Ex Parte Lin

Patent Trial and Appeal Board

Jul 15, 2014

11987942 (P.T.A.B. Jul. 15, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/987,942 12/06/2007 Ying-Chien Lin 66307-015 9141
65358 7590 07/16/2014
WPAT, PC
INTELLECTUAL PROPERTY ATTORNEYS
8230 BOONE BLVD. SUITE 405
VIENNA, VA 22182
EXAMINER
LY, CHEYNE D
ART UNIT PAPER NUMBER
2168
MAIL DATE DELIVERY MODE
07/16/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YING-CHIEN LIN

____________________

Appeal 2012-003351
Application 11/987,942
Technology Center 2100
____________________

Before RICHARD E. SCHAFER, HUNG H. BUI, and
DANIEL J. GALLIGAN, Administrative Patent Judges.

GALLIGAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s rejection of claims 1, 2, 4–8, and 10–12. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.2

1 The Real Party in Interest is Alphanetworks Inc.
2 Our decision refers to Appellant’s Appeal Brief filed on June 30, 2011
(“App. Br.”); Examiner’s Answer mailed September 28, 2011 (“Ans.”); and
original Specification filed December 6, 2007 (“Spec.”).
Appeal 2012-003351
Application 11/987,942

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STATEMENT OF THE CASE

Claims on Appeal
Appellant’s application relates to reading files from a remote server
using email. Spec. 1. Claims 1 and 7 are independent claims and are
reproduced below:
1. A method of reading a file from a remote server using an email,
applied in a network system comprising a remote server, a computer
and the Internet, wherein the remote server includes a database for
storing a plurality of files, and the computer connects the remote
server through the Internet, and the computer is provided for users to
create an email, and the email includes a request instruction for users
to issue a request to the remote server for reading the files, the method
comprising the steps of:
transmitting the email to an account in the remote server by the
computer via the Internet, wherein the email further comprises a user
name and an account password;
replying a file list to the computer after the remote server has
read the email in the account according to the request instruction
carried in the email, wherein the file list is a list of the files in the
database;
transmitting another email to the remote server by the computer
via the Internet including a select instruction and a file location of a
desired reading file;
returning the corresponding desired reading file from the
database to the computer in an email format by the remote server
according to the select instruction and the file location in the another
email.

7. A method of reading a file from a remote server using an email,
applied in a network system comprising a remote server, a computer
and the Internet, wherein the remote server includes a database for
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Application 11/987,942

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storing a plurality of files, and the computer connects the remote
server through the Internet, and the computer is provided for users to
create an email, and the email includes a request instruction for users
to issue a request to the remote server for reading the files, the method
comprising the steps of:
transmitting the email to an account in the remote server by the
computer via the Internet, after the computer has created the email,
wherein the email further comprises a user name and an account
password; and
returning the corresponding file from the database to the
computer in an email format by the remote server according to the
select instruction and the file location in the email, after the remote
server has read the email in the account.

Evidence Considered

Shimamura US 2001/0003827 A1 June 14, 2001
Pollack US 2002/0019851 A1 Feb. 14, 2002
Lacy US 2005/0246640 A1 Nov. 3, 2005

Examiner’s Rejection
Claims 1, 2, 4–8, and 10–12 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Pollack, Lacy, and Shimamura. Ans. 4-7.

ANALYSIS

Appellant challenges the Examiner’s findings that the prior art
discloses the inclusion of a password in an email, as required by independent
claims 1 and 7. App. Br. 6–12. The Examiner found that Pollack’s
disclosure of codes and keys embedded in an email for authenticating the
user serves the same purpose as a password. Ans. 7–8 (citing Pollack ¶ 38).
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The Examiner further found that Shimamura discloses the inclusion of a
password in an email. Ans. 5–6, 8. Appellant argues that: (1) Pollack does
not disclose including user password information in an email, and (2)
Pollack teaches away from the use of passwords in email. App. Br. 7.
We do not find Appellant’s arguments persuasive. Pollack discloses
that a rights verifier “could involve more than the sender’s email address,
such as codes and keys embedded in the electronic mail item 14 . . . .”
Pollack ¶ 38. Pollack discloses using the user identification in combination
with the key to determine if the user has rights to a file. Pollack ¶ 38. We
agree with the Examiner’s finding that Pollack’s disclosure of codes and
keys embedded in an email for authenticating the user serves the same
purpose as a password. Therefore, we find that Pollack discloses including
an account password in an email, as recited in independent claims 1 and 7.
Based on this disclosure in Pollack, we also do not find persuasive
Appellant’s argument that Pollack teaches away from using passwords in an
email communication.
Appellant further makes a number of arguments based on the
purported failure of the Shimura and Lacy references to disclose certain
claim limitations. For the most part, the alleged missing limitations are
taught by Pollack. Thus, Appellant’s arguments are not persuasive because
they attack the teachings of the references individually. “Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.” In re
Merck &Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Thus, Shimamura and
Lacy must be read, not in isolation, but for what they fairly teach in
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Application 11/987,942

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combination with the prior art as a whole. Id. In any event, we address each
of Appellant’s arguments on the Shimamura and Lacy references below.
Appellant challenges the Examiner’s reliance on Shimamura for the
disclosure of including a password in an email.3 App. Br. 8–12. Appellant
argues that Shimamura discloses device-specific passwords, not passwords
associated with particular user names and that Shimamura does not use
passwords in the same capacity as the present invention. App. Br. 8–10.
We do not find this argument persuasive because claims 1 and 7 do not
require the account password to have any particular properties or
associations, nor is there any limitation in claims 1 and 7 requiring the
account password to be used in any particular capacity. Additionally, as we
found above, Pollack effectively teaches the use of a password in an email.
Appellant also argues that, in contrast to Shimamura, “the present
invention discloses messages sent to an account and verifying the user name
and associated account password included in the message (inter alia, Step
303).” App. Br. 11. We note that claims 1 and 7 do not require verifying
the user name and account password. Furthermore, the Specification states
that the verification step can be omitted:
In other embodiments of the invention, the step of verifying the
user name and the account password contained in the email 110
by the remote server 10 can be omitted if the file 101 is a non-
confidential file or a general public file. In Step (202) or (302)
as shown in FIGS. 2 and 3, if the remote server 10 detects the
email 110 in the account 102, Step (203) or (303) can be
omitted and the procedure directly goes to Step (204) or
(304) . . . .

3 Although we find Pollack discloses including an account password in an
email, we address Appellant’s arguments with respect to Shimamura.
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Spec. 7, ll. 8–14. Therefore, we do not find this argument persuasive.
While dependent claims 4 and 10 require verifying the user name and the
account password, Appellant does not separately address the Examiner’s
rejection of claims 4 and 10, other than to say generally that they are
allowable for the same reasons as the independent claims, “in addition to
their own merits.” App. Br. 16. We also note that Pollack teaches the
concept of verifying a “password,” i.e., the codes and keys embedded in an
email for authenticating the user.
Appellant further argues that the “present invention claims two
distinct messaging processes . . . .” each involving sending a message to an
account in the remote server, while Shimamura discloses only a single
message. App. Br. 11–12. First, we note that claim 7 requires sending only
one message to an account in the remote server. As for claim 1, we do not
find this argument persuasive because claim 1 requires that the first email
message only include a password. Claim 1 does not require that the second
email include a password, and the Examiner did not rely on Shimamura’s
disclosure for the limitations concerning the second email of claim 1. The
Examiner relied on Pollack as teaching this limitation. Ans. 5. See Pollack
¶¶ 52-60.
Appellant still further argues that, in contrast to Shimamura, the
claimed invention requires sending an email to a remote mailbox that is
distinct from the account specified by the user name and password. App. Br.
12. We do not find this argument persuasive because there is no
requirement in the claims that the account in the remote server be distinct
from the account specified by the user name and account password.
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Appellant also argues that Lacy does not disclose sending an email
which includes a user name and an account password. App. Br. 8.
However, the Examiner did not rely on Lacy for this limitation. Ans. 8. The
Examiner relied on Pollack for this teaching. Id.
Appellant also challenges the combination of Pollack, Lacy, and
Shimamura as improper. App. Br. 12–15. Appellant argues that Lacy is
irrelevant and incompatible with Pollack. App. Br. 14. The Examiner
responds that Pollack discloses an improvement in a system for email based
management of stored data to allow a user to quickly and easily manage files
and Lacy discloses improvements for assisting a user in locating files. Ans.
10. The Examiner points out that Pollack discloses a LIST command for
returning a directory listing of files from the server. Ans. 8 (citing Pollack
¶¶ 48–59). Pollack discloses that the LIST command can take a wildcard
command and return in an email a list of file handles valid for the user.
Pollack ¶ 48. The Examiner found that Lacy discloses presenting a list of
files in the database to a user. Ans. 5 (citing Lacy ¶¶ 8, 11).
We do not find Appellant’s arguments persuasive in rebutting the
Examiner’s combination of Pollack and Lacy. Appellant has not directed us
to evidence establishing that presenting a user a list of files in a database as
shown in Lacy’s disclosure would be incompatible with Pollack’s described
system and method. Attorney argument cannot take the place of evidence
lacking in the record. Estee Lauder, Inc. v. L'Oreal, S.A., 129 F.3d 588, 595
(Fed. Cir. 1997); In re Budnick, 537 F.2d 535, 537 (CCPA 1976).
Appellant further argues that reliance on Shimamura is improper
because Shimamura does not provide for the exchange of messages and the
authentication of a user name and password associated with a user mailbox.
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Application 11/987,942

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App. Br. 15. We do not find Appellant’s argument persuasive. As we
address above, claims 1 and 7 do not require an authentication of a user
name and password.
Thus, the rejection of claims 1 and 7 is sustained. Claims 2 and 4–6
depend from claim 1, and claims 8 and 10–12 depend from claim 7.
Appellant has not asserted any arguments for patentability of the dependent
claims in addition to those for the independent claims. As such, the rejection
of claims 2, 4–6, 8, and 10–12 is sustained.

DECISION
We affirm the Examiner’s rejection of claims 1, 2, 4–8, and 10–12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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