Ex Parte Fisher et al

Board of Patent Appeals and Interferences

Dec 16, 2009

11207253 (B.P.A.I. Dec. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte CLAY FISHER, ERIC EDWARDS, NEAL MANOWITZ, and 8
ROBERT SATO 9
____________________ 10
11
Appeal 2009-003519 12
Application 11/207,253 13
Technology Center 3600 14
____________________ 15
16
Decided: December 16, 2009 17
____________________ 18
19
20
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU 21
R. MOHANTY, Administrative Patent Judges. 22
23
CRAWFORD, Administrative Patent Judge. 24
25
26
DECISION ON APPEAL27
Appeal 2009-003519
Application 11/207,253

2
STATEMENT OF THE CASE 1
Appellants appeal under 35 U.S.C. § 134 (2002) from a final rejection 2
of claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 3
Appellants invented systems and methods for sequestering content 4
including receiving content for use in an application, reviewing the content, 5
automatically sequestering the content from the application based on the 6
reviewing, and forming a reason associated with the sequestering the content 7
(Spec. 3:4-7). 8
Claim 1 under appeal is further illustrative of the claimed invention as 9
follows: 10
1. A method, comprising: 11
receiving content for use in a client application; 12
reviewing the subject matter of the content for unlawful 13
material; 14
automatically sequestering the content from the client 15
application based on the reviewing, wherein the sequestered 16
content is removed from the application; 17
notifying the application that the sequestered content is 18
no longer available; and 19
generating a reason why the content has been sequestered 20
in response to reviewing of the content. 21
The prior art relied upon by the Examiner in rejecting the claims on 22
appeal is: 23
Bandini US 2002/0169954 A1 Nov. 14, 2002 24
Kyler US 2002/0174102 A1 Nov. 21, 2002 25
The Examiner rejected claims 1-30 under 35 U.S.C. § 103(a) as being 26
unpatentable over Bandini in view of Kyler. 27
We AFFIRM-IN-PART. 28
Appeal 2009-003519
Application 11/207,253

3
ISSUES 1
Did the Appellants show the Examiner erred in asserting that policy 2
manager 216, access manager 218, and quarantine queue 704 of Bandini 3
respectively perform the receiving, reviewing/determining, and 4
automatically sequestering/removing steps of independent claims 1, 14, 15, 5
24, and 30? 6
Did the Appellants show the Examiner erred in asserting that policy 7
engine 214 of Bandini performs the notifying step of independent claims 1 8
and 14? 9
Did the Appellants show the Examiner erred in combining Bandini 10
and Kyler to render obvious the subject matter of independent claims 1, 14, 11
15, 24, and 30? 12
Did the Appellants show the Examiner erred in asserting that the 13
destination e-mail application in Bandini is configured for viewing, and/or 14
editing, of digital image data, as recited in dependent claims 3 and 16? 15
Did the Appellants show the Examiner erred in asserting that the 16
storing of files in Kyler corresponds to “an off-line storage device,” as 17
recited in dependent claim 4 and independent claims 15, 24, and 30? 18
Did the Appellants show the Examiner erred in asserting that 19
quarantine queue 704 “prevents the content from being accessed by the 20
application,” as recited in dependent claim 6? 21
Did the Appellants show the Examiner erred in asserting that content 22
manager 220 of Bandini sequesters content in response to detecting that the 23
content includes pornography or copyrighted material, as recited in 24
dependent claim 9? 25
Appeal 2009-003519
Application 11/207,253

4
Did the Appellants show the Examiner erred in asserting that e-mail 1
message 204 including graphics data and one or more files to be transmitted 2
with the message in Bandini corresponds to a client application being an 3
electronic photo album application, as recited in dependent claims 10 and 4
20? 5
Did the Appellants show the Examiner erred in asserting that review 6
of quarantined content by a system administrator corresponds to restoring 7
the content and format information associated with the content to the 8
application, as recited in dependent claims 13 and 23? 9
Did the Appellants show the Examiner erred in asserting that a 10
combination of Bandini and Kyler renders obvious storing format 11
information associated with the content in the off-line storage device, as 12
recited in dependent claims 18 and 28? 13
Did the Appellants show the Examiner erred in asserting that a 14
combination of Bandini and Kyler renders obvious “wherein the format 15
information includes one of location information of the content, background 16
color information for the content, and caption information describing the 17
content,” as recited in dependent claim 19? 18
Did the Appellants show the Examiner erred in asserting that a 19
combination of Bandini and Ryker renders obvious “re-reviewing the 20
content and/or accepting feedback received from a content submitter; 21
determining that said content is actually acceptable; and returning the 22
content and format information associated with the content to a submitter,” 23
as recited in dependent claim 22? 24
Appeal 2009-003519
Application 11/207,253

5
Did the Appellants show the Examiner erred in asserting that a 1
combination of Bandini and Kyler renders obvious the subject matter of 2
dependent claims 2, 5, 7-8, 11-12, 17, 21, 25-27, and 29? 3
4
FINDINGS OF FACT 5
Specification 6
Appellants invented systems and methods for sequestering content 7
including receiving content for use in an application, reviewing the content, 8
automatically sequestering the content from the application based on the 9
reviewing, and forming a reason associated with the sequestering the content 10
(Spec. 3:4-7). 11
12
Bandini 13
Bandini discloses that with the widespread use of electronic mail (e-14
mail) and groupware applications coupled with the growth and ubiquity of 15
the Internet, organizations are increasingly relying on e-mail for transfer of 16
critical files. In this setting, these files are now tangible information assets 17
that must be protected ([0003]). 18
In a principal aspect, the present invention provides an e-mail firewall 19
for screening e-mail messages originating in, or entering into a computer 20
network. Embodiments employing the principles of the present invention 21
advantageously take the form of an e-mail control system that controls e-22
mail messages transmitted from and received by a computing site. A filter 23
monitors messages, after decryption by the decryptor and before encryption 24
by the encryptor, in accordance with changeable filter information ([0007]). 25
Appeal 2009-003519
Application 11/207,253

6
E-mail messages 204 take the form of a conventional e-mail message 1
containing textual and/or graphics data, and an optional attachment field 2
209, specifying one or more files to be transmitted with the message 204. 3
Other user specified fields include, but are not limited to, priority of the 4
message, identity of the sending agent, and the date and time of the message 5
([0024]). 6
Policy engine 214 accepts messages from SMTP relay module 202 7
and determines which policies are application to a message by building a list 8
302 of sender policies for the sender (source) 204 of the message, and 9
building a list 302, 306, 308 of recipient policies for each recipient. The 10
policy engine 214 then calls the policy managers 216 to apply each policy. 11
The different types of policies have a predetermined priority in which they 12
are applied. After policy managers 216 apply the policies, policy engine 214 13
receives results from policy managers 216 and transmits messages to SMTP 14
relay module 202 in accordance with the receiving results. The results 15
received by the policy engine 214 comprise actions such as disposition, 16
annotation, and notification. The result of processing of a message 204 by 17
policy engine 214 can result in generation of a plurality of additional 18
messages, for example, for notification to the sender or recipient, or to the 19
system administrator. In a preferred embodiment, the policy engine 214 is 20
implemented as a program executed by a digital computer ([0029]). 21
Policy managers 216 operate to enforce policies entered by an 22
administrator of e-mail firewall 105. For example, policy manager 216 23
implements a plurality of manager modules including an access manager 24
218, content manager 220, format manager 222, a virus manager 224, and a 25
Appeal 2009-003519
Application 11/207,253

7
security manager 226. Other types of policy managers are contemplated as 1
being within the principals described herein ([0030]). 2
Access manager 218 provides enforcement of access control policies 3
such as destinations to which e-mail is prohibited from being sent, or sources 4
from which e-mail cannot be received. Access manager 218 can also filter 5
messages which contain specific words in the subject field 207 of the 6
message ([0031]). 7
Content manager 220 supports filtering by one or more of the 8
following criteria: (a) specific words, or word patterns, in the body 208; (b) 9
specific words in the subject 207; (c) attachment 209 (all or by name/type); 10
(d) specific words, or word patterns, in the attachment. Virus manager 224 11
supports the enforcement of virus control policies by detecting virus infected 12
e-mail attachments ([0032]). 13
Messages received from disposition step 620 are stored in one of four 14
queues 702, which include quarantine queue 704, retry queue 706, dead 15
letter queue 708, and defer queue 709. Quarantine queue 704 stores 16
messages for subsequent retrieval and review by a system administrator or 17
other authorized person. Configuration module 230 provides a plurality of 18
actions 710-714 which may be performed on the messages in queue 702. 19
The messages can be viewed 710 by the administrator, returned to the sender 20
711, deleted 712, sent to the specified destination(s) 713, and/or saved 714 21
([0064]). 22
Appeal 2009-003519
Application 11/207,253

8
Kyler 1
Kyler discloses systems and methods for keeping operating systems 2
free of unwanted files and, more particularly, identifying and removing 3
unwanted files from network servers ([0004]). 4
5
PRINCIPLES OF LAW 6
Obviousness 7
Where the printed matter is not functionally related to the substrate, 8
the printed matter will not distinguish the invention from the prior art in 9
terms of patentability. In re Gulack, 703 F.2d 1381, 1385-86 (Fed Cir. 10
1983). 11
Once a prima facie case of obviousness is established, the burden 12
shifts to Appellant to rebut it. In re Keller, 642 F.2d 413, 425-26 (CCPA 13
1981). 14
15
Claim Construction 16
During examination of a patent application, a pending claim is given 17
the broadest reasonable construction consistent with the specification and 18
should be read in light of the specification as it would be interpreted by one 19
of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 20
1359, 1364 (Fed. Cir. 2004). 21
22
Official Notice 23
To adequately traverse a finding of Official Notice, the Appellant 24
must specifically point out the supposed errors in the Examiner's action, 25
which would include stating why the noticed fact is not considered to be 26
Appeal 2009-003519
Application 11/207,253

9
common knowledge or well-known in the art. A general allegation that the 1
claims define a patentable invention without any reference to the Examiner's 2
assertion of Official Notice is inadequate. In the absence of any demand 3
by Appellant for the Examiner to produce authority for his statement, the 4
traversal shall not be considered. In re Chevenard, 139 F.2d 711, 713 5
(CCPA 1943). 6
ANALYSIS 7
Receiving, Reviewing, Automatically Sequestering 8
We are not persuaded of error on the part of the Examiner by 9
Appellants’ argument that policy manager 216, access manager 218, and 10
quarantine queue 704 of Bandini do not respectively perform the receiving, 11
reviewing/determining, and automatically sequestering/removing steps of 12
independent claims 1, 14, 15, 24, and 30 (App. Br. 8-13, 23-28, 32-37, 48-13
53, 60-66). Policy manager 216 receives e-mails to be used in an e-mail 14
application. E-mails and e-mail applications correspond to the recited 15
content and client applications. 16
Access manager 218 filters e-mails which contain specific words in 17
the subject field. It would have been within the abilities of one of ordinary 18
skill to configure the filter to catch specific words related to unlawful 19
material. Bandini also discloses virus manager 224 for detecting virus 20
infected e-mail attachments, which is “unlawful content” under a broadest 21
reasonable interpretation of that phrase. See In re Am. Acad. of Sci. Tech. 22
Ctr., 367 F.3d at 1364. In any case, unlawful content is merely printed 23
matter that cannot distinguish the invention from the prior art in terms of 24
patentability. See In re Gulack, 703 F.2d at 1385-86. 25
Appeal 2009-003519
Application 11/207,253

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Quarantine queue 704 automatically sequesters messages, based on 1
the actions of modules such as access manager 218 or virus manager 224, 2
for subsequent retrieval and review by a system administrator or other 3
authorized person. Quarantine is the same as sequester unless some 4
distinction is set forth in the Specification or claims. See In re Am. Acad. of 5
Sci. Tech. Ctr., 367 F.3d at 1364. 6
7
Notifying Step 8
We are not persuaded of error on the part of the Examiner by 9
Appellants’ argument that that policy engine 214 of Bandini does not 10
perform the notifying step of independent claims 1 and 14 (App. Br. 10, 25). 11
Policy engine 214 sends a message to the recipient, via the recipient’s e-mail 12
application, concerning the results of the policies applied by policy manager 13
216, for example, the filtering and quarantining of certain messages by 14
access manager 218 and quarantine queue 704. Thus, the e-mail application 15
is notified that certain content is not available. 16
17
Incompatible References 18
We are not persuaded of error on the part of the Examiner by 19
Appellants’ argument that combining Bandini and Kyler does not render 20
obvious the subject matter of independent claims 1, 14, 15, 24, and 30, 21
because Kyler and Bandini are incompatible (App. Br. 13-17, 28-32, 37-43, 22
53-59, 66-71). Both Kyler and Bandini are directed to filtering unwanted 23
files. Moreover, Kyler is merely cited for disclosing an offline storage 24
Appeal 2009-003519
Application 11/207,253

11
device. We find no reason why it would have been beyond the abilities of 1
one of ordinary skill to place quarantined messages as taught by Bandini in 2
the offline storage device of Kyler. 3
4
Viewing and/or Editing Digital Image Data 5
We are not persuaded of error on the part of the Examiner by 6
Appellants’ argument that the destination e-mail application in Bandini is 7
not configured for viewing, and/or editing, of digital image data, as recited 8
in dependent claims 3 and 16 (App. Br. 17-18, 43-44). E-mail applications 9
are configured to view digital image data. By the use of the terms “and/or,” 10
the cited e-mail application only needs to be able to either view or edit 11
digital image data in order to meet the claimed recitation. 12
13
Off-line Storage Device 14
We are not persuaded of error on the part of the Examiner by 15
Appellants’ argument that the storing of files in Kyler does not correspond 16
to “an off-line storage device,” as recited in dependent claim 4 and 17
independent claims 15, 24, and 30 (App. Br. 18-20, 37-40, 53-56, 66-68). 18
The files quarantined in Bandini and Kyler must be stored on some sort of 19
storage device. Furthermore, any storage device may be unhooked from the 20
Internet so as to be “off-line,” for example, to provide archiving that cannot 21
be tampered with by outside parties from the Internet. 22
Insofar as the rationale for combining Bandini and Kyler differs from 23
those set forth by the Examiner, we denominate this a new ground of 24
rejection under 37 C.F.R. § 41.50(b). 25
Appeal 2009-003519
Application 11/207,253

12
Prevent Access 1
We are not persuaded of error on the part of the Examiner by 2
Appellants’ argument that quarantine queue 704 does not “prevent[ ] the 3
content from being accessed by the application,” as recited in dependent 4
claim 6 (App. Br. 20-21). Quarantine queue 704 prevents certain e-mail 5
messages from proceeding to the e-mail application. Accordingly, the e-6
mail application cannot access those quarantined messages. 7
8
Pornography or Copyrighted Material 9
We are not persuaded of error on the part of the Examiner by 10
Appellants’ argument that content manager 220 of Bandini does not 11
sequester content in response to detecting that the content includes 12
pornography or copyrighted material, as recited in dependent claim 9 (App. 13
Br. 21). Content manager 220 filters e-mails based on (a) specific words, or 14
word patterns, in the body 208; (b) specific words in the subject 207; (c) 15
attachment 209 (all or by name/type); (d) specific words, or word patterns, 16
in the attachment. It would have been within the abilities of one of ordinary 17
skill to use any of these tools to filter e-mails containing pornography. By 18
the use of the term “or,” content manager 220 only needs to be able to 19
sequester either pornography or copyrighted material in order to meet the 20
claimed recitation. In any case, pornography or copyrighted material 21
content is merely printed matter that cannot distinguish the invention from 22
the prior art in terms of patentability. See In re Gulack, 703 F.2d at 1385-86. 23
Appeal 2009-003519
Application 11/207,253

13
Electronic Photo Album 1
We are persuaded of error on the part of the Examiner by Appellants’ 2
argument that e-mail message 204 including graphics data and one or more 3
files to be transmitted with the message in Bandini does not correspond to a 4
client application being an electronic photo album application, as recited in 5
dependent claims 10 and 20 (App. Br. 22, 47). One of ordinary skill would 6
not consider an e-mail application configured to read e-mail message 204, 7
with or without graphics data/files, to be an electronic photo album 8
application. 9
10
Restoring Information 11
We are not persuaded of error on the part of the Examiner by 12
Appellants’ argument that review of quarantined content by a system 13
administrator does not correspond to restoring the content and format 14
information associated with the content to the application, as recited in 15
dependent claims 13 and 23 (App. Br. 22-23, 48). The system administrator 16
reviews the quarantined content to restore content that was improperly 17
quarantined. Thus, the system administrator provides the recited feedback 18
and determining that the content was not actually unacceptable. Such 19
content is then allowed to proceed to the e-mail application. 20
21
Storing Format Information 22
We are not persuaded of error on the part of the Examiner by 23
Appellants’ argument that a combination of Bandini and Kyler does not 24
render obvious storing format information associated with the content in the 25
off-line storage device, as recited in dependent claims 18 and 28 (App. Br. 26
Appeal 2009-003519
Application 11/207,253

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44-45, 59-60). Any content, whether e-mail, images, or data, includes some 1
sort of meta-data or format information stored with the content. In any case, 2
format information is merely printed matter that cannot distinguish the 3
invention from the prior art in terms of patentability. See In re Gulack, 703 4
F.2d at 1385-86. 5
6
Specific Format Information 7
We are not persuaded of error on the part of the Examiner by 8
Appellants’ argument that a combination of Bandini and Kyler does not 9
render obvious “wherein the format information includes one of location 10
information of the content, background color information for the content, 11
and caption information describing the content,” as recited in dependent 12
claim 19 (App. Br. 45-47). The Examiner took Official Notice of the subject 13
matter of dependent claim 19 in the Office Action mailed September 12, 14
2006. As the Appellants have not set forth in the Appeal Brief specific 15
technical arguments as to why the facts set forth in the Official Notice are in 16
error, we will sustain this rejection. See In re Chevenard, 139 F.2d 711, 713 17
(CCPA 1943). 18
19
Returning Content 20
We are not persuaded of error on the part of the Examiner by 21
Appellants’ argument that a combination of Bandini and Kyler does not 22
render obvious “re-reviewing the content and/or accepting feedback received 23
from a content submitter; determining that said content is actually 24
acceptable; and returning the content and format information associated with 25
the content to a submitter,” as recited in dependent claim 22 (App. Br. 47). 26
Appeal 2009-003519
Application 11/207,253

15
On page 7 of the Examiner’s Answer, the Examiner has set forth a proper 1
case of prima facie obviousness with respect to the subject matter of 2
dependent claim 22. On page 47 of the Appeal Brief, however, Appellants 3
merely re-recite dependent claim 22 without any argument. Accordingly, 4
Appellants have not met the burden of overcoming the prima facie case of 5
obviousness. See In re Keller, 642 F.2d 413, 425-26 (CCPA 1981). 6
Dependent Claims 7
We are not persuaded of error on the part of the Examiner by 8
Appellants’ argument that a combination of Bandini and Kyler does not 9
render obvious the subject matter of dependent claims 2, 5, 7-8, 11-12, 17, 10
21, 25-27, and 29, because these claims depend from allowable independent 11
claims 1, 14, 15, 24, and 30 (App. Br. 71-72). For the reasons set forth 12
above, the Appellants have not shown how the Examiner erred in rejecting 13
independent claims 1, 14, 15, 24, and 30. 14
15
CONCLUSION OF LAW 16
On the record before us, Appellants have shown that the Examiner 17
erred in rejecting claims 10 and 20. 18
On the record before us, Appellants have not shown that the Examiner 19
erred in rejecting claims 1-9, 11-19, and 21-30. 20
21
DECISION 22
The decision of the Examiner to reject claims 10 and 20 is reversed. 23
The decision of the Examiner to reject claims 1-9, 11-19, and 21-30 is 24
affirmed. 25
Appeal 2009-003519
Application 11/207,253

16
We use our authority under 37 C.F.R. § 41.50(b) to enter a new 1
rationale for rejecting dependent claim 4 and independent claims 15, 24, and 2
30 under 35 U.S.C. § 103(a) as unpatentable over Bandini in view of Kyler. 3
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection 4
pursuant to this paragraph shall not be considered final for judicial review.” 5
Regarding the new ground of rejection, Appellants must, WITHIN 6
TWO MONTHS FROM THE DATE OF THE DECISION, exercise one of 7
the following options with respect to the new ground of rejection, in order to 8
avoid termination of the appeal as to the rejected claims: 9
(1) Reopen prosecution. Submit an appropriate 10
amendment of the claims so rejected or new 11
evidence relating to the claims so rejected, or both, 12
and have the matter reconsidered by the examiner, 13
in which event the proceeding will be remanded to 14
the examiner. . . [; or] 15
(2) Request rehearing. Request that the 16
proceeding be reheard under § 41.52 by the Board 17
upon the same record. . . . 18
No time period for taking any subsequent action in connection with 19
this appeal may be extended under 37 C.F.R. § 1.136(a) (2007). 20
AFFIRMED-IN-PART, 37 C.F.R. § 41.50(b) 21
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