Ex Parte DeshpandeDownload PDFPatent Trial and Appeal BoardJun 25, 201411734956 (P.T.A.B. Jun. 25, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NIKHIL DESHPANDE ____________ Appeal 2012-002845 Application 11/734,956 Technology Center 2400 ____________ Before, MURRIEL E. CRAWFORD, HUBERT C. LORIN, and JOSEPH A. FISCHETTI, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1, 3, 4, 6–14, 16–20, 22, 23, and 25–27. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. Appeal 2012-002845 Application 11/734,956 2 THE INVENTION Appellant claims a method that relates to the field of communications systems, and, more particularly, to electronic mail (email) communications systems and related methods. Spec. ¶ 1. Claim 1 is representative: 1. An electronic mail (email) system comprising: at least one email server having mailboxes for storing email messages therein; and a plurality of mobile wireless communications devices; at least one email aggregation server comprising a configuration module cooperating with said at least one email server for determining a plurality of operational configuration parameters for accessing a given mailbox by attempting access to the given mailbox using possible configuration parameters, the plurality of possible configuration parameters comprising a Secure Socket Layer (SSL) enabled or disabled security setting for accessing the given mailbox, and an aggregation module for forwarding email messages polled from the mailboxes to respective mobile wireless communications devices based upon successful access to the given mailbox using the operational configuration parameters. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Claims 1, 3, 4, 6–14, 16–20, 22, 23, and 25–27 are rejected under 35 U.S.C. 103(a) by Gardner et al (US 2005/0038857 A1, pub. Feb. 17, 2005) in view of Cook (US 2004/0025057 A1 Feb. 5, 2004). Appeal 2012-002845 Application 11/734,956 3 FINDINGS OF FACT 1. We adopt the Examiner’s findings as set forth on pages 5-14 of the Answer (excluding the Examiner’s use of the word “anticipated” on page 5). 2. Cook discloses: "Client" refers to a computer program that, among other functions, requests services from a server and more generally as the computer that runs a client program or a browser. Here, a client program includes a communication program for sending electronic messages (such as E-mail) to other clients through a network, or for interpreting messages from other clients. Para. 29. 2. Cook discloses that, “Web front end 191 processes requests from a recipient to display a web page that can include the message intended for the recipient. The communications between the web front end 191 and the recipient can be secured using the SSL protocol.” Para. 71. ANALYSIS Appellant argues independent claims 1, 10, 14, and 20, as a group. Correspondingly, we select claim 1 as representative, with the remaining claims rising and falling with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appellant submits that: [E]ven a selective combination of the prior art fails Appeal 2012-002845 Application 11/734,956 4 to disclose an SSL enabled or disabled security setting for accessing the given mailbox, as recited in the independent claims. As disclosed in paragraph 0041 of Cook, the SSL, or secure communications protocol, is not an enabled or disabled security parameter for accessing a given mailbox, as recited in the independent claims. Appeal Br. 19. We begin by construing the scope of the claims. Claim 1 recites, in pertinent part, a configuration module cooperating with said at least one email server for determining a plurality of operational configuration parameters for accessing a given mailbox by attempting access to the given mailbox using possible configuration parameters…. We construe the language which describes the configuration module as functional. As such, we find that the prior art need only be capable of performing the required function. See In re Schreiber, 128 F.3d 1473 (Fed Cir. 1997). We find that because Cook discloses that the forwarding server has the option of configuring recipients as either minimally, or fully configured, (Paragraphs 41 and 44, respectively in Cook), we find that the Cook at the least is capable determining which of the recipients is fully or minimally configured. Appellant argues that: …, the communications between the web front end 191 and the recipient can be secured using the SSL protocol. The SSL protocol ensures privacy between a client (the recipient) and a server (the Appeal 2012-002845 Application 11/734,956 5 forwarding service) by using certificates to authenticate the server and optionally the client. (See Cook, paragraph 0071). In other words, communication between a client and a forwarding service may be secured, but Cook fails to disclose the connection between the forwarding service and the email server or sender being secure. Appeal Br. 19. We disagree with Appellant because we find that the person with ordinary skill in the art would understand that because Cook discloses using SSL protocol to ensure privacy between a client (the recipient) and a server (the forwarding service) (FF. 2), it would be obvious to use a SSL protocol between the forwarding service and the sender. Duplication of a known step/part cannot be unobvious absent a showing to the contrary. See Dunbar v. Meyers, 94 U.S. 187, 195 (1876); Slawson v. Grand Street P. P. & F. R. Co., 107 U.S. 649 (1883); Topliff v. Topliff, 145 U.S. 156, 163 (1892); In re Scott, 25 App.D.C. 307 (CADC 1905); In re Volkmann, 28 App.D.C. 441 (CADC 1906); Condit Elec. Mfg. Co. v. Westinghouse Elec. & Mfg. Co., 200 F. 144 (CA1 1912). We fail to find any argument advanced by Appellant beyond the alleged difference between disclosed structure in Cook and the claim requirements. As such, we find no error with the Examiner’s obvious rejection of claim 1. The mere existence of differences between the prior art and the claim does not establish nonobviousness. Dann v. Johnston, 425 U.S. 219, 230 (1976). Appeal 2012-002845 Application 11/734,956 6 Appellant also argues: [T]hat the Examiner's combination of Gardner et al. and Cook is improper. … A person skilled in the art would not make the logical leap that the other parameters for use of their mailbox includes an SSL enabled or disabled security setting for accessing the given mailbox, but likely a minimum set a parameters to be provided to access the mailbox. (See Gardner et al. paragraph 0028, for example). (Appeal Br. 20). We disagree with the Appellant and adopt the Examiner’s findings on pages 18–19 of the Answer as our own in response. We also disagree with Appellant’s argument that Cook expressly teaches away from a combination with Gardner because as found supra, Cook discloses fully and minimally configured recipients, and Gardner attempts to guess the configuration parameters for mailbox access so that a user does not have to enter those parameters. (Appeal Br. 20–21). This is because Cook does not actually teach away from every aspect of all configuration possibilities given that Cook covers the ends of the spectrum of possibilities of fully and minimally configured. See In re Gurley, 27 F.3d 551, 553 (Cir. Fed. 1994). CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 1, 3, 4, 6– 14, 16–20, 22, 23, and 25–27. Appeal 2012-002845 Application 11/734,956 7 DECISION AFFIRMED mp Copy with citationCopy as parenthetical citation