Ex Parte Ben-Ezra et al

Patent Trial and Appeal BoardDec 10, 2014

11972650 (P.T.A.B. Dec. 10, 2014)

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. 11/972,650 01/11/2008 Asaf Ben-Ezra IL920070124US1/A9856 7106 46159 7590 12/10/2014 SUGHRUE MION PLLC USPTO CUSTOMER NO WITH IBM/SVL 2100 PENNSYLVANIA AVENUE, N.W. WASHINGTON, DC 20037 EXAMINER WAQAS, SAAD A ART UNIT PAPER NUMBER 2468 MAIL DATE DELIVERY MODE 12/10/2014 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 ASAF BEN-EZRA, OLGA BEREZIN, HAIM SCHNEIDER, OFIRA TAL-AVIV, and ASAF ZINGER ____________ Appeal 2012-007342 Application 11/972,650 Technology Center 2400 ____________ Before MAHSHID D. SAADAT, JEAN R. HOMERE, and CHRISTA P. ZADO, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from a non-final rejection of claims 1–4, 6–11, 13–17, and 19–22.2 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, Corp. (App. Br. 2). 2 Claims 5, 12, and 18 have been canceled. Appeal 2012-007342 Application 11/972,650 2 STATEMENT OF THE CASE Appellants’ invention relates to methods and systems for eliminating redundant notifications to SIP3/SIMPLE4 subscribers (Spec. ¶¶ 5, 6). Exemplary claim 1 under appeal reads as follows: 1. A system for eliminating redundant notifications to subscribers, the system comprising: a notification fingerprinter which generates a fingerprint from the contents of a subscriber notification using a predefined fingerprinting method; a fingerprint comparator which compares a fingerprint of a previously-sent notification with a fingerprint of a waiting-to- be-sent notification; and a server which sends said waiting-to-be-sent notification to said subscriber based on a result of the comparing by said fingerprint comparator, wherein: the server sends said waiting-to-be-sent notification to said subscriber if said fingerprint of said waiting-to-be-sent notification and said fingerprint of said previously-sent notification do not match, the server does not send said waiting-to-be-sent notification to said subscriber if said fingerprint of said waiting- to-be-sent notification and said fingerprint of said previously- sent notification match, and said notification fingerprinter generates said fingerprint from a hash value of said subscriber notification and the probability that two different notifications will have the same fingerprint is below a predefined threshold. 3 Session Initiation Protocol (SIP). 4 SIP Instant Messaging and Presence Leveraging Extensions (SIMPLE). Appeal 2012-007342 Application 11/972,650 3 Claim 1 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Lawson (US 6,185,613 B1; Feb. 6, 2001) and Patel (US 7,149,778 B1; Dec. 12, 2006). (See Ans. 4–7).5 ISSUES Appellants’ arguments present us with the following issues: 1. Did the Examiner err in rejecting claim 1 because the cited references teach or suggest delivering the e-mail even when the fingerprints match? 2. Did the Examiner err in combining the references because they are directed to non-analogous art? ANALYSIS The Examiner relies on Lawson for disclosing the recited claim features except for directing an e-mail to a user based on matching the e- mail fingerprint with that of the previously sent messages (Ans. 4–5), for which the Examiner relies on Patel (Ans. 5–7). The Examiner concludes that it would have been obvious to one of ordinary skill in the art to combine Lawson with Patel to enhance the detecting technique with respect to suspect messages (Ans. 7 (citing Patel, col. 1, ll. 53–54)). The Examiner specifically finds Patel processes e-mails and separates unsolicited messages by 5 Separate patentability is not argued for the remaining claims rejected under 35 U.S.C. § 103(a) as being unpatentable over Lawson and Patel alone, or in combination with the other prior art of record. Appellants argue the patentability of claims 2, 3, 7, 8–10, and 14–16 based on the same reasoning presented for claim 1 and of the remaining claims based on the alleged failure of the other cited prior art in curing the alleged deficiency of the Lawson-Patel combination (App. Br. 15–16). Appeal 2012-007342 Application 11/972,650 4 comparing the message fingerprint with those in the message database 206 (Ans. 19 (citing Patel col. 5, l. 65–col. 6, l. 10)). The Examiner further finds Patel sends the message to a user’s inbox when the message fingerprint does not match the fingerprint of messages that are received previously and stored in the message database (id. (citing Patel col. 8, ll. 40–44 and col. 10, ll. 20– 29)). Appellants’ contentions are generally focused on the teachings of Patel and state: However, in Patel, the matching or non-matching of fingerprints of e-mails always leads to the e-mail being delivered to the user (i.e., the subscriber) either in the user’s inbox or the user’s bulk mail folder. This is evident from col. 10, lines 20-24 of Patel that disclose the message being sent to the user’s bulk mail folder, i.e.[,] delivered to the subscriber, when the fingerprints match. (App. Br. 13). Additionally, Appellants contend the proposed combination of Lawson and Patel is based on combining non-analogous art improperly because Lawson relates to filtering event notifications regarding changes to a database, whereas Patel describes techniques for sorting suspect e-mail messages (App. Br. 14). Appellants assert one of ordinary skill in the art would not have combined the references as “Lawson’s event notification filtering system is set on the event generator side . . . whereas Patel’s e- mail sorting system is set on the subscriber side . . .” (id.). Claim 1 requires sending the waiting-to-be-sent notification to the subscriber if the fingerprint of the message does not match the fingerprint of the previously-sent message. Claim 1 further recites if the fingerprint of the message matches the fingerprint of the previously-sent message, the server Appeal 2012-007342 Application 11/972,650 5 does not send the waiting-to-be-sent notification to the subscriber. Therefore, the step of not sending the waiting-to-be-sent notification if the fingerprint of the message matches the fingerprint of the previously-sent message is not required because it is presented in conditional language. Claim 8 is a method claim and claim 14 is an apparatus claim that recites similar functionalities recited in the process steps of claim 1. Normally the prior art need not describe conditional steps set forth in a method claim if, after giving the claim its broadest reasonable construction, the method as claimed does not invoke them. Cf. Ex parte Katz, 2010-006083, 2011 WL 514314, at *4 (BPAI 2011) (non-precedential) (citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). See also Cybersettle, Inc. v. Nat’l Arbitration Forum, Inc., 243 Fed. Appx. 603,607 (Fed. Cir. 2007) (unpublished) (“[i]t is of course true that method steps may be contingent. If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed.” In the instant case, when method claim 1 is given its broadest reasonable interpretation, the claim is broad enough to cover a method which does not include the step of not sending the waiting-to-be-sent notification if the fingerprint of the message matches the fingerprint of the previously-sent message. See also Manual of Patent Examining Procedure, MPEP § 2111.04 (claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed). Therefore, because not sending the waiting-to-be-sent notification is conditional on an event that may not occur (the fingerprint of the waiting-to-be-sent notification matches the fingerprint of the previously-sent notification), the Appeal 2012-007342 Application 11/972,650 6 last step is optional. That is, the prior art does not need to disclose if the fingerprint of the message matches the fingerprint of the previously-sent message, the server does not send the waiting-to-be-sent notification to the subscriber. Accordingly, Appellants’ argument contending Patel fails to disclose not sending the waiting-to-be-sent notification to the subscriber if the fingerprint of the message matches the fingerprint of the previously-sent message is not commensurate in scope with claim 1 and thereby not persuasive of Examiner error. Accordingly, the Examiner did not err in rejecting claim 1 although the cited references fail to teach or suggest delivering the e-mail when the fingerprints match. With respect to the combination of Lawson and Patel, we are also not persuaded by Appellants’ contention that the references are non-analogous because, as stated by the Examiner, both references are concerned with “filtering ‘suspect’ or ‘unsolicited’ messages” (Ans. 19–20 (citing Patel col. 3, ll. 14–15; Lawson col. 5, ll. 35–37)). We also agree with the Examiner (Ans. 20) that the skilled artisan would have combined the references because, similar to Lawson, the e-mail sorting application of Patel is operated by an e-mail application service provider instead of an element on the subscriber side (see Patel col. 3, ll. 65–67). Accordingly, the Examiner did not err in combining the references. DECISION The decision of the Examiner to reject claims 1–4, 6–11, 13–17, and 19–22 is affirmed. 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). Appeal 2012-007342 Application 11/972,650 7 AFFIRMED gvw