Ex Parte Bhogal et al

Patent Trial and Appeal Board

Feb 26, 2016

13080884 (P.T.A.B. Feb. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/080,884 04/06/2011
133905 7590 03/01/2016
IBM CORPORATION- POUGHKEEPSIE (JVL)
C/O LESLIE A. VAN LEEUWEN
6123 PEBBLE GARDEN CT.
AUSTIN, TX 78739
Kulvir Singh Bhogal
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
A US920 l 10026US 1 2761
EXAMINER
SAVENKOV, VADIM
ART UNIT PAPER NUMBER
2431
NOTIFICATION DATE DELIVERY MODE
03/01/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
leslie@vI-patents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KUL VIR SINGH BHOGAL and
LISA SEACAT DELUCA
Appeal2014-004322
Application 13/080,8841
Technology Center 2400
Before LARRY J. HUME, NATHAN A. ENGELS, and
CARLL. SILVERMAN, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Non-
Final Rejection of claims 1-3, 5-10, 12-16, and 18-20. Appellants have
previously canceled claims 4, 11, and 17. 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.
Appeal2014-004322
Application 13/080,884
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed "invention relates to an approach
that identifies possible imposters in a network environment. More
particularly, the present invention relates to an approach that uses historical
interaction patterns to identify a possible imposter in a network
environment." Spec. i-f 1.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added):
1. A method implemented by an information
handling system comprising:
receiving, from a source, an electronic message at a
network interface accessible from the information handling
system;
identifying a source address corresponding to the
electronic message, wherein the source address also
corresponds to a legitimate source;
extracting one or more current usage patterns from the
received electronic message;
retrieving, from a nonvolatile data store, one or more
historical usage patterns corresponding to the identified source
address, wherein the historical usage patterns were previously
gathered from one or messages received from the legitimate
source;
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Oct. 15, 2013); Reply Brief ("Reply Br.," filed Jan. 17, 2014); Examiner's
Answer ("Ans.," mailed Nov. 27, 2013); Non-Final Office Action ("Non-
Final Act.," mailed May 23, 2013); and the original Specification ("Spec.,"
filed Apr. 6, 2011 ).
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Application 13/080,884
comparing the extracted current usage patterns to the
retrieved historical usage patterns;
setting an imposter indicator in response to the
comparison revealing that the source is an imposter; and
inhibiting further collection of historical usage patterns
from the received message, and from one or more additional
messages received from the source, while the imposter
indicator is set.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Coffman et al. ("Coffman") US 2008/0109730 Al May 8, 2008
Winfield et al. ("Winfield") US 7 ,555,548 B2 June 30, 2009
Goodman et al. ("Goodman") US 8,046,832 B2 Oct. 25, 2011
McCann et al. ("McCann") US 2011/0296003 Al Dec. 1, 2011
Rejections on Appeal
RI. Claim 1-3, 5, 7-10, 12, 14--16, 18, and 20 stand rejected under
35 U.S.C. § 103(a) as being obvious over the combination ofMcCann,
Goodman, and Winfield. Non-Final Act. 3.
R2. Claims 6, 13, and 19 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of McCann, Goodman, Winfield, and
Coffman. Non-Final Act. 25.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 7-9), we decide the appeal
of obviousness Rejection RI of claims 1-3, 5, 7-10, 12, 14--16, 18, and 20
on the basis of representative claim 1.
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Remaining claims 6, 13, and 19 in Rejection R2, not argued
separately, are addressed, infra. 3
ISSUE
Appellants argue (App. Br. 7-9; Reply Br. 2---6) the Examiner's
rejection of claims 1-3, 5, 7-10, 12, 14--16, 18, and 20 under 35 U.S.C.
§ 103(a) as being obvious over the combination ofMcCann, Goodman, and
Winfield is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes, inter alia, the step of "inhibiting further
collection of historical usage patterns from the received message, and from
one or more additional messages received from the source, while the
imposter indicator is set," as recited in claim 1?
ANALYSIS
In reaching this decision; we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
which Appellants could have made but chose not to make in the Briefs so
that we deem any such arguments as waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1-3, 5,
7-10, 12, 14--16, 18, and 20, and we incorporate herein and adopt as our
own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner's Answer in response to Appellants' arguments. We
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
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incorporate such findings, reasons, and rebuttals herein by reference unless
otherwise noted. However, we highlight and address specific findings and
arguments regarding claim 1 for emphasis as follows.
Appellants generally contend Winfield does not teach or suggest the
contested "inhibiting" limitation of claim 1, and specifically allege
Winfield is concerned with collecting data, such as performance
metrics, from network elements ... [which] are not analogous
to messages, such as email messages, received from a source
[and] Winfield does not teach or suggest collecting or inhibiting
the collection of "historical usage patterns" from a "received
message" as taught and claimed by Appellant.
App. Br. 8. Appellants further argue, "[t]he 'conditions' disclosed by
Winfield do not have anything to do with an imposter or an imposter
indicator, as taught and claimed by Appellant. Rather, Winfield is
concerned with system conditions, such as the number of retries to reach a
network element or a configuration change." Id.
As an initial matter, we specifically note Appellants' challenge to the
references individually is not convincing of error in the Examiner's position
because all of the features of the secondary reference need not be bodily
incorporated into the primary reference, but consideration should be given to
what the combined teachings, knowledge of one of ordinary skill in the art,
and the nature of the problem to be solved as a whole would have suggested
to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425
(CCP A 1981 ). Furthermore, the artisan is not compelled to blindly follow
the teaching of one prior art reference over the other without the exercise of
independent judgment (see Lear Siegler, Inc. v. Aeroquip Corp., 733 F .2d
881, 889 (Fed. Cir. 1984)).
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In response to Appellants' arguments against the references separately,
the Examiner finds, and we agree, McCann is relied upon as teaching or
suggesting collection of "historical usage patterns" (Ans. 3, citing McCann
i-fi-15, 6), while Goodman is relied upon as teaching or suggesting a system
for determining whether received messages are spam based on comparison
to training sets of both legitimate and spam messages. Ans. 4 (citing
Goodman Abstract, and col. 10, 11. 1-20).
The Examiner cites Winfield for its teaching or suggestion of the
collection of performance metrics being suspended in a case "where a
condition exists regarding the network element, until such condition is
removed." Id. (citing Winfield col. 3, 11. 40-50; col. 5, 1. 51 to col. 6, 1. 5;
and col. 2, 11. 14--26). The Examiner further concludes it would have been
obvious "to modify the teachings of McCann-Goodman such that collection
of baseline metrics is halted during the time when an account is flagged as
potentially compromised." Ans. 5.
Appellants further argue Winfield is nonanalogous art. Reply Br. 2;
see also App. Br. 8. Allegedly, because Winfield's network elements are not
analogous to electronic messages, such as the claimed email messages,
Winfield is nonanalogous art. Appellants further argue:
One skilled in the art will recognize that the type of data
collected by Winfield is vastly different from the historical
usage patterns taught and claimed by Appellant, which include
items such as misspelled words, use of emoticons, greeting and
sign-off phrases, etc. Performance data, as disclosed by
Winfield, is simply not analogous to historical usage patterns,
as taught and claimed by Appellant, and thus Appellant
respectfully submits that Winfield is nonanalogous art.
Reply Br. 3.
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The test of whether a reference is from an analogous art is first,
whether it is within the field of the inventor's endeavor, and second, if it is
not, whether it is reasonably pertinent to the particular problem with which
the inventor was involved. See In re Wood, 599 F.2d 1032, 1036
(CCPA 1979). A reference is reasonably pertinent if, even though it may be
in a different field of endeavor, it is one which, because of the matter with
which it deals, logically would have commended itself to an inventor's
attention in considering the inventor's problem. See In re Clay, 966 F .2d
656, 659 (Fed. Cir. 1992).
We agree with the Examiner's finding that the teachings of Winfield
regarding network elements and the collection of data while a certain
condition is present (i.e., the claimed "imposter indicator") are "reasonably
pertinent to the particular problem with which the applicant was concerned."
We incorporate the Examiner's findings herein as our own. Ans. 5---6.
We further conclude it would have been obvious to combine the
teachings and suggestions of McCann, Goodman, and Winfield, for the
reasons set forth by the Examiner. See Non-Final Act. 7; Ans. 4--5.
We agree because Appellants' invention is simply a combination of
known teachings that realize a predictable result. The Supreme Court has
determined the conclusion of obviousness can be based on the interrelated
teachings of multiple patents, the effects of demands known to the design
community or present in the marketplace, and the background knowledge
possessed by a person having ordinary skill in the art. KSR Int 'l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007). The skilled artisan would "be able
to fit the teachings of multiple patents together like pieces of a puzzle" since
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the skilled artisan is "a person of ordinary creativity, not an automaton." Id.
at 420-21.
Moreover, Appellants have not demonstrated the Examiner's proffered
combination of references would have been "uniquely challenging or
difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Nor have Appellants provided objective evidence of secondary
considerations which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the combined teachings
and suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
claims 2, 3, 5, 7-10, 12, 14--16, 18, and 20 which fall therewith. See Claim
Grouping, supra.
§ 103 (a) Rejection R2 of Claims 6, 13, and 19
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R2 of claims 6, 13, and 19 under§ 103 (see App.
Br. 9), we sustain the Examiner's rejection of these claims. Arguments not
made are considered waived.
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REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2---6) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
CONCLUSION
The Examiner did not err with respect to obviousness Rejections RI
and R2 of claims 1-3, 5-10, 12-16, and 18-20 under 35 U.S.C. § 103(a)
over the cited prior art combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1-3, 5-10, 12-16,
and 18-20.
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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