11927414 (B.P.A.I. Aug. 27, 2012)

Ex Parte Wilson

Board of Patent Appeals and InterferencesAug 27, 2012

11927414 (B.P.A.I. Aug. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/927,414 10/29/2007 Brian Wilson SONIC-005COA 5980 28661 7590 08/27/2012 Lewis and Roca LLP 2440 W. El Camino Real, 6th Floor Mountain View, CA 94040 EXAMINER DIVECHA, KAMAL B ART UNIT PAPER NUMBER 2451 MAIL DATE DELIVERY MODE 08/27/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte BRIAN WILSON ____________ Appeal 2011-005684 Application 11/927,414 Technology Center 2400 ____________ Before DAVID M. KOHUT, MICHAEL R. ZECHER, and BRYAN F. MOORE, Administrative Patent Judges. ZECHER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005684 Application 11/927,414 2 I. STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1 and 36-48. Claims 2-35 have been cancelled. App. Br. 3.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellant’s Invention Appellant invented a method, system and computer-readable storage medium for eliminating or at least reducing the amount of unwanted electronic mail messages sent to users of e-mail. Spec. ¶ [0001]. According to Appellant, when a user receives potential junk e-mail from an unknown sender address, an active filter installed in or cooperating with the user’s e- mail system sends a challenge e-mail back to the sender address. Unless the user receives a correct response e-mail from the sender address or a response that meets formal criteria, the active filter rejects the original e-mail and blocks future e-mails from that sender address. Abstract. Illustrative Claim 1. A method for filtering electronic mail (e-mail) sent to a user, the method comprising: receiving a current e-mail message from a sender address, the current e-mail message received from a computing device associated with the sender address, and received at a user system configured to manage received e-mail; sending a challenge that requires a correct e-mail response, the challenge sent from the user system to the computing device associated with the sender address, the challenge sent via e-mail over a communications network; and executing a software application stored in memory at the user system, wherein execution of the software application by a 1 All references to the Appeal Brief are to the Appeal Brief filed June 28, 2010. Appeal 2011-005684 Application 11/927,414 3 processor blocks the current e-mail message from the sender address from being displayed to the user unless the correct e- mail response is received by the user system from the sender address, the correct e-mail response indicating that the computing device associated with the sender address is configured to accept e-mail and does not include an open relay. Prior Art Relied Upon Cobb US 6,199,102 B1 Mar. 6, 2001 Kirsch US 6,546,416 B1 Apr. 8, 2003 (filed Dec. 9, 1998) Goodman US 2004/0003283 A1 Jan. 1, 2004 (filed June 26, 2002) Drummond US 6,691,156 B1 Feb. 10, 2004 (filed Mar. 10, 2000) Cartmell US 7,039,949 B2 May 2, 2006 (filed Dec. 10, 2001) Donaldson US 7,249,175 B1 July 24, 2007 (filed Apr. 12, 2000) Related Appeal This appeal is related to an appeal in connection with U.S. Patent Application No. 10/197,393—now Appeal No. 2010-002498. App. Br. 3. Rejections on Appeal2 Claim 1 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Cobb and Donaldson. Ans. 3-4. 2 The Examiner withdrew the following provisionally nonstatutory obviousness-type double patenting rejections of: 1) independent claim 1 as being unpatentable over claims 25-27 and 29-33 of copending Patent Application No. 10/422,359 and Donaldson; 2) independent claim 1 as being unpatentable over claims 25-27 and 29-33 of copending Patent Application No. 10/387,352, copending Patent Application No. 10/422,359, and Donaldson; and 3) independent claim 1 as being unpatentable over claims 1- 5, 29, 30, 36, and 40 of copending Patent Application No. 10/179,393 and Donaldson. Ans. 17; see also Fin. Rej. 3-7. Appeal 2011-005684 Application 11/927,414 4 Claims 44 and 48 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Kirsch and Donaldson. Ans. 4-7. Claim 36 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Kirsch, Cartmell, and Donaldson. Ans. 7-10. Claims 37, 38, and 41 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Kirsch, Cartmell, Donaldson, and Goodman. Ans. 10-11. Claims 39 and 40 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Kirsch, Cartmell, Donaldson, and Drummond. Ans. 12-13. Claims 42 and 43 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Kirsch, Cartmell, Donaldson, Goodman, and Cobb. Ans. 13-15. Claims 45 and 46 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Kirsch, Donaldson, and Goodman. Ans. 15-16. Claim 47 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Kirsch, Donaldson, Goodman, and Drummond. Ans. 16-17. Examiner’s Findings and Conclusions With respect to independent claim 1, the Examiner finds that an ordinarily skilled artisan would have been motivated to combine Donaldson and Cobb in order to provide an indication establishing that the remote host (i.e., mail server) is not an open relay, but rather serves as a trusted source that legitimately sends e-mail messages. Ans. 5 and 21 (citing Donaldson Appeal 2011-005684 Application 11/927,414 5 col. 27, l. 45-col. 28, l. 2; col. 30, ll. 15-37). Put another way, the Examiner finds that the indication establishes that the remote host is trusted so that e- mail from such host can be received and forwarded appropriately because it is not an open relay—it does not allow indiscriminately relaying, sending, or forwarding of spam, unsolicited, unwanted, junk, or illegitimate e-mail messages from any domain to any other domain. Ans. 21 (citing Donaldson col. 5, ll. 25-46; col. 30, ll. 15-37). In addition, the Examiner finds it would have been obvious to an ordinarily skilled artisan at the time of the claimed invention to combine Cobb and Donaldson using known methods in the art to yield predictable results—the predictable results merely indicating that remote host does not relay spam messages. Ans. 23. Appellant’s Contentions With respect to independent claim 1, Appellant contends that the Examiner fails to provide some reason either evident from the art or known to an ordinarily skilled artisan why an ordinarily skilled artisan would combine the purported “mail responsibilities but closed relay” of Donaldson with Cobb. App. Br. 5. Appellant offers the same argument presented for the obviousness rejection of independent claim 1 to rebut the obviousness rejection of independent claims 36, 44, and 48. App. Br. 6-7. In response to the Answer, Appellant argues that because the Examiner introduces and relies upon a new reference—the Open Mail Relay reference—the Examiner’s introduction and reliance on this new reference is tantamount to a new ground of rejection. Reply Br. 2. Appeal 2011-005684 Application 11/927,414 6 II. ISSUE Did the Examiner err in concluding that the combination of Cobb and Donaldson renders independent claim 1 unpatentable? In particular, the issue turns on whether the Examiner provides an articulated reason with some rational underpinning to justify the conclusion of obviousness. III. ANALYSIS 35 U.S.C. § 103(a) Rejection—Combination of Cobb and Donaldson Claim 1 We do not discern error in the Examiner’s obviousness rejection of independent claim 1. In particular, we are not persuaded by Appellant’s argument that the Examiner does not provide evidence to support the suggested motivation for combining the “mail responsibilities but closed relay” of Donaldson with Cobb. App. Br. 5. The U.S. Supreme Court has held that “[t]he 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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Instead, the relevant inquiry is whether the Examiner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). In addition, the Court instructs that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. Appeal 2011-005684 Application 11/927,414 7 Upon reviewing the record before us, we find that the Examiner’s suggestion for modifying Cobb with Donaldson suffices as an articulated reason with some rational underpinning to justify the legal conclusion of obviousness. That is, we find that an ordinarily skilled artisan in the art of filtering e-mail messages, at the time of the claimed invention, would have combined Cobb and Donaldson in order to establish that the computing device associated with an e-mail sender, or remote host, is a trusted source that does not indiscriminately relay spam, unsolicited, unwanted, junk, or illegitimate e-mail messages on an open relay. Ans. 21 (citing Donaldson col. 5, ll. 25-46; col. 30, ll. 15-37). In addition, we agree with the Examiner that the proposed combination of Cobb and Donaldson predictably uses prior art elements according to their established functions to yield a predictable result. See Ans. 23. That is, we find that it would have been obvious to an ordinarily skilled artisan at the time of the claimed invention to combine Cobb and Donaldson in order to provide an e-mail response capable of notifying a user system that the computing device associated with an e-mail sender, or remote host, does not include an open rely exploited by spammers. Further, Appellant’s argument that the Examiner improperly entered a new ground of rejection in the Answer is misplaced. Reply Br. 2. Appellant’s contention is a petitionable—not appealable—matter and, therefore, is not properly before us.3 It follows that the Examiner has not 3 See Manual of Patent Examining Procedure (“MPEP”) § 706.01 (“[T]he Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board.”); see also MPEP § 1201 (“The Board will not ordinarily hear a question that should be decided by the Director on petition . . . .”). Appeal 2011-005684 Application 11/927,414 8 erred in concluding that the combination of Cobb and Donaldson renders independent claim 1 unpatentable. Remaining 35 U.S.C. § 103(a) Rejections Claims 36, 44, and 48 Appellant contends that the Examiner relies upon the exact same logic and portions of Donaldson discussed above with respect to independent claim 1 as purported motivation to combine: 1) Donaldson and Kirsch; and 2) Donaldson, Kirsch, and Cartmell. App. Br. 6-7. We have already addressed this argument in our discussion of independent claim 1, and we found it unpersuasive. It follows that the Examiner did not err in concluding that: the combination of Donaldson and Kirsch renders independent claims 44 and 48 unpatentable; and 2) the combination of Donaldson, Kirsch, and Cartmell renders independent claim 36 unpatentable. Claims 37-43 and 45-47 Appellant does not present separate and distinct arguments for patentability with respect to dependent claims 37-43 and 45-47. See App. Br. 8. Therefore, we group these dependent claims with their underlying base claim. See 37 C.F.R. § 41.37(c)(1)(vii). Consequently, dependent claims 37-43 and 45-47 fall with independent claims 36 and 44, respectively. IV. CONCLUSION The Examiner has not erred in rejecting claims 1 and 36-48 as being unpatentable under 35 U.S.C. § 103(a). V. DECISION We affirm the Examiner’s decision to reject claims 1 and 36-48. Appeal 2011-005684 Application 11/927,414 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)(1)(iv). AFFIRMED ke