Ex Parte O et al

Patent Trial and Appeal Board

Jan 26, 2017

11774106 (P.T.A.B. Jan. 26, 2017)

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.
11/774,106 07/06/2007 Dan O'BRYAN ADK1.019 2594
12256 7590
Adknowledge, Inc.
4600 Madison Ave.
FL 10
Kansas City, MO 64112
EXAMINER
EMDADI, KEYVAN
ART UNIT PAPER NUMBER
2448
NOTIFICATION DATE DELIVERY MODE
01/30/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ip @ adknowledge. com
csrinivasan @ adknowledge. com
docketing@mcciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAN O’BRYAN, SCOTT LYNN, DAVID PHILLIPS,
MICHAEL FITZGERALD, and EDWARD GILMORE
Appeal 2016-005764
Application 11/774,106
Technology Center 2400
Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and
NATHAN A. ENGELS, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1—11, 13—18, 20—25, and 27-49, which constitute all
the claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b). Claims 12, 19, and 26 are canceled. See Br. 15, 16, 18 (Claims
App’x).
We affirm.
1 According to Appellants, the real party in interest is ADKNOWLEDGE,
INC. Br. 3.
Appeal 2016-005764
Application 11/774,106
STATEMENT OF THE CASE2
The Invention
Appellants’ invention “relates to providing content to a third party
who serves as the mail transfer agent for sending an electronic
communication to an intended recipient (user), who receives access to the
content upon opening the electronic communication.” Spec. 12. Claims 1,
14, 21, 28, 36, and 46 are independent. Claim 1 is illustrative of the subject
matter on appeal:
1. A computer-implemented method for providing
content to an electronic communication comprising:
a provider entity:
a) receiving an encrypted identifier corresponding to an e-
mail address of an intended recipient of an electronic
communication;
b) assigning a classification to the encrypted identifier,
each time an encrypted identifier is received;
c) obtaining data for the content of the electronic
communication based on the assigned classification of the
received encrypted identifier; and,
d) providing the data for the content of the electronic
communication to a separate sender entity, the sender entity for
placing the data for the content into the electronic
communication and for sending the electronic communication.
Br. 14 (Claims App’x).
2 We note that Appellants have filed a Notice of Appeal (filed July 11, 2016)
and an Appeal Brief (filed Sept. 12, 2016) in Application 13/716,466, which
is a continuation-in-part of the application presently on appeal, Application
11/774,106. Appellants and the registered practitioner representing
Appellants are reminded of the obligation to identify related appeals,
interferences, and trials in the Appeal Brief. See 37 C.F.R. § 41.37(c)(ii)
(2012).
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Application 11/774,106
The Rejections
Claims 1, 2, 28, 32, 33, 41, 43, and 45^49 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Muttitt et al. (US 2003/0115272
Al; published June 19, 2003) (“Muttitt”) and Sidman (US 2008/0294726
Al; published Nov. 27, 2008).3 See Final Act. 5—11.
Claims 3—11, 13—18, 21—25, 29-31, and 34-40 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Muttitt, Sidman, and Doan et
al. (US 2006/0168027 Al; published July 27, 2006) (“Doan”).4 See id. at
11-19.
3 The Final Rejection addresses claims 32 and 33 in the obviousness
rejection over the combination of Muttitt, Sidman, and Doan by finding that
Muttitt teaches the further recited limitations of these claims. See Final Act.
16. Claims 32 and 33, however, depend from claim 28, which stands
rejected as unpatentable over the combination of Muttitt and Sidman. See
id. at 5—8. Accordingly, because the Final Rejection relies on findings from
Muttitt and Sidman to meet the elements of claims 32 and 33 (including ah
of the elements of parent claim 28), along with a rationale to combine
Muttitt and Sidman, we consider claims 32 and 33 to stand rejected under 35
U.S.C. § 103(a) as unpatentable over the combination of Muttitt and Sidman.
We treat this irregularity in the record to be a clerical or typographical error.
Appellants do not allege error based on this or other irregularities in the
rejections (see nn, 4 and 5 infra) and have, therefore, waived such
arguments.
4 The Final Rejection does not list claims 7, 8, 21, 22, 29, and 34-40 in the
statement of rejection but nonetheless includes findings from Muttitt,
Sidman, and Doan for ah of the elements of claims 7, 8, 21, 22, 29, and 34—
40 (including ah of the elements of their respective parent claims), along
with a rationale to combine Muttitt, Sidman, and Doan. See Final Act. 13—
19. Accordingly, we consider claims 7, 8, 21, 22, 29, and 34-40 to stand
rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of
Muttitt, Sidman, and Doan. We treat this irregularity in the record to be a
clerical or typographical error.
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Application 11/774,106
Claims 13, 42, and 44 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Muttitt, Sidman, and Ferber (US 7,184,971 Bl;
issued Feb. 27, 2007). See id. at 19-20.
Claims 20 and 27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Muttitt, Sidman, Doan, and Ferber.5 See id.
The Record
Rather than repeat the arguments here, we refer to the Appeal Brief
(“Br.” filed Oct. 5, 2015) and the Specification (“Spec.” filed July 6, 2007)
for the positions of Appellants and the Final Office Action (“Final Act.”
mailed June 3, 2015) and Answer (“Ans.” mailed Apr. 6, 2016) for the
reasoning, findings, and conclusions of the Examiner. Only those arguments
actually made by Appellants have been considered in this decision.
Arguments that Appellants did not make in the Appeal Brief have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv)
(2012).
5 The Final Rejection states that claims 20 and 27 stand rejected as
unpatentable over the combination of Muttitt, Sidman, and Ferber. See Final
Act. 19. Claims 20 and 27, however, depend from claims 14 and 21,
respectively, which stand rejected as unpatentable over the combination of
Muttitt, Sidman, and Doan. See id. at 14. Accordingly, because the Final
Rejection relies on findings from Muttitt, Sidman, Doan, and Ferber to meet
the elements of claims 20 and 27 (including all of the elements of parent
claims 14 and 21, respectively), along with a rationale to combine Muttitt,
Sidman, Doan, and Ferber, we consider claims 20 and 27 to stand rejected
under 35 U.S.C. § 103(a) as unpatentable over the combination of Muttitt,
Sidman, Doan, and Ferber. We treat this irregularity in the record to be a
typographical error.
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Application 11/774,106
ISSUES
The issues presented by Appellants’ contentions are as follows:
Does the Examiner err in the rejection of claim 1 because combining
Sidman with Muttitt would render Muttitt unfit for its intended purpose?
Does the Examiner err in finding that the combination of Muttitt and
Sidman teaches or suggests “providing a request for the content, that when
activated upon opening the electronic communication by the recipient,
automatically provides content to the opened electronic communication,” as
recited in claim 45.
ANALYSIS
Claims 1—11, 13—18, 20—25, 27—44, and 46—49
Appellants contend “[modifying Muttitt with Sidman’s use of an
encrypted email address as part of a private domain would render Muttitt
unfit for its intended purpose as the e-mail vendor subsystem would not be
able to read an encrypted patron email address.” Br. 9. We disagree with
Appellants.
Muttitt teaches a method for developing targeted email content about
patrons and delivering that content to them. See, e.g., Muttitt Abstract, 117,
claim 1. Sidman teaches encrypting and then sending a portion of an email
message (e.g., the recipient’s email address), after which the recipient may
retrieve the encrypted email message. Final Act. 6 (citing Sidman 146).
One of ordinary skill in the art, given this teaching of Sidman, would have
learned that the encrypted communications process includes not only the
information necessary to encrypt the email message but also the information
necessary to decrypt it. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
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(2007) (explaining that in an obviousness analysis, “a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ”); Sidman || 47 (“After the email message has been
encrypted using the symmetrical key, the symmetrical key may be further
encrypted to form a security package using a public key of a key pair
associated with the recipient, where the recipient retains the corresponding
private key.”), 51 (“Once the server receives the public key from the
recipient, the server may send the public key to senders to allow senders to
encrypt their symmetrical keys for each recipient. The recipient then can use
the private key to decrypt the encrypted symmetrical key and use the
symmetrical key to decrypt the encrypted electronic information in order to
recover the original version of the electronic information.”); see also Ex
Parte Handfield, Appeal 2014-001651, 2016 WL 751776, at *2 (PTAB Feb.
24, 2016) (nonprecedential). Therefore, contrary to Appellants’ arguments,
modifying Muttitt with Sidman’s encrypted identifier would not render
Muttitt unfit for its intended purpose of developing and delivering targeted
email content because Muttitt’s e-mail vendor subsystem would be able to
read the encrypted patron email address by having the information to decrypt
it. In fact, even if Muttitt’s e-mail vendor subsystem could not read the
encrypted patron email address, this would not preclude Muttitt’s system
from associating the encrypted email address with a patron’s profile,
matching content to the patron, and sending the patron a targeted email. For
example, Muttitt’s email vendor subsystem could compare the encrypted
patron email address against the encrypted email addresses of previous
patrons, and upon finding a match, use the previous patron’s information to
select and send a targeted email to the current patron. Cf. Spec. Tflf 76—78
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(comparing md5 hashes of intended recipient’s email address to md5s of
previous respondents to determine matches and select targeted campaigns to
email to the responder). For these reasons, we disagree with Appellants that
combining Muttitt with Sidman would render Muttitt unfit for its intended
purpose.
Appellants further contend that because Sidman’s “email messages
are only routable on the private domain” (Br. 9), combining Muttitt and
Sidman would be improper. Id. Appellants assert “the modified Muttitt
system would not be able to send email to patrons, rather the patrons would
have to retrieve the messages from the private domain.” Id. (emphasis
omitted). We disagree with Appellants.
Appellants’ argument rests on the assumption that one of ordinary
skill in the art would be forced to combine Muttitt’s and Sidman’s systems
into a single system that includes each element of the prior art systems. But
one of ordinary skill in the art is “a person of ordinary creativity, not an
automaton,” KSR, 550 U.S. at 421, and accordingly would recognize that it
would be unnecessary to combine every aspect of each system into a single
system. Rather, one of ordinary skill in the art would “be able to fit the
teachings of the [cited art] . . . together like pieces of puzzle.” Id. at 420.
Indeed, “[t]he test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference. . . . Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981). Here, the Examiner finds that
Muttitt teaches the entirety of claim 1 except that its identifiers are not
encrypted. The Examiner relies on Sidman merely to evidence that
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encrypted identifiers were known in the art. See Final Act. 6 (citing Sidman
146). It was against this backdrop, the Examiner found one of skill in the
art would have been motivated to combine the cited features of Muttitt and
Sidman. See id. Accordingly, Appellants’ contention that the cited
combination is inappropriate because Sidman’s email messages were
routable only on the private domain (see Br. 9—10) is insufficient to
persuasively rebut the Examiner’s prima facie case of obviousness.
In view of the foregoing, Appellants’ arguments have not persuaded
us of error. We sustain the Examiner’s rejections of claim 1, as well as
independent claims 14, 21, 28, 36, and 46, and dependent claims 2—11, 13,
15—18, 20, 22—25, 27, 29-35, 37-44, and 47-49, which were not argued
separately with particularity beyond the contentions advanced for claim 1.
See Br. 8-12.
Claim 45
Appellants’ Brief purports to argue claim 45 separately, contending
that neither Muttitt nor Sidman teaches or suggests “providing data for the
content of the electronic communication includes providing a request for the
content, that when activated upon opening the electronic communication by
the recipient, automatically provides content to the opened electronic
communication.” SeeBrAO. However, we are unable to identify any
particular arguments for claim 45 separate from those advanced above for
claim 1. See id. Merely reciting claim language and asserting that the cited
prior art references do not teach a claim limitation without further
explanation as to a reason for the purported error is insufficient. 37 C.F.R. §
41.37(c)(l)(iv) (2012) (“A statement which merely points out what a claim
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Application 11/774,106
recites will not be considered an argument for separate patentability of the
claim.”); accord In reLovin, 652 F.3d 1349, 1356 (Fed. Cir. 2011).
Accordingly, Appellants have not persuaded us of error. We sustain
the Examiner’s rejection of claim 45.
DECISION
The decision of the Examiner to reject claims 1—11, 13—18, 20—25,
and 27-49 is affirmed.
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). See 37 C.F.R.
§§1.136(a)(l)(iv), 41.50(f), 41.52(b).
AFFIRMED
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