Ex Parte Malcolm

Patent Trial and Appeal Board

Nov 29, 2013

12183339 (P.T.A.B. Nov. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
12/183,339 07/31/2008 Jerry Walter Malcolm 10033.926200 5438
31894 7590 11/29/2013
OKAMOTO & BENEDICTO, LLP
P.O. BOX 641330
SAN JOSE, CA 95164
EXAMINER
SHIN, KYUNG H
ART UNIT PAPER NUMBER
2443
MAIL DATE DELIVERY MODE
11/29/2013 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 JERRY WALTER MALCOLM
____________________
Appeal 2011-007859
Application 12/183,339
Technology Center 2400
____________________
Before RICHARD TORCZON, JOHN G. NEW, and HUNG H. BUI,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1-5. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.2

1 The real party in interest is Trend Micro, Inc.
2 Our decision refers to Appellant’s Appeal Brief filed November 17, 2010
(“App. Br.”); Reply Brief filed March 21, 2011 (“Reply Br.”); Examiner’s
Answer mailed February 3, 2011 (“Ans.”); Final Office Action mailed
August 31, 2010 (“Final Rej.”); and the original Specification filed July 31,
2008 (“Spec.”).
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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention relates to filtering, sorting, prioritizing and
rejecting electronic messages such as e-mail. See Spec., ¶ [0001].
According to Appellant, each message sent from an approved bulk mail
sender must include an identifier as “bulk mail,” and must include the
sender’s assigned identifier value, in order for the message to pass directly to
the recipient without interception. Any bulk mail that does not have the
associated identifier in the user’s environment is handled as spam. Each
identifier is personalized to each subscriber to prevent spoofing by
spammers. See FIG. 2 and Abstract.
Claims on Appeal
Claim 1 is the only independent claim on appeal. Claim 1 is
illustrative of Appellant’s invention, and is reproduced with disputed
limitations emphasized below:
1. A server hardware platform comprising memory,
the memory comprising:
an inbound message examiner configured to:
examine a header portion of an electronic message
destined to an intended recipient to find a bulk class
indicator; and
responsive to finding said bulk class indicator,
further examine said header portion to find an approved
sender identifier value that is personalized to said
intended recipient;
a message passer configured to, responsive to finding
both a bulk class message indicator and an approved sender
identifier value that is personalized to said intended recipient,
forward said message to said intended recipient, including said
header portion with said bulk class indicator;
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a bulk analyzer configured to, responsive to finding no
indication of said bulk class indicator, analyze said message for
bulk message characteristics; and
a message interceptor configured to, responsive to
finding a bulk class indicator but not finding an approved
sender identifier that is personalized to said recipient, or
responsive to determining that the message has bulk message
characteristics, intercept the message by blocking forwarding of
the message to said intended recipient.
Evidence Considered
Ben-Yoseph et al. (Ben-Yoseph) 7,472,163 B1 Dec. 20, 2008
Smoot et al. (Smoot) US 2004/0212639 A1 Oct. 28, 2004
YourDictionary.com: the definition of term personalize.
Examiner’s Rejection
Claims 1-5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ben-Yoseph and Smoot. Ans. 5-8.
Issue on Appeal
Based on Appellant’s arguments, the dispositive issue on appeal is
whether the Examiner erred in rejecting claims 1-5 under 35 U.S.C. §103(a)
as being unpatentable over Ben-Yoseph and Smoot. In particular, the issue
turns on whether the combination of Ben-Yoseph and Smoot discloses or
suggests examining “said header portion [of a bulk email] to find an
approved sender identifier value that is personalized to said intended
recipient,” as recited in independent claim 1. App. Br. 3-4; Reply Br. 2-3.
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ANALYSIS
§103 Rejection of Claims 1-5 over Ben-Yoseph and Smoot
The Examiner finds Ben-Yoseph discloses a server hardware platform
comprising a memory having all elements of Appellant’s independent claim
1, including: “an inbound message examiner …,” “a message passer …,” “ a
bulk analyzer …,” “a message interceptor …, except for an identifier
personalized to recipient. Ans. 4-5 (citing Ben-Yoseph, col. 5, ll. 33-41, 53-
62; col. 7, ll. 32-46; col. 8, ll. 50-54; col. 9, ll. 8-15; col. 10, ll. 33-37; col.
12, ll. 17-20; col. 27, ll. 33-29; col. 28, ll. 8-16). The Examiner finds Smoot
discloses the use of a “sender identifier that is personalized to said
recipient.” Id. at 5 (citing Smoot, ¶ [020], ll. 11-16).
Based on such factual findings, the Examiner concludes that “it would
have been obvious to modify Ben-Yoseph for an identifier personalized to
recipient as disclosed by Smoot … for the efficient processing of error
recovery and elimination of single points of failure.” Ans. 5-6 (citing
Smoot, ¶ [020], ll. 10-16).
Appellant does not dispute the Examiner’s findings regarding Ben-
Yoseph. Nor does Appellant argue against the Examiner’s articulated
reasoning for incorporating Smoot into Ben-Yoseph. Rather, Appellant
contends that the combination of Ben-Yoseph and Smoot does not disclose
or suggest examining “a header portion [of a bulk email] to find an approved
sender identifier value that is personalized to said intended recipient,” as
recited in independent claim 1. App. Br. 3-4; Reply Br. 2-3 (emphasis in
original). In particular, Appellant acknowledges that:
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“Ben-Yoseph pertains to monitoring a bulk message
sender for compliance (Abstract). In Ben-Yoseph, the system
determines whether the received email is from an approved
bulk mail sender list by examining the sender name, domain
name, or IP address of the sender (Ben-Yoseph, col. 27, lines
33-59). That is, Ben-Yoseph discloses using the sender's public
network identifier in a listing of approved bulk mail senders.
As can be appreciated, the sender's public network identifier is
common in email communications of the sender. That is, the
sender's public network identifier, such as its name, domain
name, or IP address, is not personalized to an intended
recipient.”
App. Br. 4.
Nevertheless, Appellant argues that, contrary to the Examiner’s
position, Smoot only discloses examining a user’s unique identifier to check
whether the user exists within the email service. Id. According to
Appellant, the user’s unique identifier of Smoot simply identifies the user as
subscribing to the email service, but is not personalized to recipients of the
user’s emails. Id. (emphasis in original).
We are not persuaded by Appellant’s arguments. At the outset, we
note that claim terms are given their broadest reasonable interpretation
consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1369 (Fed. Cir. 2004). Such claim terms are “given their ordinary and
customary meaning” as understood by one of ordinary skill in the art at the
time of the invention. See Phillips v. AWH Corp., 415 F.3d 1303, 1312-13
(Fed. Cir. 2005) (en banc). However, it is the use of the words in the context
of the written description and customarily by those skilled in the relevant art
that accurately reflects both the “ordinary” and the “customary” meaning of
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the terms in the claims. Ferguson Beauregard/Logic Controls, Div. of
Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003).
[The claims] are part of a fully integrated written instrument,
consisting principally of a specification that concludes with the
claims. For that reason, claims must be read in view of the
specification . . . . [T]he specification is always highly relevant
to the claim construction analysis. Usually, it is dispositive; it
is the single best guide to the meaning of a disputed term.
Phillips, 415 F.3d at 1315 (citations omitted) (internal quotation marks
omitted).
In the instant appeal, the claim term “personalized to [said] intended
recipient” is not defined in Appellant’s Specification. Ans. 7-9. In the
absence of such an explicit definition, the Examiner may adopt the broadest
reasonable definition of the term consistent with the Specification. In re
Morris, 127 F.3d 1048, 1053-54 (Fed. Cir. 1997).
In particular, the Examiner relies on a commonly available on-line
dictionary definition of the claim term “personalized” as “to apply or
understand as applied to a particular person,” and interprets the claim term
as encompassing Smoot’s identifier associated with or applied to a particular
user, whether that user is a sender or an intended recipient. Ans. 7 (citing
www.yourdictionary.com/personalize: definition of term “personalize”). We
find the Examiner’s interpretation of Appellant’s claimed term “personalized
to [said] intended recipient” reasonable and consistent with ¶ [0040] of
Appellant’s own Specification.
Appellant further argues that the Examiner’s contention that “the
Smoot identifier is associated with or applied to a particular user” does not
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support the rejection because “it does not answer the question of whether the
Smoot identifier is personalized to intended recipients when used as a sender
identifier.” Reply Br. 3. However, we find such an argument unavailing
because the user identifier of Smoot is incorporated into an email system of
Ben-Yoseph, which is a sender system. Ans. 3 (citing Ben Yoseph, col. 27,
ll. 33-39).
Appellant has not provided us with sufficient reason to disturb the
Examiner’s claim construction and factual findings regarding Ben-Yoseph
and Smoot, which are supported by evidence.
For the reasons set forth above, we find no reversible error in the
Examiner’s position and, as such, sustain the Examiner’s obviousness
rejection of independent claim 1 over Ben-Yoseph and Smoot.
With respect to dependent claims 2-5, Appellant presents no separate
patentability arguments. For the same reasons discussed, we also sustain the
Examiner’s obviousness rejection of claims 2-5.
CONCLUSION
On the record before us, we conclude that the Examiner has not erred
in rejecting claims 1-5 under 35 U.S.C. §103(a) as being unpatentable over
Ben-Yoseph and Smoot.
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DECISION
As such, we AFFIRM the Examiner’s final rejection of claims 1-5.
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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