Ex Parte Rodriguez

Patent Trial and Appeal Board

Sep 7, 2016

10460085 (P.T.A.B. Sep. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/460,085 06/12/2003
24222 7590 09/09/2016
Maine Cernota & Rardin
547 Amherst Street
3rd Floor
Nashua, NH 03063
FIRST NAMED INVENTOR
Rafael A. Rodriguez
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
DELOOl-US 4098
EXAMINER
SALAD,ABDULLAHIELMI
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
09/09/2016 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):
patents@mcr-ip.com
dwitmer@mcr-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAFAEL A. RODRIGUEZ
Appeal2015-003609
Application 10/460,085 1
Technology Center 2400
Before NATHAN A. ENGELS, CARLL. SILVERMAN, and
JOHN D. HAMANN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 2 and 5-9, which represent the only pending
claims. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to monitoring electronic communications.
Abstract.
Claim 8, reproduced below, is exemplary of the subject matter on
appeal:
1 Appellant identifies the real party in interest as Delfigo Corporation. App.
Br. 3.
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Application 10/460,085
8. A method of electronic communication compliance
monitoring, said method comprising:
receiving an electronic communication;
making an exact and verifiable copy of said electronic
communication;
sending said electronic communication to an indicated
destination user;
deconstructing contents of said exact and verifiable copy into
communication elements using neuro logic thereby ascertaining the
actual meaning of each said communication element;
accessing changeably, electronically promulgated compliance
information chosen from the group of compliance information
consisting of government, regulatory, industry, business, academic,
pre-established compliance information and combinations thereof;
comparing in real time said actual meaning of said
communications elements to said changeably, electronically
promulgated compliance information;
identifying if said exact and verifiable copy is non-compliant
or compliant based on results of said comparing said actual meaning
of said communications elements to said changeably, electronically,
promulgated compliance information;
archiving said exact and verifiable copy if said exact and
verifiable copy is compliant;
flagging said exact and verifiable copy for review and rating a
severity of non-compliance of said exact and verifiable copy based
upon established security rules if said exact and verifiable copy is
non-compliant; and
forwarding flagged and rated non-compliant copies for
compliance review by a compliance reviewer.
App. Br. 24--25. (Claims App.).
THE REJECTION
Claims 2 and 5-9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pang (US 2006/0031303 Al; Feb. 9, 2006) in view of
Jacobson (US 6,735,701 Bl; May 11, 2004), Hiraga (US 2003/0093518 Al;
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May 15, 2003), and Abir (US 2003/0171910 Al; Sept. 11, 2003). Final Act.
4--8.
ANALYSIS
Appellant argues the cited references do not teach the limitations of
independent claims 8 and 9. App. Br. 6-23; Reply Br. 3-5.
Regarding Pang, Appellant argues the Examiner errs in finding Pang,
paragraphs 28 and 74, teaches the limitations "receiving a communication;
making an exact and verifiable copy of the communication; and sending the
electronic communication to an indicated destination user." App. Br. 12-14.
According to Appellant, Pang teaches "Emails from senders who have
already been removed are compared to logged bad emails, but not every
email is archived (itself different from merely logging)" and "[t]hese
paragraphs do not describe making a copy of all emails that are received by
the system, and forwarding all emails received to the original recipient after
making a copy (emphasis added)." Id. at 14. Appellant further argues
"[ s ]ince the point of [Pang] is to block spam, sending copies of it to the
recipient would be a direct contradiction of its purpose and render it unfit for
its intended purpose." Id.
The Examiner finds Pang teaches receiving an email communication
from a sender (1010) by recipient ISP including email server 1040. Ans. 2
(citing Fig. 1 O; i-f 68); see also Final Act. 4 (citing i-fi-128, 72). The Examiner
finds the email is "copied, []i.e., logged or archived in log 1050." Ans. 2-3
(citing i-fi-168, 72). In particular, Pang describes "the log may store and/or
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archive the entire message, the e-mail address of the sender, a portion of the
message, the date, and the like." Id. at 3 (citing Pang i-f 72).
We are not persuaded by Appellant's arguments and, instead, agree
with the Examiner's findings. Appellant's arguments are not commensurate
with the claim. The claim does not recite "making a copy of all emails" nor
"forwarding all emails," and we note Appellant concedes at least some
emails in Pang are copied. Similarly, the claim does not recite "sending
copies of it [the email] to the recipient." App. Br. 14.
Regarding the limitation "deconstructing contents of said exact and
verifiable copy into communication elements," Appellant argues the
Examiner errs in finding Pang, paragraph 66, teaches this limitation. Id. at
14. According to Appellant, there is no basis to support "the communication
elements (i.e.[,] the content bearing part of the message) are even
considered." Id. at 15. Appellant argues Pang describes a basic spam filter
and "[t]he macros described in Para [0066] simply send a request to be
removed from the Spammer's email list." Id.
We are not persuaded by Appellant's arguments and, instead, agree
with the Examiner's findings. The Examiner finds Pang uses text parsing to
automatically deconstruct or parse the email communication (copy) into
communication elements on the basis of sender name, address, telephone
number, mail address and the like. Ans. 3. The Examiner finds Pang
teaches "[ f]or example, characteristic features of the e-mail message, such as
the header information, the senders name, address, etc., the subject line, and
the like are stored in log 1070." Id. (citing i-fi-136, 85, 89). The Examiner
additionally finds "communication elements" is a broad phrase and Hiraga's
email filtering system inspects the contents of messages and attachment files
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to determine whether confidential information is contained. Id. 3--4 (citing
ii 258).
Regarding the limitation "accessing changeably, electronically
promulgated compliance information chosen from the group of compliance
information consisting of government, regulatory, industry, business,
academic, pre-established compliance information and combinations
thereof," Appellant argues the Examiner errs in finding Pang, paragraphs 80
and 85, teaches this limitation and the Examiner's finding is "simply at odds
with the plain meaning of the claims." Id. at 16. According to Appellant,
Pang "notifies (i.e. updates) a central clearing house of a spam violation-
a classic Internet black list" and "[i]f a server or ISP is blacklisted, the
emails are not transmitted to the recipient." Id.
We are not persuaded by Appellant's arguments and, instead, agree
with the Examiner's findings. The Examiner finds Pang teaches, "when
communications violate a rule that has been set-up, a notification is reported
to one or more entities such as a government authority or policing server
with such information, post such information on their web site, or send such
information to a 'clearing house."' Ans. 4 (citing Pang iii! 36, 77, 85). The
Examiner additionally finds Hiraga teaches monitoring communications of
contents on a network and determining whether the contents satisfy
regulatory requirements. Id. (citing Hiraga if 40).
Regarding the limitation "identifying if said exact and verifiable copy
is non-compliant or compliant based on results of said comparing said
communications elements to said changeably, electronically, promulgated
compliance information" Appellant argues the Examiner errs in finding
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Pang, paragraph 74, teaches this limitation. App. Br. 17. According to
Appellant:
A log, thus described, is a listing of information, not an archive
of stored communications, and likely contains only that
information needed for the comparison, such as "sender name, e-
mail address, telephone number, mail address, and the like".
There is no suggestion that whole messages are archived, or that
such archiving would even be helpful, as the effort is to identify
the sender, not the content (in the '303 reference, the email is
already identified as spam at this point, and the system is just
trying to identify ifthe sender is a repeat offender). If, however,
the Examiner is correct in his unduly broad interpretation that the
'303 reference would archive the whole message, it is still
unequivocally only spam messages that are subject to this
treatment, whereas in the present invention all messages are
archived.
Similarly, in the above quoted Para [0085], the message is not
forwarded to authorities. (Indeed, it is assumed that the content
of the message would be of no interest to them.) Instead, only
information relating to the sender's non-compliance with the
request to remove the recipient from the email list is reported.
App. Br. 17.
We are not persuaded by Appellant's arguments. The Examiner finds,
and we agree, Pang is not limited to copying only portions of the message.
Ans. 5. Appellant interprets Pang's teaching unreasonably narrowly and
presents arguments not commensurate with the scope of the claim.
The Examiner finds Pang teaches:
For example, as illustrated in fig. 10, Pang discloses receiving
email communication from sender (1010) by recipient ISP
including email server (1040) (see fig. 10, par. 0068). As the
email is received and before is send to the destination/receiver
(1000) the email is copied (i.e., logged or archived on log 1050.
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That is the log may store and/or archive the entire message, the
e-mail address of the sender, a portion of the message, the date,
and the like (see par. 0072).
Ans. 5.
Even assuming arguendo only spam emails are copied or archived, as
argued by Appellant, the claim does not recite "all messages are archived."
App. Br. 17.
Appellant argues the Examiner errs in finding Jacobson teaches
"monitoring regulatory compliance, rating the problem and its severity or
importance priority and providing real time compliance with chantingly [sic]
promulgated regulatory requirement [sic]." App. Br. 17 (citing Jacobson
Fig. 36; col. 12, 11. 14--30). According to Appellant:
While in isolation this may appear to be apt, the context of the
'701 [Jacobson] reference clearly shows it to be a system for a
network administrator to check for compliance with software
updates and other network administration rules (e.g. limiting
personal email usage). While the '701 reference does monitor
email usage, there is no indication that it is subject to real time
review, or that the content of the message is considered in the
applicability of the network policy. Furthermore, even if the
application of the '701 reference were accurate, it does not
address any of the inadequacies noted in the '303 reference
[Pang] as noted above, and therefore, the alleged combination
would not disclose the claimed invention.
App. Br. 18.
We are not persuaded by Appellant's arguments and, instead, agree
with the Examiner's findings. The Examiner finds Jacobson teaches a
"system for monitoring regulatory compliance based on appropriateness of
communications content, rating the problem and its severity or importance
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priority and providing real-time compliance with [changeably] promulgated
regulatory requirement." Ans. 5---6 (citing Fig. 36; col. 12, 11. 14--30).
Regarding severity or importance, the Examiner finds the "network user
compliance value of 5 may tell the system to execute a network compliance
action" and "[t]he numeric value assigned is based on the severity of the
network policy compliance violation, i.e. the difference between the network
policy compliance value and the user policy compliance value." Id. at 6.
Appellant argues Hiraga does not teach the limitation "comparing in
real time said actual meaning of said communications elements to said
changeably, electronically promulgated compliance information." App. Br.
18-19. According to Appellant, Hiraga's explicit purpose is to block
transmission of subject emails and its teachings would be directly contrary to
the claimed invention, where a copy of the communication is analyzed after
the communication has been allowed to be transmitted to the recipient. Id.
Appellant further argues, as with Pang, Hiraga is antithetical to the
proposition that an original of the communication is sent to the recipient (its
stated purpose is to block non-compliant emails) while real time analysis is
conducted on an exact and verifiable copy. Id. at 19. According to
Appellant, one skilled in the art would, therefore, not use the teachings of
the Hiraga to achieve the claimed invention as alleged by the Examiner. Id.
We are not persuaded by Appellant's argument and agree, instead,
with the Examiner's findings. The Examiner relies on Jacobson, discussed
above, for this limitation, rather than Hiraga. In particular:
Jacobson discloses system for monitoring regulatory
compliance, rating the problem and its severity or importance
priority and providing real-time compliance with chantingly
promulgated regulatory requirement (see fig. 36 and col. 12, lines
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14-30, where network user compliance value of 5 may tell the
system to execute a network compliance action. The numeric
value assigned is based on the severity of the network policy
compliance violation, i.e. the difference between the network
policy compliance value and the user policy compliance value).
Therefore, it would have been obvious to one having ordinary
skill in the art at the time of the invention to incorporate the
teachings of Jacobson such rating the problem and its severity or
importance priority and providing real-time compliance with
changingly promulgated regulatory requirement into the system
of Pang to assist policy enforcement officers with proper policy
enforcement procedure, and methods to measure policy
effectiveness, appropriateness, user system activity and
compliance.
Final Act. 5-6.
Appellant further argues Abir does not teach the limitation
"deconstructing contents of said exact and verifiable copy into
communication elements using neuro logic thereby ascertaining the actual
meaning of each said communication element." i~\'.l.pp. Br. 19-22. i~\'.l.ccording
to Appellant, in the claimed invention, the contents are analyzed to review
"its meaning or the information sought to be conveyed by the sender" and
one skilled in the art would recognize "Neuro Logic" as a term of art
describing the internal logic of artificial neural networks, including "social
commonsense learning and reasoning." Id. at 7 (citing § 1.132 Declaration
of September 3, 2013). In particular, Appellant argues Abir's "system thus
described does not understand the meaning of the associated phrases, just
that they are related mathematically, and probably have similar meanings."
Id. at 22.
The Examiner finds Abir discloses using an "artificial intelligence
approach to identify word association or semantically equivalent word and
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word strings that can be used to expand the analysis with many more
relevant semantic search terms, using artificial intelligence thereby
ascertaining the actual meaning of a statement" and "Abir's system can
identify not only recognize key words, and equivalent words, but also relate
important concepts and even coded terms." Ans. 6 (citing i-fi-f 191, 206, 233-
235).
We are not persuaded by Appellant's arguments and agree with the
Examiner's findings. The claim term "actual meaning" is not explicitly
defined in the Specification, and Appellant presents no persuasive evidence
why the Examiner's findings and interpretation are overly broad or
unreasonable. Claim terms in a patent application are given the broadest
reasonable interpretation consistent with the Specification, as understood by
one of ordinary skill in the art. In re Crish, 393 F.3d 1253, 1256 (Fed. Cir.
2004). However, our reviewing court cautions that great care should be
taken to avoid reading limitations of the Specification into the claims.
E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
Appellant's arguments assert an unreasonably narrow teaching of the
cited references, and Appellant argues the references individually whereas
the rejection is based on the combination of the references. In re Keller, 642
F.2d 413, 426 (CCPA 1981)("[0]ne cannot show non-obviousness by
attacking references individually where, as here, the rejections are based on
combinations of references" (citations omitted)); In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
Regarding Appellant's argument that Pang only copies the spam email
(non-compliant), we note claim 8 is a method claim with conditional steps.
In particular, claim 8 recites two conditional limitations (emphasis added):
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(1) archiving said exact and verifiable copy if said exact
and verifiable copy is compliant;
(2)flagging said exact and verifiable copy for review and
rating a severity of non-compliance of said exact and
verifiable copy based upon established security rules if
said exact and verifiable copy is non-compliant.
Claim construction is an issue of law that we review de novo. Cordis
Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1331 (Fed. Cir. 2009).
Thus, under the broadest reasonable interpretation, because the scope of
claim 8 includes instances in which limitations (1) or (2) would not be
performed, the Examiner is not required to find both limitations in the prior
art to render the claim obvious. See Ex parte Katz, 2010-006083, 2011 WL
514314, at *4--5 (BP AI 2011) (concluding that, under the broadest
reasonable interpretation of the claim at issue, an examiner was not required
to find an "if' limitation in the prior art), reh 'g denied, 2011WL1211248,
at *2 (BP AI 2011 ); see also Cybersettle, Inc. v. Nat 'l Arbitration F arum,
Inc., 243 Fed. Appx. 603, 607 (Fed. Cir. 2007) (unpublished) ("It is of
course true that method steps may be contingent. If the condition for
performing a contingent step is not satisfied, the performance recited by the
step need not be carried out in order for the claimed method to be
performed.").
As discussed, supra, the record before us provides substantial
evidence that Pang teaches conditional limitation (2), and that is sufficient.
The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
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teachings of the references would have suggested to those of ordinary skill
in the art. See Keller, 642 F.2d at 425.
As stated by the Supreme Court, the Examiner's obviousness rejection
must be based on:
[S]ome articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness .... [H]owever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.
KSR Int'!. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441F.3d977, 988 (Fed. Cir. 2006)).
The Examiner's findings are reasonable because the skilled artisan
would "be able to fit the teachings of multiple patents together like pieces of
a puzzle" since the skilled artisan is "a person of ordinary creativity, not an
automaton." KSR, 550 U.S. at 420-21.
On this record, Appellant does not present sufficient evidence that the
combination of the cited references was "uniquely challenging or difficult
for one of ordinary skill in the art" or "represented an unobvious step over
the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19). Nor has Appellant
provided objective evidence of secondary considerations, which our
reviewing court guides "operates as a beneficial check on hindsight."
Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., Inc., 725 F.3d 1341,
1352 (Fed. Cir. 2013).
In view of the above, we sustain the rejection of claim 8, and
independent claim 9 which is argued together with claim 8. In addition, we
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sustain the rejection of dependent claims 2 and 5-7 as these claims are not
argued separately. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We affirm the Examiner's decision rejecting claims 2 and 5-9.
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)(l )(iv).
AFFIRMED
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