Ex Parte Bahar

Patent Trial and Appeal Board

Mar 13, 2017

09978224 (P.T.A.B. Mar. 13, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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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;
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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.
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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).
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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
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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).
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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
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