Ex Parte Ben-Ezra et al

Patent Trial and Appeal Board

Dec 10, 2014

11972650 (P.T.A.B. Dec. 10, 2014)

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.
11/972,650 01/11/2008 Asaf Ben-Ezra IL920070124US1/A9856 7106
46159 7590 12/10/2014
SUGHRUE MION PLLC
USPTO CUSTOMER NO WITH IBM/SVL
2100 PENNSYLVANIA AVENUE, N.W.
WASHINGTON, DC 20037
EXAMINER
WAQAS, SAAD A
ART UNIT PAPER NUMBER
2468
MAIL DATE DELIVERY MODE
12/10/2014 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 ASAF BEN-EZRA, OLGA BEREZIN, HAIM SCHNEIDER,
OFIRA TAL-AVIV, and ASAF ZINGER
____________

Appeal 2012-007342
Application 11/972,650
Technology Center 2400
____________

Before MAHSHID D. SAADAT, JEAN R. HOMERE, and
CHRISTA P. ZADO, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellants1 appeal under 35 U.S.C. § 134(a) from a non-final
rejection of claims 1–4, 6–11, 13–17, and 19–22.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellants, the real party in interest is International Business
Machines, Corp. (App. Br. 2).
2 Claims 5, 12, and 18 have been canceled.
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STATEMENT OF THE CASE
Appellants’ invention relates to methods and systems for eliminating
redundant notifications to SIP3/SIMPLE4 subscribers (Spec. ¶¶ 5, 6).
Exemplary claim 1 under appeal reads as follows:
1. A system for eliminating redundant notifications to
subscribers, the system comprising:
a notification fingerprinter which generates a fingerprint
from the contents of a subscriber notification using a predefined
fingerprinting method;
a fingerprint comparator which compares a fingerprint of
a previously-sent notification with a fingerprint of a waiting-to-
be-sent notification; and
a server which sends said waiting-to-be-sent notification
to said subscriber based on a result of the comparing by said
fingerprint comparator, wherein:
the server sends said waiting-to-be-sent notification to
said subscriber if said fingerprint of said waiting-to-be-sent
notification and said fingerprint of said previously-sent
notification do not match,
the server does not send said waiting-to-be-sent
notification to said subscriber if said fingerprint of said waiting-
to-be-sent notification and said fingerprint of said previously-
sent notification match, and
said notification fingerprinter generates said fingerprint
from a hash value of said subscriber notification and the
probability that two different notifications will have the same
fingerprint is below a predefined threshold.

3 Session Initiation Protocol (SIP).
4 SIP Instant Messaging and Presence Leveraging Extensions (SIMPLE).
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Claim 1 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lawson (US 6,185,613 B1; Feb. 6, 2001) and Patel (US
7,149,778 B1; Dec. 12, 2006). (See Ans. 4–7).5

ISSUES
Appellants’ arguments present us with the following issues:
1. Did the Examiner err in rejecting claim 1 because the cited
references teach or suggest delivering the e-mail even when the fingerprints
match?
2. Did the Examiner err in combining the references because they
are directed to non-analogous art?

ANALYSIS
The Examiner relies on Lawson for disclosing the recited claim
features except for directing an e-mail to a user based on matching the e-
mail fingerprint with that of the previously sent messages (Ans. 4–5), for
which the Examiner relies on Patel (Ans. 5–7). The Examiner concludes
that it would have been obvious to one of ordinary skill in the art to combine
Lawson with Patel to enhance the detecting technique with respect to suspect
messages (Ans. 7 (citing Patel, col. 1, ll. 53–54)). The Examiner specifically
finds Patel processes e-mails and separates unsolicited messages by

5 Separate patentability is not argued for the remaining claims rejected under
35 U.S.C. § 103(a) as being unpatentable over Lawson and Patel alone, or in
combination with the other prior art of record. Appellants argue the
patentability of claims 2, 3, 7, 8–10, and 14–16 based on the same reasoning
presented for claim 1 and of the remaining claims based on the alleged
failure of the other cited prior art in curing the alleged deficiency of the
Lawson-Patel combination (App. Br. 15–16).
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comparing the message fingerprint with those in the message database 206
(Ans. 19 (citing Patel col. 5, l. 65–col. 6, l. 10)). The Examiner further finds
Patel sends the message to a user’s inbox when the message fingerprint does
not match the fingerprint of messages that are received previously and stored
in the message database (id. (citing Patel col. 8, ll. 40–44 and col. 10, ll. 20–
29)).
Appellants’ contentions are generally focused on the teachings of
Patel and state:
However, in Patel, the matching or non-matching of
fingerprints of e-mails always leads to the e-mail being
delivered to the user (i.e., the subscriber) either in the user’s
inbox or the user’s bulk mail folder. This is evident from col.
10, lines 20-24 of Patel that disclose the message being sent to
the user’s bulk mail folder, i.e.[,] delivered to the subscriber,
when the fingerprints match.
(App. Br. 13).
Additionally, Appellants contend the proposed combination of
Lawson and Patel is based on combining non-analogous art improperly
because Lawson relates to filtering event notifications regarding changes to
a database, whereas Patel describes techniques for sorting suspect e-mail
messages (App. Br. 14). Appellants assert one of ordinary skill in the art
would not have combined the references as “Lawson’s event notification
filtering system is set on the event generator side . . . whereas Patel’s e-
mail sorting system is set on the subscriber side . . .” (id.).
Claim 1 requires sending the waiting-to-be-sent notification to the
subscriber if the fingerprint of the message does not match the fingerprint of
the previously-sent message. Claim 1 further recites if the fingerprint of the
message matches the fingerprint of the previously-sent message, the server
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does not send the waiting-to-be-sent notification to the subscriber.
Therefore, the step of not sending the waiting-to-be-sent notification if the
fingerprint of the message matches the fingerprint of the previously-sent
message is not required because it is presented in conditional language.
Claim 8 is a method claim and claim 14 is an apparatus claim that recites
similar functionalities recited in the process steps of claim 1.
Normally the prior art need not describe conditional steps set forth in
a method claim if, after giving the claim its broadest reasonable
construction, the method as claimed does not invoke them. Cf. Ex parte
Katz, 2010-006083, 2011 WL 514314, at *4 (BPAI 2011) (non-precedential)
(citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004)). See also Cybersettle, Inc. v. Nat’l Arbitration Forum, Inc., 243 Fed.
Appx. 603,607 (Fed. Cir. 2007) (unpublished) (“[i]t is of course true that
method steps may be contingent. If the condition for performing a
contingent step is not satisfied, the performance recited by the step need not
be carried out in order for the claimed method to be performed.” In the
instant case, when method claim 1 is given its broadest reasonable
interpretation, the claim is broad enough to cover a method which does not
include the step of not sending the waiting-to-be-sent notification if the
fingerprint of the message matches the fingerprint of the previously-sent
message. See also Manual of Patent Examining Procedure, MPEP
§ 2111.04 (claim scope is not limited by claim language that suggests or
makes optional but does not require steps to be performed). Therefore,
because not sending the waiting-to-be-sent notification is conditional on an
event that may not occur (the fingerprint of the waiting-to-be-sent
notification matches the fingerprint of the previously-sent notification), the
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last step is optional. That is, the prior art does not need to disclose if the
fingerprint of the message matches the fingerprint of the previously-sent
message, the server does not send the waiting-to-be-sent notification to the
subscriber. Accordingly, Appellants’ argument contending Patel fails to
disclose not sending the waiting-to-be-sent notification to the subscriber if
the fingerprint of the message matches the fingerprint of the previously-sent
message is not commensurate in scope with claim 1 and thereby not
persuasive of Examiner error. Accordingly, the Examiner did not err in
rejecting claim 1 although the cited references fail to teach or suggest
delivering the e-mail when the fingerprints match.
With respect to the combination of Lawson and Patel, we are also not
persuaded by Appellants’ contention that the references are non-analogous
because, as stated by the Examiner, both references are concerned with
“filtering ‘suspect’ or ‘unsolicited’ messages” (Ans. 19–20 (citing Patel col.
3, ll. 14–15; Lawson col. 5, ll. 35–37)). We also agree with the Examiner
(Ans. 20) that the skilled artisan would have combined the references
because, similar to Lawson, the e-mail sorting application of Patel is
operated by an e-mail application service provider instead of an element on
the subscriber side (see Patel col. 3, ll. 65–67). Accordingly, the Examiner
did not err in combining the references.

DECISION
The decision of the Examiner to reject claims 1–4, 6–11, 13–17, and
19–22 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)(1)(iv).
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AFFIRMED

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