Ex Parte Deshpande

Patent Trial and Appeal Board

Jun 25, 2014

11734956 (P.T.A.B. Jun. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte NIKHIL DESHPANDE
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Appeal 2012-002845
Application 11/734,956
Technology Center 2400
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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.

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Application 11/734,956

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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).

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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
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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
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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).

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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.
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DECISION
AFFIRMED

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