Ex Parte Subramanian et al

Patent Trial and Appeal Board

Jan 18, 2018

12705954 (P.T.A.B. Jan. 18, 2018)

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.
12/705,954 02/15/2010 Balan Subramanian RSW920090116US1 9691
84986 7590
GRAS SO PLLC
1818 LIBRARY STREET, SUITE 500
RESTON, VA 20190
EXAMINER
NICKERSON, JEFFREY L
ART UNIT PAPER NUMBER
2459
NOTIFICATION DATE DELIVERY MODE
01/22/2018 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):
admin@grassoip.com
vromme @ grassoip. com
fgrasso@grassoip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BALAN SUBRAMANIAN, CHRISTIAN LEE HUNT,
DENILSON NASTACIO, and ROGER MICHAEL MELI
Appeal 2016-003475
Application 12/705,9541
Technology Center 2400
Before NATHAN A. ENGELS, SCOTT B. HOWARD, 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 1—21. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 4.
Appeal 2016-003475
Application 12/705,954
THE CLAIMED INVENTION
Appellants’ claimed invention relates to “network intermediaries
providing dynamic proxying between client applications and service
providers.” Spec. 11. Claim 1 is illustrative of subject matter on appeal and
is reproduced below.
1 . A first network intermediary device configured to
manage subscriptions over a network, the network comprising a
plurality of peer network intermediary devices communicating
with each other using a first communication protocol clients,
and service providers, the first network intermediary device
comprising a controller device executing instructions, which
when executed cause the first network intermediary device to:
receive a subscription using a first network
communication protocol, the subscription having management
application data and application level header information;
review the application level header information of the
subscription;
redirect the subscription over the network using the
application level header information; and
manage proxying of a client management application
subscription while the client management application is not
aware of change in its subscription,
wherein managing proxying of the client management
application subscription includes querying one or more peers of
the first network intermediary device to identify one or more
peer network intermediary devices having access to data flows
that contain management application data for the subscription,
the one or more peer network intermediaries communicating
with each other, and the first network device, using the first
communication protocol.
2
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REJECTIONS2 ON APPEAL
(1) The Examiner rejected claims 1—5, 7—9, 11—14, 16, and 19-21
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Dahlen (US 2009/0125628 Al; published May 14, 2009), Hunt (US
2005/0108251 Al; published May 19, 2005), Alspector (US 8,214,437 Bl;
issued July 3, 2012), and Charles Garrod et al., “Scalable Query Result
Caching for Web Applications, ” PVLDB ’08 550-61 (Aug. 23—28, 2008)
(hereinafter “Garrod”).
(2) The Examiner rejected claims 6, 10, 17, and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Dahlen, Hunt,
Alspector, Garrod, and Chen (US 2004/0001498 Al; published Jan. 1,
2004).
(3) The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Dahlen, Hunt, Alspector,
Garrod, and Kryskow (US 2003/0055670 Al; published Mar. 20, 2003).
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 disagree
with Appellants’ arguments and we incorporate herein and adopt as our own
2 The Examiner also provisionally rejected claims 1—20 for obviousness-type
double patenting over claims 1—20 of copending Application No.
13/413,590. Aug. 3, 2012 Non-Final Office Action 13. No patent has
issued yet from that copending Application, nor do Appellants present
arguments traversing this provisional rejection. We find it is premature to
address this provisional rejection. See In reMoncla, 95 USPQ2d 1884, 1885
(BPAI 2010) (precedential).
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the findings, conclusions, and reasons set forth by the Examiner in (1) the
November 5, 2014 Final Office Action (“Final Act.” 2—15), (2) the February
13, 2015 Advisory Action (“Adv. Act.” 2), and (3) the December 7, 2015
Examiner’s Answer (“Ans.” 2—22). We highlight and address, however,
specific findings and arguments below for emphasis.
(1) SOAP for communication
Appellants argue the combination of Dahlen, Hunt, Alspector, and
Garrod fails to teach or suggest that intermediary devices communicate with
each other using simple object access protocol (“SOAP”), in accordance
with claims 2, 11, and 21. App. Br. 10-11; Reply Br. 5—8. More
specifically, Appellants argue “SOAP is not used as a protocol in Dahlen for
transmission or communication,” but rather session initiation protocol
(“SIP”) is used as the protocol for transmission and communication — a
SOAP action header in a SOAP envelope is carried by the SIP
communication protocol. App. Br. 10 (citing Dahlen || 27, 30-31, 57; Figs.
1A—IB, 2, 13); see also Reply Br. 5—7 (citing Dahlen || 10, 53, 55; Figs. 6,
10—11, 13—14 (arguing Dahlen teaches using SIP as the communication
protocol with a SOAP compatible payload)).
The Examiner finds the combination teaches the disputed limitation.
Ans. 3^4; Final Act. 5—9, 11—12. The Examiner finds that Dahlen teaches or
suggests “SOAP intermediaries . . . because they accept SOAP subscription
messages and proxy a subscription on behalf of a client.” Ans. 4 (citing
Dahlen Fig. 6 (604); || 10, 51—58 (finding Dahlen teaches “using
intermediary proxy to parse and dispatch SOAP requests on behalf of a
client endpoint”)).
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We are not persuaded by Appellants’ arguments. We agree with the
Examiner that the combination, and Dahlen in particular, teaches or suggests
that intermediary devices communicate using SOAP. Dahlen Fig. 6, 10,
51—58. More specifically, Dahlen teaches or suggests intermediary devices
communicate using SIP and SOAP by having a SIP message carry a SOAP
envelope or payload within the SIP message. Id.', see also id. 1 53 (teaching
an intermediary node’s (i) SOAP parser “parses SOAP headers which are
inside a SOAP envelope carried by the SIP messages” and (ii) SOAP
dispatcher “invoke[s] Web Services . . . associated with the SOAP headers
which are addressed to the intermediary node”). Such a teaching is within
the broadest reasonable interpretation of intermediary devices using SOAP
to communicate — also using other protocols (e.g., SIP) in addition to
SOAP is not precluded by the claims.
(2) Addressins the claim elements
Appellants argue the Examiner fails to make a prima facie rejection of
claims 1 and 2 because (i) the Final Office Action fails to address specific
claim language, and instead relies on the substance of a preceding finding as
to another claim which does not use the same language, and (ii) the Answer
cannot cure this deficiency (i.e., arguing “a prima facie rejection cannot be
made for the first time on appeal”). App. Br. 12—13; Reply Br. 9—10.
We are not persuaded by Appellants’ arguments. First, Appellants do
not address persuasively that the Final Action fails to inform them
effectively as to the rationale for the rejection — Appellants simply rely on
the language between the claims not being identical without sufficient
further explanation. It is only “when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
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for rejection” that the prima facie burden has not been met. Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). Second, Appellants’ Reply
does not address the substance of the Examiner’s findings made in the
Answer (Ans. 4—7), which address the language used in claims 1 and 2.
Instead of ignoring the Answer’s findings, Appellants could have addressed
in the Reply these findings or could have filed a petition to request that the
Answer’s findings be designated as a new ground of rejection — Appellants
did neither. See Manual of Patent Examining Procedure (MPEP) § 1207.03
(b)3 (9th ed., Rev. 7, Nov. 2015).
Our reasoning above also applies to Appellants’ arguments (Reply Br.
19) that Garrod fails to teach or suggest the managing proxy limitations of
claims 1,11, and 21 — Appellants chose not to address the Answer’s
findings (Ans. 13—14) that Dahlen instead teaches these limitations.
Appellants left these findings, with which we agree, in the Answer
unrefuted. Ans. 13 (citing Dahlen Fig. 6; H 10, 51). Instead, Appellants
argue that “prosecution is closed and that it is too late to change the
reference upon which a limitation is allegedly found” and “that the [Final
3 “37 CFR 41.40 sets forth the exclusive procedure for an appellant to
request review of the primary examiner’s failure to designate a rejection as a
new ground of rejection via a petition to the Director under 37 CFR 1.181.
This procedure should be used if an appellant feels an answer includes a new
ground of rejection that has not been designated as such and wishes to
reopen prosecution so that new amendments or evidence may be submitted
in response to the rejection. However, if appellant wishes to submit only
arguments, the filing of a petition under 37 CFR 1.181 would not be
necessary because appellant may submit the arguments in a reply brief. Any
such petition under 37 CFR 1.181 must be filed within two months from the
entry of the examiner’s answer and prior to the filing of a reply brief.”
MPEP § 1207.03(b) (9th ed., Rev. 7, Nov. 2015).
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Office Action] has erred by not actually addressing the actual language of
each of the pending independent claims.” App. Br. 20-22; Reply Br. 15—19.
Again, we are not persuaded by these arguments. Chester, 906 F.2d at 1578;
(MPEP) § 1207.03 (b).
(3) Combining Dahlen, Hunt, Alspector, and Garrod
Appellants argue the Examiner fails to provide proper motivation to
combine the relevant teachings of Dahlen, Hunt, Alspector, and Garrod. See
App. Br. 14; Reply Br. 10-11. Appellants argue the Examiner, in providing
motivation to combine the relevant teachings of the cited references, “does
not provide a citation to prior art or other source for the specific motivation,”
and thus, fails to provide adequate support for the rejection. App. Br. 14.
We are unpersuaded by Appellants’ argument. As the Supreme Court
explained, obviousness does not require that the motivation to combine
references be found explicitly within the references themselves. KSR Int 7
Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“The obviousness analysis
cannot be confined by a formalistic conception of the words teaching,
suggestion, and motivation, or by overemphasis on the importance of
published articles and the explicit content of issued patents.”); see also id. at
418 (“As our precedents make clear, however, 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.”).
In addition, we are unpersuaded by Appellants’ arguments (App. Br.
27—28) that the Examiner’s motivation for combining Hunt with Dahlen is
erroneous because, according to Appellants, “hav[ing] intermediaries store
and manage and look to other intermediaries when processing a SIP message
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during SIP communications adds unnecessary complexity and is contrary to
how the SIP protocol functions.” Such arguments are mere attorney
argument unsupported by record evidence and fail to negate the sufficiency
of the Examiner’s motivation of “eas[ing] the processing load of a single
intermediary device.” Final Act. 6—7; see also In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the
place of evidence.”).
Simply put, Appellants’ arguments (App. Br. 14, 27 (citing Final Act.
6—7)) do not persuade us that the Examiner has failed to provide “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
(4) Chansins Dahlen ’s Principle of Operation
Appellants argue that combining Dahlen with the other cited
references impermissibility changes Dahlen’s principle of operation because
(i) Dahlen teaches that the intermediaries “look inward” (i.e., use the SOAP
Action headers), rather than querying peer intermediaries in accordance with
the claims (App. Br. 15—17 § 4.4 (managing proxying); 24 § 4.9 (identifying
peers having access to certain data flows), 25 § 4.10 (proxying), 30-32
§ 4.11.4 (looking for data flows seen by the SOAP intermediary));
(ii) Dahlen’s intermediaries would have to cache results of handling SIP
messages (App. Br. 22 § 4.8); and {Hi) Dahlen teaches SIP for the
communications protocol rather than SOAP (App. Br. 10—11 § 4.2).
(i) Dahlen teaches looking inward
Appellants argue that the Examiner impermissibility changes
Dahlen’s principle of operation in making the proposed combination. App.
Br. 15—17, 24—25, 30-32; Reply Br. 11—12, 20. Appellants contend
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Dahlen’s principle of operation is to “look[] to the SOAP envelope received
at the intermediary.” App. Br. 15; see also id. at 16 (citing Dahlen || 30-31,
35, 37, 56, 68) (arguing Dahlen teaches “that the SOAP Action header is
used by an intermediary to determine whether and where a SIP message with
a SOAP envelope should be sent”), 24—25, 31; Reply Br. 12 (arguing Dahlen
looks inward to determine the ultimate receiver of the SOAP envelope), 20.
Appellants argue modifying Dahlen’s “intermediaries to query other
intermediaries” impermissibility changes Dahlen’s principle of operation.
App. Br. 17.
The Examiner finds that modifying Dahlen to incorporate the
teachings of Hunt, Garrod, and Alspector does not change the principle of
operation of Dahlen. Ans. 9, 14—16, 20. The Examiner finds Dahlen’s
principle of operation is not “[ljooking to the SOAP envelop[e] received for
determining the ultimate receiver of the SOAP envelop[e],” as Appellants
allege, but instead is “‘to manage SOAP subscriptions and provide
subscription data to the client.’” Ans. 9, 16 (citing Dahlen Abstract); cf. id.
14 (describing similarly Dahlen’s principle of operation as “to send the
subscription data from client to server and thereby service subscription
requests”). The Examiner finds one of ordinary skill “would seek to
improve and modify Dahlen’s subscription management and fulfillment
intermediary by replacing a single intermediary with a distributed
architecture of intermediaries, as is well known in the art. This increases
scalability, reliability, allows for load balancing, and increases query
response time performance.” Id. at 9; see also id. 15—16 (citing Hunt || 67—
68 (finding Hunt teaches the well-known concept of implementing a
distributed intermediary caching system)).
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We are not persuaded that combining Dahlen with Hunt, Garrod, and
Alspector changes the principle of operation of Dahlen. We agree with the
Examiner that Dahlen’s principle of operation is not as narrow as Appellants
allege (i.e., using the SOAP envelope received at the intermediary for
determining the ultimate receiver of the SOAP envelope), but rather relates
more broadly to “providing service subscription techniques associated with
real-time composition of services in communications systems.” Dahlen
112, 7, Abstract. Appellants provide no persuasive evidence contrary to this
finding. See App. Br. 15—17; Reply Br. 11—12; see also Pearson, 494 F.2d
at 1405 (“Attorney’s argument in a brief cannot take the place of
evidence.”).
(ii) Having to cache
Appellants argue that the Examiner impermissibility changes
Dahlen’s principle of operation when combining “the service subscription
system of Dahlen with the proxy server system” of Garrod. App. Br. 22—23.
More specifically, Appellants argue “that modifying Dahlen to use the DHT
overlay [of Garrod] in determining how to handle SIP messages would . . .
change the principle of operation of the Dahlen reference as the intermediate
node would have to cache any results coming from the handling of the SIP
messages in the node” — according to Appellants, Garrod’s proxy server,
inter alia, responds to a query by determining if the proper result is within
its cache. App. Br. 23.
The Examiner finds that modifying Dahlen to incorporate the
teachings of Garrod does not change the principle of operation of Dahlen —
Dahlen provides for sending subscription data from client to server for
servicing subscription requests. Ans. 14—15. The Examiner modifies the
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combination’s teachings, including Dahlen’s teachings, of allowing an
intermediary to redirect a subscription to a peer intermediary to fulfill the
query with Garrod’s teachings of querying one or more peers of the
intermediary for, inter alia, availability of queried subscription data. Id.
The Examiner finds that “the subscription requests would still be fulfilled”
with the modification, in accordance with Dahlen’s principle of operation.
Id. at 15.
We are not persuaded of Examiner error. Appellants focus too
narrowly on Garrod’s specific teachings (e.g., DHT overlay) without
addressing how one of ordinary skill in the art would combine the teachings
based on the proffered motivation. See KSR, 550 U.S. at 420 (“[I]n many
cases a person of ordinary skill will be able to fit the teachings of multiple
patents together like pieces of a puzzle.”); see also id. at 421 (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”).
(Hi) Replacing SIP with SOAP
Appellants argue that the Examiner incorrectly changes Dahlen’s
teachings from SIP to SOAP for communicating because it would change
Dahlen’s principle of operation (“to have intermediaries communicate using
SOAP as the communication protocol”). App. Br. 10—11. Such an
argument is premised on Appellants’ argument that SIP is being replaced
with SOAP, which is contrary to our findings above. See supra § 1.
Accordingly, we are not persuaded of Examiner error.
(5) Modification of Dahlen
Appellants argue that the Examiner fails to make a prima facie case of
obviousness with respect to claim 17, as well as claims 6, 10, and 18,
because the Examiner “does not cite to anything in Dahlen as being
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modified by the teachings of Chen.” App. Br. 18; Reply Br. 13. “For
example, the [Final Office Action] mentions ‘subscription rules’ and
‘subscription filters’ in the context of Chen but does not cite back to what in
Dahlen is being modified by these subscription filters and subscription filters
of Chen.” App. Br. 18 (citing Final Act. 13); see also Reply Br. 13 (arguing
that “[a] general reference to the ‘system’ of four references is not specific
enough”).
The Examiner submits that a prima face case of obviousness has been
made. Ans. 9—11; Final Act. 13. The Examiner finds that the combination
of Dahlen, Hunt, Alspector, and Garrod teaches or suggests “wherein peer
intermediary devices accept SOAP messages and proxy a subscription, when
a previous query from another intermediary determines that an intermediary
device has access to data flows containing subscription management data,”
in accordance with claim 17. Ans. 10 (citing Garrod 551—52). To these
teachings, the Examiner adds Chen’s teaching for claim 17’s updating
subscription rules by comparing previously received rules with subsequently
received subscription rules. Id. (citing Chen || 163—169). More
specifically, the Examiner finds it would have been obvious to one of
ordinary skill in the art “to modify Dahlen’s subscriptions” with Chen’s
teachings regarding “merging filters,” which would “allow one of ordinary
skill in the art to remove duplicate or overlapping subscription filters and to
provide improved subscription rules.” Id. (emphasis added); see also Final
Act. 5 (citing numerous portions of Dahlen as teaching subscriptions with
respect to claim 11, from which claim 17 depends).
We are not persuaded by Appellants’ arguments. For example, the
Examiner identifies modifying Dahlen’s teachings regarding subscriptions
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with Chen’s teachings. See Ans. 10. In addition, the Supreme Court has
clearly articulated that a direct citation to a reference is not required for the
obviousness analysis. KSR, 550 U.S. at 418 (“As our precedents make clear,
however, 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.”). Appellants do not address persuasively the Examiner’s
findings, including in the Answer, and we also are unconvinced that the
Examiner fails to inform Appellants effectively as to the rationale for the
rejection. Cf. Chester, 906 F.2d at 1578.
Our reasoning above also applies to Appellants’ similar arguments
(App. Br. 28—29) made with respect to the Examiner allegedly failing to
provide a direct citation to (i) what in Dahlen is being modified by Garrod
and (ii) what in Dahlen is being modified by Alspector, with respect to the
combination of Dahlen, Hunt, Alspector, and Garrod for claims 1,11, and
21.
(6) Combining Dahlen and Chen
Appellants argue “one of skill would not be motivated by Chen’s
filters to compare previously received SIP messages at an intermediary with
subsequently received SIP messages at the intermediary because doing so is
inconsistent with the SIP protocol, which uses IP communication protocol to
create communication between two distinct points,” with respect to claims 6,
17, and 18. App. Br. 18—19; see also Reply Br. 13—14. Appellants further
contend “SIP regards communication and setting up a session between
endpoints so each SIP message is necessary to promote the session” and
“additional overhead and complexity would be added at the intermediary” if
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storage and filtering is added thereto “without any gain as a SIP session is
carried out in real-time.” App. Br. 19.
The Examiner finds Dahlen and Chen’s teachings are properly
combined. Final Act. 13—14; Ans. 11—12. The Examiner finds “[o]ne of
ordinary skill in the art would be motivated to utilize the teachings of Chen
in the Dahlen/Hunt/Alspector/[Garrod] system in order to reduce extra
traffic, extra processing, and extra storage required by the use of
unnecessary filters that are already being fulfilled via overlap or
duplication.” Final Act. 13.
We find the Examiner provides “articulated reasoning [(e.g., reduce
extra traffic, extra processing, and extra storage required by unnecessary
filters)] with some rational underpinning to support the legal conclusion of
obviousness.” Kahn, 441 F.3d at 988. We disagree with Appellants that the
Examiner’s reasoning provides insufficient motivation to combine the
relevant teachings of Dahlen, Hunt, Alspector, and Garrod with Chen’s
teachings — reducing unnecessary traffic, processing, and storage is a
design incentive. See KSR, 550 U.S. at 417 (“When a work is available in
one field of endeavor, design incentives and other market forces can prompt
variations of it, either in the same field or a different one.”). Appellants’
arguments that the Examiner’s combination would be “inconsistent with the
SIP protocol” and would be “without any gain,” is unsupported by record
evidence. See Pearson, 494 F.2d at 1405 (“Attorney’s argument in a brief
cannot take the place of evidence.”).
We similarly are unpersuaded by Appellants’ arguments (App. Br.
19—20; Reply Br. 14) that it would be “superfluous and unnecessary” to
modify Dahlen’s intermediaries to review previously received SIP messages
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or SOAP envelopes / headers and consolidate them — such arguments are
mere attorney argument unsupported by record evidence and fail to address
directly the Examiner’s proffered motivation to combine. Pearson, 494 F.2d
at 1405.
(7) Improper hindsight
Appellants argue that the Examiner uses “improper hindsight to
identify and then cite to four or more references when rejecting the claims,”
and that “[t]his improper hindsight is demonstrated by the motivations
proposed . . ., which do not identify particulars of the primary reference that
would allegedly be ripe for change by the second or third or fourth identified
reference.” App. Br. 25—26, 28, 36.
We are not apprised by Appellants’ arguments that the Examiner used
impermissible hindsight in making the various combinations cited in the
rejections. Reliance on even a large number of references in a rejection does
not, without more, weigh against the obviousness of the claimed invention.
See, e.g., In re Gorman, 933 F.2d 982 (Fed. Cir. 1991) (affirming a rejection
based on thirteen prior art references). Furthermore, as discussed above, we
find Appellants’ arguments alleging that the Examiner does not provide
direct citations to what in Dahlen is being modified by the other references
in the combinations unpersuasive. See, e.g., §§ 5—6; see also In re
McLaughlin, 443 F.2d 1392, 1313—14 (CCPA 1971) (“Any judgment on
obviousness is in a sense necessarily a reconstruction based upon hindsight
reasoning, but so long as it takes into account only knowledge which was
within the level of ordinary skill. . . and does not include knowledge
gleaned only from applicant’s disclosure, such a reconstruction is proper.”).
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(8) Subscription
Appellants argue that the combination of Dahlen, Hunt, Alspector,
and Garrod fails to teach or suggest “managing] proxying of a client
management application subscription while the client management
application is not aware of change in its subscription,” as recited in claims 1
and 11. App. Br. 32—34; Reply Br. 21—22. More specifically, Appellants
argue Alspector fails to teach the claimed subscription, and, according to
Appellants, Alspector instead teaches a spam filter “applied to unopened
mail in a user’s mailbox” to filter out “unwanted spam from arriving or
residing at a user’s inbox.” App. Br. 32 (citing Alspector col. 14,11. 7—21).
Appellants contend that spam filtering differs from a subscription, which
“include[s] subscribing in some way or manner - e.g., a request or an
indication of interest or predication on an advance order. Conversely, an
email, in and of itself, without more, is sent to a recipient without the need
for an earlier subscribing action or indication of interest.” Id. Appellants
also argue that Alspector teaches blocking unwanted or unrequested spam, in
contrast to a subscription, which is desired or sought after. Id. at 31; see
also id. at 32 (providing definitions for filtering contrasted with
subscription).
The Examiner finds that the combination teaches the disputed
limitation. Final Act. 7; Ans. 20—21. More specifically, the Examiner finds
Alspector teaches or suggests a server managing email spam filters (i.e.,
subscriptions) and “performing changes in the subscription ([i.e.,] retraining
of global filter) without a particular client having any part in the process
(either actively changing the subscription themselves or being notifying of a
change).” Final Act. 7 (citing Alspector Fig. 3.; col. 13,1. 4 —col. 14,1. 6).
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The Examiner finds that “a spam filter and ‘subscriptions’ are equivalent to
one of ordinary skill in the art, as they both are a set of rules dictating which
information/messages should or should not be received.” Ans. 21. The
Examiner also finds that one of ordinary skill in the art would also
understand that “the concepts of a filter and subscription to be synonymous
in this context.” Id. (citing Internet Society RFC4660, Functional
Description of Event Notification Filtering, § 3.3 (Sept. 2006)).
We are not persuaded by Appellants’ arguments. We agree with the
Examiner’s findings that the combination, and Alspector in particular,
teaches or suggests the disputed limitation, including with respect to the
claimed subscription. Alspector Fig. 3; col. 13,1. 4 —col. 14,1. 6.
Alspector’s teaching of a filter is within the scope of the broadest reasonable
interpretation of subscription — the spam filter is managed to allow certain
emails through, as well as block certain emails. Id.', see also id. col. 13,11.
42-46 (“For example, if the majority of e-mail users change a particular e-
mail’s classification to spam or, conversely, the majority of users change it
to legitimate, then the e-mail and its new classification may be chosen as
retraining data.”) (emphasis added). Further, users themselves select
legitimate emails (which types are used for receiving emails of the same
types) which is akin to subscribing to a service. Alspector Fig. 3; col. 13,1.
4-col. 14,1. 6.
CONCFUSION
Based on our findings and reasoning above, we sustain the
Examiner’s (i) § 103(a) rejection of claims 1—5, 7—9, 11—14, 16, and 19-21;
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Appeal 2016-003475
Application 12/705,954
(ii) § 103(a) rejection of claims 6, 10, 17, and 18; and (iii) § 103(a) rejection
of claim 15.
DECISION
We affirm the Examiner’s decision rejecting claims 1—21 under 35
U.S.C. § 103(a).
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
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