Ex Parte Sen et al

Patent Trial and Appeal Board

Dec 23, 2013

11336231 (P.T.A.B. Dec. 23, 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.
11/336,231 01/20/2006 Shilad W. Sen CAM20060001US1 (129) 1511
46321 7590 12/23/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
JORDAN, KIMBERLY L
ART UNIT PAPER NUMBER
2194
MAIL DATE DELIVERY MODE
12/23/2013 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 SHILAD W. SEN, WERNER GEYER, MICHAEL MULLER,
MARTIN T. MOORE, ELIZABETH A. BROWNHOLTZ and
MICHAEL C. WU
___________

Appeal 2011-006544
Application 11/336,231
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, THU A. DANG and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-006544
Application 11/336,231

2
STATEMENT OF THE CASE
Appellants are appealing claims 1-14 and 22-28. Appeal Brief 1. We
have jurisdiction under 35 U.S.C. § 6(b) (2012).
We affirm.

Introduction
According to Appellants, the invention is directed to “a data
processing system enabled for adaptive alert management.” Appeal Brief 2.

Illustrative Claim
1. An adaptive alert management data processing system comprising:
an alert server including a processor and a computer readable storage
memory;
a plurality of alert monitors disposed in corresponding application hosts,
each of the alert
monitors being configured to establish a subscription to the alert server on
behalf of at least one application view of an application issuing alerts; and,
a plurality of filter rules, stored within the computer readable storage
memory and accessible by the alert server, each of the filter rules specifying
whether or not to suppress or display an alert received in the alert server.

Rejections on Appeal
Claims 1, 2, 4-8, 10-14, 22 and 24-28 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Goodman (U.S. Patent Number
7,543,053 B2; issued June 2, 2009). Answer 4-13.
Appeal 2011-006544
Application 11/336,231

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Claims 3, 9 and 23 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Goodman and JC (Gmail RSS Feed; published October
21, 2004). Answer 13-15.

Issue
Is Goodman’s spam filter and email server equivalent to Appellants’
claimed alert server and alert monitor?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
arguments. We concur with the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and the reasons set
forth by the Examiner in the Answer in response to Appellants’ Appeal
Brief. However, we highlight and address specific findings and arguments
for emphasis as follows.
Appellants contend, “The spam filter and email server of Goodman
are NOT equivalent to the alert server and alert monitor as claimed by
Appellants.” Appeal Brief 10. Appellants further contend, “Specifically the
email server of Goodman deals expressly with email messages that are
generated by users, while Appellants’ alert server deals expressly with
receipt of alerts encountered during computing events from an application
issuing alerts.” Id. at 10-11.
Appellants further contend that Goodman is deficient and does not
disclose the claimed invention because:

Appeal 2011-006544
Application 11/336,231

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The limitations at issue refer to a “plurality of alert
monitors disposed in corresponding application hosts”
where each of the alert monitors being configured to
establish a subscription to the alert server on behalf of at
least one application view of an application issuing
alerts”[sic]. Once again, the spam filter of Goodman is
NOT equivalent to the alert monitor as claimed by
Appellants. Specifically, the email server of Goodman
deals expressly with email messages that are generated
by users, while Appellants’ alert monitors deal expressly
with transmission of alerts during computing events from
an application issuing alerts. Upon reviewing the
Examiner’s cited passage, Appellants are unable to
identify where Goodman teaches these limitations.

Appeal Brief 12.
However, claim 1 does not recite the alert server encountering alerts
during computing events from an application. Consequently, we do not find
Appellants’ arguments to be persuasive because they are not commensurate
with the broader scope of the claims.
Further, we find no error with the Examiner’s finding that Goodman’s
email server receives messages and a client email software application
displays the messages to an end user. Answer 16. The Examiner also finds
Goodman’s sending, receiving and displaying email messages are
considered to be computing events. Id. Claim 1 broadly recites a server
having a processor and memory with a plurality of monitors associated with

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Application 11/336,231

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the server wherein the claimed monitors are merely configured to
1
establish
a subscription to the alert server. We conclude the “plurality of filter rules”
that are stored within the storage memory and “accessible by the alert
server,” are not positively recited as actually being used to change or affect
any machine or computer function. (Claim 1). Thus, Appellants’ arguments
urging patentability are predicated on nonfunctional descriptive material
(i.e., rules stored within a memory). See Answer 16; See Ex parte Nehls, 88
USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84
USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No.
2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d
1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir.
2006); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004) Nonfunctional
descriptive material cannot render nonobvious an invention that would have
otherwise been obvious. In re Ngai, 367 F.3d at 1339.
We agree with the Examiner’s finding that Goodman discloses:
[A] plurality of alert monitors disposed in corresponding
application hosts, each of the alert monitors being
configured to establish a subscription to the alert server
on behalf of at least one application view of an application
issuing alerts (see at least Column 4: 22-28, “... creating
improved and/or updated spam filters that are trained to
recognize both legitimate and spam messages and further,

1
“An intended use or purpose usually will not limit the scope of the claim
because such statements usually do no more than define a context in which
the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch
statements often . . . appear in the claim’s preamble,” In re Stencel, 828 F.2d
751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear
elsewhere in a claim. Id.
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to distinguish between them. Once a new or updated spam
filter has been trained in accordance with the invention, it
can be distributed to mail servers and client e-mail
software programs.” The alert monitors can be interpreted
as the spam filters which are distributed to an email
software program. Spam filters may be seen as plug-ins
that subscribe to a particular email server which sort the
incoming email of that particular email server.)
Answer 3-4.
Although Appellants argue that the spam filter of Goodman is not
equivalent to the claimed alert monitor and does not provide a reason why
they are not equivalent, mere arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value. See In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984).
We find the Examiner’s interpretation to be reasonable and we find
that the claims fail to distinguish over Goodman’s spam and email server as
Appellants contend. See Appeal Brief 10.
Subsequently, we affirm the Examiner’s obviousness rejection of
independent claim 1, as well as independent claims 8 and 22 that are
commensurate in scope. See Appeal Brief 14. We also affirm the
Examiner’s obviousness rejection of dependent claims 2, 4-7, 10-14 and 24-
28, not separately argued for the reasons stated above.
Appellants further argue that dependent claims 3, 9 and 23 are
allowable over the combination of Goodman and Gmail RSS Feed because
the Gmail RSS Feed does not address the deficiency noted in Goodman.
Appeal Brief 14-15. We do not find Appellants’ arguments to be persuasive
because we did not find Goodman to be deficient. Therefore we sustain the
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Application 11/336,231

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Examiner’s obviousness rejection of dependent claims 3, 9 and 23 for the
same reasons as stated above.

DECISION
The Examiner’s obviousness rejections of claims 1-14 and 22-28 are
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)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED

ELD