Ex Parte BaharDownload PDFPatent Trial and Appeal BoardMar 13, 201709978224 (P.T.A.B. Mar. 13, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 133/117 4472 EXAMINER BILGRAMI, ASGHAR H ART UNIT PAPER NUMBER 2645 MAIL DATE DELIVERY MODE 09/978,224 10/16/2001 Reuben Bahar 7590 03/13/2017 CAHILL VON HELLENS & GLAZER PLC ALLTEN: MARVIN A GLAZER 155 PARK ONE 2141 E HIGHLAND AVENUE PHOENIX, AZ 85016 03/13/2017 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 REUBEN BAHAR Appeal 2016-008391 Application 09/978,2241 Technology Center 2600 Before JEAN R. HOMERE, THU A. DANG, and JON M. JURGOVAN, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant identifies the real party in interest as the inventor of record. App. Br. 3. The present appeal relates to an earlier appeal (2010-003425, decided May 7, 2012) in which we affirmed the Examiner’s rejections of claims 18^U189, 191-213, 215-229, 231-234, 236-243, 248-255, 258-271, 279, 327-340, and 346-348. Appeal 2016-008391 Application 09/978,224 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 184—189, 191—210, 218, 236, 237, 239-243, 248— 255, 258-260, 263-268, 271, 279, 327-335, 338, 339, 346, 349-353, 356- 366, 368—380, and 382, which constitute all of the claims pending in this appeal. App. Br. 25 (Claims App’x). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellant’s Invention Appellant invented a method and system for allowing a sending party to identify an individual who accessed an e-mail delivered to a target e-mail address. Spec. 1:8—17. In particular, prior to accessing the delivered email, the individual attempting to access the email is prompted to provide biometric data identifying him/her. Upon supplying the requested biometric data, the identified individual is allowed to access the e-mail irrespective of being the intended recipient or not, and the identity of the identified individual is then forwarded to the sending party to confirm proper delivery of the e-mail. Spec. 11:20-12:8, 17:20-18:13, Fig. 4. Illustrative Claim Independent claim 236 further illustrates the invention as follows: 236. A method for identifying a party accessing an e-mail sent by a sending party to an intended recipient, said method comprising: a) receiving an e-mail at a recipient e-mail address; b) detecting an access event by the accessing party; 2 Appeal 2016-008391 Application 09/978,224 c) requiring the accessing party associated with said access event to input identifying data prior to allowing the requested access, said identifying data identifying the accessing party associated with said requested access; d) receiving the identifying data associated with the accessing party; e) permitting said e-mail to be accessed when the identifying data received from the accessing party identifies the intended recipient; and f) permitting said e-mail to be accessed when the identifying data received from the accessing party does not identify the intended recipient. Prior Art Relied Upon The Examiner relies on the following prior art as evidence of unpatentability: Flynn US 6,618,747 B1 Sept. 9, 2003 Choi US 6,629,131 B1 Sept. 30, 2003 Kanevsky US 6,836,846 B1 Dec. 28,2004 Rejections on Appeal The Examiner rejects the claims on appeal as follows: 1. Claims 236, 248, 252, 258, 260, 264, and 268 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. 2. Claims 18^U189, 191-210, 218, 236, 237, 239-243, 248-255, 258-260, 263-268, 271, 279, 327-335, 338, 339, 346, 349-353, 356-366, 368—380, and 382 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Choi, Flynn, and Kanevsky. 3 Appeal 2016-008391 Application 09/978,224 ANALYSIS We consider Appellant’s arguments seriatim as they are presented in the Appeal Brief, pages 10-24.2 Enablement Rejection Regarding claim 236, Appellant argues that the Examiner erred in concluding that the recitation “permitting said e-mail to be accessed when the identifying data received from the accessing party does not identify the intended recipient” is not adequately supported by the Specification. According to Appellant, the disputed limitation is sufficiently described in the Specification to enable one of ordinary skill in the art to make and practice the invention without undue experimentation. App. Br. 15—21 (citing Spec. 6:15-20, 10:23-11:2, 11:20-12:8, 16:16-23,24:5-16, 52:7-13, Fig. 4). We agree with Appellant. The Specification indicates that one of the objectives of the invention is allow the sender of the email to actively identify an individual who has accessed an email even when the individual is not identified as the intended recipient. Spec. 6:15—20. The Specification further indicates that so long as the identity of the accessing recipient is verified, the recipient will be allowed to access the email even if it was delivered to the wrong e-mail address. Spec. 11:20-12:8. We thus agree with Appellant that one of ordinary skill in the art would readily be apprised that any recipient whose 2 Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (filed February 29, 2016), and the Answer (mailed July 16, 2016) for their respective details. We have considered in this Decision only those arguments Appellant actually raised in the Brief. Any other arguments Appellant could have made but chose not to make in the Brief are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2013). 4 Appeal 2016-008391 Application 09/978,224 identity has been verified would be allowed to access the email irrespective of being the intended email recipient or not. We, therefore, do not sustain the Examiner’s enablement rejection of claims 236, 248, 252, 258, 260, 264, and 268. Obviousness Rejection Appellant argues that the Examiner erred in finding that the combination of Choi, Kanevsky, and Flynn teaches or suggests permitting an e-mail to be accessed both when the identifying data entered by the accessing party identifies (or does not identify) the intended recipient, as recited in independent claim 236. App. Br. 21—24. In particular, Appellant argues that Kanevsky is limited to permitting access to the email when the identifying data entered by an accessing party identifies the intended recipient. App. Br. 22—23 (citing Kanevsky 6:1—26). According to Appellant, Kanevsky further discloses, contrary to the invention, when the identifying data entered by the accessing party does not identify the intended recipient, denying the recipient access to the email, and destroying the message. App. Br. 22—23 (citing Kanevsky 6:27—59). We are not persuaded. We note at the outset that the disputed limitation does not require providing access to unauthorized/unauthenticated users. That is, although the disputed limitation requires permitting access to the email to anyone who has provided identification data regardless of whether the identification data identifies the intended recipient, it does not necessarily require providing such access to unauthorized/unauthenticated users. Therefore, under the broadest reasonable interpretation of the disputed limitations, it suffices that the accessing party (including the intended recipient and unintended 5 Appeal 2016-008391 Application 09/978,224 recipients) provide the requested identification data to be permitted access to the e-mail. As correctly noted by Appellant, Kanevsky discloses a system wherein access to an email is provided to an accessing party whose entered authentication data identifies the intended recipient. Kanevsky 6:1—26. Kanevsky further discloses permitting access to the email to anyone featured on a list of authorized individuals whose entered data (albeit authorized) may not identify the intended recipient (e.g., a group mailbox). So long as the individual is authenticated as being part of the group, the individual will be permitted to access the group mailbox. However, if the individual is not authenticated (i.e. not authorized as being part of the group), the individual will not be given access, and the email will be destroyed. Kanevsky 6:27— 52. We do not agree with Appellant’s characterization of the latter cited portion of Kanevsky. More importantly, we find that the cited disclosure of Kanevsky teaches the disputed limitations, as broadly claimed. That is, if the data entered identifies the intended recipient (the owner of the mailbox), the user will be permitted access. Further, if the identification data indicates that the user is authorized by the mailbox owner, the user will be given access thereto despite the fact that the user identification data does not identify the intended recipient (owner of the mailbox). We are, therefore, satisfied that the combination of Choi, Flynn, and Kanevsky teaches or suggests the disputed limitations of claim 236. Claims 184-189, 191-210, 218, 237, 239-243, 248-255, 258-260, 263-268, 271, 279, 327-335, 338, 339, 346, 349-353, 356-366, 368-380, and 382 not argued separately fall therewith. See 37 C.F.R. § 41.37(c)(l)(vii). 6 Appeal 2016-008391 Application 09/978,224 DECISION We affirm the Examiner’s prior art rejection of claims 184—189, 191— 210, 218, 236, 237, 239-243, 248-255, 258-260, 263-268, 271, 279, 327- 335, 338, 339, 346, 349—353, 356—366, 368—380, and 382 as set forth above. However, we reverse the Examiner’s enablement rejection of claims 236, 248, 252, 258, 260, 264, and 268. Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). 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 7 Copy with citationCopy as parenthetical citation