Ex Parte Bantz et al

Board of Patent Appeals and Interferences

Apr 23, 2008

09788071 (B.P.A.I. Apr. 23, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVID FREDERICK BANTZ and QUENTIN A. GOUEDARD
____________________

Appeal 2007-3605
Application 09/788,071
Technology Center 2100
____________________

Decided: April 23, 2008
____________________

Before JAMES D. THOMAS, ALLEN R. MACDONALD, and ST. JOHN
COURTENAY III, Administrative Patent Judges.

MACDONALD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. §§ 6(b) and 134(a) from a final
rejection of claims 1, 3-6, 10, 11, 16, 17, 19-22, 26, 27, 32, 33, 35-38, 42,
43, and 48.

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Claim 1 is exemplary:

1. A method of identifying objectionable content, comprising:

receiving requested content;

retrieving a user profile for a requesting user, wherein the user
profile includes parameters for identifying objectionable content and a
plurality of thresholds including a threshold for each of a plurality of
categories of objectionable content;

analyzing the requested content using the parameters stored in
the user profile of the requesting user to identify an amount of
objectionable content based on the parameters for each of the plurality
of categories of objectionable content;

determining a score for the requested content for each of the
plurality of categories of objectionable content based on the amount
and category of objectionable content contained in the requested
content; and

storing the requested content in an objectionable content data
structure if a score for the requested content is above at least one
threshold for at least one category of objectionable content.1

The Examiner relies upon the following evidence in rejecting the
claims on appeal:
Palmer US 5,195,135 Mar. 16, 1993
Kirsch US 6,772,196 B1 Aug. 03, 2004
(filed Jul. 27, 2000)

1 In our analysis, we refer to this step as the “storing step.”
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Hoffberg US 6,850,252 B1 Feb. 1, 2005
(filed Oct. 5, 2000)

Jelbert GB 2 347 053 A Aug. 23, 2000

Claims 1, 3, 5, 6, 10, 11, 16, 17, 19, 21, 22, 26, 27, 32, 33, 35, 37, 38,
42, 43, and 482 stand rejected as unpatentable under 35 U.S.C. § 103(a) over
Hoffberg, Palmer, and Kirsch.3
Claims 4, 20, and 364 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hoffberg, Palmer, Kirsch, and Jelbert.
We affirm.
FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Hoffberg
1. Hoffberg teaches a content filtering system that identifies particular
types of content. (Col. 222, l. 49 – col. 223, l. 12 and abstract.)
Palmer
2. Palmer teaches a content filtering system that identifies and censors
undesirable content according to multiple levels of censorship. (Col.
4, ll. 25-38.)

2 We refer to all claims in this rejection as Group 1.
3 In our analysis, we refer to the combination of Hoffberg, Palmer, and
Kirsch as the “combination.”
4 We refer to all claims in this rejection as Group 2.
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Kirsch
3. Kirsch teaches retrieving inbound email from the internet. (Col. 6, ll.
46-64.)
4. Kirsch teaches generating a signature that represents content of a
received email. (Col. 6, ll. 13-17.)
5. Kirsch teaches that signatures identify undesired content in received
email. (Col. 1, ll. 34-35, col. 7, ll. 1-17, and col. 9, ll. 48-51.)
6. Kirsch teaches generating a similarity score between a signature of a
received email and a signature that corresponds to undesired content.
(Col. 7, ll. 1-17 and 40-47 and col. 16, ll. 18-29.)
7. Kirsch teaches determining how the similarity score compares to
multiple threshold values. (Col. 7, ll. 40-47 and col. 16, ll. 30-55.)
8. Kirsch teaches storing the received email in hold queue 72 if the
similarity score exceeds a particular one of the multiple threshold
values. (Id.)
PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006).
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“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.’”

KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).
“[W]hen a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.”
Id. at 1740 (citing Sakraida, 425 U.S. 273, 282).
ANALYSIS
Group 1
Appellants group claims in Group 1 together under a separate heading
and present the same arguments for all claims in this group. (App. Br. 10-
14.) Therefore, we select claim 1 as the representative claim on which to
decide the appeal of all claims in this group.
The Examiner concludes that the combination renders claim 1
obvious. (Ans. 3.) Appellants contend that the Examiner erred in
concluding that the combination renders claim 1 obvious because (1) there is
no motivation to combine the references in the combination to arrive at
claim 1 and (2) the combination fails to teach the storing step. (App. Br. 10-
14.)
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Thus, the issues are whether Appellants have shown that the Examiner
erred by (1) combining the teachings and suggestions of the references in the
combination and (2) finding that the combination teaches the storing step.

Combinability
The Examiner finds reason to combine the teachings and suggestions
of the references in the combination because each of the references in the
combination perform similar functions, namely, filtering content based on
criteria and because incorporating the teachings of Kirsch permits review of
filtered content. (Ans. 3, 4, 6, and 7.)
Appellants state that combining the teachings of the references in the
combination to arrive at claim 1 would not have been obvious without prior
knowledge of Appellants’ claimed invention. (App. Br. 13.) However, such
statement does not address the Examiner’s proffered reasons for combining
the teachings and suggestions of references in the combination (Ans. 3, 4, 6,
and 7) and thus do not convince us that the Examiner’s proffered reasons for
combining the teachings and suggestions are insufficient and, accordingly,
does not convince us that the Examiner engaged in impermissible hindsight
reconstruction. We affirm the Examiner’s finding to combine the teachings
and suggestions of the references in the combination for the reasons
provided by the Examiner (Ans. 3, 4, 6, and 7).
Moreover, we find that, at the time of the invention, there was
sufficient reason to combine the teachings and suggestions of Hoffberg,
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Palmer, and Kirsch because combining (a) Hoffberg’s content filtering
system (FF 1) with (b) Palmer’s content filtering system that censors
undesirable content according to multiple levels of censorship (FF 2) and (c)
Kirsch’s content filtering system that stores objectionable content (FF 8)
changed the functions of none of the combined features of (a), (b), and (c).
KSR, 127 S. Ct. at 1740 (citing Sakraida, 425 U.S. 273, 282). Moreover, the
combination yielded no more than predictable results of identifying and
storing objectionable content. Id.

Storing step
Appellants argue that the combination fails to teach the storing step
because none of the references in the combination teaches storing requested
content in a data structure if a score for the content is above a threshold.
(App. Br. 11-13.) In particular, Appellants argue that the Examiner’s
reliance on Kirsch to teach storing requested content fails because Kirsch’s
system (1) filters and stores unsolicited email rather than requested content
and (2) does not filter email requested by a user, even email with
objectionable content. (Id.) The Examiner replies that Kirsch’s email access
program requests all email, whether solicited or unsolicited. (Ans. 6.)
Moreover, the Examiner replies that Kirsch’s system filters out email that
contains undesirable content rather than filtering out unsolicited email. (Id.)
We agree with the Examiner (Ans. 4-7) and, for the following reasons,
we find that Kirsch teaches storing requested content in a data structure if a
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score for the content is above a threshold. Kirsch teaches retrieving inbound
email from the internet. (FF 3.) Contrary to Appellants’ argument that
Kirsch’s system filters and stores unsolicited email rather than requested
content (App. Br. 11-12), we find that Kirsch teaches retrieving inbound
email encompasses retrieving requested content. We agree with the
Examiner that when a user requests access to an email box, the user receives
requested content. (Ans. 6.) Moreover, we find that a received email that is
a response to an email communication is requested content.
Contrary to Appellants’ argument that Kirsch’s system does not filter
email requested by a user (App. Br. 11-12), we find that Kirsch teaches
filtering requested email by teaching (i) analyzing whether a score for
retrieved email is above a threshold (FF 7) and (ii) storing email with a score
above a threshold in a queue (FF 8). We find that Kirsch’s storing requested
email in a queue in response to a score for the email being above a threshold
teaches storing requested content in a data structure if a score for the content
is above a threshold. Thus, we conclude that Appellants have not shown that
the Examiner erred in finding that the combination teaches the storing step.
Appellants’ arguments of an absence of suggestion to modify the
references in the combination to arrive at the storing step (App. Br. 13) are
fully addressed by our findings that the combination teaches the storing step.
Therefore, we conclude that Appellants have not shown that the
Examiner erred in concluding that the combination renders obvious claim 1
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and claims 3, 5, 6, 10, 11, 16, 17, 19, 21, 22, 26, 27, 32, 33, 35, 37, 38, 42,
43, and 48.5
Group 2
Appellants group claims in Group 2 together under a separate heading
and present the same arguments for all claims in this group. (App. Br. 14.)
Therefore, we select claim 4 as the representative claim on which to decide
the appeal of all claims in this group.
The Examiner concludes that the combined teachings and suggestions
of the combination with Jelbert render claim 4 obvious. (Ans. 5.)
Appellants argue that the Examiner erred in concluding that claim 4 is
obvious by virtue of its dependency on claim 1. (App. Br. 14.) In particular,
Appellants argue that neither the combination nor Jelbert teaches the storing
step.
We found supra with regard to claim 1 that Appellants have not
shown that the Examiner erred in finding that the combination teaches the
storing step. Thus, Appellants’ argument that the combined teachings of
Jelbert with those of the combination fail to teach the storing step is
unpersuasive.

5 We note that claim 33 recites a “computer program product in a computer
readable medium.” Appellants’ Specification provides examples of
“computer readable media” that include wireless communications links
using radio frequency and light wave transmissions. (Spec. 16:7-12.)
Accordingly, we construe claim 33 to encompass wave forms.
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Therefore, we conclude that Appellants have not shown that the
Examiner erred in concluding that the combined teachings and suggestions
of the combination and Jelbert render obvious claim 4 and claims 20 and 36.
CONCLUSIONS OF LAW
We conclude that:
(1) Appellants have not shown that the Examiner erred in concluding
that claims 1, 3, 5, 6, 10, 11, 16, 17, 19, 21, 22, 26, 27, 32, 33, 35, 37, 38,
42, 43, and 48 are unpatentable under 35 U.S.C. § 103(a) over Hoffberg,
Palmer, and Kirsch;
(2) Appellants have not shown that the Examiner erred in concluding
that claims 4, 20, and 36 are unpatentable under 35 U.S.C. § 103(a) over
Hoffberg, Palmer, Kirsch, and Jelbert; and
(3) Claims 1, 3-6, 10, 11, 16, 17, 19-22, 26, 27, 32, 33, 35-38, 42, 43,
and 48 are unpatentable.
DECISION
The Examiner’s rejections of claims 1, 3-6, 10, 11, 16, 17, 19-22, 26,
27, 32, 33, 35-38, 42, 43, and 48 are affirmed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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DUKE W. YEE
YEE & ASSOCIATES, P.C.
P.O. BOX 802333
DALLAS TX 75380