Ex Parte Sielken et al

Patent Trial and Appeal Board

Jun 27, 2016

13166897 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/166,897 06/23/2011
77242 7590 06/29/2016
IBM Raleigh S/W Group
c/o Patent Law of Virginia, PLLC
PO Box 9319
Richmond, VA 23227
FIRST NAMED INVENTOR
Robert Selby Sielken
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.
RSW920110033US1 (IBM 6866
27)
EXAMINER
SALAD,ABDULLAHIELMI
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
06/29/2016 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):
brian@patentlawva.com
brianjteague@gmail.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte ROBERT SELBY SIELKEN,
WILLIAM CARLETON WIMER II, and DAVID LA VERNE ZANTER
Appeal2014-008579
Application 13/166,897 1
Technology Center 2400
Before ELENI MANTIS MERCADER, JAMES W. DEJMEK, and
JOHN D. HAMANN, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 4--9 and 13-18. Claims 1-3 and 10-
12 were canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
THE CLAIMED INVENTION
Appellants' claimed invention relates to "electronic communications
and addressing of electronic communications." Spec. i-f 1. Claim 4 is
1 According to Appellants, the real party in interest is International Business
Machines Corporation. Br. 2.
Appeal2014-008579
Application 13/166,897
illustrative of the subject matter of the appeal and is reproduced below with
emphasis added to disputed limitations.
4. A system for dynamic encoding of email addresses
compnsmg:
a processor configured for (a) determining if a data
package contains an address that is not supported by a device to
receive or synchronize with the data package; (b) if the data
package contains an address that is not supported by the device
to receive or synchronize with the data package, creating a
supported address corresponding to the non-supported address,
the supported address comprising a local-part and a domain, the
local-part comprising an encoded version of the entire non-
supported address, the domain comprising a non-valid domain;
and ( c) replacing the non-supported address in the data package
with the created supported address.
REJECTIONS ON APPEAL2
(1) The Examiner rejected claims 16-18 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
(2) The Examiner rejected claims 13 and 16 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
for claiming subject matter which was not described in the Specification in
such a way as to reasonably convey to one skilled in the art that Appellants,
2 The Examiner also provisionally rejected claims 4--9 and 13-18 for
obviousness-type double patenting over claims 1---6 of copending
Application No. 13/417,713. No patent has issued yet from that copending
Application, nor do Appellants present arguments addressing this
provisional rejection. We find it is premature to address this provisional
rejection. See In re Moncla, 95 USPQ2d 1884, 1885 (BP AI 2010)
(precedential).
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Application 13/166,897
at the time the application was filed, had possession of the claimed
invention.
(3) The Examiner rejected claims 4--9 and 13-18 under 35 U.S.C.
§ 102( e) as being anticipated by Bayles et al. (US 2011/0314109 A 1;
Dec. 22, 2011), or in the alternative as being unpatentable under 35 U.S.C.
§ 103(a) as being obvious in light of Bayles.
(4) The Examiner rejected claims 4--9 and 13-18 under 35 U.S.C.
§ 102(e) as being anticipated by Zanter (US 2007/0050454 Al; Mar. 1,
2007).
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
contentions that the Examiner erred. In reaching our decision, we consider
all evidence presented and all arguments made by Appellants. We below
address specific findings and arguments relating to each of the Examiner's
rejections Appellants are appealing.
(1) Section 1 OJ Rejection
Appellants contend claims 16-18 are directed to statutory subject
matter, contrary to the Examiner's conclusion. See Br. 8. Appellants argue
the Specification distinguishes between (i) computer readable signal medium
and (ii) computer readable storage medium. See id. (citing Spec. i-fi-1 31-32).
Specifically, Appellants argue computer readable signal medium "may
include a propagated data signal" in contrast to computer readable storage
medium. See id. Appellants further contend computer readable storage
medium is a tangible medium, fixed in nature, which one of ordinary skill in
the art would understand to not include propagated data. See id.
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The Examiner finds the Specification's definition for computer
readable storage medium covers both transitory and non-transitory
embodiments. Final Act. 4. The Examiner finds, for example, that
computer readable storage medium can include electro-magnetic and optical
propagated signals. See Ans. 5 (citing Spec. i-fi-131-32).
We find Appellants' arguments unpersuasive and we agree with the
Examiner's findings. The recited "computer readable storage medium" is
not claimed as non-transitory, and the Specification does not expressly and
unambiguously disclaim transitory forms via a definition. See Spec. i-fi-1 31-
32 (providing that computer readable storage medium can "contain or store"
a program, as well as using open-ended language to describe storage
medium)( emphasis added); see also Ex parte Mewherter, 107 USPQ2d
1857, 1862 (PTAB 2013) (precedential) ("[T]hose of ordinary skill in the art
would understand the claim term 'machine-readable storage medium' would
include signals per se."). Further, we find the Specification's examples of
(i) "an electrical connection having one or more wires" and (ii) "an optical
fiber" consistent with transitory, propagating signals being included as a
type of storage medium. See Mewherter, 107 USPQ2d at 1862 (finding "a
signal with embedded data fully comports with th[ e] definition [for storage
medium], for data can be copied and held by a transitory recording medium,
albeit temporarily, for future recovery of the embedded data.").
Accordingly, the "computer readable storage medium" of claims 16-
18 is not limited to non-transitory forms and is non-statutory subject matter.
Mewherter, 107 USPQ2d at 1862 (holding recited machine-readable storage
medium ineligible under§ 101 when it encompasses transitory media). We
thus sustain this rejection.
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Application 13/166,897
(2) Written description tor claims 13 and 16
Appellants contend the Specification complies with the written
description requirement of 35 U.S.C. § 112, first paragraph, with respect to
claims 13 and 16 because it discloses "the entirety of a non-supported
address (display part, local part, and domain) are encoded, and the resulting
encoding is used as the local part of a newly-created supported address."
See Br. 9 (citing Spec. i-fi-f 19, 23, 24). Appellants further argue the
Specification also discloses the reverse process of decoding an encoded non-
supported address "back into the non-supported address." Br. 10 (citing
Spec. ,-r 28).
The Examiner finds the Specification does not support claims 13 and
16's requirement of "'the local part comprising an encoded version of the
entire nonsupported address."' Final Act. 8 (citing Spec. i-f 19). The
Examiner also finds "[c]onverting a portion or an entirety of [a] non-
supported email address would still generate a non-supported address." See
id.; Ans. 14 ("Still it is not clear how the created '6t' w7ZOLOFDTUU=
@lnt.nonintemet.sub>. or 'test user 1' dGVzdCB 1
c2VyMS9BQ01FQEFDTUU= @lnt.nonintemet.sub>., becomes standard or
recognized address.").
We find Appellants' arguments persuasive. We find that one of
ordinary skill in the art would understand the local part of the supported
address comprises an encoded version of the entire non-supported address,
and one skilled in the art would reasonably conclude that Appellants had
possession of this aspect of the claimed invention at the time the
Specification was filed. See In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir.
1989); Spec. i-fi-f 19, 23, 24. Furthermore, we disagree with the Examiner that
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Application 13/166,897
it is not clear how the non-standard address is converted to a supported
address. See Spec. i-fi-f 19, 23, 24. We also note that claims 13 and 16 are
directed to the reverse process of decoding. See Claim Appx. 24--25; Spec.
i128. Accordingly, we do not sustain this rejection.
(3) Bayles anticipation rejection
Appellants argue Bayles fails to anticipate claims 4, 7, 13, and 16
because Bayles does not disclose that the local part of the supported address
comprises an encoded version of the entire non-supported address. Br. 12,
15. Specifically, Appellants argue Bayles instead discloses "encod[ing] the
local part of the non-supported email address into the local part of the newly
created standard email address, and encod[ing] the domain of the non-
supported email address into the domain of the newly created standard email
address." Br. 15-16 (citing Bayles i127).
The Examiner finds Bayles discloses generating an alternate email
address from a primary email address. Ans. 16 (citing Bayles i-f l 0). The
Examiner further finds "Bayles teaches encoding an entire non-supported
address into the local part of a newly created supported address and using a
non-valid domain for the domain of the newly created supported address."
Id. (citing Bayles i-fi-125-27, Figs. 2A, 2B).
We agree with Appellants' arguments that the cited portions of Bayles
fail to disclose the disputed limitation. Bayles does disclose generating an
alternate email address from a primary email address. See, e.g., Bayles
i-fi-f l 0, 27. However, we find Bayles discloses encoding the local part of the
primary address to yield the local part of the alternate address and separately
encoding the domain of the primary address to yield the domain of the
alternate address. See Bayles i127 ("Using the same [Punycode] encoding
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Application 13/166,897
for domain name provides uniform encoding of the whole email address, and
the encoded username satisfies the ASCII Compatible Encoding (ACE)
requirement."). This finding is further supported by the disclosed formula
for generating the alternate email address, which shows the local part and
domain of the address are separately encoded. See Bayles i-f 28
("Encode(UTF8-username@utf8-domain) = punycode(UTF8-encode-
username) @punycode(UTF 8-encode-domain)"). Thus, the cited portions
of Bayles do not disclose the local part of the created (alternate) email
address comprises the entire non-supported (primary) email address because
it lacks the domain. See id. Accordingly, we do not sustain this rejection for
claims 4, 7, 13, and 16, nor claims 5, 6, 8, 9, 14, 15, 17, and 18 which
depend therefrom and incorporate the disputed limitation.
(4) Bayles obviousness rejection
Appellants argue the Examiner erred in rejecting claims 4--9 and 13-
18 as being obvious in light of Bayles. Br. 16. Specifically, Appellants
argue the Examiner fails to provide sufficient justification for changing
Bayles to function as recited in the claims. Br. 16-17 (citing Final Act. 10).
Appellants further argue the lack of justification is especially significant
because Bayles already accomplishes the Examiner's cited goal, but by
using different techniques. See id. at 1 7.
The Examiner finds "it would have been obvious to one having
ordinary skill in the art ... to generate [a] supported address of a version of
the non-supported address that is recognizable by the recipient device so that
the email message with the generated address is delivered to recipient for
display." Final Act. 10; see also Ans. 18-19.
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We agree with Appellants that the Examiner has not provided a
sufficient explanation of the findings regarding the local part of the
supported address comprising an encoded version of the entire non-
supported address to present a prima facie case of obviousness as to claims
4--9 and 13-18. Nor does the Examiner make sufficiently specific findings
that are adequately supported for the Examiner's conclusion of obviousness
to have a rational underpinning. See In re Kahn, 441F.3d977, 988 (Fed.
Cir. 2006) ("[R ]ejections on obvious grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.") (citations omitted).
(5) Zanter rejection
Appellants argue Zanter does not disclose encoding an entire non-
standard address into the local part of a standard address, as recited in claims
4 and 7, and similarly recited in claims 13 and 16. Br. 19. Appellants argue
Zanter instead discloses (i) truncating a lengthy email address list by storing
it on a server, (ii) using an identifier to identify the list's storage location on
the server, and (iii) encoding the identifier to use as the local part of an email
address. See id. (citing Zanter i-fi-1 30, 32, 33).
The Examiner finds Zanter discloses the identifier for the stored
address list can be encoded to generate a local part of an address. Ans. 20
(citing Zanter i1 6). The Examiner also finds Zanter discloses the local part
of an email address is examined to determine if it includes an identifier, and
if so, the server decodes the address to obtain the original address list. See
id. at 20 (citing Zanter i120).
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We agree with Appellants' arguments that the cited portions of Zanter
fail to disclose the disputed limitation. We find these portions instead
disclose using an encoded identifier that represents a storage location for an
address list as a local part of an email address, rather than using an entire
encoded email address as the local part of an email address. See Zanter i-fi-1 6,
20, 30, 32, 33, 35, 41). Accordingly, we do not sustain this rejection for
claims 4, 7, 13, and 16, nor claims 5, 6, 8, 9, 14, 15, 17, and 18 which
depend therefrom and incorporate the disputed limitation.
DECISION
(1) We affirm the Examiner's§ 101 rejection of claims 16-18.
(2) We reverse the Examiner's§ 112, first paragraph, rejection of
claims 13 and 16.
(3) We reverse the Examiner's§ 102(e) rejection and§ 103
rejections of claims 4--9 and 13-18 over Bayles.
(4) We reverse the Examiner's§ 102(e) rejection of claims 4--9 and
13-18 over Zanter.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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