Ex Parte Martine et al

Patent Trial and Appeal Board

Mar 19, 2018

13716466 (P.T.A.B. Mar. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
131716,466
12256 7590
Adknowledge, Inc.
300 E. 39th Street
Suite 4E
FILING DATE
12/17/2012
03/21/2018
Kansas City, MO 64111
FIRST NAMED INVENTOR
Lawrence Paul MARTINE
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ADKl.333 5604
EXAMINER
OSMAN,RAMYM
ART UNIT PAPER NUMBER
2457
NOTIFICATION DATE DELIVERY MODE
03/21/2018 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):
docketing@mcciplaw.com
IP@v2.ventures
cbobonnie@v2.ventures
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAWRENCE PAUL MARTINE,
JEREMY MATTHEW HOGGATT, and NICHOLAS DELORME
Appeal2017-010799
Application 13/716,4661
Technology Center 2400
Before JAMES R. HUGHES, CATHERINE SHIANG, and
SCOTT E. BAIN, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 2 and 4-6, which constitute all claims pending
in the application. Claim 3 has been canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Adknowledge, Inc. Br. 3.
Appeal2017-010799
Application 13/716,466
STATEMENT OF THE CASE
The Claimed Invention
Appellants' claimed invention relates to email advertising, and
specifically, creating customized graphics for individualized advertising.
Abstract; see also Spec. ,-i,-i 4-7, 20. Claim 1 is the sole independent claim,
and reads as follows:
1. A computer-implemented method for providing content
to an electronic communication over a communications
network comprising:
a computer system:
a) receiving an encrypted identifier corresponding to an e-
mail address of an intended recipient of an electronic
communication;
b) assigning a classification to the encrypted identifier,
each time an encrypted identifier is received;
c) obtaining i) data for a content-supporting graphic, ii)
template data for at least one template for supporting the content-
supporting graphic, and iii) data for content requests that
automatically activate when the electronic communication is
activated, for the electronic communication to be sent by a sender
entity to the intended recipient computer over the
communications network, the content supporting graphic data
based on the assigned classification of the received encrypted
identifier; and,
d) providing the data for the content-supporting graphic
for the electronic communication, the template data, and the
content requests data, to a sender entity, the sender entity for
configuring i) the content-supporting data into the at least one
template of the template data, and ii) the content requests data
into the electronic communication, and, for the for sending the
electronic communication to the intended recipient computer.
Br. 9 (Claims App.) (emphasis added).
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Appeal2017-010799
Application 13/716,466
Prior Art
The Examiner relies upon the following prior art:
Muttitt et al.
Lynn et al.
Mork el
Lee et al.
US 2003/0115272 Al
US 2005/0038861 Al
US 7,007,068 B2
US 2008/0162649 Al
The Rejection on Appeal
June 19, 2003
Feb. 17,2005
Feb.28,2006
July 3, 2008
Claims 1, 2, and 4-6 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Muttitt et al. ("Muttitt"), Lynn et al. ("Lynn"),
Lee et al. ("Lee") and Morkel. Final Act. 3-7.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments presented in this appeal. Arguments which Appellants could
have made but did not make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv). On the record before us, we are not persuaded
of error, and we adopt as our own the findings and reasons set forth in the
rejection from which the appeal is taken and in the Examiner's Answer. We
provide the following discussion for highlighting and emphasis.
Appellants do not dispute the Examiner's findings as to the teachings
ofMuttitt, Lynn, Lee, and Morkel (i.e., the cited references). Br. 5-7
(reiterating the Examiner's findings as to each reference, but not identifying
alleged error in the findings). Rather, Appellants' sole argument is that
applying Morkel' s teaching of encrypted email addresses to Muttitt, Lynn,
and Lee would render the combination inoperative, and would render "at
least Muttitt" unfit for its intended purpose. Br. 7. Accordingly, Appellants
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Appeal2017-010799
Application 13/716,466
argue the Examiner erred in combining Morkel with the other three
references. 2 Br. 7. We are not persuaded.
In the Answer, the Examiner explains "Morkel was relied upon
simply to demonstrate that encrypted identifiers" corresponding to an email
address "are old and well known in the art." Ans. 6-7. Morkel states,
"anonymity [of users or subscribers to a list] is assured by correlating
contact information in the provider's database with encrypted subscriber
ID's, such as hashed e-mail addresses." Morkel Abstract (emphasis added).
The Examiner reasoned that it would have been obvious to one of ordinary
skill in the art to apply this well known feature of encrypting email addresses
into the combination of Muttitt, Lynn, and Lee (all of which relate to
managing email systems), "to gain the ability to protect anonymity of
subscribers" as taught in Morkel. Final Act. 6.
Appellants' Brief does not attempt to rebut the Examiner's findings,
and no reply brief was filed. Appellants only assert that, because "the e-mail
vendor subsystem [of Muttitt, or the combination,] would not be able to read
an encrypted patron email address," the combination would be inoperative
(and Muttitt unfit for its intended purpose). Br. 7. As the Examiner finds,
however, to the extent Appellants' argument is referring to decryption, the
claims do not recite decrypting any identifier, nor do they recite "sending a
communication to the email [address] of the intended recipient." Ans. 6.
Rather, the claims recite assigning a classification to the encrypted identifier,
and basing content-supporting graphic data on the assigned classification.
Id. Thus, Appellants' assertion regarding the abilities of "the e-mail vendor
2 Appellants argue all claims as a group, and we choose claim 1 as
representative. See 37 C.F.R. § 41.37(c)(l)(iv).
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Appeal2017-010799
Application 13/716,466
subsystem," even if assumed to be correct, does not support Appellants'
argument that the Examiner erred in combining the references.
Appellants provide no other evidence or argument to rebut the
Examiner's findings and reasoning in support of the combination, and the
legal conclusion of obviousness. Final Act. 4-6. As the Examiner finds, the
references are directed to the common objective of improving email systems
and related communications databases. Id.; Innovention Toys LLC v. MGA
Entertainment Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011); see id. at 1322-23
(finding no error in combining references that share the "same purpose,"
"goal," or "objective"). Appellants do not demonstrate that combining the
features would have been "uniquely challenging or difficult for one of
ordinary skill in the art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int'! Co., 550 U.S. at 418-
19). Accordingly, we are not persuaded of error.
For the foregoing reasons, we sustain the Examiner's obviousness
rejection of claims 1, 2, and 4-6.
DECISION
We affirm the Examiner's decision rejecting claims 1, 2, and 4-6.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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