Ex Parte WhitmyerDownload PDFPatent Trial and Appeal BoardJan 29, 201813939968 (P.T.A.B. Jan. 29, 2018) Copy Citation 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. 13/939,968 07/11/2013 Wesley W. Whitmyer JR. 05843-P0001F 1021 131672 7590 Whitmyer IP Group LLC 600 Summer Street 3rd Floor Stamford, CT 06901 01/29/2018 EXAMINER GIDDINS, NELSON S ART UNIT PAPER NUMBER 2437 MAIL DATE DELIVERY MODE 01/29/2018 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 WESLEY W. WHITMYER, JR. Appeal 2016-005122 Application 13/939,9681 Technology Center 2400 Before JASON V. MORGAN, BRUCE R. WINSOR, and PHILLIP A. BENNETT, Administrative Patent Judges. BENNETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—20. Oral Argument was heard before this panel on January 16, 2018. A copy of the Hearing Transcript will be placed in the record in due course. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant’s Brief (“App. Br.”) identifies WHORLR LLC as the real party in interest. App. Br. 2. Appeal 2016-005122 Application 13/939,968 CLAIMED SUBJECT MATTER The claims are directed to a configurable electronic messaging system that maintains recipient privacy. Spec. Title. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An electronic messaging system, comprising: a message server, embodied in hardware, accessible over a communications network; software executing on said message server receiving account data from a message recipient, the account data including at least one mailbox address associated with the message recipient and at least one message routing rule, the at least one mailbox address including at least one of a phone number and an email address; a selectable message link presented on a web page to, upon selection, send a message to the message recipient without providing any mailbox address associated with the message recipient; software executing on said message server receiving information from a message sender over the communications network, the information including a selection of the selectable message link and a message without any mailbox address associated with the message recipient; software executing on said message server determining, based at least in part upon the at least one message routing rule and the information, the at least one mailbox address to route the message to; and software executing on said message server routing the message to the determined mailbox address over the communications network, wherein the system keeps all electronic mailbox addresses associated with the message recipient private from the message sender. App. Br. 16 (Claims Appendix). 2 Appeal 2016-005122 Application 13/939,968 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Karamchedu Malik Mattem US 2004/0201625 A1 Oct. 14, 2004 US 2007/0299926 A1 Dec. 27, 2007 US 2011/0145355 A1 June 16, 2011 REJECTIONS Claims 1—12 and 15—20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Karamchedu and Mattem. Final Act. 3—12. Claims 13—14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Karamchedu, Mattem, and Malik. Final Act. 12—13. ISSUES First Issue: Has the Examiner erred in finding Karamchedu and Mattem teach or suggest a “selectable message link,” as recited in claim 1? Second Issue: Has the Examiner erred in finding Karamchedu and Mattem teach or suggest transmitting email messages “without providing any email address associated with the message recipient,” as recited in claim 1? Third Issue: Has the Examiner erred in finding Karamchedu and Mattem are properly combinable? 3 Appeal 2016-005122 Application 13/939,968 ANALYSIS First Issue Claim 1 recites the limitation “a selectable message link presented on a web page to, upon selection, send a message to the message recipient without providing any mailbox address associated with the message recipient.” App. Br. 16 (Claims Appendix). In rejecting claim 1, the Examiner relies on the combination of Karamchedu and Mattem as teaching this limitation. Final Act. 4—5. More specifically, the Examiner finds Karamchedu teaches a web server that provides a page by which an email sender (126/132) can send a message using any one of a plurality of selectable links, including a “send” button, and also including a list of recipient names which are individually selectable. Ans. 6 (citing Karamchedu Fig. 1; H 26—27). The Examiner finds that the claimed “selectable message link” is taught or suggested (1) by Karmchedu’s send button and (2) by Karmchedu’s individually selectable recipient names. Ans. 6. The Examiner finds Karamchedu does not explicitly disclose that the selectable message link causes the message to be sent “without providing any mailbox address associated with the message recipient.” To cure this deficiency, the Examiner relies on Mattem, finding that it teaches sending an email message to a message recipient while withholding the email address of the message recipient from the sender. Final Act. 5 (citing Mattem 143). The Examiner explains that a person of ordinary skill in the art would have sought to enhance Karamchedu with Mattem’s capability of delivering emails without sharing the recipient’s address in order to enhance the 4 Appeal 2016-005122 Application 13/939,968 privacy of confidential information such as private email addresses. Final Act. 6. Appellant argues the Examiner’s findings with respect to this limitation are erroneous in two respects. First, Appellant argues the Examiner has erred because the cited prior art does not teach any “selectable message link.” Second, Appellant argues the Examiner has erred in finding Mattem teaches “send[ing] a message to the message recipient without providing any mailbox address associated with the message recipient.” App. Br. 10. We address each argument in turn. Appellant first argues the Examiner has failed to identify any disclosure of “a selectable message link” in the cited prior art. Appellant specifically contends the portion of Mattem cited by the Examiner is silent with respect to any “selectable message link,” and the Examiner does not account for its absence. App. Br. 10. Appellant further contends Karamchedu does not disclose the recited “selectable message link” because in Karemchedu, “upon clicking what the Examiner’s Answer states is the ‘selectable message link,’ an email address is provided for the user.” Reply Br. 2—3. As such, according to Appellant, Karamchedu cannot be relied upon as disclosing the recited “selectable message link.” Id. We are not persuaded by Appellant’s first argument. As noted by the Examiner, Appellant’s Specification provides two examples of the recited “selectable message link” which provide useful guidance as to its scope and meaning. Ans. 3—5. First, the Specification identifies selecting a recipient name from a list of permitted names as one example of a selectable message link. Spec. 146 (“The message sender may then select a recipient name from the list and transmit the selected recipient name 518 to the message 5 Appeal 2016-005122 Application 13/939,968 server 500.”). Second, the Specification identifies choosing a “send message” function from a web page as another form of a selectable message link. Spec. 148 (“the message sender may simply choose a ‘send message’ function from the recipient’s web page”). As such, we agree with the Examiner’s determination that a “selectable message link” would be understood by a person of ordinary skill in the art to be encompassed by either a selectable recipient name in list or a send message function from a web page. Ans. 5. We agree with the Examiner’s finding that Karamchedu teaches the use of a “selectable message link.” Karamchedu describes allowing a user to select a recipient name from a recipient list for the purpose of transmitting an email message to the recipient. Karamchedu 146. This functionality is consistent with the example provide in Appellant’s Specification. See Spec. 146. Karamchedu also, as correctly found by the Examiner, teaches the use of a “send message function,” which is also encompassed by Appellant’s example of a “selectable message link.” See Spec. 148. Accordingly, we are not persuaded by Appellant’s argument that Karamchedu does not disclose a “selectable message link.” Second Issue Appellant also contends the Examiner erred in finding Mattem teaches or suggests the limitation “without providing any mailbox address associated with the message recipient.” App. Br. 10-12. More specifically, Appellant argues Mattem does not disclosing sending an email to a recipient whose mailbox address is unknown, but instead sends only a generic message to a message server, which in turns is delivered to a user. App. Br. 10-11; Reply Br. 4—5. According to Appellant, Mattem provides no 6 Appeal 2016-005122 Application 13/939,968 indication that the message is an email message, and that “it is not clear what a message is, other than that it is not an email.” App. Br. 11. Appellant further argues the Examiner “acknowledges the types of communication used are different, but still concludes that it must be email without further evidence.” Reply Br. 5. We disagree. Mattem teaches that when a recipient “keep[s] their email address private, [the system] allow[s] the user to send a message over the network to the server, which will then be delivered . . . without disclosing the . . . email address to the [sender].” Mattem 143. Appellant contends that because Mattem does not specify that the “message” is an email message, it cannot be an email message. This argument is unpersuasive because it was well- understood at the time the invention was made that emails are sent in the form of email messages. As such, the fact that Mattem refers to a “message” being sent is entirely consistent with the notion that the message is an email. In addition, Appellant’s interpretation of Mattem is contradicted by Mattem’s claim 5, which recites “establishing a private electronic mail service between said first networked user and said second networked user without disclosing said first networked user’s originating electronic email address.” Mattem, claim 5. Moreover, we note the language of claim 1 does not specify that the “message” must be an email message, but rather only requires that a “message” be ultimately routed to a “mailbox address over the communications network.” App. Br. 16 (Claims Appendix). The language of claim 1 further recites that the recited “mailbox address” may include “at least one of a phone number and an email address.” Thus, the “mailbox address” is not limited to an email address that receives email messages. It also includes phone numbers which can receive other types of 7 Appeal 2016-005122 Application 13/939,968 messages, such as text messages for example. Consequently, Appellant’s argument is also not persuasive because it is premised on an unduly narrow interpretation of both the language recited the claim and the teachings of the prior art reference.2 Third Issue Appellant also contends the Examiner has not provided sufficient reasoning to support the combination of Karamchedu and Mattem. App. Br. 11—12. More specifically, Appellant argues a person of ordinary skill in the art would not have looked to Mattem to improve Karamchedu because they are directed to different problems. Appellant’s argument appears to be, in essence, an argument that one or both of Karamchedu and Mattem are not analogous art to the claimed invention. App. Br. 12. A reference is analogous art if in the field of the applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). We agree with the Examiner that both Karamchedu and Mattem are at least reasonably pertinent to the problems addressed by the inventor, namely, the problems of limiting unwanted email communication. See, e.g., Spec. ]Hf 3^4. 2 We also note the Examiner does not rely solely on Mattem as disclosing this limitation. Rather, we understand the Examiner to rely on the combined teachings of Karamchedu and Mattem. See Final Act. 5 (“Mattem, in combination with Karamchedu, discloses a ... a selectable message link”) In particular, the Examiner finds Karamchedu teaches sending emails to message recipients, and relies on Mattem for “without providing any mailbox address associated with the message recipient.” Id. Thus, even if Appellant is correct that the messages sent in Mattem are not email messages, it does not resolve the issue in Appellant’s favor, as the Examiner also relies on Karamchedu as sending email messages. 8 Appeal 2016-005122 Application 13/939,968 Appellant also argues modifying Karamchedu with Mattem so that the recipient email address could be withheld from the sender would change its principle of operation and render it unsatisfactory for its intended purpose. App. Br. 13. Appellant argues the “fundamental premise of Karamchedu’s system revolves around generating custom email addresses, which are then made ‘available to the public.’” App. Br. 13 (citing Karamchedu Tflf 2, 23). We find this argument unpersuasive. Karamchedu is predominantly concerned with dealing with unsolicited email communication not allowing senders access to a preferred email address of the recipient. Karamchedu 123 (“the recipient’s actual email address may remain shielded”). Modifying Karamchedu with Mattem’s technique for forwarding messages to a recipient in the case where email address remains private is consistent with Karamchedu’s approach. Therefore, we are not persuaded the proposed modification would change Karamchedu’s principle of operation, nor are we persuaded the proposed modification would render Karamchedu unsuitable for its intended purpose of managing unsolicited email communication. Summary Because we are not persuaded by Appellant’s arguments, we sustain the rejection of independent claim 1, as well as that of independent claims 16 and 19 for which Appellant presents the same arguments. Appellant offers no separate arguments for patentability of dependent claims 2—15, 17, 18, and 20. Consequently, these claims each fall with their respective independent claim. 9 Appeal 2016-005122 Application 13/939,968 DECISION We affirm the Examiner’s rejection of claims 1—20. 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 10 Copy with citationCopy as parenthetical citation