Ex Parte Sielken et al

Patent Trial and Appeal Board

Jun 27, 2016

13417713 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/417,713 03/12/2012
77242 7590 06/29/2016
IBM Raleigh S/W Group
c/o Patent Law of Virginia, PLLC
PO Box 9319
Richmond, VA 23227
FIRST NAMED INVENTOR
Robert Selby Sielken
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.
RSW920110033US2 (IBM 6004
27C)
EXAMINER
SALAD,ABDULLAHIELMI
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
06/29/2016 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):
brian@patentlawva.com
brianjteague@gmail.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT SELBY SIELKEN,
WILLIAM CARLETON WIMER II, and DAVID LA VERNE ZANTER
Appeal2015-006414
Application 13/417,713 1
Technology Center 2400
Before ELENI MANTIS MERCADER, JAMES W. DEJMEK, and
JOHN D. HAMANN, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1---6. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.
THE CLAIMED INVENTION
Appellants' claimed invention relates to "electronic communications
and addressing of electronic communications." Spec. i-f 2. Claim 4 is
1 According to Appellants, the real party in interest is International Business
Machines Corporation. Br. 2.
Appeal2015-006414
Application 13/417,713
illustrative of the subject matter of the appeal and is reproduced below with
emphasis added to disputed limitations.
4. A method for dynamic decoding of email addresses,
compnsmg:
receiving a data package from a device;
determining if the data package comprises an address
supported by the device that has been converted from an
address that is not supported by the device, the supported
address comprising a local-part and a domain, the local part
comprising an encoded version of the entire non-supported
address;
converting the standard address into the non-supported
address; and
replacing the supported address in the data package with
the non-supported message.
REJECTION ON APPEAL2
The Examiner rejected claims 1---6 under 35 U.S.C. § 102(e) as being
anticipated by Bayles et al. (US 2011/0314109 Al; Dec. 22, 2011). 3
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
contentions that the Examiner erred. In reaching our decision, we consider
all evidence presented and all arguments made by Appellants. We below
2 The Examiner also provisionally rejected claims 1-6 for obviousness-type
double patenting over claims 4--9 and 13-18 of copending Application
No. 13/166,897. No patent has issued yet from that copending Application,
nor do Appellants present arguments addressing this provisional rejection.
We find it is premature to address this provisional rejection. See In re
Moncla, 95 USPQ2d 1884, 1885 (BP AI 2010) (precedential).
3 The Examiner withdrew (i) the § 102( e) rejection over Zanter of claims 1-
6 and (ii) the§ 103(a) rejection of claims 1-6 over Bayles combined with
Taylor. Ans. 4.
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Application 13/417,713
address specific findings and arguments relating to each of the Examiner's
rejections Appellants are appealing.
We first address Appellants' arguments concerning Bayles with
respect to claim 4, and we then address these arguments with respect to
claims 1-3 in a subsequent section.
(1) Bayles anticipation rejection ofclaims 4-6
Appellants argue Bayles fails to anticipate claim 4 because Bayles
does not disclose that the local part of the supported address comprises an
encoded version of the entire non-supported address. Br. 6-10. Appellants
argue Bayles instead discloses "encod[ing] the local part of the non-
supported email address into the local part of the newly created standard
email address, and encod[ing] the domain of the non-supported email
address into the domain of the newly created standard email address." Br. 7
(citing Bayles i-f 27).
The Examiner finds Bayles discloses generating an alternate email
address from a primary email address. Ans. 3 (citing Bayles i-f 10). The
Examiner further finds "Bayles teaches encoding an entire non-supported
address into the local part of a newly created supported address and using a
non-valid domain for the domain of the newly created supported address."
Id. (citing Bayles i-fi-125-27, Figs. 2A, 2B).
We agree with Appellants' arguments that the cited portions of Bayles
fail to disclose the disputed limitation. Bayles does disclose generating an
alternate email address from a primary email address. See, e.g., Bayles
i-fi-110, 27. However, we find Bayles discloses encoding the local part of the
primary address to yield the local part of the alternate address and separately
encoding the domain of the primary address to yield the domain of the
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Application 13/417,713
alternate address. See Bayles il 27 ("Using the same [Punycode] encoding
for domain name provides uniform encoding of the whole email address, and
the encoded username satisfies the ASCII Compatible Encoding (ACE)
requirement."). This finding is further supported by the disclosed formula
for generating the alternate email address, which shows the local part and
domain of the address are separately encoded. See Bayles i-f 28
("Encode(UTF8-username@utf8-domain) = punycode(UTF8-encode-
username) @punycode(UTF 8-encode-domain)"). Thus, the cited portions
of Bayles do not disclose that the local part of the created (alternate) email
address comprises the entire non-supported (primary) email address because
it lacks the domain. See id. Accordingly, we do not sustain this rejection for
claim 4, nor claims 5 and 6 which depend from claim 4 and incorporate the
disputed limitation.
(2) Bayles anticipation rejection of claims 1-3
Appellants make the same arguments concerning Bayles' lack of
disclosure with respect to the limitations of claim 1. See Br. 6-10 (arguing,
Bayles does not disclose that (i) the local part of the supported address
comprises an encoded version of the entire non-supported address and (ii) a
non-valid domain is used for the domain of the newly created supported
address). However, these disputed limitations for claim 1 occur within a
conditional step (i.e., occurring "if the data package contains an address that
is not supported by the device to receive or synchronize with the data
package ... "). Br. 17. As we address below, claim 1 's conditional step
does not need to be performed under the broadest reasonable interpretation
of the claim.
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Application 13/417,713
During examination, claims are given their broadest reasonable
interpretation consistent with the specification. See In re Am. A cad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The broadest reasonable
interpretation of claim 1 encompasses instances in which the prerequisite
condition for claim 1 's conditional step is not met (i.e., when the data
package contains addresses that are supported). Thus, the broadest
reasonable interpretation encompasses methods where only the non-
conditional steps recited in claim 1 are performed.
Such a finding follows from the direct inverse relationship between
invalidity and infringement. "[I]t is axiomatic that that which would literally
infringe if later anticipates if earlier." Bristol-Myers Squibb Co. v. Ben
Venue Labs, Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001). As to infringement,
conditional method steps need not be performed for infringement to be
found. See, e.g., Applera Corp. v. Illumina, Inc., 375 Fed. Appx. 12, 21
(Fed. Cir. 2010) (unpublished) (affirming an interpretation of a method
claim as including a step that need not be practiced if the condition for
practicing the step is not met); Cybersettle, Inc. v. Nat 'l Arbitration Forum,
Inc., 243 Fed. Appx. 603, 607 (Fed. Cir. 2007) (unpublished) ("It is of
course true that method steps may be contingent. If the condition for
performing a contingent step is not satisfied, the performance recited by the
step need not be carried out in order for the claimed method to be
performed."). Likewise, as to invalidity, conditional method steps generally
need not be shown in establishing invalidity. Accordingly, Appellants'
arguments relating to claim 1 are inapposite because they are directed to
limitations within a conditional step that need not be shown for establishing
invalidity. Accordingly, we sustain this rejection for claim 1, as well as
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Application 13/417,713
claims 2 and 3, which depend from claim 1 and which modify limitations
within the conditional step that need not be shown.
DECISION
(1) We affirm the Examiner's§ 102(e) rejection of claims 1-3 as
being anticipated by Bayles.
(2) We reverse the Examiner's § 102( e) rejection of claims 4--6 as
being anticipated by Bayles.
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-IN-PART
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