Ex Parte Barrus et al

Patent Trial and Appeal Board

Dec 23, 2013

10816602 (P.T.A.B. Dec. 23, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/816,602 04/02/2004 William G. Barrus BOC920030104US1 (025) 9699
46322 7590 12/24/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33487
EXAMINER
CHRISTENSEN, SCOTT B
ART UNIT PAPER NUMBER
2444
MAIL DATE DELIVERY MODE
12/24/2013 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 WILLIAM G. BARRUS,
CARY L. BATES,
ROBERT J. CRENSHAW, and
PAUL REUBEN DAY
____________

Appeal 2011-010294
Application 10/816,602
Technology Center 2400
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
MICHAEL W. KIM, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
William G. Barrus, et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1, 5, 9, 10, 12, 16, 17 and 19-30.
We have jurisdiction under 35 U.S.C. § 6(b) (2002).

Appeal 2011-010294
Application 10/816,602

2
SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A cooperative spam processing system comprising:
a plurality of e-mail clients communicatively linked to one
another;
a plurality of cooperative spam control processors, each of said
plurality of cooperative spam control processors coupled to a
corresponding one of said e-mail clients, wherein said plurality of
cooperative spam control processors are configured to detect spam
and to notify others of said plurality of cooperative spam control
processors of said spam; and,
a first group administrator for a common group of e-mail
clients, said first group administrator establishes an agreement with a
second group administrator for a different group of e-mail clients for
the exchange of spam notifications between members of said common
group and members of said different group, said members of said
different group having respective cooperative spam control
processors; and,
at least one member of said common group exchanges said
spam notifications with at least one member of said different group
based on said agreement.

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Mar. 7, 2011) and Reply Brief (“Reply Br.,” filed May 25, 2011),
and the Examiner’s Answer (“Answer,” mailed Mar. 25, 2011).
Appeal 2011-010294
Application 10/816,602

3
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Judge US 7,096,498 B2 Aug. 22, 2006

Bandini US 2002/0199095 A1 Dec. 26, 2002

“Official Notice (See MPEP 2144.03) is taken that it would have been well
known to assign notifications or warnings from other entities a level of trust
that is lower than self made notifications or warnings, requiring that some
sort of confirmation be made of received notifications or warnings.”
[hereinafter “Official Notice”] Ans. 7.

The following rejection is before us for review:
1. Claims 1, 5, 9, 10, 12, 16, 17 and 19, 20, 22-24, 26-28 and 30 are
rejected under 35 U.S.C. §103(a) as being unpatentable over Judge
and Bandini.
2. Claims 21, 25, and 29 is rejected under 35 U.S.C. §103(a) as being
unpatentable over Judge, Bandini, and Official Notice.

ISSUE
Did the Examiner err in rejecting the claimed subject matter as
obvious under §103 over the cited prior art combination?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Appeal 2011-010294
Application 10/816,602

4
Additional findings of fact may appear in the Analysis below.

ANALYSIS
The Appellants argued 4 groups of claims: (a) claim 1 (App. Br. 11);
(b) claims 5 and 12 (App. Br. 13); (c) claims 19, 23, and 27 (App. Br. 13);
and, (d) claims 21, 25, and 29 (App. Br. 14). The other claims on appeal -
claims 9, 10, 16, 17 and 20, 22, 24, 26, 28, 30 - are not specifically argued.
We will group them with those claims argued over and on which they
depend: thus, (a) claims 1 and 22; (b) claims 5, 9, 10, 12, 16, 17, 26, and 30;
(c) claims 19, 20, 23, 24, 27, and 28; and, (d) claims 21, 25, and 29. We
select claims 1, 5, 19, and 21 as the representative claims for these 4 groups,
and the remaining claims (a) 22; (b) 9, 10, 12, 16, 17, 26, and 30; (c) 23 and
27; and (d) 25 and 29 stand or fall with claims 1, 5, 19, and 21, respectively.
37 C.F.R. § 41.37(c)(1)(vii) (2007).

Claim 1
The Appellants challenge the statement in the Answer (p. 4): “‘The
mail relays, as used in Bandini, are associated with different enterprises
(Bandini: Paragraph [0014]), and thus would presumably have different
administrators.’” (App. Br. 12). According to the Appellants, this “is a
factually-unsupported inherency argument” (App. Br. 12).
First, the argument is not commensurate in scope with what is
claimed. The claim 1 limitation at issue reads:
a first group administrator for a common group of e-mail
clients, said first group administrator establishes an agreement
with a second group administrator for a different group of e-
Appeal 2011-010294
Application 10/816,602

5
mail clients for the exchange of spam notifications between
members of said common group and members of said different
group, said members of said different group having respective
cooperative spam control processors.
App. Br. 17, Claims App’x. Notwithstanding the Examiner’s position, the
claim calls for a first and a second group administrator, but it does not
require them to be “different.” Only the corresponding groups of e-mail
clients need be different. In light of the scope of claim, it is sufficient to
provide evidence that two administrators are disclosed in the prior art in
establishing the prima facie case of obviousness.
Second, the Appellants’ view that the Examiner is making an
unsupported inherency argument is unpersuasive as to error in the rejection.
The Examiner relied on Bandini as evidence of a “second” group
administrator. This was a necessary step to satisfy the initial burden of
establishing a prima facie case of obviousness because Judge, the primary
reference, “does not appear to disclose expressly that the first group
administrator establishes an agreement with a second group administrator
. . . .” Ans. 4. Regarding Judge, the Examiner found that it disclosed “a first
group administrator for a common group of e-mail clients (see e.g. col. 19,
lines 13-16).” Id. We do not see that the Appellants have challenged that
finding of fact and therefore we take it as accepted that it was known to
provide, per se, an administrator for a common group of e-mail clients. The
only question is whether it would have been obvious to one of ordinary skill
in the art to modify Judge in view of Bandini to include a second group
administrator such that a first group administrator establishes an agreement
with a second group administrator as claimed. As the Examiner (Ans. 4)
Appeal 2011-010294
Application 10/816,602

6
explains, Bandini discloses
the exchange of SPAM data between e-mail relays is part of an
agreement between entities to share efforts in preventing the
reception of SPAM. In another embodiment, the exchange of
SPAM data is by e-mail relays associated with a single
organization or set of related organizations, such as affiliated
companies.
[0040]. Bandini’s e-mail relays are computer programs that collect and filter
SPAM messages from emails (e.g., [0011]: “e-mail relay 46 [Fig. 1]
advantageously takes a form . . . to filter e-mail messages”). To ensure
success, SPAM attributes and thresholds must be established and maintained
[0020] and, according to Bandini, this is handled by an “administrator”
([0021]). Given this express disclosure of an “administrator”, one of
ordinary skill in the art reading Bandini’s disclosure of e-mail relays
between entities would infer therefrom that there is an administrator for each
entity’s e-mail relay. In evaluating Bandini, it is proper to take into account
not only the specific teachings therein but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom. In re
Preda, 401 F.2d 825, 826 (CCPA 1968). For the foregoing reasons, the
Examiner has satisfied the burden of establishing that it would have been
obvious to one of ordinary skill in the art to modify Judge in view of Bandini
([0040]) to include a second group administrator such that a first group
administrator establishes an agreement with a second group administrator as
claimed by a preponderance of the evidence.
No other arguments having been raised and no objective evidence of
nonobviousness having been provided, for the foregoing reasons, we find the
Appeal 2011-010294
Application 10/816,602

7
Examiner did not err in rejecting the claimed subject matter as obvious
under §103 over the cited prior art combination.
The rejection of claim 1, and claim 22 which stands and falls with
claim 1, is sustained.

Claim 5
The Appellants argue that the Examiner has failed to “properly
characterize the scope and content of the applied prior art” (App. Br. 13) in
establishing a prima facie case of obviousness for the subject matter of claim
5. The limitations at issue are
obeying said notification if said rules 13 indicate that
notifications from said peer e-mail recipient are to be obeyed;
ignoring said notification if said rules indicate that
notifications from said peer e-mail recipient are to be ignored;
and,
overriding said notification where said e-mail message
meets criteria established in said policy for overriding a spam
notification.
App. Br. 17, Claims App’x.
The Examiner stated in the Final Rejection (p. 4): “Regarding Claim
5, the claimed invention is substantially similar to that claimed in claim 1,
and is rejected for substantially similar reasons.” Since the limitations at
issue are not present in claim 1, the Examiner’s finding claim 5 substantially
similar to claim 1 means the limitations at issue were not given weight. In
response to the Appellants’ argument, the Examiner further explains that
said limitations are couched in conditional language. That is, claim 5
Appeal 2011-010294
Application 10/816,602

8
“provide[s] no requirement that the policies actually include the cited rules,
but rather only provide[s] a requirement of doing what the rule requires if
the rule is present.” Ans. 11-12.
The Examiner’s construction of claim 5 comports with the broadest
reasonable construction of claim 5. Claim 5 is worded so that the limitations
at issue are required to be performed (a) “if an e-mail is subsequently
received which corresponds to said identified spam message.” Accordingly,
(b) if not, i.e., if an e-mail is not subsequently received which corresponds to
said identified spam message, the limitations at issue are not performed.
Claim 5 is reasonably broadly construed as defining a group that consists of
both scenarios (a) and (b). It is the latter scenario that the Examiner
apparently found obvious over the cited prior art combination. In light of
the claim’s construction, which construction the Appellants have not
rebutted (see Reply Br. 6), we disagree that the Examiner has failed to
“properly characterize the scope and content of the applied prior art” (App.
Br. 13) in establishing a prima facie case of obviousness for the subject
matter of claim 5.
No other arguments having been raised and no objective evidence of
nonobviousness having been provided, for the foregoing reasons, we find the
Examiner did not err in rejecting the claimed subject matter as obvious
under §103 over the cited prior art combination.
The rejection of claim 5, and claim 9, 10, 12, 16, 17, 26, and 30 which
stand and fall with claim 5, is sustained.

Claims 19
Appeal 2011-010294
Application 10/816,602

9
The Appellants argue that “[s]imply put and as admitted by the
Examiner, there is no mention of ‘levels of trust’ being established or
determined in Judge and Bandini and accordingly, once again the Examiner
has failed to properly characterize the scope and content of the applied prior
art.” App. Br. 14.
The Appellants’ argument is unpersuasive as to error in the rejection
because it does not address the Examiner’s position in establishing a prima
facie case of obviousness. Albeit, as the Appellants argue, claim 19 further
limits the agreement in claim 1 so that it “establishes a policy that
determines which level of trust to apply to spam notifications emanating
from other ones of the computing groups” and the cited references do not
expressly disclose such a policy, the Examiner’s position is that one of
ordinary skill in the art can infer from Bandini’s disclosure of an agreement
between entities to share efforts in preventing the reception of SPAM that
the Bandini agreement includes such a policy. Ans. 13, referring to [0040],
see supra. The Examiner also makes the point that claim 19 does not require
determining a level of trust – instead, it requires that the agreement between
the administrators establish a policy for said determination. No
determination need be made. That appears to be a reasonably broad
construction of the claim, a construction that the Appellants have not
addressed.
No other arguments having been raised and no objective evidence of
nonobviousness having been provided, for the foregoing reasons, we find the
Examiner did not err in rejecting the claimed subject matter as obvious
under §103 over the cited prior art combination.
Appeal 2011-010294
Application 10/816,602

10
The rejection of claim 19, and claims 23 and 27 which stand and fall
with claim 19, is sustained.

Claims 21
The Appellants argue that “the Examiner's analysis has read the active
limitations of ‘a level of trust’ and ‘a lower level of trust’ for application to
spam notifications completely out of claim 21” (App. Br. 14). That is not
the case. The Examiner provided a full page of reasoning to explain why “it
would have been obvious to have the level of trust being a lower level than
those spam notifications emanating from within a respective computing
group.” Ans. 7.
The Appellants also argue that “[t]he Examiner has admitted that
Judge and Bandini both fail to teach a ‘level of trust’ and as such it is
improper to take official notice of applying a ‘lower level of trust’ as
claimed by the Appellants.” App. Br. 15. While it is true that the Examiner
took Official Notice “that it would have been well known to assign
notifications or warnings from other entities a level of trust that is lower than
self made notifications or warnings, requiring that some sort of confirmation
be made of received notifications or warnings” (Ans. 7), we do not see why
it was improper to do so. “Having established that this knowledge was in
the art, the [E]xaminer could then properly rely . . . on a conclusion of
obviousness ‘from common knowledge and common sense of the person of
ordinary skill in the art without any specific hint or suggestion in a particular
reference.’” In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969). It is the
Appellants’ burden to traverse the Examiner’s notice. “We did not mean to
Appeal 2011-010294
Application 10/816,602

11
imply . . . that a bald challenge, with nothing more, would be all that was
needed. . . .We feel it to be perfectly consistent with the principles governing
procedural due process to require that a challenge to judicial notice by the
board contain adequate information or argument so that on its face it creates
a reasonable doubt regarding the circumstances justifying the judicial
notice.” In re Boon, 439 F.2d 724, 728 (CCPA 1971). That has not been
done here by the bald assertion that “the Examiner has erred in taking
Official Notice without any substantial evidence” (App. Br. 15).
No other arguments having been raised and no objective evidence of
nonobviousness having been provided, for the foregoing reasons, we find the
Examiner did not err in rejecting the claimed subject matter as obvious
under §103 over the cited prior art combination.
The rejection of claim 21, and claims 25 and 29 which stand and fall
with claim 19, is sustained.

CONCLUSIONS
The rejections of claims 1, 5, 9, 10, 12, 16, 17, 19, 20, 22-24, and 26-
28, and 30 under 35 U.S.C. §103(a) as being unpatentable over Judge and
Bandini and claims 21, 25, and 29 under 35 U.S.C. §103(a) as being
unpatentable over Judge, Bandini, and Official Notice are sustained.

Appeal 2011-010294
Application 10/816,602

12
DECISION
The decision of the Examiner to reject claims 1, 5, 9, 10, 12, 16, 17
and 19-30 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

rvb