Ex Parte Oliver et al

Patent Trial and Appeal BoardFeb 3, 2014

11927458 (P.T.A.B. Feb. 3, 2014)

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. 11/927,458 10/29/2007 Jonathan J. Oliver DELL-017COA 6035 28661 7590 02/03/2014 Lewis Roca Rothgerber LLP 2440 W. El Camino Real, 6th Floor Mountain View, CA 94040 EXAMINER COULTER, KENNETH R ART UNIT PAPER NUMBER 2445 MAIL DATE DELIVERY MODE 02/03/2014 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 JONATHAN J. OLIVER and ANDREW F. OLIVER ____________________ Appeal 2011-007505 Application 11/927,458 1 Technology Center 2400 ____________________ Before JOSEPH L. DIXON, THU A. DANG, and JAMES R. HUGHES, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL 1 Application filed October 29, 2007, which is a continuation application claiming benefit of U.S. 10/869,507, filed June 15, 2004, claiming benefit of provisional application U.S. 60/543,300, filed February 9, 2004. The real party in interest is SonicWALL, Inc. Appeal 2011-007505 Application 11/927,458 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s final decision rejecting claims 1 and 29-47. Claims 2-28 have been canceled. (App. Br. 4.) 2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellants’ Invention The invention at issue on appeal concerns computer-readable media, apparatuses, and methods for identifying strings in an e-mail message by associating the string with a term of interest (guarded term) and a probability (cost of association) that the string is a mutation of the term of interest. (Spec. 4, l. 20 to 5, l. 4; Abstract.) Representative Claim Independent claim 1, reproduced below, with disputed limitations italicized, further illustrates the invention: 1. A method of identifying strings in an e-mail message, the method comprising: identifying a text string in the e-mail message; determining that the text string is not a safe string; associating the text string with a guarded term from a database in memory, the guarded term being a string of special interest to a user; 2 We refer to Appellants’ Specification (“Spec.”); Appeal Brief (“App. Br.”) filed May 11, 2009; First Supplemental Appeal Brief (“1 st Supp. App. Br.”) filed July 14, 2009; Second Supplemental Appeal Brief (“2 nd Supp. App. Br.”) filed December 28, 2009; and Reply Brief (“Reply Br.”) filed March 14, 2011. We also refer to the Examiner’s Answer (“Ans.”) mailed January 12, 2011. Appeal 2011-007505 Application 11/927,458 3 evaluating a cost of the association based on a probability that the text string is a mutation of the associated guarded term; and determining a match if the cost of association meets a predetermined threshold. Rejection on Appeal The Examiner rejects claims 1 and 29-47 under 35 U.S.C. § 102(e) as being anticipated by U.S. Patent App. Pub. No. 2005/0108340 A1, published May 19, 2005 (filed May 13, 2004, claiming benefit of provisional application U.S. 60/471,242, filed May 15, 2003) (“Gleeson”). ISSUE Based on our review of the administrative record, Appellants’ contentions, and the Examiner’s findings and conclusions, the pivotal issue before us follows: Is Gleeson a proper prior art reference – does Gleeson lack proper written description support in the provisional application to which it claims benefit for the purportedly anticipating disclosure? ANALYSIS Based on Appellants’ arguments (2 nd Supp. App. Br. 5-7), we select independent claim 1 as representative of Appellants’ arguments and groupings with respect to claims 1 and 29-47. 37 C.F.R. § 41.37(c)(1)(vii) (2004). Claim 1 Appellants contend that Gleeson is not prior art. (2 nd Supp. App. Br. 5-7; Reply Br. 1-5.) Specifically, Appellants contend that the “Gleeson Appeal 2011-007505 Application 11/927,458 4 publication lacks proper written description support vis-à-vis its related provisional application” in that “the Gleeson provisional fails to disclose ‘determining ... a resemblance between the data characterizing the incoming email message’ and whether such a resemblance with ‘any data item from the set of data characterizing spam messages exceeds a threshold’ and identifying a ‘cost of [an] association.’” (2 nd Supp. App. Br. 5-6.) Appellants further contend that “the algorithm of Gleeson operates to identify similar spam messages and then to cluster those spam messages following a comparison of the same” and “[s]pam v. spam comparison to arrive at a resulting cluster of spam is not what is claimed by the Appellants.” (Reply Br. 3.) Additionally, Appellants contend that “[t]he subsequent discussion concerning a mailwall and a undeterminable ‘BLOC’ also fails to meet the requirements of clarity and specificity as set forth in Hyatt v. Boone.” (Reply Br. 3.) Appellants reiterate these arguments with respect to the disclosure of the Sputnik module in the provisional application. (Reply Br. 4.) Appellants also present similar arguments for the “‘cost of association’ claim language” – asserting that the “Examiner fails to reconcile how the ‘cost of association’ is the same as the ‘comparison’ of spam messages as discussed above.” (Reply Br. 5.) Finally, Appellants make a generalized argument that it is improper to address § 112, first paragraph support for the first time on appeal. The Examiner explains that the Gleeson provisional application describes a resemblance algorithm which calculates a sketch of each document and compares the document sketches to e-mail messages to determine if a threshold of resemblance is exceeded. (Ans. 8.) The Appeal 2011-007505 Application 11/927,458 5 Examiner also explains that the definition of cost of association is the probability (likelihood) that the guarded term is represented in the message (Ans. 10 (quoting Spec. 6, ¶ 3)) and further explains that the Gleeson provisional application describes a similarity (resemblance) measure (Ans. 10-11). Upon consideration of the evidence on this record and each of Appellants’ contentions, we find that the preponderance of evidence on this record supports the Examiner’s findings and ultimate conclusion that the Gleeson provisional application (60/471,242) supports the Gleeson reference (2005/0108340 A1) which anticipates the disputed features of claim 1. Accordingly, we sustain the Examiner’s rejection of claim 1 for the reasons set forth in the Answer, which we incorporate herein by reference. (Ans. 3- 11.) Initially, Appellants do not dispute the Examiner’s findings with respect to Gleeson. (2 nd Supp. App. Br. 5-7.) Instead, Appellants contend that Gleeson is not a proper prior art reference because Gleeson lacks proper written description support in the provisional application to which it claims benefit for the purportedly anticipating disclosure. (Id.) Thus the sole issue before us is whether Gleeson’s provisional application (60/471,242 – the “ʼ242 App.”) supports the anticipating disclosure of Gleeson. With respect to Appellants’ “cost of association” claim terminology, we agree with the Examiner that this terminology means a similarity (resemblance) measure. Claim 1 recites “evaluating a cost of the association based on a probability that the text string is a mutation of the associated guarded term” (claim 1). Appellants’ Specification explains that “the cost indicates how likely the guarded term is represented in the message” (Spec. Appeal 2011-007505 Application 11/927,458 6 6, ll. 14-15). Appellants’ Specification further explains that “[i]n some embodiments, the score measures the amount of mutation required for transforming the guarded term to the suspicious string . . . . [and] [i]n some embodiments, the score measures the probability that the guarded term is represented in the suspicious string” (Spec. 9, ll. 15-19). We also agree with the Examiner that the ʼ242 App. supports Gleeson’s anticipating disclosure. Specifically, the ʼ242 App. describes the Sputnik module that includes: [A] script application [that] will enable filtering based on the enhanced filtering algorithm . . . . This filtering algorithm uses a technique called Locality Sensitive Hashing. It generates an arbitrarily-sized “sketch” of a document. The sketch ([i.e.], the document signature) is then compared to the set of sketches of known spam. The comparison is a similarity measure, not an exact match. (Ans. 9 (quoting ʼ242 App., p. 5, § 6.3.3).) The ʼ242 App. further describes the algorithm (above) – the application describes a “resemblance algorithm” which compares a sketch of each document (a sketch of the body of each e- mail message passing through the module (see ʼ242 App., p. 5, § 6.3.3 (supra))) to sketches of known spam and determines if the document sketch exceeds a threshold of resemblance with respect to the sketches of known spam. (Ans. 8-9 (citing ʼ242 App., p. 5, § 6.3.3 and p. 17 (“Algorithm”)).) Thus, we find that the ʼ242 App. supports Gleeson’s anticipating disclosure – e.g., “comparing the signature of each incoming email message with the signatures of spam messages stored in the spam database 304 and determining, based on this comparison, whether an incoming email message is similar to any spam message” (Gleeson, ¶ [0045]). Appeal 2011-007505 Application 11/927,458 7 With respect to Appellants’ generalized contentions that it is improper to address § 112, first paragraph, support for the first time on appeal, we note Appellants filed their Notice of Appeal concurrently with their Amendment After Notice of Appeal (including these contentions for the first time) on March 11, 2009. Further, issues of a procedural nature, such as these, are addressed by way of petition to the Director rather than on appeal to the Board. Appellants’ argument is outside our jurisdiction. Therefore, for all the reasons supra, Appellants do not persuade us of error in the Examiner’s anticipation rejection of representative independent claim 1, independent claims 40 and 46, and dependent claims 29-39, 41-45, and 47 (dependent on claims 1, 40, and 46, respectively), not separately argued with particularity. Accordingly, we affirm the Examiner’s obviousness rejection of claims 1 and 29-47. CONCLUSION Appellants have not shown that the Examiner erred in rejecting claims 1 and 29-47 under 35 U.S.C. § 102(e). DECISION We affirm the Examiner’s rejections of claims 1 and 29-47. 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