Ex Parte Jones et al

Patent Trial and Appeal Board

Jan 30, 2014

11840775 (P.T.A.B. Jan. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ANGELA RICHARDS JONES and RUTHIE D. LYLE
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Appeal 2011-008049
Application 11/840,775
Technology Center 2400
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Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
NINA L. MEDLOCK, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-18. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
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Application 11/840,775

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Claimed Subject Matter
Claims 1, 8, and 12 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A method for managing e-mail user confidentiality, the
method comprising:
transmitting an e-mail message for delivery to multiple e-
mail users and corresponding e-mail addresses;
identifying a privacy preference for a particular one of
the e-mail users; and
concealing within the e-mail message a display of an e-
mail address associated with the particular one of the e-mail
users responsive to the privacy preference.

Rejections
The Appellants request our review of the following Examiner’s
rejections.
Claims 1-4, 8, 10, and 12-15 are rejected under 35 U.S.C. § 102(b) as
anticipated by Cook (US 2004/0025057 A1, pub. Feb. 5, 2004).
Claims 6 and 17 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Cook and Ryan (US 2008/0021962 A1, pub. Jan. 24, 2008).
Claims 9 and 11 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Cook and Fox (US 2006/0224675 A1, pub. Oct. 5, 2006).
Claims 5, 7, 16, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Cook, Fox, and Ryan.

OPINION
The Appellants assert that independent claims 1, 8, and 12 require the
concealment of the display of an e-mail address in response to a privacy
preference. Br. 8. For example, claim 1 recites, “concealing within the e-
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Application 11/840,775

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mail message a display of an e-mail address associated with the particular
one of the e-mail users responsive to the privacy preference.”
The Examiner finds that Cook discloses the aforementioned limitation
of claim 1. Ans. 11. At the outset, it is notable that the Examiner finds that
Cook discloses a privacy preference when a recipient sets a flag designating
a public key as un-locatable. Ans. 11 and 35-36. Thus, when a key server
identifies this flag, this constitutes “identifying a privacy preference for a
particular one of the e-mail users” as recited in claim 1. See Ans. 10-11 and
35-36. Additionally, it is also notable that the Examiner finds that Cook
discloses a message to a recipient includes extra fields in the message header
or message body that indicate the recipient of the message. Ans. 36. When
a message includes the e-mail address of the recipient, this constitutes an e-
mail address associated with the particular one of the e-mail users.
The Examiner finds that when the message is rendered and the extra
fields in the message are not displayed to the recipient, it constitutes a step
of “concealing.” This step is in response to the recipient setting a flag
indicating a preference for the key server to treat the public key as un-
locatable (Ans. 36-37) and as such, reads on the step of “concealing within
the e-mail message a display of an e-mail address associated with the
particular one of the e-mail users responsive to the privacy preference,” as
recited in claim 1.
The Appellants contend that the “extra fields” are not displayed in
response to the identification of a privacy preference, as required by claim 1.
Br. 7. The Appellants’ argument is unpersuasive. As stated above, the
Examiner found the flag set by the user to instruct the key server to treat the
recipient’s public key as un-locatable constitutes a privacy preference. Ans.
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Application 11/840,775

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35. When the public key is un-locatable, a forwarding process does not
display the recipients of the message when the message is rendered. Ans.
36.
The Appellants contend that the “extra fields” are not displayed to the
recipients in all circumstances and, therefore, are not “responsive to the
privacy preference.” Br. 7. The Appellants assert the claim term
“concealing” means “to prevent disclosure or recognition of.” Br. 9. For the
purposes of this appeal only, even if we were to accept the Appellants’
definition of “concealing,” the Appellants’ contention is unpersuasive. As
discussed above, when a recipient has set a preference flag, disclosure of the
recipients/extra fields will not be displayed, and thereby disclosure or
recognition thereof to the recipient is prevented.
The Appellants further contend that the “Examiner asserts that
encryption as a process conceals content that has been encrypted,” however,
claim 1 “require[s] the concealment not of content, but of an ‘e-mail
address’.” Id. The Appellants’ contention is unpersuasive because it is not
commensurate in scope with claim 1. As pointed out by the Examiner, claim
1 does “not require that only the recipient e-mail address be concealed.”
Ans. 40. As discussed above, the Examiner finds that the message includes
the recipient e-mail address, i.e., the extra fields. Ans. 36. Encryption of the
message would therefore encrypt and prevent the disclosure or recognition
of the recipient e-mail address.
For the above reasons, the rejection of independent claim 1 is
sustained. Claims 2-4 depend from claim 1, are not argued separately, and
thus fall with claim 1.
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Additionally, the Appellants’ arguments are the same for independent
claims 8 and 12 as they are for independent claim 1. See Br. 8-9. As these
claims are similar to independent claim 1, we sustain the rejection of claims
8 and 12 as well. Claims 10 and 13-15 depend from claims 8 and 12,
respectively. Since claims 10 and 13-15 are not argued separately, they fall
with claims 8 and 12.
The Appellants provide separate headings but not separate arguments
against the rejection of: claims 6 and 17 as unpatentable over Cook and
Ryan; claims 9 and 11 as unpatentable over Cook and Fox; and claims 5, 7,
16, and 18 as unpatentable over Cook, Fox, and Ryan. See Br. 9-10. Thus,
these rejections are also sustained.

DECISION
We AFFIRM the rejections of claims 1-18.
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).

AFFIRMED

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