Ex Parte Malik et al

Board of Patent Appeals and Interferences

Sep 14, 2011

11082703 (B.P.A.I. Sep. 14, 2011)

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.
11/082,703 03/17/2005 Nadeem Malik AUS920040967US1 8171
82531 7590 09/14/2011
Lieberman & Brandsdorfer, LLC
802 Still Creek Lane
Gaithersburg, MD 20878
EXAMINER
BEHARRY, NOEL R
ART UNIT PAPER NUMBER
2478
MAIL DATE DELIVERY MODE
09/14/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte NADEEM MALIK and AVIJIT SAHA
____________________

Appeal 2009-014739
Application 11/082,703
Technology Center 2400
____________________

Before RICHARD TORCZON, KARL D. EASTHOM, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

Concurring opinion by TORCZON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
3-8, 10-15, and 17-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellants’ invention is directed to computer-managed
communication networks that distribute electronic messages and particularly
to instant messaging systems using such networks. (Spec. 1, ll. 6-9.)
Claims 1 and 3, reproduced below, are illustrative of the claimed
subject matter:
1. In an instant messaging communication network including a
plurality of display devices for displaying Web documents
transmitted to receiving display stations operated by a plurality
of users to send and receive displayable messages, a system for
asynchronous transactions action buttons over communication
mediums comprising:
storage device including a list of a plurality of identified
users authorized for instant message exchange through
user display stations operated by said users; and
a processor that enables instant message exchange at
each identified user operated station;
wherein one of users sending an instant message is
enabled to encapsulate a file as an object;
wherein said user sending the message is enabled to
create an agent code for accessing said file within said
object controllable by said sending user;
wherein said agent code maintains an agent link between
a sender and a receiver over a distributed system.

3. The instant messaging communication network system of
claim 1 wherein said sender can revoke said sent instant
message file.
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(Appeal Brief, Claims Appendix1 23.)

THE REJECTION
The Examiner rejected claims 1, 3-8, 10-15, and 17-20 under 35
U.S.C. § 103(a) as being unpatentable over Malik (US 2004/0078445 A1,
published April 22, 2004) in view of Leonard et al. (US 6,721,784 B1,
published April 13, 2004). (Examiner’s Answer, mailed May 12, 2009,
“Ans.” 4-13.)

ISSUES
Claims 1, 8, and 15
The Examiner found that Malik discloses all of the limitations of
claim 1, except that “Malik does not explicitly disclose wherein one of user
sending an instant message is enabled to encapsulate said file as an object;
wherein said user sending the message is enabled to create an agent code for
accessing said file within said object controllable by said sending user;
wherein said agent code maintains an agent link between a sender and a
receiver over a distributed system.” (Ans. 4-5.)
The Examiner found that Leonard teaches encapsulating a file as an
object because Leonard teaches sending an encrypted message as an object.
(Ans. 6.) The Examiner found that Leonard teaches an agent code that
enables accessing a file within an object because Leonard teaches a “viewer
applet arranged to facilitate destruction of [a] message upon the occurrence

1 Appeal Brief filed December 23, 2008, hereinafter “App. Br.” and Claims
App’x, respectively.
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of [a] selected expiration time, date, or event, and/or to implement []
handling and processing limitations.” (Ans. 6.)
The Examiner also found that Leonard discloses maintaining an agent
link between a sender and receiver by having the viewer applet at the
receiver check-in periodically with a central server, and that the receiver
may be required to retrieve information or parts of the message “each time
the message is to be viewed or handled.” (Ans. 6, 15) (quoting Leonard,
Col. 8, ll. 16-22.)
The Examiner determined that it would have been obvious to one of
ordinary skill in the art “to modify the Instant Messaging system of Malik to
include the use of sending encrypted/encapsulated messages with a viewer
applet that allows the sender to maintain control over the sent message as
taught by Leonard . . . in order to maintain control over a sent message.”
(Ans. 6.)
Appellants contend that Leonard’s teachings fail to make up for the
deficiencies of Malik because “enabling implementation of ‘destruction of
an e-mail message at a predetermined date, time, or event’ is not the same as
retaining or maintaining control over sent messages.” (App. Br. 11.)
Appellants assert “the control maintained in the present invention is
occurring at the time the control is exercised.” (App. Br. 11-12.) Appellants
also contend that “[w]hile the Leonard sender is able to have an affect [sic]
on the message after the message has been sent, the Leonard sender has no
ongoing control of the message.” (App. Br. 12.) Appellants argue,
therefore, that “Leonard teaches away from the feature of maintaining
control over a sent message, as claimed.” (App. Br. 12.) Appellants also
contend that “[t]he sender in Leonard does not maintain an agent link
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between a sender and receiver of the message such that the sender in
Leonard is able to continuously control the sent message.” (App. Br. 13.)
Further, Appellants contend that the Examiner used impermissible
hindsight to combine the teachings of Malik and Leonard. (App. Br. 15-16.)
Appellants assert that “the suggestion for combining Malik and Leonard in
the manner proposed by the Examiner could only come from Applicants’
own teaching, and, thus, cannot form any basis for a combination of
references.” (App. Br. 16.)

Claims 3, 10, and 17
The Examiner further found that “Leonard discloses a method of
revoking a sent message by sending a ‘cancellation message to the central
server or recipient’s viewer applet.’” (Ans. 15.) (quoting Leonard, Col. 12,
l. 63 – Col. 13, l. 2.)
Appellants argue that “[t]he system of Leonard does not enable a
sender to maintain ongoing control of the sent message, but only allows
immediate cancellation of a message sent in error which requires immediate
action on the part of the sender.” (App. Br. 19.)

Thus, the dispositive issues on appeal are:
I. Whether the Examiner erred in finding that Leonard discloses
“wherein one of users sending an instant message is enabled to
encapsulate a file as an object; wherein said user sending the
message is enabled to create an agent code for accessing said
file within said object controllable by said sending user;
wherein said agent code maintains an agent link between a
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sender and a receiver over a distributed system,” as recited in
claim 1?
II. Whether the Examiner erred in determining that one of ordinary
skill in the art would combine the teachings of Malik and
Leonard to arrive at Appellants’ invention?
III. Whether the Examiner erred in finding that Leonard discloses
“said sender can revoke said sent instant message file,” as
recited in claim 3?

PRINCIPLES OF LAW
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme
Court explained that “Section 103 forbids issuance of a patent when ‘the
differences between the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in the art to
which said subject matter pertains.”’ KSR, 550 U.S. at 406.
Regarding the use of hindsight, the Court in KSR indicated that a fact
finder “must be cautious of arguments reliant upon ex post reasoning,” but
went on to state that “[r]igid preventative rules that deny factfinders recourse
to common sense, however, are neither necessary under our case law nor
consistent with it.” Id. at 421.
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference would be led in a direction divergent from
the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327,
1335 (Fed. Cir. 2001).
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Although claims are interpreted in light of the specification,
limitations from the Specification are not read into the claims. In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).

FACTUAL FINDINGS (FF)
1. Leonard discloses achieving “control” over a message by
“encrypting the message [(by creating an “encrypted electronic
mail object”)] and enabling viewing only through a viewer applet
arranged to facilitate destruction of the message upon the
occurrence of the selected expiration time, date, or event, and/or to
implement [] handling and processing limitations.” (Abstract; see
col. 13, ll. 15-21.)
2. Leonard discloses that a central server may transmit messages and
“the server may retain control of access to messages by . . . having
the viewer applet check-ion [sic] with the central server
periodically to verify that the clock used by the viewer applet has
not been tampered with and/or has not malfunctioned.” (Abstract;
Col. 13, ll. 26-33; Col. 21, ll. 29-36.)
3. Leonard discloses that the viewer applet can “retrieve information
or portions of the message from the central server each time the
message is to be viewed or handled.” (Col. 8, ll. 16-19.)
4. Leonard discloses that it is beneficial to maintain control over a
sent message “in order to limit the lifespan of a message,” and “to
limit handling of the message, including forwarding, copying,
printing, and so forth.” (Col. 3, ll. 27-32.)
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5. Leonard discloses that maintaining control over a message is “not a
unique feature,” and systems that provide control exist in the art.
(Col. 3, ll. 33-43.)
6. Leonard discloses that “[i]n each version of the message
origination or message control software, it is possible to include a
message cancellation feature or ‘oops’ button that allows
immediate cancellation or deletion of a message after sending, or
cancellation of a message before the designated expiration date,
time, or event, by sending a cancellation message to the central
server or recipient’s viewer applet.” (Col. 12, l. 63 – Col. 13, l. 2.)

ANALYSIS
Appellants do not provide separate substantive arguments for all the
claims on appeal. Accordingly, we confine our discussion to appealed
claims 1 and 3, which contain claim limitations representative of the
arguments made by Appellants pursuant to 37 C.F.R. § 41.37(c)(1)(vii). See
In re Lovin, ---- F.3d ----, 2011 WL 2937946 (Fed. Cir. 2011).

Issue One
Initially, we disagree with Appellants’ interpretation of the recited
phrase, “wherein said user sending the message is enabled to create an agent
code for accessing said file within said object controllable by said sending
user,” as requiring “retaining control” or “ongoing control.” Appellants’
claims do not recite “retaining” or “ongoing” control. Appellants’
interpretation reads limitations from the Specification into the claims. See In
re Van Geuns, 988 F.2d at 1184.
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Although Appellants point to an example set forth in the Specification
(App. Br. 14), the Specification is not limited to the examples, and supports
a broader interpretation of an “object controllable by said sending user.”
Specifically, Appellants’ Specification states that “[t]he sender/employee []
maintains control over a sent instant message file by encapsulating said file
as an object with an agent code.” (Spec. 5. ll. 29-31.) Appellants’ Abstract
further states that “[t]he present invention allows users to maintain control
over an instant message after it is sent . . . [m]ore specifically, a sender of an
instant message can revoke a sent instant message, or amend a sent instant
message.” (Spec. Abstract ll. 7-9.) Thus, the broadest reasonable
interpretation of the “control” recited in the claims includes the control
provided by encapsulating the file as an object with an agent code or an
ability to amend, revoke, or otherwise control similar action with respect to a
sent message.
Thus, in light of the above interpretation, we agree with the Examiner
that the viewer applet of Leonard discloses an agent code that allows the
sending user to control the object. (Ans. 5-6, 14-15.) The viewer applet of
Leonard allows the user to control the destruction of a message upon the
occurrence of a selected expiration time, date, or event, and/or to implement
handling and processing limitations. (FF 1.) Because Leonard teaches that
the viewer applet allows the message to be controlled, we are also not
persuaded by Appellants’ argument that Leonard teaches away from this
feature. See In re Haruna, 249 F.3d at 1335.
Similarly, Appellants’ argument that “[t]he sender in Leonard does
not maintain an agent link between a sender and receiver of the message
such that the sender in Leonard is able to continuously control the sent
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message,” is predicated on an improper attempt to import limitations from
the Specification. (App. Br. 13, emphasis added.) As the Examiner has
noted (Ans. 16), the language of Appellants’ claims does not require that the
agent link be used for continuous control of a sent message. Leonard
discloses maintaining an agent link between a sender and receiver by having
the receiver’s viewer applet check-in periodically with a central server that
sends the message. (FF 2.) Leonard further discloses that the viewer applet
may be required to retrieve information or parts of the message “each time
the message is to be viewed or handled.” (FF 3.) Therefore, Leonard
teaches that the viewer applet at the receiving end maintains communication,
or a link, between the sending central server and the recipient, by having the
viewer applet check-in periodically with a central server and retrieve
information or parts of the message each time the message is viewed or
handled. Thus, we agree with the Examiner that Leonard discloses
maintaining an agent link between a sender and receiver over a distributed
system. (Ans. 6, 15.)

Issue Two
We also do not agree with Appellants that the Examiner’s obviousness
determination constitutes improper hindsight reasoning. Appellants have not
addressed the Examiner’s reasons why one of ordinary skill in the art would
have combined Malik and Leonard. The Examiner’s reasoning is amply
supported by the record. Leonard teaches numerous reasons as to why it
would be beneficial to maintain control over a sent message. (FF 4.)
Further, Leonard teaches that maintaining control over an electronic
message was well known in the art. (FF 5.)
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Issue Three
Lastly, we cannot agree with Appellants that the system of Leonard
does not enable a sender to revoke a message. Appellants’ argument that
Leonard only discloses “immediate cancellation” fails to appreciate the
disclosure of Leonard as a whole. In addition to disclosing immediate
cancellation, Leonard discloses cancellation before a designated expiration
date by sending a “cancellation message to the central server or recipient’s
viewer applet.” (FF 6.) Further, Appellants’ argument that Leonard does
not allow a sender to “maintain ongoing control,” similar to the arguments
discussed above, is not commensurate with the scope of the claims, which
merely recite that “said sender can revoke said instant messaging file.”

CONCLUSIONS
The Examiner did not err in finding that Leonard discloses “wherein
one of users sending an instant message is enabled to encapsulate a file as an
object; wherein said user sending the message is enabled to create an agent
code for accessing said file within said object controllable by said sending
user; wherein said agent code maintains an agent link between a sender and
a receiver over a distributed system,” as recited in claim 1.
The Examiner did not err in determining that one of ordinary skill in
the art would combine the teachings of Malik and Leonard to arrive at
Appellants’ invention.
The Examiner did not err in finding that Leonard discloses “said
sender can revoke said sent instant message file,” as recited in claim 3.

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DECISION
We affirm the Examiner’s rejection of claims 1, 3-8, 10-15, 17-20
under 35 U.S.C. § 103(a) as being unpatentable over Malik in view of
Leonard.
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).

AFFIRMED

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TORCZON, Administrative Patent Judge, concurring.

Patent specifications and claims have long been said to "constitute one
of the most difficult legal instruments to draw with accuracy". Topliff v.
Topliff, 145 U.S. 156, 171 (1892). This difficulty does not, however, justify
careless drafting; rather, it makes basic drafting requisites such as grammar
and consistency all the more vital. In creating the patent system, Congress
placed the responsibility for precise, lucid drafting on the applicant.
35 U.S.C. 112; In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). An
applicant cannot place a burden of resolving unnecessary complexities on all
subsequent readers when correction is readily available through amendment.
Cf. Topliff, 145 U.S. at 171 (endorsing reissue as a cure to inevitable
mistakes in claims).
In claim 1, the main preamble phrase is "a system for asynchronous
transactions action buttons over communication mediums". This phrase is
not amenable to construction using English grammar, yet the disclosure does
not provide a special definition for this otherwise ungrammatical phrase.
The repeated use of similar phrases in the title and throughout the disclosure
does nothing to clarify the phrase.
Additionally, one limitation in claim 1 includes the phrase "one of
users sending an instant message", which appears to be missing at least one
word. The phrase is further confusing in light of subsequent reference
apparently to the same user as "said user sending the message", "said
sending user" and "a sender". In claim 3, the corresponding phrase is "said
sender". Is each "user" or "sender" the same actor or are they different
actors?
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Although claim construction is a threshold consideration in any
patentability determination, the majority has been able to address the
arguments made on appeal without resolving the problems with the claims.
Since the result is that the claims remain unpatentable, I fully concur in the
majority's reasonable and expeditious approach. Nevertheless, the
appellants are under a statutory obligation to ensure that any claim in further
prosecution is grammatical and internally consistent.

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