Ex Parte Owen et al

Patent Trial and Appeal Board

Oct 31, 2016

11030612 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111030,612 0110612005
43699 7590 11/02/2016
Go Daddy Operating Company, LLC
14455 NORTH HAYDEN ROAD
SUITE 219
SCOTTSDALE, AZ 85260
FIRST NAMED INVENTOR
Brad Owen
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.
0031 1990
EXAMINER
HENDERSON, ESTHER BENOIT
ART UNIT PAPER NUMBER
2458
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
inventions@godaddy.com
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRAD OWEN
and
JASON STEINER
Appeal2014-006797
Application 11/030,612
Technology Center 2400
Before THU A. DANG, MELISSA A. RAAP ALA, and
KAMRAN JIVANI, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 21-58. Claims 1-20 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Appeal2014-006797
Application 11/030,612
A. INVENTION
According to Appellants, the invention relates to "filtering email
messages, email delivery confirmations, and email message integrity" (Spec.
iT 1 ).
B. REPRESENTATIVE CLAIMS
Claims 21 and 39 are exemplary:
21. A system, comprising a server computer having a database
storing an email message attribute used to identify an email
message that was or will be sent via a computer network from a
sender to a recipient, wherein said email message attribute was
stored in said database by said sender, and said email message
attribute is a separate data from said email message, and said
email message is not stored in said database, and wherein said
database is utilized by an email filter for obtaining a status of said
email message attribute and routing said email message based on
said status.
39. ii .. method, comprising the steps of:
sending an email message via a computer network from a
sender to a recipient, and
logging an email message attribute used to identify said
email message to a database at a computer network location,
wherein said email message attribute is a separate data from said
email message, and said email message is not stored in said
database, and said email message attribute is indicative of
whether said email message has originated from said sender.
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Appeal2014-006797
Application 11/030,612
C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Matsuo
Pollack
Malik
Bandini
US 6,374,246 Bl
US 6,505,236 Bl
US 7,155,484 B2
US 2009/0157708 Al
Apr. 16, 2002
Jan. 7,2003
Dec. 26, 2006
June 18, 2009
Claims 39--42 stand rejected under 35 U.S.C. § 102(a) as anticipated
by Malik.
Claims 21-23, 27-32, 35, 37, 38, 43, 47-51, and 54--58 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Malik and Matsuo.
Claims 24--26, 44--46, 52, and 53 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Malik, Matsuo, and Pollack.
Claims 33, 34, and 36 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Malik, Matsuo, and Bandini.
II. ISSUES
The principal issues before us are whether the Examiner erred in
finding that:
1. Malik discloses "logging an email message attribute used to
identify said email message to a database ... said email message attribute is
indicative of whether said email message has originated from said sender"
(claim 39).
2. The combination of Malik and Matsuo discloses or at least suggests
"a database storing an email message attribute used to identify an email
message ... stored in said database by said sender, ... " (claim 21).
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Appeal2014-006797
Application 11/030,612
Ill. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Appellants' Specification
1. According to Appellants, "email message attributes" are "data that
may be used to identify the email message," which may include "the entire
email message, the email message headers, the date and time the message
was sent, the email message ID, the Recipient's email address, the Sender's
email address, ... " (Spec. i-f 33).
Malik
2. Malik discloses an email attribute database that includes a list of
desired email attributes, wherein the email attributes may include a
particular sender's name, a specific email address of a sender, a specified
sender IP address, email content, type of content, and the like (col. 3, 11. 44--
48).
3. Malik further discloses that an attribute extracting filter extracts
known attributes from each of the email messages, and the extracted
attributes are conveyed to the attribute compare logic which compares the
extracted attributes with each of the desired email attributes in the desired
email attribute database. The comparison results in a determination of
whether or not the email message includes any desired attributes rather than
spam or junk mail (col. 4, 11. 54--67).
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Appeal2014-006797
Application 11/030,612
IV. ANALYSIS
35 U.S. C. § 102(a)
As to claim 39, Appellants contend "Malik's attributes are not 'used
to identify' an email message" (App. Br. 8). Although Appellants concede
"some or all of '[Malik's] attributes may be used to determine whether or
not an email message should be deleted," according to Appellants, "the
attributes are not 'used to identify said email message"' (id. at 9). That is,
although Appellants concede that Appellants' Specification states "the email
message attributes may include ... the Recipient's address, [and] the
Sender's email address," Appellants contend "attributes as taught in Malik
are not specific to, and may not be 'used to identify said email message'
... " (id.).
We have considered all of Appellants' arguments and evidence
presented. However, we disagree with Appellants' contentions regarding the
Examiner's rejection of the claims. Based on the record before us, we are
unpersuaded that the Examiner erred in finding that claim 39 is anticipated
by Malik.
As a preliminary matter of claim construction, we give the claims
their broadest reasonable interpretation consistent with the Specification.
See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Although
Appellants contend, "attributes as taught in Malik are not specific to" an
email message (App. Br. 9), we note such contention is not commensurate in
scope with the language of claim 39, because claim 39 does not require an
"attribute" to be "specific" to any email message.
Appellants' Specification defines "email message attributes" as "data
that may be used to identify the email message," such as the Recipient's
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Appeal2014-006797
Application 11/030,612
email address, the Sender's email address, and the like (FF 1). Appellants
concede that Appellants' Specification states "the email message attributes
may include ... the Recipient's email address, [and] the Sender's email
address" (App. Br. 9 (emphasis omitted)). Giving the term its broadest,
reasonable interpretation consistent with the Specification and claims, we
conclude an "email message attribute" is any data used to identify an email
message, which includes email addresses which identify the email message
as going to a particular recipient and coming from a particular sender.
We find no error with the Examiner's finding that "Malik teaches an
email attribute database that includes email attributes which are detectable
attributes or parameters associated with an email message," wherein the
attributes "include, but are not limited to: an email address of a sender, email
content, list of attachments, and type of content" (Ans. 4; FF 2). As the
Examiner points out, "appellants have not provided any distinction of the
difference between the 'used to identify' feature claimed and performing
mail filtering to identify spam messages using the cited attributes in Malik"
(Ans. 4).
On this record, we are not persuaded of error in the Examiner's
reliance on Malik for disclosing storing email message attributes used to
identify an email message (such as identifying the sender via the sender's
email address) to a database, wherein the email message attribute "is
indicative of whether said email message has originated from said sender" as
set forth in claim 39 (Ans. 4, FF 2). Appellants do not provide substantive
arguments for claims 40-42 separate from claim 39 (App. Br. 7), and thus,
these claims fall with claim 39.
35 U.S.C. § 103(a)
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Appeal2014-006797
Application 11/030,612
As for independent claims 21, 32, 43, 47, and 54, although Appellants
concede that Malik' s attributes are used "to determine whether one or more
emails in a group of emails should be, for example, deleted or forwarded,"
Appellants merely repeat "Malik's 'attributes' cannot be used to identify an
email" (App. Br. 11 ). Appellants then contend although Matsuo "may be
used to identify users and email recipients[,] ... Matsuo does not teach
storing an email message attribute that may be used to identify an email"
(App. Br. 12). That is, "identifying users and email recipients (Matsuo) does
not teach or suggest identifying an email message" (id.)
As discussed above, we are unpersuaded of error in the Examiner's
reliance on Malik for disclosing attributes "used to identify an email," such
as identifying the sender via the sender's email address (Ans. 4; FF 2).
Further, we also note that Appellants concede that Malik's attributes are also
used "to determine whether one or more emails in a group of emails should
be, for example, deleted or forwarded" (App. Br. 11). That is, Malik's
attributes are also used to determine/identify whether an email is to be
deleted or forwarded (FF 3).
We are also unpersuaded by Appellants' contention that "identifying
users and email recipients (Matsuo) does not teach or suggest identifying an
email message" (App. Br. 12). That is, as discussed above, giving the term
its broadest, reasonable interpretation consistent with the Specification and
claims, we conclude an "email message attribute" is any data that is used to
identify an email message, which includes email addresses which identify
the email message as going to a particular recipient and coming from a
particular sender.
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Appeal2014-006797
Application 11/030,612
Accordingly, we agree with the Examiner's finding that Malik in view
of Matsuo teaches or at least suggests "a database storing an email message
attribute used to identify an email message ... stored in said database by
said sender, ... " as recited in claim 21, and similarly recited in claims 3 2,
43, 47, and 54
On this record, we are unpersuaded of error in the Examiner's
rejection of claims 21, 32, 43, 47, and 54, and of claims 22, 23, 27-31, 35,
37, 38, 48-51, and 55-58 depending respectively therefrom over Malik and
Matsuo.
As for claims 24, 25, 44--46, 52, and 53, Appellants merely contend
"an email attachment (Pollack) does not fairly teach or suggest an email
message attribute used to identify an email message" (App. Br. 13).
However, as discussed above, we find no error with the Examiner's reliance
on Malik and Matsuo for teaching and suggesting such limitations.
Accordingly, we also find no error with the Examiner's rejection of 24, 25,
44--46, 52, and 53 over Malik, Matsuo, and Pollack.
Appellants do not provide separate arguments for claims 26, 33, 34,
and 36 (App. Br. 13), accordingly, we also affirm the rejection of these
claims over Malik and Matsuo, in further view of Bandini.
V. CONCLUSION AND DECISION
We affirm the Examiner's rejections of claims 39--42 under 35 U.S.C.
§ 102(a), and claims 21-38, and 43-58 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)(l )(iv).
AFFIRMED
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