. 2:15-22 and col. 5:3-35)), and
Fleming's junk email filtering system, which is configured to accept emails
and unconditionally add email addresses to an authorized sender list (Ans.
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12-14 (citing Fleming col. 4:37--44), as discussed supra), would result in the
claimed email proxy server that is configured to receive email addressed to a
proxy email address and add unknown users to an authorized senders list
(Ans. 14-15).
Issue 3: Under§ 103, did the Examiner err in rejecting claim 36
because Dickie and Fleming are not properly combinable?
We are not persuaded of Examiner error by Appellant's contention
(3)(a), and find the Examiner has provided "some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness,"
specifically that one of ordinary skill in the network security art would
recognize the benefit of adding Fleming's junk email filtering concept to the
proxy email system of Dickie, as a better way to filter out unwanted junk
mail from unknown users while allowing emails from authorized users to be
received (Final Act. 5; Ans. 15-16 (citing Fleming col. 4:10-65)). See KSR
Int'! v. Teleflex, Inc., 550 U.S. 398, 417-18 (2007) (quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)).
Appellant's contentions (3)(b) and (3)(c), presented for the first time
in the Reply Brief without a showing of good cause for the delay, are
entitled to no consideration. See Optivus Technology, Inc. v. Ion Beam
Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (argument raised for
the first time in the reply brief that could have been raised in the opening
brief is waived); accord Ex parte Borden, 93 USPQ2d 1473, 1473-74
(BPAI 2010) (informative opinion) (absent a showing of good cause, the
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Board is not required to address an argument newly presented in the reply
brief that could have been presented in the principal brief on appeal).
Nonetheless, we are not persuaded by Appellant's contention (3)(b)
that Fleming would not have access to the sender's hidden email address to
add that address to the access list, because the proffered combination uses
the recipient's hidden proxy email of Dickie, and does not hide the sender's
email address (Final Act. 4--5 (citing Dickie col. 2:15-22)). Further,
Appellant's contention (3)(c) that one of ordinary skill in the art would not
have combined the different systems of Dickie and Fleming is not persuasive
of error. "The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference .... Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art."
Keller, 642 F.2d at 425. When combining references, "a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ." KSR, 550 U.S. at 418. Thus, we agree with the
Examiner's finding that a skilled artisan would recognize the ability to
combine the concepts of Dickie's proxy email system and Fleming's junk
filtering email system (Final Act. 4--5; Ans. 14--15).
Accordingly, we sustain the Examiner's rejection of independent
claim 36 under 35 U.S.C. § 103(a) as being unpatentable over Dickie and
Fleming.
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Application 12/882, 130
DECISION6
The decision of the Examiner to reject claims 36-53 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
6 We note claims 52 and 53 recite a computer-readable storage device.
However, Appellant's Specification does not define storage device to
exclude transitory media. Consequently, the claimed storage device
encompasses transitory media, which is not patent eligible. See Ex parte
Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential). In the event of
further prosecution, we leave it to the Examiner to consider whether at least
claims 52 and 53 should be rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter. As mentioned above, although, the Board is
authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should
be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) § 1213.02 (9th Ed., Rev. 7, Nov. 2015).
9