MCQUILLEN, Tim et al.

Patent Trials and Appeals Board

Jan 29, 2020

14921229 - (D) (P.T.A.B. Jan. 29, 2020)

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.
14/921,229 10/23/2015 Tim MCQUILLEN 115148.PA102C4 1452
23911 7590 01/29/2020
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
ZONG, RUOLEI
ART UNIT PAPER NUMBER
2441
NOTIFICATION DATE DELIVERY MODE
01/29/2020 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):
edocket@crowell.com
mloren@crowell.com
tche@crowell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TIM McQUILLEN and TULSI R. MAYALA
_____________

Appeal 2019-001762
Application 14/921,229
Technology Center 2400
____________

Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
GARTH D. BAER, Administrative Patent Judges.

BAER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final rejection of claims 1–29, which are all pending claims. Appeal Br. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

BACKGROUND
A. The Invention
Appellant’s invention is directed to “processing digital messages to
recipients at destination domains.” Abstract. Claims 1, 6, 10, 21, and 23 are
independent; independent claim 1 is representative and reproduced below,
with emphasis added to disputed elements:
1. A method of processing a digital message,
comprising:
on a digital message system having one or more
processors and memory storing one or more programs for
execution by the one or more processors:
receiving a request from a remote computer
system to deliver an outbound digital message to at least
one recipient at a destination domain;
determining the destination domain for the
outbound digital message;
reading a profile associated with the
destination domain of the outbound digital message, the
profile comprising one or more parameters that
correspond to an incoming digital message policy of the
destination domain, wherein at least one parameter in the
profile is a quota on a number of digital messages or a
maximum amount of data that may be sent from the

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Selligent, Inc. as the real party in
interest. Appeal Br. 1.
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digital message system to the destination domain in a
given period of time;
determining whether the quota is exceeded
for the destination domain prior to sending the outbound
digital message to the destination domain; and,
(i) in accordance with determining that the
quota is not exceeded for the destination domain, sending
the outbound digital message to the destination domain in
accordance with the profile when permitted by the one or
more parameters in the profile, and
(ii) in accordance with determining that the
quota is exceeded for the destination domain, holding the
outbound digital message for a period of time without
sending the outbound digital message to the destination
domain, wherein the digital message is not sent to the
destination domain by the digital message system during
a time when the quota is exceeded, and, subsequent to
the period of time and during a time when the quota is
not exceeded, resuming sending the held outbound
digital message to the destination domain.
Appeal Br. 14 (Claims Appendix).

B. The Rejections on Appeal
The Examiner rejects claims 1, 6, 10, 14–16, 20, 23, and 24 under 35
U.S.C. § 103(a) as being unpatentable over Banister (US 2004/0199595 A1;
Oct. 7, 2004), Stolfo (US 2003/0167402 A1; Sept. 4, 2003), and Dreamhost,
“New Outbound Mail Quotas,” Dreamhost Blog (2006), available at:
web.archive.org/web/20060808075501/blog.dreamhosters.com/2006/04/28/
new-outbound-mail-quotas/. Final Act. 3.
The Examiner rejects claims 21 and 22 under 35 U.S.C. § 103(a) as
being unpatentable over Banister, Stolfo, and Dreamhost. Final Act. 12.
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The Examiner rejects claims 2–5, 7–9, and 11–13 under 35 U.S.C.
§ 103(a) as being unpatentable over Banister, Stolfo, Dreamhost, and
Jaladanki (US 7,536,439 B1; May 19, 2009). Final Act. 15–16.
The Examiner rejects claims 17–19 under 35 U.S.C. § 103(a) as being
unpatentable over Banister, Stolfo, Dreamhost, and Brown (US
2007/0033283 A1; Feb. 8, 2007). Final Act. 19.
The Examiner rejects claims 25–28 under 35 U.S.C. § 103(a) as being
unpatentable over Banister, Stolfo, Dreamhost, and Iverson, “How to deliver
mail to AOL,” SpamResource (Jan. 25, 2007), available at:
www.spamresource.com/2007/01/how-to-delivermail-to-aol.html. Final
Act. 20.
The Examiner rejects claim 29 under 35 U.S.C. § 103(a) as being
unpatentable over Banister, Stolfo, Dreamhost, and Iverson. Final Act 21–
22.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2017). We adopt the
Examiner’s findings and conclusions as our own, and add the following
primarily for emphasis.

A. Obviousness Rejection of Claims 1, 6, 10, 14–16, 20, 23, and 24
Appellant first argues that “the Examiner inconsistently identifies
Banister’s filter as corresponding to both the claimed incoming digital
message policy of the destination domain as well as the claimed profile.”
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Reply Br. 2, citing Ans. 4–5 (emphasis in original). Appellant contends “the
Examiner still neglects to reasonably identify with any particularity what
exactly within Banister corresponds to the other elements of the limitation.”
Reply Br. 2.
We do not find this argument persuasive. The Examiner finds, and we
agree, that “the disclosure of the instant application does not give any formal
definition in which ‘profile’ is to be narrowly judged, and instead the
claimed limitation merely calls for associated with a destination domain and
comprising one or more parameters.” Ans. 6. The Examiner further finds,
and we agree, that
[Banister’s] system performs evaluating the filter associated
with [the] domain name of [the] destination of [the] out-going
message. Note that [Banister] identifies some issues with email
policy of Internet Service Providers in receiving end (for
example (but not limited to), “spam” filter or generating an
automatic “bounce” message).
Ans. 4, citing Banister ¶¶ 49, 48, 128–129, 6–13. The Examiner further
finds, and we agree, that Banister’s filtering “permit[s] senders to dispatch
messages in a manner that prevents unwarranted blocking by
receivers.” Ans. 4–5, quoting Banister ¶ 15 (emphasis Examiner’s). One
skilled in the art would recognize the need to combine Banister’s filter, with
Stolfo’s statistics regarding message number and size quotas applied to
destination domains (or “receivers”) for monitoring, to prevent incoming
messages being blocked by destination domains as spam.
Thus, combining Banister’s and Stolfo’s teachings, in conjunction
with the Examiner’s broad and reasonable claim interpretation, yields filter
elements that form a profile used to implement the destination domain’s
incoming digital message policy.
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Appellant also argues the Examiner erred because Stolfo’s
threshold is not a quota on the number of emails / amount of
data sent from a digital message system to a destination
domain. Rather, the threshold is, at best, a quota on the number
of emails / amount of data sent – independent of the destination
domain – because the threshold is a threshold of the ISP, not of
any destination domain.
Reply Br. 4 (emphasis omitted). We do not find this argument persuasive,
because Appellant attacks Stolfo individually and does not address
Banister’s and Stolfo’s combined teachings. “[O]ne cannot show non-
obviousness by attacking references individually where . . . the rejections are
based on combinations of references.” In re Keller, 642 F.2d 413, 426
(CCPA 1981).
As shown above, in the combination, Stolfo is modified so that it
tracks the number of e-mails sent to the destination domain. Banister
reiterates the motivation for this modification in teaching that “[b]y
establishing filter rules that modify the source IP or hostname of a message
based on the destination or other characteristics of the message, message
routing past security protocols can be achieved.” Ans. 8, quoting Banister
¶ 49 (emphasis removed).
Appellant finally argues the Examiner erred, because though
Dreamhost discusses disabling message sending capabilities,
there is no indication that violation of the message quota only
disables those capabilities until a subsequent time period
during which the quota is not exceeded, at which point unsent
(or held) messages are sent.
Appeal Br. 11 (emphasis in original). Appellant also contends that
Dreamhost does not meet the claimed “quota on a number of digital
messages or a maximum amount of data,” because “Dreamhost’s ability to
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delay message sending in response to exceeding a recipient-based quota
does not teach the specific details of the claimed feature.” Appeal Br. 11.
We do not find this argument persuasive. The Examiner finds, and we
agree, that Dreamhost teaches “a new email policy, which restrict[s] you to
send out a maximum of 100 emails per hour (counting each recipient as a
separate email) via their SMTP-server.” Ans. 14, quoting Dreamhost at
“New Outbound Mail Quotas.” The Examiner further finds, and we agree,
Dreamhost teaches that “[e]xceeding it once will get your outbound mail
delayed” (Ans. 14, quoting Dreamhost at Response by “Pete”) and that
“Dreamhost’s email system will send out the ‘exceeding’ emails (not more
than 100) in next hour or later.” Ans. 14–15, see Response by “Pete.”
Again, Appellant attacks Dreamhost individually, and does not
consider the combined references in which Dreamhost’s “counting each
recipient as separate email” is replaced by Stolfo’s quota. With that
replacement, we discern no difference between Dreamhost’s delay until the
next hour and Appellant’s claimed
digital message is not sent to the destination domain by the
digital message system during a time when the quota is
exceeded, and, subsequent to the period of time and during a
time when the quota is not exceeded, resuming sending the held
outbound digital message to the destination domain.
In Stolfo’s and Dreamhost’s combination, should a user attempt to send out
150 messages in 30 minutes, the first 100 messages will be sent, and an hour
after sending the first message, the remaining 50 messages will be sent. The
quota is then not exceeded for one hour in which the first 100 messages are
sent.
Accordingly, we sustain the Examiner’s rejections of independent
claim 1 and independent claims 6, 10, 21, and 23 commensurate in scope, as
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well as dependent claims 2–5, 7–9, 11–20, 22, and 24–29 not separately
argued.
CONCLUSION
In summary:

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

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 6, 10,
14–16, 20,
23, 24
103(a) Banister, Stolfo,
Dreamhost
1, 6, 10,
14–16,
20, 23,
24

21, 22 103(a) Banister, Stolfo,
Dreamhost
21, 22
2–5, 7–9,
11–13
103(a) Banister, Stolfo,
Dreamhost,
Jaladanki
2–5, 7–9,
11–13

17–19 103(a) Banister, Stolfo,
Dreamhost, Brown
17–19
25–28 103(a) Banister, Stolfo,
Dreamhost,
Iverson
25–28
29 103(a) Banister, Stolfo,
Dreamhost,
Iverson
29
Overall
Outcome
1–29