Ex Parte Beck

Patent Trial and Appeal Board

Nov 30, 2015

10228182 (P.T.A.B. Nov. 30, 2015)

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.
10/228,182 08/27/2002 Mark Beck 8820-91700-US 7603
42798 7590 12/01/2015
FITCH, EVEN, TABIN & FLANNERY, LLP
120 South LaSalle Street, Suite 1600
Chicago, IL 60603-3406
EXAMINER
DAFTUAR, SAKET K
ART UNIT PAPER NUMBER
2451
MAIL DATE DELIVERY MODE
12/01/2015 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 MARK BECK1
____________________

Appeal 2013-007128
Application 10/228,182
Technology Center 2400
____________________

Before JOHN A. EVANS, ADAM J. PYONIN, and
JAMES W. DEJMEK, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant requests rehearing under 37 C.F.R. § 41.52 of our Decision
mailed August 28, 2015 (“Decision”), in which we affirmed the Examiner’s
decision rejecting claims 52–55. Appellant timely filed the Request for
Rehearing (“Request”) on October 20, 2015.
Appellant’s request is GRANTED.

1 Appellant identifies Bridgetree Incorporated as the real party in interest.
App. Br. 4.
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DISCUSSION
Appellant argues that in adopting the Examiner’s findings and reasons
for affirming the Examiner’s decision to reject claims 52–55, the Board
misapprehended or overlooked various aspects of Appellant’s arguments.
Req. Reh’g. 2. Specifically, Appellant re-asserts its position that “[a]
primary purpose of Cook is to indeed protect the ‘privacy’ of the
consumer/intended recipient,” and that the proposed combination of Cook
and Hitt would destroy the privacy of the intended recipient. Req. Reh’g. 2–
4.
We are not persuaded the Decision overlooked or misapprehended
Appellant’s argument. Rather, the Decision addresses this argument and
agrees with the Examiner’s findings. Decision 3–5. Appellant’s assertions
(Req. Reh’g 2–4) appear to simply disagree with our findings in agreement
with the Examiner rather than identify an argument that we overlooked.
In particular, as stated in the Decision, we disagree that the “primary
purpose” of Cook is to protect the privacy of the intended recipient.
Decision 4. We determined that “Cook is directed to bridging the
‘technology gap’ and ‘provid[ing] a system for communicating
electronically that is available to everyone.’” Decision 4 (citing Cook ¶¶ 7,
10). Appellant again directs our attention to paragraph 73 of Cook in
support of the position that maintaining the privacy of the intended recipient
is a primary purpose of Cook. See Req. Reh’g 2–3, Appeal Br. 6–8.
However, paragraph 73 of Cook does not state that a primary purpose of the
invention is to maintain the privacy of the intended recipient. Rather,
paragraph 73 describes the block diagram of Figure 4 “of a system for
providing services to a customer using an electronic account consistent with
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the present invention.” Cook ¶ 73. Cook describes that a customer may take
advantage of electronic services (i.e., bridging the technology gap), “while
protecting the customer’s privacy.” Id. Thus, under the example provided,
access to the electronic services is the primary purpose while privacy is a
benefit. Additionally, Appellant identifies paragraph 70 of Cook in support
of its position. Paragraph 70 recites, in relevant part, “Link 202 can provide
added security to protect the customer’s privacy, for example, by leveraging
a trusted third-party resource such as the USPS master address database.”
Cook ¶ 70 (emphasis added); Req. Reh’g. 2. Rather than stating or
otherwise indicating that maintaining a customer’s privacy is a primary
purpose, Cook instead uses permissive language in providing added security
to protect the customer’s privacy.
In view of the above discussion, we are not persuaded our Decision
overlooked or misapprehended any points relating to Appellant’s arguments
regarding the primary purpose of Cook.
Appellant further argues:
[T]hat the Board misapprehended or overlooked Appellant's
explanation as to how the “privacy” of the unconnected
message recipient in Cook would be compromised if the
recipient's physical address was included in the above-noted
vanity e-mail established for the electronically unconnected
recipient, and how such a modification to Cook [i.e., combining
with the teachings of Hitt] would change the principle of
operation of Cook (Appeal Brief, page 8).
Req. Reh’g 3. Appellant argues the Board erred by relying on the
Examiner’s finding that “Hitt teaches that information about the physical
address of the intended recipient may be ‘encrypted or augmented with other
information.’” Req. Reh’g 3 (citing Decision 4–5). Appellant further argues
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the Board erred in determining “by including encrypted data as part of the
generated email address, the privacy of the intended recipient will still be
maintained without changing the principle of operation of Cook” because
“Hitt is completely silent as to encrypting Mildred Smith’s physical
address.” Req. Reh’g. 4 (citing Decision 5).
As discussed supra, we disagree with Appellant that a primary
purpose of Cook is protecting the privacy of the intended recipient.
Nonetheless, our Decision identified an example from Hitt wherein the
ZIP+4 was encrypted. Decision 4–5. A ZIP+4 code is “information about
the physical address” of the intended recipient. See, e.g., Cook ¶ 71
(including the ZIP code in the physical address). Thus, Hitt does teach that
information about the physical address of the intended recipient may be
encrypted. See Ans. 11. Accordingly, we are unpersuaded that our reliance
on the Examiner’s finding was in error.
Further, Appellant relies on “the express teachings of Cook to use a
vanity e-mail that does not contain the physical address of the intended
recipient of the message” to support the argument that the principle of
operation of Cook would be changed if modified by the teachings of Hitt as
suggested by the Examiner. Req. Reh’g. 4. We disagree with Appellant’s
underlying premise and Appellant does not direct us to the “express
teaching” of Cook as stated by Appellant. Accordingly, we are unpersuaded
our Decision overlooked or misapprehended Appellant’s arguments
regarding whether the combined teachings of Hitt and Cook would change
the principle of operation of Cook.
Appellant also asserts that by relying on the Examiner’s findings and
conclusions, the Board either misapprehended or overlooked Appellant’s
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arguments that “a skilled artisan would be led away from the combined
teachings.” Req. Reh’g 4. Appellant does not “state with particularity the
points believed to have been misapprehended or overlooked by the Board”
in determining that a skilled artisan would not be led away from combining
the references as articulated by the Examiner. See 37 C.F.R. § 41.52(a)(1).
Accordingly, we are unpersuaded our Decision overlooked or
misapprehended Appellant’s arguments.
Further, Appellant relies on the foregoing arguments and maintains
“the Examiner failed to provide some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” Req.
Reh’g. 4. For the reasons discussed supra, we are not persuaded our
Decision overlooked or misapprehended Appellant’s arguments.
Accordingly, our Decision that the Examiner provided some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness is maintained. See Decision 5–6.
Additionally, Appellant argues “that the Board panel misapprehended
or overlooked the fact that claim 52 does not include a ‘translator.’” Req.
Reh’g. 5. In the Reply Brief, Appellant argued:
Hitt does not under any circumstance provide a generated e-
mail “to an email transmitter to facilitate electronically
delivering a message” to Mildred Smith “fully via email” using
the specifically generated “unique email” address “that
corresponds to” Mildred Smith as required by claim 52 on
appeal.
Reply Br. 2–3. While addressing this argument, we found it to be
unpersuasive because, inter alia, the Examiner relied on Cook for this
teaching rather than Hitt. Decision 6 (citing Final Act. 10). However, in the
last full sentence on page 6 of the Decision we inadvertently stated “The
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Examiner finds Cook teaches providing an email address to an email
translator as set forth in claim 52. Final Act. 10 (citing Cook ¶¶ 65–66, 69–
74) (emphasis added). In the Final Office Action, the Examiner correctly
identified the teachings in Cook as relating to “provid[ing] the email address
to an email transmitter.” Final Act. 10 (emphasis added). Accordingly, we
modify the last full sentence on page 6 of the Decision to state: “The
Examiner finds Cook teaches providing an email address to an email
transmitter as set forth in claim 52. Final Act. 10 (citing Cook ¶¶ 65–66,
69–74).” No other changes to the Decision are necessary.
Similarly, Appellant’s reliance on Hitt that “email is converted to a
physical form and physically mailed to that person” is misplaced (Req.
Reh’g. 5), as the Examiner relied on Cook for the teaching of delivering a
message to a given person fully via email. See Final Act. 10. Accordingly,
we are not persuaded our Decision overlooked or misapprehended
Appellant’s arguments.

DECISION
We have granted Appellant’s Request to the extent that we have
reconsidered our Decision affirming the Examiner’s rejection of claims 52–
55 and have modified one sentence on page 6 of our Decision, as discussed
supra; however, we maintain the remainder of the Decision, affirming the
Examiner’s decision to reject claims 52–55.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REHEARING GRANTED