12070164 (P.T.A.B. Nov. 26, 2013)

Ex Parte Oliver et al

Patent Trial and Appeal BoardNov 26, 2013

12070164 (P.T.A.B. Nov. 26, 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. 12/070,164 02/15/2008 Jonathan J. Oliver DELL-010DVA 9396 28661 7590 11/27/2013 Lewis Roca Rothgerber 2440 W. El Camino Real, 6th Floor Mountain View, CA 94040 EXAMINER LEE, PHILIP C ART UNIT PAPER NUMBER 2615 MAIL DATE DELIVERY MODE 11/27/2013 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 JONATHAN J. OLIVER and DAVID A. KOBLAS ____________ Appeal 2011-005025 Application 12/070,164 Technology Center 2600 ____________ Before JOSEPH F. RUGGIERO, ELENI MANTIS MERCADER, and JOHN A. EVANS, Administrative Patent Judges. RUGGIERO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Non-Final Rejection of claims 1-10 and 12-21, which are all of the pending claims. Claim 11 has been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed Aug. 16, 2010), the Answer (mailed Sep. Appeal 2011-005025 Application 12/070,164 2 15, 2010), and the Reply Brief (filed Nov. 15, 2010) for the respective details. We have considered in this decision only those arguments Appellants actually raised in the Briefs. Any other arguments which Appellants could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). Appellants’ Invention Appellants’ invention relates to the classification of incoming electronic messages based on one or more Internet Protocol (IP) addresses and a domain associated with the message. See generally Spec. ¶ [0014]. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A computer-readable storage medium having embodied thereon a program, the program being executable by a computer to perform a method of determining a boundary IP address, the method comprising: processing the header of an electronic-mail message to extract a plurality of candidate IP addresses and corresponding domains; storing each extracted domain and IP address in an array; locating a gateway IP address from the extracted candidate IP addresses stored in the array; selecting the boundary IP address; looking up the boundary IP address and corresponding domain in a reputation table, wherein the presence of the boundary IP address and corresponding domain in the reputation table is included in a classification of the electronic mail-message, the reputation table including a decaying classification variable that reduces the effect of an older classification; and classifying the electronic-mail message. Appeal 2011-005025 Application 12/070,164 3 The Examiner’s Rejections The Examiner’s Answer cites the following prior art references: Kissel US 2004/0117648 A1 June 17, 2004 (filed Dec. 16, 2002) Kirsch US 2004/0177120 A1 Sep. 9, 2004 (filed Mar. 7, 2003) Banes US 2005/0038906 A1 Feb. 17, 2005 (filed Aug. 13, 2003) Black US 6,928,556 B2 Aug. 9, 2005 (filed Aug. 30, 2001) Claims 1-10 and 12-17 stand rejected under 35 U.S.C. § 112, second paragraph, as failing to particularly point out and distinctly claim the invention. Claims 1-10, 12-17, and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kirsch in view of Kissel and Banes. Claims 18-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kirsch in view of Kissel, Banes, and Black. ANALYSIS I. 35 U.S.C. § 112, SECOND PARAGRAPH, REJECTION The Examiner has rejected claims 1-10 and 12-17 under 35 U.S.C. § 112, second paragraph, as failing to particularly point out and distinctly claim the invention. According to the Examiner there are several instances of claim terms which lack clear antecedent basis. Ans. 4. We agree with Appellants, however, that the failure to provide explicit antecedent basis for terms does not always render a claim indefinite, and the present claims define the subject matter with a reasonable degree of Appeal 2011-005025 Application 12/070,164 4 particularity and distinctness. App. Br. 8; Reply Br. 3-4. The Federal Circuit has held that despite the absence of explicit antecedent basis, “If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite.” Bose Corp. v. JBL, Inc.., 274 F.3d 1354, 1359 (Fed. Cir. 2001). Moreover, the court has held that antecedent basis can be present by implication. Slimfold Manufacturing Co., Inc. v. Kinkead Industries, Inc., 810 F.2d 1113, 1116 (Fed. Cir. 1987). See, Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1370-71 (Fed. Cir. 2006) (discussing these cases with approval). Here, for example, the recitation “the header” in independent claim 1 is not unclear and ambiguous as there are no other “headers” recited. Similarly, we find no ambiguity in the recitation, “the same domain” in claim 10, nor any of the other instances in claim 1 mentioned by the Examiner. Accordingly, it is our opinion that the skilled artisan, having considered the Specification in its entirety, would have no difficulty ascertaining the scope of the invention recited in claims 1-10 and 12-17. Therefore, the rejection of claims 1-10 and 12-17 as being indefinite under the second paragraph of 35 U.S.C. § 112 is not sustained. II. 35 U.S.C. § 103(a) REJECTIONS Claims 1-10, 12-17, and 21 Appellants argue, with respect to independent claim 1, that Kissel does not overcome the deficiencies of Kirsch and Banes in disclosing a “decaying classification variable” as claimed. According to Appellants, Kissel merely discloses an e-mail spam classification system which includes the calculation of a “score” which includes a decaying weighting Appeal 2011-005025 Application 12/070,164 5 component. App. Br. 12-13; Reply Br. 5-6. In Appellants’ view, however, there is no indication that Kissel’s “score” is associated with a reputation table of message classifications based on boundary IP address and corresponding domain as set forth in claim 1. We find Appellants’ arguments unpersuasive of any error in the Examiner’s stated position. While Appellants contend that Kissel’s “decaying classification variable” is not associated with reputation table classifications based on boundary IP address and corresponding domain, it is apparent from the Examiner’s analysis that Kirsch, not Kissel, is relied upon for a teaching of a message classification reputation table that is based on boundary IP address and corresponding domain. Ans. 5 (citing Kirsch, ¶ [0027]). Appellants have not challenged the Examiner’s interpretation of Kirsch. Further, contrary to Appellants’ contention (App. Br. 13-14; Reply Br. 7), we find that the Examiner has provided a valid articulated line of reasoning with a rational underpinning to support the conclusion of obviousness with respect to the proposed combination of Kissel with Kirsch. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418. We agree with the Examiner that the addition of a decaying classification variable as taught by Kissel to the reputation table of Kirsch would be recognized by the ordinarily skilled artisan as an obvious enhancement to the system of Kirsch for improving message classification by reducing the effect of older classifications through use of a weighting function. Ans. 5, 14 citing Kissel, ¶¶ [0068]-[0074], [0078], and [0082]. Lastly, Appellants contend that Kirsch has no need for the decaying classification variable teachings of Kissel because Kirsch already addresses Appeal 2011-005025 Application 12/070,164 6 older classifications by providing periodic updates of messages and true senders. Reply Br. 7 (citing Kirsch, ¶ [0024). We find, however, that the mere updating of a message and sender list would not diminish the advantages provided by the addition of a decaying classification variable, as taught by Kissel, to the reputation table of Kirsch thereby providing a more accurate classification by reducing the weight provided to older classifications. For the above reasons, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection of independent claim 1, as well as the rejection of dependent claims 2-10, 12-17, and 21 not separately argued by Appellants.1 Claims 18-20 We also sustain the Examiner’s obviousness rejection of claims 18-20 in which Black was applied to the Kirsch/Kissel/Banes combination to address the specific decaying classification variable features of the rejected claims. Appellants have provided no separate arguments for the patentability of these claims but instead rely on arguments asserted with respect to independent claim 1, which arguments we found unpersuasive as discussed supra. 1 We treat the Examiner’s failure to include dependent claim 21 in the list of rejected claims as inadvertent harmless error since the Examiner has addressed the merits of claim 21 in the body of the rejection. Ans. 4, 9. Appeal 2011-005025 Application 12/070,164 7 CONCLUSION In summary, we have not sustained the Examiner’s 35 U.S.C. § 112, second paragraph, rejection of claims 1-10 and 12-17. We have sustained the Examiner’s 35 U.S.C. § 103(a) rejection of claims 1-10 and 12-21, which are all of the claims on appeal. DECISION The Examiner’s decision rejecting appealed claims 1-10 and 12-21 is affirmed.2 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) (2010). AFFIRMED ke 2 We note claims 1-10 and 12-21 recite a “computer-readable storage medium.” However, Appellants’ Specification does not define “computer- readable storage medium” to exclude transitory media. Consequently, the claimed storage medium encompasses transitory media, which is not patent eligible. See Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential). In the event of further prosecution, the Examiner should consider rejecting claims 1-10 and 12-21 under 35 U.S.C. § 101 as being directed to non-statutory subject matter.