Ex Parte Feng

Patent Trial and Appeal Board

Dec 31, 2012

11678271 (P.T.A.B. Dec. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte WEISHI FENG

____________

Appeal 2010-007361
Application 11/678,271
Technology Center 2400
____________

Before DENISE M. POTHIER, JENNIFER L. McKEOWN, and
JAMES B. ARPIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-3 and 6-21.1 We have jurisdiction under 35 U.S.C.

1 Claims 4 and 5 are cancelled.
Appeal 2010-007361
Application 11/678,271

2
§ 6(b). We affirm.
INVENTION
Appellant’s invention relates to methods for providing e-mail spam
rejection that include identifying user controlled access lists that allow the
user to determine which e-mail messages will be passed to the user and
which e-mail messages will be rejected, and/or service provider controlled
access lists that allow the service provider to determine which e-mails may
be passed to the user. See generally Abstract; Spec., ¶¶ [0005], [0020]-
[0021]; Fig. 2. The user controlled access lists include a contact list
established by the user that identifies contacts whose e-mail messages will
be sent directly to the user and a reject list established by the user that
identifies entities whose e-mail messages will be rejected and not sent to the
user. Id. The service provider controlled access lists include an honorable
business list and an honorable user list. Id. at ¶¶ [0021]-[0022]. Claim 1 is
illustrative and is reproduced below with disputed limitations emphasized:
1. A method for passing or rejecting e-mail messages, said method
comprising:
providing an internet service provider that provides internet services
to a plurality of users, each user receiving and sending e-mail messages
using the internet service provided by the internet service provider, said
internet service provider providing a plurality of lists that are populated and
controlled by either the internet service provider or a particular user;

identifying a user controlled contact list, said user controlled contact
list being a list that is populated and controlled by the user, said user
controlled contact list including contacts that the user wishes to receive e-
mail messages from;
identifying a user controlled reject list, said user controlled reject list
being a list that is populated and controlled by the user, said user controlled
reject list including entities that the user does not want to receive e-mail
messages from;
Appeal 2010-007361
Application 11/678,271

3
identifying a service provider controlled honorable business list, said
service provider controlled honorable business list being a list that is
populated and controlled by the internet service provider, said service
provider controlled honorable business list including businesses that do not
send spam e-mail messages;
identifying a service provider controlled honorable user list identified
as users having an honorable status, said service provider controlled
honorable user list being a list that is populated and controlled by the
internet service provider, said service provider honorable user list including
users that have accounts with the service provider and do not send spare e-
mail messages;
passing messages from a sender to a user if the sender is on the user
contact list;
rejecting messages intended to be sent to the user if the sender is on
the user's reject list;
selectively passing messages from a sender to the user if the sender is
on the honorable business list; and
selectively passing messages from a sender to the user if the sender is
on the honorable user list.

The Examiner relies on the following as evidence of unpatentability:
Drummond
Ellis
Aoki
O’Neill
Manning

US 6,691,156 B1
US 2004/0186895 A1
US 2005/0108208 A1
US 2006/0031333 A1
US 2006/0056317 A1

Feb. 10, 2004
Sept. 23, 2004
May 19, 2005
Feb. 9, 2006
Mar. 16, 2006

THE REJECTIONS
1. The Examiner rejected claims 1, 6-9, 15, and 18-21 under 35 U.S.C. §
103(a) as unpatentable over Ellis, Aoki, O’Neill, and Manning. Ans.
3-13.2

2 Throughout this opinion, we refer to (1) the Appeal Brief (App. Br.) filed
October 26, 2009; (2) the Examiner’s Answer (Ans.) mailed February 3,
2010; and (3) the Reply Brief (Reply Br.) filed March 29, 2010.
Appeal 2010-007361
Application 11/678,271

4
2. The Examiner rejected claims 2, 3, 16, and 17 under 35 U.S.C. §
103(a) as unpatentable over Ellis, Aoki, O’Neill, and Manning, as
applied to claims 1 and 15, and Drummond. Id. at 13-15.
3. The Examiner rejected claims 10-13 under 35 U.S.C. § 103(a) as
unpatentable over Ellis and O’Neill. Id. at 15-17.
4. The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Ellis and O’Neill, as applied to claim 11, and
Manning. Id. at 18.

OBVIOUSNESS REJECTION OVER ELLIS, AOKI, O’NEILL, AND
MANNING
Regarding representative claim 1, the Examiner finds that Ellis
teaches or suggests all of the limitations of claim 1, except that Ellis does not
teach or suggest that the user populates the reject list and that Ellis does not
teach or suggest that the honorable business and user lists are provided by
the internet service provider. Ans. 3-5. The Examiner finds, however, that
Aoki teaches or suggests that the honorable business and user lists are
provided by the internet service provider. Id. at 4-5. Further, although the
Examiner acknowledges that Ellis and Aoki do not teach or suggest that the
user populates the reject list, the Examiner finds that O’Neill teaches or
suggests this missing limitation. Id. at 5. In addition, although Ellis, Aoki,
and O’Neill teach or suggest providing spam filtering services, including the
use of honorable business and user lists, this combination of references does
not teach or suggest that service providers provide these services to their
account holders/subscribers. Id. at 6. Nevertheless, the Examiner finds that
Manning teaches or suggests the provision of such services. Id. The
Appeal 2010-007361
Application 11/678,271

5
Examiner applies these same findings to reject independent claims 15 and
21, which include corresponding limitations. Id. at 7-9 (claim 15), 10-13
(claim 21). Moreover, the Examiner contends that this combination of
references teaches or suggests all of the additional limitations of claims 6-9,
which depend from claim 1 (Id. at 6-7), and of claims 18-20, which depend
from claim 15 (Id. at 10).
Appellant raises five arguments in response to the Examiner’s
rejection of claim 1. App. Br. 8-14. First, Appellant argues that Ellis fails to
teach or suggest a contact list or a reject list that is populated and controlled
by the user. Id. at 9-10. Second, Appellant argues that Ellis fails to teach or
suggest identifying an honorable business or user list in the manner recited
in claim 1. Id. at 10-12. Third, with respect to Aoki, Appellant argues that
Aoki fails to teach or suggest the limitations of claim 1 that are missing from
Ellis. Id. at 12. Fourth, with respect to O’Neill, Appellant argues that
O’Neill fails to teach or suggest the limitations of claim 1 that are missing
from Ellis and Aoki. Id. at 12-13. Fifth, with respect to Manning, Appellant
argues that Manning fails to teach or suggest the limitations of claim 1 that
are missing from Ellis, Aoki, and O’Neill. Id. at 13-14. Appellant raises the
same arguments with respect to claims 15 and 21 that are set forth above
with respect to claim 1. Id. at 14-16. Finally, with respect to dependent
claims 6-9 and 18-20, Appellant argues that O’Neill fails to teach or suggest
the additional limitations of those claims. Id. at 16-17.
ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 1 by
finding that Ellis, Aoki, O’Neill, and Manning, collectively, would have
taught or suggested the disputed limitations of claim 1?
Appeal 2010-007361
Application 11/678,271

6
(2) Under § 103, has the Examiner erred by finding that Ellis, Aoki,
O’Neill, and Manning, collectively, would have taught or suggested:
(a) “performing an authorization process for some e-mail messages to
determine whether an e-mail message from a sender will be sent to the user,”
as recited in claims 6 and 18?
(b) “[performing] the authorization process includes sending
a return message to the sender requesting sender information, sending a
message to the user with the sender information, approving or rejecting the
message by the user, and sending the message or discarding the message
depending on the user’s decision,” as recited in claims 7 and 19?
(c) “performing the authorization process includes performing the
authorization process if the sender is on the honorable business list, but the
user does not have the honorable business list feature activated, the sender is
on the honorable user list, but the user does not have the honorable user list
activated, or the sender is not on any of the contact list, the reject list, the
honorable business list or the honorable user list,” as recited in claims 9 and
20?
ANALYSIS
1. Independent Claims 1, 15, and 21.
a. Claim Construction.
We begin by construing the disputed limitations of claim 1. In
construing these limitations, we apply the broadest reasonable meaning of
the words in their ordinary usage, as those words would be understood by
one of ordinary skill in the art, taking into account any definitions supplied
by Appellant’s Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). In particular, we note that, during the prosecution of this application,
Appeal 2010-007361
Application 11/678,271

7
Appellant amended claim 1 to describe that “said internet service provider
providing a plurality of lists that are solely populated and controlled by
either the internet service provider or a particular user.” Request for
Continued Examination 2-3 (filed Sep. 26, 2008; emphasis added).3 A
pertinent definition of the combination of the words “either” and “or” is
“restricted in choice to two options.” RANDOM HOUSE WEBSTER’S COLLEGE
DICTIONARY 422 (2d Random House ed. 1999). Further, in claim 1,
Appellant describes each list as either “service provider controlled” or “user
controlled,” and then emphasizes that each list is populated and controlled
“by the internet service provider” or “by the user.” See also Claims 15 and
21.4 The use of this language in the amended claim makes clear that each
list is populated and controlled by only one of the user or the service
provider. This does not mean that other entities also might populate and
control the user controlled lists and the service provider controlled lists5 (see
App. Br. 10; Ans. 22-23), but we conclude that each recited list is populated
and controlled by only one of either the service provider or the user.
We next construe the meaning of the phrase “populated and
controlled” to determine what action the service provider or the user takes
with respect to the identified lists. With the exception of original claim 4,
now cancelled, the word “populate” does not appear in the Specification, as
filed. Nevertheless, we understand that this word has a relevant meaning in

3 Appellant later amended claim 1 to remove the word “solely” from this
phrase. Response 2 (filed March 11, 2009).
4 Although claim 10 is rejected by a different combination of references, as
discussed below, similar language appears in claim 10, and that language is
construed similarly.
5 See supra note 3.
Appeal 2010-007361
Application 11/678,271

8
the field of art. See, e.g., O’Neill, ¶ [0001] (“to populating such white
lists”). A pertinent definition of the word “populate” is “[t]o import
prepared data into a database from a file using a software procedure rather
than by having a human operator enter individual records.” MICROSOFT
CORP., MICROSOFT COMPUTER DICTIONARY 412 (5th ed. 2002). Although
populate is not expressly defined in the Specification, this dictionary
definition is consistent with the use of the word “populated” in the
originally-filed dependent claim 4.
In the Specification, Appellant describes that user controlled access
lists, such as lists including reject lists, “allow the user to determine which
e-mails will be passed to the user and which e-mails will be rejected.” Spec.
¶ [0002]; see also Spec. ¶¶ [0019] (access list including contact list), [0020]
(access list including reject list). With respect to service provider controlled
access lists, such lists only may “allow the service provider to determine
which e-mails may be passed to the user.” Spec. ¶ [0002]; see also Spec. ¶¶
[0021]-[0022] (describing the honorable business and user lists). Appellant
further describes that a user’s e-mail contacts may be classified into groups
or circles including “family members, friends, business associates, etc.”
Spec. ¶ [0012]. Thus, these groups or circles may be used to “populate,”
e.g., to import prepared data to, lists, and the service provider or the user
may “control,” e.g., “to exercise restraint or direction over; dominate,
regulate, or command,” these lists. RANDOM HOUSE WEBSTER’S COLLEGE
DICTIONARY 290. Therefore, we construe the phrase “populated and
controlled” in claim 1 to mean that the user imports data to the contact and
reject lists and, thereafter, regulates the content and use of those lists and
Appeal 2010-007361
Application 11/678,271

9
that the service provider imports data to the honorable business and user lists
and, thereafter, regulates the content and use of those lists.
b. Teaching or Suggestion of Disputed Limitations.
Based on the record before us, we find no error in the Examiner’s
rejection of representative claim 1. Initially, Appellant argues that Ellis fails
to teach or suggest a contact list or a reject list that is populated and
controlled by the user. App. Br. 9-10; Reply Br. 2. The Examiner finds that
Ellis’s allow list 27 teaches or suggests Appellant’s contact list. Ans. 3, 19.
Appellant argues, however, that, although the user may control, e.g., edit,
allow list 27, allow list 27 is “populated” by the service provider, rather than
by the user. App. Br. 9. Appellant further argues that Ellis’s teaching
regarding provisional list 25 demonstrates this distinction. Id. We disagree.
As the Examiner notes, Ellis teaches that using allow file 29 to route
e-mails to allow list 27 “requires the user to predefine all sender addresses
that will be approved.” Ans. 19 (citing Ellis, ¶ [0027]); see also Ellis, ¶¶
[0025]-[0026] (describing routing addresses to allow list 27). Further,
referring to Figure 6, Ellis teaches that the user may “add” sender addresses
to allow list 27. Ans. 19; see also Ellis, ¶ [0044] (“an example of how
sender addresses may be added to the allow database”). Thus, we agree with
the Examiner that the user’s predefining of sender addresses and adding of
sender addresses to allow list 27 teaches or suggests that the user populates,
as well as controls, a contact list, such as that recited in claim 1.
Moreover, Appellant’s argument that Ellis’s provisional list 25
suggests otherwise is not persuasive. App. Br. 9. Ellis’s provisional list 25
acts as a holding area for e-mails from senders who are not on allow list 27,
but which e-mails include an authorization code, granted by the user. Ans.
Appeal 2010-007361
Application 11/678,271

10
20-21; see Ellis, ¶¶ [0027]-[0028]; Fig. 2. Although the account manager
may route such e-mails to provisional list 25, the user indirectly populates
this temporary and alternative destination for e-mails that are not expressly
allowed or rejected. Ans. 21. According to Ellis’s example, the user
provides the senders with the authorization code (Ellis, ¶ [0027]) and the
user reviews the e-mails in provisional list 25 to determine their ultimate
destination, e.g., inbox 33 or trash 43 (id. at ¶ [0028]). Thus, through
provisional list 25, the user may implicitly populate and control the contact
list.
Second, Appellant argues that Ellis fails to teach or suggest
identifying an honorable business or user list in the manner recited in claim
1. App. Br. 10-12; Reply Br. 2-3. More specifically, Appellant argues that,
if a user populates and controls Ellis’s allow list 27, as found by the
Examiner, it would be illogical for honorable business and user lists to be
maintained separate from allow list 27. Reply Br. 2. We are not persuaded.
The Examiner finds that Ellis teaches that:
the allow database may indicate that any sender from a
particular domain is allowed. In this way a user may set the
allow list to allow any sender from within a particular company
or from a particular group to send them an e-mail without
having to particularly identify each and every specific full
e-mail address.

Ellis, ¶ [0031] (emphasis added); see Ans. 4, 23-24. Further, as Appellant
notes, Ellis teaches that users may wish to be protected from receiving
unwanted e-mails. Reply Br. 2-3; see also Ans. 3 (citing Ellis, ¶¶ [0006]-
[0007] (discussing unwanted e-mails)). Appellant describes “honorable
businesses [as] those businesses that may have legitimate business with a
Appeal 2010-007361
Application 11/678,271

11
user,” but does not limit this description to business that do not send spam.
Spec., ¶ [0021]. With respect to honorable users, Appellant states that “[t]he
service provider also assigns an honorable user status to each user that has
an account with the service provider who does not send spam e-mail
messages.” Id. at ¶ [0022]. Nevertheless, we find that neither of these
descriptions is strictly limiting. More importantly, the language of claim 1
merely requires that honorable businesses and users include, but are not
limited to, businesses and users “that do not send spam e-mail messages.”
Thus, we are not persuaded that the companies and groups described in Ellis
fail to teach or suggest Appellant’s honorable businesses and users.
Moreover, we are not persuaded that it would be “illogical” for a user to use
alternative methods for identifying allowable e-mails, such as identifying
allowable senders individually, by company, or by group. See Reply Br. 2-3
Third, with respect to Aoki, Appellant argues that Aoki fails to teach
or suggest that honorable business and user lists are provided by the internet
service provider. App. Br. 12. Although Ellis teaches that the user, rather
than the service provider, populates and controls allow list 27 with senders
from particular companies or particular groups, the Examiner finds that
Aoki teaches or suggests that the service provider may take these actions.
Ans. 24-25, 28-29. In particular, Aoki states that methods of spam
management may be provided by one or more servers of an Internet service
provider. Id. (citing Aoki, ¶ [0069]). Therefore, we find that Ellis and Aoki
collectively teach or suggest that the service provider may populate and
control lists to include senders from particular companies or particular
groups and, consequently, that these references teach or suggest the disputed
limitations relating to the honorable business and user lists of claim 1.
Appeal 2010-007361
Application 11/678,271

12
Fourth, with respect to O’Neill, Appellant argues that O’Neill fails to
teach or suggest that a user populates a reject list. App. Br. 12-13. O’Neill
describes a Decision Notice 24 that is generated in response to a Request
Form 22 from a sender, requesting that the sender be added to a White List
26, e.g., a contact list. O’Neill, ¶¶ [0029]. Alternatively, the sender may be
added to a “black list.”6 Id. Appellant argues that O’Neill does not teach or
suggest the contact or reject lists or the honorable business or user lists of
claim 1 and, thus, fails to teach or suggest the limitations of claim 1 that
allegedly are missing from Ellis and Aoki. App. Br. 12. Nevertheless, as
discussed above, we are persuaded that Ellis and Aoki teach or suggest the
limitations of claim 1, except for adding entities to the reject list. Ans. 4-5.
As the Examiner makes clear, O’Neill is relied upon to supply this missing
limitation. Id. at 5, 31 (response to Argument O), 44 (response to Argument
EE); see also Ans. 12 (regarding claim 21).7 On this record, we do not find
that the Examiner erred in finding that the O’Neill teaches or suggests that a
black list corresponds to a user controlled reject list, that the addition of an
E-mail Sender 10 to a black list “populates” the black list, and that the user
controls the “black list.” See O’Neill, ¶¶ [0022], [0023], [0029], [0030].

6 A pertinent definition of the term, “black list,” is “a list of persons who are
under suspicion, disfavor, or censure, or who are not to be hired, served or
otherwise accepted.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY
138.
7 Although the Examiner applies O’Neill in the rejection of claim 15, claim
15 does not describe “a user controlled reject list.” Instead, the Examiner
finds that O’Neill’s White List 26 provides an alternative teaching or
suggestion of Appellant’s service provider controlled honorable business
and user lists. Ans. 8-9.
Appeal 2010-007361
Application 11/678,271

13
Fifth, with respect to Manning, Appellant argues that Manning fails to
teach or suggest that an honorable user list includes users that have accounts
with a service provider. App. Br. 13-14. Appellant argues that the
Examiner makes vague economic arguments regarding Manning and that it
is unclear “what Manning is allegedly teaching and how Manning is
teaching it.” Id. Appellant, however, misunderstands the limited purpose
for the Examiner’s reliance on Manning. Id. The Examiner states that
“Manning shows where service providers provide value-added services to
their account holders/subscribers.” Ans. 6 (citing Manning, ¶ [0046]).
Thus, the Examiner relies on Manning to provide the limitation that the
honorable user list includes “users that have accounts with the service
provider” and a reason to provide recited services to service provider
customers. Id. at 32-34. Therefore, we are persuaded that the Examiner’s
combination of the applied references is both appropriate and persuasive.
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of: (1) independent claim 1 and (2) independent claims 15 and
21, which recite commensurate limitations (Ans. 7-9, 10-13). Therefore, we
sustain the rejections of claims 1, 15, and 21.
2. Claims 6-9 and 18-20.
With respect to dependent claims 6-9 and 18-20, Appellant argues that
O’Neill fails to teach or suggest the additional limitations. App. Br. 16-17.
Again, we are not persuaded.
Claims 6 and 18 recite the additional step of “performing an
authorization process for some e-mail messages to determine whether an e-
mail message from a sender will be sent to the user,” in the claimed method.
(Emphasis added.) Because Appellant alleges that the e-mail is “ultimately”
Appeal 2010-007361
Application 11/678,271

14
delivered, Appellant argues that O’Neill does not teach or suggest an
authorization process. Id. at 16. We disagree.
As the Examiner notes, O’Neill clearly describes that a message from
an unknown sender is not delivered to the user until the sender sends
Request Form 22, and a Confirmation Notice is 32 is generated by an E-Mail
Protection Service 16, and Decision Notice 24 is returned to the sender.
Ans. 36-37 (citing O’Neill, ¶ [0026], [0028]). Moreover, we note that
Request Form 22 may result in the sender being added to White List 26 or to
a black list. O’Neill, ¶ [0029]. Thus, if the sender is added to the black list,
the sender’s e-mail message is not ultimately delivered to the user, and we
are not persuaded by Appellant’s arguments.
Claims 7 and 19 depend from claims 6 and 18, respectively, and recite
that “the authorization process includes sending a return message to the
sender requesting sender information, sending a message to the user with the
sender information, approving or rejecting the message by the user, and
sending the message or discarding the message depending on the user’s
decision.” (Emphasis added.) As with claims 6 and 18, Appellant argues
that O’Neill does not describe withholding an e-mail message. App. Br. 16-
17. For the reasons set forth above, we disagree. Moreover, as the
Examiner notes, O’Neill teaches that, when a message is received from an
unknown sender, a Spam Notice 30 is returned to the sender, and Spam
Notice 30 “comprises instructions and URL string that enables the Email
Sender 10 to use a Web browser to view and submit a Request Form 22.”
Ans. 38 (citing O’Neill, ¶ [0025]). As noted above, the sender’s message
will be sent to White List 26, e.g., accepted, or to the black list, e.g.,
rejected, depending upon the user’s decision. Id. at 39. Thus, the Examiner
Appeal 2010-007361
Application 11/678,271

15
demonstrates that O’Neill teaches or suggests the additional limitations of
claims 7 and 19.
Finally, claims 9 and 20 depend from claims 6 and 18, respectively,
and recite that “performing the authorization process includes performing
the authorization process if the sender is on the honorable business list, but
the user does not have the honorable business list feature activated, the
sender is on the honorable user list, but the user does not have the honorable
user list activated, or the sender is not on any of the contact list, the reject
list, the honorable business list or the honorable user list.” Appellant relies
solely on the foregoing arguments regarding claims 6, 7, 18, and 19 in
responding to this rejection. App. Br. 17. For the reasons set forth above,
we find those arguments unpersuasive.
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection (1) of claims 6, 7, 9, and 18-20 and (2) of claim 8, which
depends from claim 6 and was not separately argued with particularity.
Therefore, we sustain the rejections of claims 6-9 and 18-20.

OBVIOUSNESS REJECTION OVER ELLIS, AOKI, O’NEILL,
MANNING, AND DRUMMOND
As noted above, the Examiner finds that Ellis, Aoki, O’Neill, and
Manning teach or suggest all of the limitations of claims 2, 3, 16, and 17,
except for “holding the message and performing an authorization process to
determine whether the user wants to receive the message,” if the sender is
not on the honorable business or user list. Ans. 13-15, 40. Appellant argues
that (1) to the extent the Examiner finds that Ellis, Aoki, O’Neill, and
Manning do not teach or suggest “holding the message,” the Examiner
Appeal 2010-007361
Application 11/678,271

16
admits that claims 6 and 18 are distinguishable over the applied combination
of references; (2) Ellis, Aoki, O’Neill, and Manning do not teach or suggest
all of the limitations of independent claims 1 and 15; and (3) Drummond
fails to teach or suggest an authorization process. App. Br. 18-19. We are
not persuaded.
As the Examiner correctly notes, unlike claims 2, 3, 16, and 17,
claims 6 and 18 do not recite “holding the message.” Ans. 40. Thus,
Appellant’s arguments are not commensurate with the scope of the invention
recited in claims 6 and 18, and those arguments are unpersuasive. Similarly,
we already have addressed above Appellant’s arguments that Ellis, Aoki,
O’Neill, and Manning do not teach or suggest all of the limitations of
independent claims 1 and 15, and those arguments are equally unpersuasive
here. Finally, we agree with the Examiner that Drummond is combined with
the other references to teach or suggest “holding the message.” Id.
Therefore, Appellant’s argument with respect to the “authorization process”
is addressed above with respect to claims 1, 6-9, 15, and 18-20 and does not
relate to the rejection of claims 2, 3, 16, and 17 based upon Ellis, Aoki,
O’Neill, Manning, and Drummond. Id. at 40-42.
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of claims 2, 3, 16, and 17. Therefore, we sustain the rejections
of claims 2, 3, 16, and 17.

OBVIOUSNESS REJECTIONS OVER ELLIS AND O’NEILL, ALONE
OR IN COMBINATION WITH MANNING
As noted above, claims 10-13 stand rejected under § 103(a) as
unpatentable over Ellis and O’Neill, and claim 14 stands rejected under
Appeal 2010-007361
Application 11/678,271

17
§ 103(a) as unpatentable over Ellis, O’Neill, and Manning. Ans. 15-18.
Each of the limitations of claim 10 is included in claim 1, except for
“performing an authorization process for determining whether an e-mail
message from a sender will be sent to the user if the sender is not on the
contact list or the reject list.” For the reasons set forth above, the Examiner
demonstrates that Ellis and O’Neill teach or suggest all of the limitations of
claim 10, which also are included in claim 1. Id. at 15-17; see also Ans. 42.
As with claim 6 discussed above, the Examiner relies on O’Neill to teach or
suggest the performance of an authorization process, as recited in claim 10.
Id. at 17. Moreover, as noted above, O’Neill’s White List 26 and black list
may correspond to the contact and reject lists, respectively, of claim 1 and,
consequently, of claim 10. Id. at 5, 8-9.
Although Appellant argues claim 11 separately, we note that claim 11
is substantially similar to claim 7. Consequently, the Examiner’s findings
with respect to the combination of Ellis and O’Neill regarding claim 7 are
equally applicable to the obviousness rejection of claim 11. See id. 44-45.
Similarly, although Appellant argues claim 14 separately, Appellant’s
argument is based solely on the application of the combined references to
the base claim of claim 14, i.e., independent claim 10. App. Br. 22-23.
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of: (1) independent claim 10; (2) dependent claim 11, which
recites commensurate limitations to claim 7; and (3) dependent claims 12-
14. Therefore, we sustain the rejections of claims 10-14.

CONCLUSION
The Examiner did not err in rejecting claims 1-3 and 6-21 under
Appeal 2010-007361
Application 11/678,271

18
§ 103.

DECISION
The Examiner’s decision rejecting claims 1-3 and 6-21 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).

AFFIRMED

kis