Ex Parte Cheng

Board of Patent Appeals and Interferences

Aug 7, 2009

10982540 (B.P.A.I. Aug. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YUN-CHIAN CHENG
____________

Appeal 2009-002108
Application 10/982,5401
Technology Center 2100
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Decided: August 10, 2009
____________

Before JAMES D. THOMAS, JOHN A. JEFFERY, and
CAROLYN D. THOMAS, Administrative Patent Judges.

C. THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection
of claims 1-23 mailed August 8, 2007, which are all the claims remaining in
the application. We have jurisdiction under 35 U.S.C. § 6(b).

1 Application filed November 5, 2004. The real party in interest is Trend
Micro, Inc.
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We affirm-in-part.

A. INVENTION
Appellant invented a method for blocking email spams. The header
fields and the message body of the received email are identified. Then,
predefined patterns are identified by matching the header fields and message
body, wherein a data structure of characteristic information is created for
each recognized pattern. The characteristic information is then analyzed by
rule inference to determine whether the received email is a spam. (Spec. 19,
Abstract.)

B. ILLUSTRATIVE CLAIMS
The appeal contains claims 1-23. Claims 1 and 12 are independent
claims. Claim 1, 5, 6, 9, and 11 are illustrative:
1. A method of blocking an email spam, comprising:
matching a predefined pattern in a message body and
message header fields of an email received on a computer host;
creating a data structure of characteristic information
corresponding to the matched pattern, the data structure of
characteristic information being created after the email is received on
the computer host;
analyzing the characteristic information of the matched
pattern to determine whether the email is a spam; and
if the email is a spam, blocking the spam.

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5. The method according to claim 1, wherein the
characteristic information of the matched pattern includes information
for locating the matched pattern in the message header fields or
message body, and information describing the content of the matched
pattern.

6. The method according to claim 3, wherein a history of
rules fired in the rule inference process is returned if the email is
determined as being a spam.

9. The method according to claim 8, wherein the rule file is
configured as a readable character based rule file so as to allow a user
to view the description of the rules.

11. The method according to claim 8, wherein the rule file is
configured in a manner to allow a user to modify weights of the rules.

C. REFERENCES
The references relied upon by the Examiner as evidence in rejecting
the claims on appeal are as follows:
Chadwick US 2004/0210640 A1 Oct. 21, 2004

Katsikas US 6,868,498 B1 Mar. 15, 2005
(Filed Aug. 25, 2000)

D. REJECTIONS
The Examiner entered the following rejections which are before us for
review:
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(1) Claims 1-7, 12-17, 19, and 20 are rejected under 35 U.S.C.
§ 102(e) as being anticipated by Chadwick; and
(2) Claims 8-11, 18, and 21-23 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Chadwick in view of Katsikas.

II. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Chadwick
1. Chadwick discloses “[a]n incoming email may be parsed into a
series of tokens and a Token Score may be found in the User Probability
Table for each token in the email. . . . Using all or a subset of the Token
Scores, an Email Score, representing a calculated probability the email is a
spam . . . may be calculated.” (¶ [0016].)
2. Chadwick discloses that “new sources of spam are always being
created. To combat these problems, the black list 112 may be continually
updated” (¶ [0026]).
3. Chadwick discloses that “an email is only added to the corpuses if
the user 101a-b has specifically identified the email as having been
improperly classified as either spam or nonspam.” (¶ [0057].)
4. Chadwick discloses that “[i]ncoming emails with an Email Score,
i.e., spam probability, greater than a predetermined cut off value, preferably
50%, (step 207) may be added to the user spam corpus 109a-b, . . . The cut
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off value may be adjusted by the user depending on the user’s personal
needs.” (¶ [0056].)

Katsikas
5. Katsikas discloses that “[m]any ISPs implement an exclusion list
of known spammers at the SMTP Server. In addition, they commonly allow
a user to filter out unwanted email from certain senders known to the user.
For example, the user’s email client may have a filtering function that allows
the user to input unwanted sender email addresses to the SMTP Server . . .”
(col. 4, ll. 21-29).

III. PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis
Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005), citing Minn.
Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d
1559, 1565 (Fed. Cir. 1992). “Anticipation of a patent claim requires a
finding that the claim at issue ‘reads on’ a prior art reference.” Atlas Powder
Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999) (“In other words, if
granting patent protection on the disputed claim would allow the patentee to
exclude the public from practicing the prior art, then that claim is
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anticipated, regardless of whether it also covers subject matter not in the
prior art.”) (internal citations omitted).
Appellant has 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) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)). Therefore, we look to Appellant’s Briefs to show error in the
proffered prima facie case. Only those arguments actually made by
Appellant has been considered in this decision. Arguments which Appellant
could have made but chose not to make in the Briefs have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

IV. ANALYSIS
Grouping of Claims
In the Brief:
Group I: Appellant argues claims 1-4, 7, 12-15, 17, and 20 as a
group (App. Br. 4-6). For claims 2-4, 7, 12-15, 17, and 20, Appellant
repeats the same argument made for claim 1. We will, therefore, treat
claims 2-4, 7, 12-15, 17, and 20 as standing or falling with claim 1.
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Group II: Appellant argues claims 5 and 16 as a group (App. Br. 7).
For claim 16, Appellant repeats the same argument made for claim 5. We
will, therefore, treat claim 16 as standing or falling with claim 5.
Group III: Appellant argues claims 6 and 19 as a group (App. Br. 8).
For claim 19, Appellant repeats the same argument made for claim 6. We
will, therefore, treat claim 19 as standing or falling with claim 6.
Group IV: Appellant argues claims 8, 10, 18, and 22 as a group
(App. Br. 6). For claims 10, 18, and 22, Appellant repeats the same
argument made for claim 8. We will, therefore, treat claims 10, 18, and 22
as standing or falling with claim 8.
Group V: Appellant argues claims 9 and 21 as a group (App. Br. 8-
9). For claim 21, Appellant repeats the same argument made for claim 9.
We will, therefore, treat claim 21 as standing or falling with claim 9.
Group VI: Appellant argues claims 11 and 23 as a group (App. Br.
9-10). For claim 23, Appellant repeats the same argument made for claim 9.
We will, therefore, treat claim 23 as standing or falling with claim 9.
See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588,
590 (Fed. Cir. 1991).

The Anticipation Rejection
We first consider the Examiner’s rejection of the claims under
35 U.S.C. § 102(e) as being anticipated by Chadwick.

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Group I
Claims 1-4, 7, 12-15, and 17
Appellant contend that “the data structure of characteristic
information is created after the email is received but before the email is
classified as spam or non-spam. . . . Chadwick’s white and black lists are
created from emails that are known spam or non-spam.” (App. Br. 4.)
Appellant further contends that in Chadwick “the email is automatically
treated as spam upon encountering a keyword, without creation of a data
structure of characteristic information.” (App. Br. 5.)
The Examiner found that “[p]aragraph 0016 of Chadwick discloses
creating a pattern for an incoming email, after the email is received. The
corpuses of Chadwick are created and built based on the received emails,
which indeed is the same as creating the data structure after the email is
received.” (Ans. 12.) The Examiner further found that “the limitation
‘before the email is classified as spam or non-spam’ is not explicitly recited
in claim 1.” (Ans. 11.)
Issue: Has Appellant shown that the Examiner erred in finding that
Chadwick discloses “the data structure of characteristic information being
created after the email is received on the computer host?”
The Examiner found that the argued limitation “. . . information is
created after the email is received but before the email is classified as spam
or non-spam” is not explicitly recited in claim 1. We agree. Claim 1 recites,
inter alia, “the data structure of characteristic information being created after
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the email is received on the computer host.” Thus, Appellant’s argument is
not commensurate with the actual scope of instant claim 1. Claim 1 does not
require creating characteristic information before the email is classified as
spam or non-spam. In fact, claim 1 does not require any “classification of
the email,” but merely determining whether the email is a spam based on
analyzing the characteristic information.
Chadwick discloses that incoming emails are parsed into tokens and a
Token Score is found. Then using the Token Score, an Email Score,
representing a calculated probability the email is a spam, is calculated (FF
1). In other words, after the email is received, Chadwick finds a Token
Score based on keyword finds and uses this score to create an Email Score
characterizing the probability that the email as spam. As such, contrary to
Appellant’s contention, Chadwick does not automatically treat the email as
spam upon encountering a keyword (App. Br. 4), but instead in this case
creates a probability score. Thus, we find that the claimed “characteristic
information being created after the email is received” reads on Chadwick’s
creation of an Email Score.
Thus, Appellant has not persuaded us of error in the Examiner’s
conclusion of anticipation for representative claim 1. Therefore, we affirm
the Examiner’s § 102 rejection of independent claim 1 and of claims 2-4, 7,
12-15, and 17, which fall therewith.

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Group II
Claims 5 and 16
Appellant contends that “[i]t is respectfully submitted that parsing a
token is not the same as information for locating the token and information
describing the content of the matched pattern, as required by claim 5.”
(App. Br. 7.)
The Examiner found that “the entire text of the message may be
scanned, including the headers in order to obtain all the possible useful
tokens in the email.” (Ans. 14.)
Issue: Has Appellant shown that the Examiner erred in finding that
Chadwick discloses that “the characteristic information of the matched
pattern includes information for locating the matched pattern in the message
header fields or message body, and information describing the content of the
matched pattern?”
The Examiner found that Chadwick discloses scanning the entire text
of the email message in order to obtain all possible useful tokens in the
email (Ans. 14). However, the Examiner has not established and we do not
readily find where Chadwick discloses characteristic information that
includes both information for locating the matched pattern in the message
and information describing the content of the matched pattern.
Thus, the difficulty that we have with this anticipation rejection before
us is that there is no certainty from the Chadwick reference itself as to what
specific information, other than the probability score, is being created. The
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Examiner has merely directed our attention to scanning the entire text of the
email, which leads to a token score and an email score (Chadwick, Fig. 2a).
While it seems logical that one such “score” could at least describe the
content in some sense, it is impermissible to make guesses in an anticipation
rejection. The Examiner has left it up to us to speculate.
Therefore, we find that the Examiner has not set forth a sufficient
initial showing of anticipation, and we find that Appellant has shown error in
the Examiner’s rejection of claim 5. Therefore, we reverse the rejection of
claim 5 and of claim 16, which stands therewith.

Group III
Claims 6 and 19
Appellant contends that “while Chadwick’s blocking algorithm
employs rules for identifying spam, Chadwick does not disclose returning a
history of the rules that were fired in the process of identifying a received
email as spam.” (App. Br. 8.)
The Examiner found that Chadwick discloses “blocking spam email
by creating a training or pattern matching information, wherein such
predefined information contains a set of rules” (Ans. 14).
Issue: Has Appellant shown that the Examiner erred in finding that
Chadwick discloses a history of rules fired in the rule inference process is
returned if the email is determined as being a spam?
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Chadwick discloses continually updating a blacklist, i.e., a list of
known creators of spam, when new sources of spam are discovered (FF 2).
In other words, Chadwick maintains a history of spam creators and uses this
history to match incoming spam. Thus, we find that the claimed “history of
rules . . . is returned if the email is determined as being spam” reads on
Chadwick’s blacklist updates.
Thus, Appellant has not persuaded us of error in the Examiner’s
conclusion of anticipation for representative claim 6. Therefore, we affirm
the Examiner’s § 102 rejection of dependent claim 6 and of claim 19, which
falls therewith.

The Obviousness Rejection
We now consider the Examiner’s rejection of the claims under
35 U.S.C. § 103(a) as being unpatentable over Chadwick and Katsikas.

Group IV
Claims 8, 10, 18, and 22
Appellant contends that “claims 8, 10 and 18 [and 22] are patentable
over the combination of Chadwick and Katsikas at least fore [sic] depending
on patentable base claims.” (App. Br. 6.)

The Appellant has not presented any separate arguments with respect
to the patentability of claims 8, 10, 18, and 22 which depends from
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independent claims 1 and 12. Hence, claims 8, 10, 18, and 22 fall with
claims 1 and 12, respectively. See 37 C.F.R. § 41.37 (c)(1)(vii).

Group V
Claims 9 and 21
Appellant contends that “Katsikas does not teach or suggest making a
readable rule file to allow a user to view the description of the rules. The
cited portion of Katsikas discloses filtering functions or features, not a
readable character based rule file that a user may view to learn of the
description of rules.” (App. Br. 9.)
The Examiner found that Katsikas discloses an exclusion list of
known spammers at the server (Ans. 10). The Examiner further found that
“the character based file is part of the process for determining a general
probability table, which allow user to customize the probability table.”
(Ans. 14.)
Issue: Has Appellant shown that the Examiner erred in finding that
the combination of Katsikas and Chadwick discloses a rule file configured as
a readable character based rule so as to allow a user to view the description
of the rules?
The Examiner has found that Chadwick discloses a “black list” (FF 2)
and that Katsikas discloses a similar “exclusion list” (FF 5). Specifically,
Katsikas allows the user to input/add unwanted sender email addresses to the
list. Further, Chadwick disclose that an email is only added to the corpuses
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if the user has specifically identified the email as having been improperly
classified (FF 3). Thus, we find that the combined teachings of Chadwick
and Katsikas necessarily teaches a readable character based rule file given
that the user is able to identify and customize the lists and probability tables.
Thus, Appellant has not persuaded us of error in the Examiner’s
conclusion of obviousness for representative claim 9. Therefore, we affirm
the Examiner’s § 103 rejection of dependent claim 9 and of claim 21, which
falls therewith.

Group VI
Claims 11 and 23
Appellant contends that “Katsikas . . . discloses programming during
development, not anything pertaining to allowing users to modify weights of
the rules.” (App. Br. 10.) Appellant further contends that “while Chadwick
allows a for [sic] custom probability table for each user, there is no
disclosure anywhere in Chadwick that a user can modify the probability
table.” (Id.)
The Examiner found that Chadwick discloses “a mail corpus is part of
the rules, wherein the user can adjust the values involved in the user
probability table” (Ans. 15).
Issue: Has Appellant shown that the Examiner erred in finding that
that the combined teachings of Chadwick and Katsikas discloses “the rule
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file is configured in a manner to allow a user to modify weights of the
rules?”
Chadwick discloses a probability table which list Token Scores for
incoming email (FF 1). Chadwick further discloses that an Email Score can
be calculated using the Token Scores (FF 1) and that cut off values for such
Email Scores can be adjusted by the user depending on the user’s personal
needs (FF 4). Thus, we find that the claimed “rule file is configured in a
manner to allow a user to modify weights of the rules” reads on Chadwick’s
user adjusting the Email Scores.
Thus, Appellant has not persuaded us of error in the Examiner’s
conclusion of obviousness for representative claim 11. Therefore, we affirm
the Examiner’s § 103 rejection of dependent claim 11 and of claim 23,
which falls therewith.

V. CONCLUSIONS
We conclude:
(1) Appellant has not shown that the Examiner erred in rejecting
claims 1-4, 6-15, and 17-23.
(2) Appellant has shown that the Examiner erred in rejecting claims 5
and 16.

VI. DECISION
In view of the foregoing discussion:
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(1) We affirm the Examiner’s rejection of claims 1-4, 6-15, and 17-
23; and
(2) We reverse the Examiner’s rejection of claims 5 and 16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

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