Ex Parte Farrell et alDownload PDFPatent Trial and Appeal BoardMar 31, 201612890774 (P.T.A.B. Mar. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/890,774 09/27/2010 Colm Farrell 52021 7590 04/04/2016 Cuenot, Forsythe & Kim, LLC 20283 State Road 7 Ste. 300 Boca Raton, FL 33498 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. CAM920100005US 1_8150-0077 9090 EXAMINER TABOR, AMARE F ART UNIT PAPER NUMBER 2434 NOTIFICATION DATE DELIVERY MODE 04/04/2016 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): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte COLM FARRELL, LIAM HARPUR, PA TRICK JOSEPH 0' SUL LIV AN, FRED RAGUILLAT, and CAROL SUE ZIMMET Appeal2014-007490 Application 12/890,774 Technology Center 2400 Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and NATHAN A. ENGELS, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is IBM Corporation. App. Br. 1. Appeal2014-007490 Application 12/890,774 STATEMENT OF THE CASE The Invention Appellants' invention relates to electronic messaging systems and, more specifically, to a method of secure electronic message conveyance. See Spec. i-f 5. Claims 1, 9, 14, and 22 are independent. Claim 1 is illustrative of the subject matter on appeal: 1. Within a system comprising a processor and a memory, a method of secure electronic message conveyance, the method compnsmg: via the processor, receiving a request to forward an electronic message originally received by a first user to at least a second user; via the processor, based on content contained in the electronic message, selecting from a plurality of approval entities at least one approval entity that is to determine whether the electronic message is approved to be forwarded to the at least a second user; via the processor, receiving from the selected approval entity an indication that indicates whether the electronic message is approved to be forwarded to the second user; and responsive to the selected approval entity approving the forwarding of the electronic message to the second user, via the processor, automatically forwarding the electronic message to the second user. App. Br. 23 (Claims App'x). Rejections on Appeal Claims 1, 2, 6-11, 14, 15, and 19-24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Cai et al. (US 2007/0226367 Al; published Sept. 27, 2007) ("Cai") and Beattie et al. (US 8,028, 162 B2; issued Sept. 27, 2 Appeal2014-007490 Application 12/890,774 2011) ("Beattie"), or in the alternative, Bulfer et al. (US 2006/0036701 Al, published Feb. 16, 2006) ("Bulfer"). See Final Act. 3-8. Claims 3-5, 12, and 16-18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Cai, Beattie, and Zheng (WO 2010/066617 Al; published June 17, 2010). See Final Act. 8-10. Claims 13 and 25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Cai, Beattie, and Bulfer. See Final Act. 10-12. ISSUES The issues presented by Appellants' contentions are as follows: Under§ 103(a), did the Examiner err in finding that Cai's forward control indicator teaches or suggests "content contained in the electronic message," as recited in claim 1? Under§ 103(a), did the Examiner err in finding that Beattie's process of selecting an authorized administrator's email address from a plurality of authorized administrator email addresses teaches or suggests "based on content contained in the electronic message, selecting from a plurality of approval entities at least one approval entity that is to determine whether the electronic message is approved to be forwarded to the at least a second user," as recited in claim 1? Under§ 103(a), did the Examiner err because Bufler does not teach or suggest "a plurality of approval entities," as recited in claim 1? Is Beattie analogous art with regard to the invention of claim 1? Has the Examiner provided "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness," KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citation omitted), with regard to claim 1? 3 Appeal2014-007490 Application 12/890,774 Under§ 103(a), did the Examiner err because Cai's processing of data in real time does not teach or suggest "automatically editing the content of the electronic message," as recited in claim 2? ANALYSIS CLAIMS 1, 3-14, AND 16-25 Content Contained in the Electronic Message The Examiner finds Cai' s forward control indicator teaches "content contained in the electronic message." See Ans. 11; Cai Abstract. The Examiner explains "content" is broad and includes any information contained in an electronic message, including Cai's forward control indicator, which is included in the electronic message. See Ans. 11-12. To the contrary, Appellants contend Cai's forward control indicator, which "may be included in the header of the electronic message," is not "content contained in the electronic message" because, as commonly understood by one of skill in the art, "content" refers only to the body of the message, not the header. See App. Br. 11-12; Cai i-f 28. We are unpersuaded of error because Appellants' interpretation of "content contained in the electronic message" is unduly narrow and not commensurate with the broadest reasonable interpretation in view of Appellants' Specification. Contrary to Appellants' contentions, Appellants do not cite, nor do we find, any passage in the Specification that limits "content contained in the electronic message" to the body the electronic message. See App. Br. 12; Reply Br. 7-8. Therefore, we find the broadest reasonable interpretation of "content contained in the electronic message" to encompass information in the body as well as the header of the electronic 4 Appeal2014-007490 Application 12/890,774 message. This interpretation is consistent with the Specification, which discloses "the request can be indicated by a field within the electronic message, for example within a header or footer of the electronic message." Spec. i-f 39 (emphasis added). Accordingly, we find no error in Examiner's broad, but reasonable, interpretation of "content contained in the electronic message" as encompassing Cai' s forward control indicator, which is included in the electronic message and may be in the message's header. See Ans. 12; App. Br. 12. This analysis is consistent with Appellants' extrinsic evidence, which discloses that message "content" consists not only of the body or text of a message, but also its header. See Reply Br. 3, n.1 (citing http:! /en. wikipedia.org/wiki/ Simple_Mail_Transfer_Protocol, which states "the content of the message ... consists of a message header and a message body separated by an empty line."). Selecting at Least One Approval Entity Appellants contend the Examiner erred in finding that Beattie teaches or suggests "based on content contained in the electronic message, selecting from a plurality of approval entities at least one approval entity that is to determine whether the electronic message is approved to be forwarded to the at least a second user," as recited in claim 1. See App. Br. 14--15; Reply Br. 4. Appellants argue Beattie selects an approver email address but does not teach or suggest that the email address is selected "based on content contained in the electronic message." See App. Br. 14--15; Reply Br. 4. We disagree. As the Examiner finds, prior to issuing a digital certificate, Beattie teaches that a user may request approval from an authorized administrator by 5 Appeal2014-007490 Application 12/890,774 selecting the authorized administrator's email address from a plurality of authorized administrator email addresses. See Final Act. 5 (citing Beattie Fig. 6). In response to the user's selection, Beattie' s system inserts the selected email address into an approval email and delivers the email to the selected email address to request approval from the authorized administrator to issue the digital certificate. See Beattie Figs. 6, 11 (illustrating approver e-mail); col. 5, 11. 5-7. By inserting the selected email address in the approval email ("based on content contained in the electronic message"), Beattie' s system is selecting one of a plurality of authorized administrators ("selecting from a plurality of approval entities at least one approval entity") to determine whether an email with a digital certificate is approved to be forwarded to the SSL requestor ("to determine whether the electronic message is approved to be forwarded to the at least a second user"). See Beattie Fig. 2; col. 5, 11. 7-12. Accordingly, because Beattie teaches the disputed limitation, we are unpersuaded of error. A Plurality of Approval Entities We are unpersuaded by Appellants' contention that Bulfer does not teach or suggest "a plurality of approval entities," as recited in claim 1 (see App. Br. 18-19; Reply Br. 5-6), because, as discussed above, the Examiner properly finds that Beattie teaches this limitation. See Final Act. 5 (citing Beattie Fig. 6); see In re Bush, 296 F.2d 491, 496 (CCPA 1961) (sustaining a multiple reference rejection under 35 U.S.C. § 103(a) by relying on one reference alone); In re Boyer, 363 F.2d 455, 458 n.2 (CCPA 1966). 6 Appeal2014-007490 Application 12/890,774 Analogous Art Appellants contend "Beattie is nonanalogous art that cannot be properly applied against the claimed invention" because "Beattie is not directed to secure electronic message conveyance for forwarded electronic messages," but rather "to identifying, processing, and issuing server-based digital certificates." App. Br. 15-16. We disagree. In an obviousness analysis, [t ]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)); see also KSR, 550 U.S. at 420 ("Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed."). Beattie controls the communication of electronic messages (e.g., emails comprising digital certificates) between entities. See Ans. 13 (citing Beattie Fig. 2, which illustrates an approver controlling the communication of an email comprising a digital certificate from a certificate authority to an SSL requestor). Similarly, both Cai and Appellants' invention concern control of the communication of electronic messages (e.g., emails or text messages) between entities. See Cai Abstract ("[s]ystems and methods ... that control whether a recipient of an electronic message is allowed to forward the electronic message to third parties." (parenthetical omitted)); i-f 2); Spec. i-fi-12, 5 ("selecting ... at least one approval entity that is to 7 Appeal2014-007490 Application 12/890,774 determine whether the electronic message [originally received by a first user] is approved to be forwarded to the at least a second user"). Because Appellants' invention, Beattie, and Cai are all in the same field of endeavor, we find Beattie is analogous art regardless of the specific problems addressed in each. See Nat'! Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004) ("A finding that two inventions were designed to resolve different problems ... is insufficient to demonstrate that one invention teaches away from another."). Accordingly, we are unpersuaded of error. Rational Underpinning Appellants contend the Examiner's proposed underpinning to support the legal conclusion of obviousness is erroneous because Beattie's processing of digital certificates has nothing to do with selecting an approval entity from a plurality of approval entities. See App. Br. 13. We are unpersuaded of error because Appellants do not persuasively address or rebut the Examiner's specific finding that modifying Cal to include the teachings of Beattie "is beneficial to . . . issue ... secure digital certificates to the requester." See Final Act. 5 (citing Beattie Abstract). By identifying this benefit of Beattie, we conclude the Examiner has provided "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness," KSR, 550 U.S. at 418, and that the reasoning and underpinning are supported by the cited references, in particular by Beattie. See Final Act. 5 (citing Beattie Abstract); accord Beattie col. 4, 11. 33--45 ("[T]he Requestor cannot divert or 'short circuit' the approval process by directing the email message requesting official approval of the certificate 8 Appeal2014-007490 Application 12/890,774 issuance request to the Requestor or to an unauthorized person. This provides a security element of the automated process and system of the present invention."). Conclusion For the reasons discussed above, we find no error in the Examiner's rejection of claim 1. Accordingly, we sustain the rejection of claim 1 as well as claims 3-12, 14, and 16-24, which Appellants argue as standing or falling together with claim 1 (see App. Br. 10, 20). We also sustain the rejection of claims 13 and 25 for the same reasons as for claim 1 because Appellants do not present separate arguments for these claims. See generally App. Br. 5- 21; Reply Br. 2-8. CLAIM2 Appellants additionally contend Cai's processing of data in real time does not teach or suggest "automatically editing the content of the electronic message," as recited in claim 2. See App. Br. 20. We are unpersuaded of error because Appellants do not persuasively rebut the Examiner's finding that Cai teaches the disputed limitation by including a forwarding control indicator in the electronic message. See Ans. 14 (citing Cai Fig. 2, item 204). As discussed above, Cai's forward control indicator teaches "content contained in the electronic message." See discussion of claim 1 supra. Therefore, as the Examiner finds, by including the forwarding control indicator in the electronic message, Cai' s system "automatically edit[ s] the content of the electronic message." See id. 9 Appeal2014-007490 Application 12/890,774 Because Cai teaches the disputed limitation, we find no error in the Examiner's rejection of claim 2. Accordingly, we sustain the rejection of claim 2 as well as claim 15, which Appellants ague as standing or falling together with claim 2. See App. Br. 10. DECISION The decision of the Examiner to reject claims 1-25 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)(l) (2013). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation