Ex Parte MankiewiczDownload PDFPatent Trial and Appeal BoardApr 22, 201411754862 (P.T.A.B. Apr. 22, 2014) Copy Citation 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. 11/754,862 05/29/2007 Bart Mankiewicz OPWR.128PA 8111 95119 7590 04/22/2014 Wilson Ham & Holman 1811 Santa Rita Road, Suite 130 Pleasanton, CA 94566 EXAMINER NGUYEN, PHUOC H ART UNIT PAPER NUMBER 2443 MAIL DATE DELIVERY MODE 04/22/2014 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) 1 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BART MANKIEWICZ ____________ Appeal 2011-002423 Application 11/754,862 Technology Center 2400 ____________ Before BRIAN J. MCNAMARA, RAMA G. ELLURU, and JAMES B. ARPIN, Administrative Patent Judges. ELLURU, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002423 Application 11/754,862 2 STATEMENT OF THE CASE Appellant seeks relief under 35 U.S.C. § 134(a) from the Examiner’s final rejection of Claims 1-24.1 App. Br. 4.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. The Invention The invention is directed to methods of detecting unwanted digital content in a mail box stored on a mail server. Spec. ¶ [0009]. According to the Specification, a first scan of the digital content is performed at the mail server to determine whether the digital content includes unwanted content. Id. The first scan determines whether a signature associated with the digital content is included in a first list of signatures. Id. The first list of signatures identifies digital content known to include unwanted content. Id. The digital content is forwarded to a user’s mail box. Id. A second scan of the digital content in the mail box is performed to determine whether the digital content includes unwanted content. Id. The second scan determines whether a signature associated with the digital content is included in a second list of signatures. Id. The second list of signatures identifies digital content known to include unwanted content. Id. Moreover, the second list of signatures is an updated version of the first list of signatures. Id. 1 Application No. 11/754,862 entitled Method, Apparatus and System for Detecting Unwanted Digital Content Delivered to a Mail Box, was filed on May 29, 2007. App. Br. 1. The Real Party-In-Interest is identified as Open Wave System, Inc. Id. at 2. 2 We refer to the Appeal Brief filed June 7, 2010 (“App. Br.”), the Examiner’s Answer mailed August 18, 2010 (“Ans.”), and the Reply Brief filed November 18, 2010 (“Reply Br.”). Appeal 2011-002423 Application 11/754,862 3 Claims 1 and 18 are illustrative and are reproduced below: 1. A method for detecting unwanted digital content in a mail box stored on a mail server, the method comprising: receiving digital content at the mail server; performing a first scan of the digital content to determine whether the digital content includes unwanted content, wherein the first scan determines whether a signature associated with the digital content is included in a first list of signatures that identify digital content known to include unwanted content; forwarding the digital content to the mail box; and performing a second scan of the digital content in the mail box to determine whether the digital content includes unwanted content, wherein the second scan determines whether the signature associated with the digital content is included in a second list of signatures that identify digital content known to include unwanted content, the second list of signatures being an updated version of the first list of signatures. 18. A system for filtering email message content in mail boxes stored on a mail server, the system comprising: means for receiving email messages at the mail server; means for performing a first scan of the email messages to determine which email messages include unwanted content, wherein the first scan is performed by executing a first algorithm to determine whether a signature associated with each email message is included in a first list of signatures that identify email messages known to include unwanted content; means for forwarding the email messages to the appropriate mail boxes; and means for performing a second scan of the email messages in the mailboxes to determine which email messages include unwanted content, wherein the second scan is performed by executing multiple threads. The Examiner relies upon the following prior art: Kirsch US 6,772,196 B1 Aug. 3, 2004 Appeal 2011-002423 Application 11/754,862 4 The Rejected Claims Claims 1-24 were rejected under 35 U.S.C. § 102(b) as anticipated by Kirsch. Ans. 4, 9. The Issue Presented 1. Whether Kirsch discloses the limitation “the second list of signatures being an updated version of the first list of signatures,” of claim 1 and the limitation “the first list of signatures being updated with at least one additional signature to comprise a second list of signatures that identifies email messages that are known to include unwanted content;” of claim 12? 2. Whether Kirsch discloses the limitation means for performing a first scan of the email messages to determine which email messages include unwanted content, wherein the first scan is performed by executing a first algorithm to determine whether a signature associated with each email message is included in a first list of signatures that identify email messages known to include unwanted content, as recited in claim 18? ANALYSIS 35 U.S.C. § 102(b): Rejection of Claims 1 and 12 Independent claim 1 recites “the second list of signatures being an updated version of the first list of signatures.” Independent claim 12 similarly recites “the first list of signatures being updated with at least one additional signature to comprise a second list of signatures that identifies email messages that are known to include unwanted content.” Appeal 2011-002423 Application 11/754,862 5 In rejecting claim 1, the Examiner finds that Kirsch discloses a method in which digital content is received at the mail server. Ans. 4 (citing Kirsch, Abstract; figs. 1-4). The method performs a first scan of the digital content to determine whether the digital content includes unwanted content (e.g., by comparing against Kirsch’s “White List 68” in Figure 3). Ans. 4. As Appellant recognizes, Kirsch’s White List 68 is a listing of domain names and email addresses indicating sources of wanted content. App. Br. 7. According to the Examiner, the first scan determines whether a signature associated with the digital content is included in a first list of signatures (e.g., signature not in White List 68) that identify digital content known to include unwanted content. Id. The digital content is forwarded to the mail box. Id. A second scan of the digital content in the mail box also is performed to determine whether the digital content includes unwanted content. Id. at 4-5. The second scan determines whether the signature associated with the digital content is included in a second list of signatures that identify digital content known to include unwanted content (e.g., by the signatures in signature database 76 in Figure 3). Id. at 5. The Examiner states that “the second list of signatures being an updated version of the first list of signatures (e.g. by the local manager 70 with dynamic update content in Figure 3).” Id. The Examiner makes similar findings with respect to claim 12. Ans. 7. Appellant argues with respect to claims 1 and 12 that the Examiner has not shown sufficiently that Kirsch’s set of signatures in signature database 76, which Examiner equates with the claimed second list of signatures,” is an updated version of the white list 68, which the Examiner equates with the claimed “first list of signatures.” App. Br. 7, 9. As noted Appeal 2011-002423 Application 11/754,862 6 above, claim 1 recites that the claimed “second list of signatures” is an “updated version” of the claimed “first list of signatures,” and claim 12 recites that the claimed “first list of signatures” is “updated with at least one additional signature to comprise” the claimed “second list of signatures.” We are persuaded by Appellant that the Examiner has not shown that those limitations of claims 1 and 12 are disclosed by Kirsch. In response to Appellant’s arguments, the Examiner finds that “the second signature DB 34 is updated by the first signature DB 16” as illustrated in Figure 1. Ans. 11. The Examiner further states “the second database 34 is an updated version of the first database 18 in Figure 1 wherein the first database 18 is sending the updated list signatures to the second database 34 via network.” Id. Even accepting the Examiner’s assertion that database 34 is an updated version of database 18, the Examiner has not explained how the embodiment of databases 34 and 18 relate to the embodiment of White List 68 and signature database 76. See Kirsch, figs. 1 and 3. In order to support an anticipation rejection, a prior art “reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (emphasis added). In an assertion of unpatentability due to anticipation, “it is not enough that the prior art reference . . . includes multiple, distinct teachings that [an ordinary] artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Appeal 2011-002423 Application 11/754,862 7 The Kirsch disclosure to which the Examiner refers does not explain how signature database 76 is an updated version of White List 68 or how database 34 equates with the claimed “second list of signatures.” Ans. 10. Applicant notes, in asserting that there is no relationship between the two Kirsch embodiments to which the Examiner refers to support the anticipation rejection, that: (1) the White List 68 equated with the claimed “first of signatures” is not stored in signature database 18; and (2) the White List 68 is located in the client 14 (Figure 3) and the signature database is part of the server system 12, which is separate from client 14 (Figure 1). Reply Br. 8. Based on the record, we are persuaded by Appellant’s arguments. Accordingly, in the absence of a prima facie case of anticipation of claims 1 and 12, we reverse this rejection of claims 1 and 12, and their dependent claims 2-11 and 13-17, under 35 U.S.C. § 102(b).3 See Kloster Speedsteel AB v. Crucible Inc., 793 F.2d 1565, 1571 (Fed. Cir 1986) (“[A]bsence from the reference of any claimed element negates anticipation.”) 35 U.S.C. § 102(b): Rejection of Claim 18 With respect to claim 18, Appellant maintains that Kirsch does not disclose the limitation means for performing a first scan of the email messages to determine which email messages include unwanted content . . ., wherein the first scan is performed by executing a first algorithm to determine whether a signature associated with each email message is included in a first list of signatures that 3 The Examiner incorrectly applies this discussion to claim 18. Ans. 10-11. Appellant, however, does not make the argument that database 76 is not an updated version of the White List 68 with respect to independent claim 18. App. Br. 9-10. Independent claim 18 does not include such a limitation. Appeal 2011-002423 Application 11/754,862 8 identify email messages known to include unwanted content . . . . App. Br. 9.4 Appellant notes that Kirsch’s White List 68, which the Examiner equates with the claimed “first list of signatures,” includes “‘some set of domain names and email addresses corresponding to sites and individual correspondents that are trusted not be a source or forwarded of UEM [Undesired Email Messages] messages.’” Id. at 10 (quoting Kirsch, 15:57-60); Reply Br. 6. Thus, according to Appellant, White List 68 is used to identify messages that include wanted content, not to identify messages that include unwanted content. Id. at 10. We disagree. The Examiner contends that the “claim language does not clearly explain [] how the signatures of first and second scans are associated with the unwanted content.” Ans. 10. Consequently, the Examiner determines that the claims “can be interpreted as either bad signatures directly associated with unwanted content for filtering-out OR good signatures indirectly associated with the unwanted content for filtering-in.” Id. According to the Examiner, Kirsch discloses a first scan of incoming content against White List 68 for filtering-in (i.e., keeping) wanted content and filtering-out (i.e., dropping) unwanted content. Id. We agree. In the Reply Brief, Appellant argues that White List 68 identifies whether a particular email is wanted (if on the white list) or whether that particular email is an unwanted or unknown email (if not on the white list). However, if the particular email is not on the white list, it cannot be determined whether the email is an unwanted or unknown email. 4 Appellant makes similar arguments with respect to independent claims 1 and 12 (App. Br. 6, 8), but as discussed above, we reverse the Examiner’s rejection of those claims because the Examiner fails to explain sufficiently how Kirsch discloses other limitations. Appeal 2011-002423 Application 11/754,862 9 Reply Br. 5. Further, Appellant notes that Kirsch states that White List 68 includes only “‘some set of domain names and email addresses’” corresponding to sites and individuals not to be a source of undesired email messages. Id. (quoting Kirsch 15:57-60). Thus, according to Appellant, White List 68 “can only be used to identify wanted content or to identify non-wanted content, which can either be an unwanted or unknown content.” Id. at 6 (emphasis added). We are not persuaded by Appellant’s arguments. As Appellant acknowledges, Kirsch discloses identifying “non- wanted content,” which includes unwanted content. Id.; see Kirsch 15:17- 53. It is of no matter that Kirsch’s White List 68 does not identify whether the “non-wanted” content is “unwanted” or “unknown.” Claim 18 requires only using a “first list of signatures” to “identify email messages known to include unwanted content.” The email messages identified by White List 68 as “non-wanted” (if not on White List 68) includes “email messages known to include unwanted content.” Id. Thus, we are persuaded that Kirsch discloses these elements of claim 18. Accordingly, we affirm the Examiner’s rejection of independent claim 18. Appellant does not present arguments specifically directed to claims 19-24, which depend from independent claim 18. Rather, Appellant argues that, because “the dependent claims include all the limitations of their respective base claims,” the “dependent claims are patentable for at least the same reasons as their respective base claims.” App. Br. 10. Accordingly, the dependent claims stand or fall together with the independent claim from which they depend. See 37 C.F.R. § 41.37(c)(1)(vii). Thus, we sustain the Appeal 2011-002423 Application 11/754,862 10 rejection of claims 19-24, which depend from claim 18. SUMMARY We reverse the rejection of claims 1-17, and we affirm the rejection of claims 18-24. No time period for taking any subsequent action in connection with this appeal may be extended under 35 C.F.R. § 1.136(a). AFFIRMED-IN-PART ke Copy with citationCopy as parenthetical citation