Ex Parte Shuster

Patent Trial and Appeal Board

Mar 27, 2018

13752149 (P.T.A.B. Mar. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
131752,149 01/28/2013 Gary Stephen Shuster
112918 7590 03/27/2018
Coleman & Horowitt, LLP
499 W. Shaw Ave., Ste. 116
Fresno, CA 93704
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.
12524.56 4146
EXAMINER
DADA, BEEMNET W
ART UNIT PAPER NUMBER
2435
MAILDATE DELIVERY MODE
03/27/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY STEPHEN SHUSTER
Appeal2017-010942
Application 13/752,149
Technology Center 2400
Before BRUCE R. WINSOR, MICHAEL M. BARRY, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 28--47. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2017-010942
Application 13/752,149
CLAIMED SUBJECT MATTER
The claims are directed generally to e-mail authentication. More
particularly, the claims are directed to a system and method which
determines whether a received e-mail has been received from a forged
source. Spec, Abstract. For example, an e-mail purporting to be sent from a
legitimate e-mail address may, in fact, be a malicious e-mail which actually
originated from another address. Spec. 2, 1. 19--Spec. 3, 1. 5.
Consistent with the Specification, Appellant's claims address this
issue of sender address forgery by having the recipient's mail server query a
verification host. Spec. 18, 11. 1-7. The verification host is described as a
server associated with the purported sender (or some authorized third party)
which maintains sent e-mails and generates a database of identifying
information that can be used to uniquely identify those sent e-mails. Spec.
20, 11. 6-15. When an e-mail is received, the recipient mail server
formulates a query that includes identifying information. Spec. 18, 11. 8-21.
The identifying information includes text from the body of the e-mail, or a
hash generated from content in the body of the e-mail. Id. They query is
sent to the verification host, which compares the identifying information
included in the query to its database of sent
e-mails. If there is a match, the verification host confirms the validity of the
source. If not, then verification host indicates to the recipient mail server
that the e-mail may be from a forged source address. Spec. 19, 1. 15-Spec.
20, 1. 5. Claim 28, reproduced below with the key limitation in italics, is
illustrative of the claimed subject matter:
28. A method for determining whether at least one e-mail
originates from a forged source, the method comprising:
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Application 13/752,149
receiving data at a client device pertaining to the least one
e-mail directed to at least one intended recipient, wherein the
data includes information identifying a purported sender;
sending a query from the client device to a verification
host requesting confirmation that the at least one e-mail
originated from the purported sender, wherein the query includes
information identifj;ing the at least one e-mail comprising at
least one of at least a portion of text contained in a message body
of the e-mail or a hash of the at least a portion of the text;
receiving, by the client device, a response from the
verification host indicating whether or not the at least one e-mail
originated from the purported sender based on whether the
purported sender sent an e-mail that matches the information
identifying the at least one e-mail to the intended recipient; and
determining that the at least one e-mail originates from a
forged source unless the response indicates that the at least one
e-mail originated from the purported sender.
Br. 9 (Claims App'x).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Shuster
Shuster
Hancock
US 8,126,971 B2 Feb. 28, 2012
US 8,364,773 B2 Jan. 29, 2013
US 2005/0021644 Al Jan. 27, 2005
REJECTIONS
Claims 28--47 are rejected on the ground of nonstatutory obviousness-
type double patenting as being unpatentable over claims 1-20 of U.S. Patent
Nos. 8,364,773 B2 and 8,126,971 B2. Final Act. 2--4. Appellant does not
contest these rejections in their brief. Accordingly, we summarily sustain
these rejections.
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Application 13/752,149
Claims 28--47 stand rejected under pre-AIA 35 U.S.C. § 102(b) as
being anticipated by Hancock US 2005/0021644 Al. Final Act. 4---6.
ISSUE
The dispositive issue for the 35 U.S.C. § 102(b) rejection is whether
Hancock discloses "wherein the query includes information identifying the
at least one e-mail comprising at least one of at least a portion of text
contained in a message body of the e-mail or a hash of the at least a portion
of the text," as recited in claim 28?
ANALYSIS
In rejecting claim 28, the Examiner finds Hancock discloses each and
every limitation recited in the claim. Relevant here, the Examiner finds the
limitation "wherein the query includes information identifying the at least
one e-mail comprising at least one of at least a portion of text contained in a
message body of the e-mail or a hash of the at least a portion of the text,"
disclosed by Hancock's retrieval and validation logic. Final Act. 4--5 (citing
Hancock i-fi-138-39). The Examiner also finds Hancock's description of
retrieving the e-mail address of the sender and using validation logic to
query registration networks for a matching e-mail address discloses the
disputed limitation. Final Act. 2.
Appellant contends Hancock does not disclose the disputed limitation
because it merely compares the sender's e-mail address against a database of
valid e-mail addresses on a registration server to determine whether thee-
mail address is valid. App. Br. 3. Appellant contends the claimed invention
is an improvement on Hancock because it compares information from the
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Application 13/752,149
message body to authenticate the message itself, and not merely an e-mail
address as disclosed by Hancock. We agree.
Anticipation is a test of strict identity. Trintec Indus., Inc. v. Top-
US.A. Corp., 295 F.3d 1292, 1296 (Fed. Cir. 2002). That is, to meet the
strict identity test for anticipation, all elements must be disclosed in the same
way as they are arranged or combined in the claim. Therasense, Inc. v.
Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). Here, the
Examiner finds querying a registration server using the e-mail address of a
sender is identical to a query that "includes information identifying the at
least one e-mail comprising at least one of at least a portion of text
contained in a message body of the e-mail or a hash of the at least a portion
of the text." The sender e-mail address, however, is not part of the message
body. Rather, it is included in the message header, which Appellant's
Specification makes clear is distinct from the message body. See Spec. 13,
11. 3-12. As such, it cannot be relied upon as disclosing "at least a portion of
text contained in a message body" as the Examiner has done here.
Accordingly, we are persuaded the Examiner erred in rejecting claim 28, as
well as independent claim 44 which recites the same limitation, and we do
not sustain their rejection. For the same reason, we also do not sustain the
rejection of the remaining claims, which depend thereon.
DECISION
We reverse the Examiner's rejection of claims 28--47 under 35 U.S.C.
§ 102(b).
We summarily affirm the Examiner's nonstatutory obviousness-type
double patenting rejections of claims 28--47.
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Application 13/752,149
Because we have affirmed the rejection of each claim under at least
one ground, we affirm the Examiner's rejection of claims 2 8--4 7.
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.
§ 1.136(a)(l )(iv).
AFFRIMED
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