Ex Parte Waugh et alDownload PDFPatent Trial and Appeal BoardAug 27, 201310379528 (P.T.A.B. Aug. 27, 2013) Copy Citation 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. 10/379,528 03/06/2003 Donald Waugh 33500-2034 8733 64691 7590 08/28/2013 BENNETT JONES LLP 3400 ONE FIRST CANADIAN PLACE PO BOX 130 TORONTO, ON M5X 1A4 CANADA EXAMINER GYORFI, THOMAS A ART UNIT PAPER NUMBER 2435 MAIL DATE DELIVERY MODE 08/28/2013 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 DONALD WAUGH, MICHAEL ROBERTS, and VIATCHESLAV IVANOV1 ____________________ Appeal 2011-003104 Application 10/379,528 Technology Center 2400 ____________________ Before MARC S. HOFF, CAROLYN D. THOMAS, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 23-30. Appellants have previously canceled claims 1- 22. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The Real Party in Interest is Echoworx Corporation. (App. Br. 1.) Appeal 2011-003104 Application 10/379,528 2 STATEMENT OF THE CASE 2 The Invention Appellants’ invention relates generally to secure delivery and receipt of data in a public key infrastructure (PKI), and relates more particularly to secure delivery and receipt of S/MIME encrypted data (such as electronic mail) using web and WAP browsers connected to the Internet. Spec. p. 1, ll. 7-10 (“Field of the Invention”). Exemplary Claim Claim 23 is an exemplary claim representing an aspect of the invention which is reproduced below (emphasis added): 23. A system for exchanging S/MIME compliant email via a communication network, said system comprising: a network-connected device configured for communication with a remote device via the communication network; said network-connected device including a browser, and said browser including an authentication component configured to authenticate one or more credentials associated with a user of said network-connected device, and said browser including a component responsive to said user for composing an email message; said browser including an encryption/decryption component configured for PKI transactions, and a S/MIME component linked to said encryption/decryption component and 2 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed June 9, 2010); Examiner’s Answer (“Ans.,” mailed Aug. 31, 2010); Final Office Action (“FOA,” mailed Sep. 9, 2009); and the original Specification (“Spec.,” filed Mar. 6, 2003). Appeal 2011-003104 Application 10/379,528 3 configured for converting said email message into a S/MIME compliant email; an email server comprising an email server component that receives, stores and transmits S/MIME compliant email, said email server and including a S/MIME component configured for deciphering the S/MIME compliant email at said remote device. Prior Art The Examiner relies upon the following prior art in rejecting the claims on appeal: TUMBLEWEED COMMUNICATIONS CORP. (hereinafter “Tumbleweed”) WO 00/42748 Jul. 20, 2000 Microsoft Corp. “Microsoft® Exchange 2000 Server Resource Kit” ©2000, Microsoft Press (hereinafter “Microsoft”). Rejections on Appeal 1. Claims 23-30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Tumbleweed. Ans. 2-3. 2. Claims 23-30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Tumbleweed and Microsoft. Ans. 2, 7. ISSUES Issue 1 Appellants argue (App. Br. 21-24) that the Examiner’s rejection of claim 23 under 35 U.S.C. § 103(a) as being unpatentable over Tumbleweed is in error. These contentions present us with the following issue: Appeal 2011-003104 Application 10/379,528 4 Did the Examiner err in finding that Tumbleweed teaches or suggests the limitation of “an email server comprising an email server component that receives, stores[,] and transmits S/MIME compliant email,” as recited in claim 23? Issue 2 Appellants argue (App. Br. 25) that the Examiner’s rejection of claim 23 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Tumbleweed and Microsoft is in error. These contentions present us with the following issue: Did the Examiner err in finding that the combination of Tumbleweed and Microsoft teaches or suggests the limitation of “an email server comprising an email server component that receives, stores[,] and transmits S/MIME compliant email,” as recited in claim 23? ANALYSIS § 103 Rejection over Tumbleweed We disagree with Appellants’ conclusions with respect to claim 23, and we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Arguments. However, we highlight and address specific findings and arguments regarding claim 23 for emphasis as follows. Appeal 2011-003104 Application 10/379,528 5 Appellants contend that Tumbleweed’s “delivery server” is a physical computer that contains certain software applications, and that if delivery server 104’s functionality can be accomplished by an arrangement that employs less hardware or less software than the actual delivery server 104 as defined by Tumbleweed, “then such an arrangement is not the same as the delivery server 104 in Tumbleweed, and may further possess certain advantages over the delivery server 104 taught by Tumbleweed.” App. Br. 22. Appellants further contend, “email server 404 is limited to the function of sending an unsecured notification message to an intended recipient to indicate the presence of a secure message in the secure message database.” Id. In addition, Appellants contend that “[n]otwithstanding what capabilities a present-day ‘e-mail server’ might have, it is clear that the e- mail server 404 as taught by Tumbleweed does not receive, store[,] or transmit the secure message, e.g. S/MIME e-mail messages.” App. Br. 23. In support of this contention, Appellants argue that “[i]f the e-mail server 404 taught by Tumbleweed could store, receive[,] and transmit secure messages, the complicated arrangement of functionality within the delivery server 104 disclosed and taught by Tumbleweed would not be necessary.” Id. (emphasis in original). By way of distinguishing the claimed invention over the teachings of Tumbleweed, Appellants argue, “the present invention utilizes an email server software component for the reception, storage[,] and transmittal of the secure e-mail messages . . . [and] Tumbleweed does not meet this limitation.” App. Br. 24 (emphasis in original). Appeal 2011-003104 Application 10/379,528 6 The Examiner points out “that the sole issue of contention pertains to whether or not the Tumbleweed reference, either alone or in conjunction with the teachings of Microsoft, could have plausibly been modified to use its email server component to receive, store, and send secure email.” Ans. 8. In this regard, the Examiner identified the key limitation as being “an email server comprising an email server component that receives, stores[,] and transmits S/MIME compliant email.” Ans. 9. Claim terms are to be given their broadest reasonable interpretation, as understood by those of ordinary skill in the art and taking into account whatever enlightenment may be had from the Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). In this case, Appellants’ Specification merely identifies email server 306 as operating in a well- known manner. Spec. p. 10:30-32 (citing Fig. 1, element 306). In attempting to distinguish Tumbleweed as admitted prior art in the Specification, Appellants characterize Tumbleweed by stating, “the intermediary host server intercepts emails sent by the sender and then passes a message on to the recipient's email account informing them that a secure email is waiting for them.” Spec. p. 3:22-30. However, contrary to Appellants’ contentions, the Examiner finds that Tumbleweed teaches or suggests that the delivery server is a single machine whose overall purpose is to receive, store, and send email, i.e., that Tumbleweed’s delivery server is an “email server” under the broadest reasonable interpretation of the term. Ans. 9. Further in this regard, the Examiner finds that Tumbleweed teaches “a single email-delivering machine comprising an email server component, just as required by the claims of the Appeal 2011-003104 Application 10/379,528 7 instant application . . . [and that] Tumbleweed’s ‘delivery server’ corresponds to the ‘email server’ of the claims, while Tumbleweed’s ‘email server’ corresponds to the ‘email server component’ of the claims.” Ans. 10. We agree with the Examiner’s characterization of Tumbleweed’s teachings cited above, and further agree with the Examiner’s finding that: Appellant has failed to consider general knowledge in the art that would lead one to recognize the general obviousness of this limitation. First, both Appellant and Tumbleweed recognize that the S/MIME protocol predates either invention, and both list a number of freely available public references that, when taken together, provide clear instructions for those of ordinary skill in the art to construct an email server with secure message capabilities. Id. Thus, we agree with the Examiner’s findings cited above that Tumbleweed teaches or suggests the disputed limitation in claim 23. Accordingly, Appellants have not provided sufficient evidence or argument to persuade us of any reversible error in the Examiner’s characterization of the cited art and related claim construction. Therefore, we sustain the Examiner’s obviousness rejection of independent claim 1. As Appellants have not provided separate arguments with respect to independent claims 27 and 29, we similarly sustain the Examiner’s rejection of these claims under 35 U.S.C. § 103(a). Further, Appellants have not provided separate arguments with respect to dependent claims 24-26, 28, and 30, we similarly sustain the Examiner’s rejection of these claims under 35 U.S.C. § 103(a). Appeal 2011-003104 Application 10/379,528 8 § 103 Rejection over Tumbleweed and Microsoft Appellants contend (App. Br. 25) that Microsoft does not make up for the deficiencies of Tumbleweed, identified, supra. Therefore, we find that Issue 1, discussed above, is also dispositive with respect to the unpatentability rejection of claims 23-30 over the combination of Tumbleweed and Microsoft. We disagree with Appellants’ conclusions with respect to claim 23, and we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Arguments. We again highlight and address specific additional findings and arguments regarding claim 23 for emphasis as follows. Appellants contend, there is no motivation for one skilled in the art to combine the teachings of Microsoft with Tumbleweed as alleged . . . [and that] if one skilled in the art were to combine the teachings as suggested . . . then this would defeat one of the key features of the Tumbleweed system, namely, the arrangement of a delivery server configured to intercept and deliver secure email messages in a separate and secure communication link. Ans. 25. We disagree with Appellants’ contentions. The U.S. Supreme Court has held that “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR Int’l Co. Appeal 2011-003104 Application 10/379,528 9 v. Teleflex Inc., 550 U.S. 398, 419 (2007). Instead, the relevant inquiry is whether the Examiner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). In this case, we find that the Examiner has met his burden by setting forth an “articulated reasoning” with a “rational underpinning” so as to render claim 23 unpatentable over the combination of Tumbleweed and Microsoft, that is: Clearly, one of ordinary skill in the art, upon perusal of the Microsoft reference, would discover that an email server component of an email server need not be limited to sending unsecured notification messages to the recipients of secure email but could easily be adapted to further provide said secure email upon request, contrary to the Appellant’s unsubstantiated argument (Appeal Brief, page 25). Ans. 17. Accordingly, we agree with the Examiner’s finding that Microsoft’s teaching of the Microsoft Exchange Server, in combination with Tumbleweed, teaches or suggests the disputed limitation in claim 23. CONCLUSIONS The Examiner did not err with respect to the unpatentability rejections of claims 23-30 under 35 U.S.C. § 103(a) over the prior art of record, and the rejection is sustained. DECISION The decision of the Examiner to reject claims 23-30 is affirmed. Appeal 2011-003104 Application 10/379,528 10 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 tj Copy with citationCopy as parenthetical citation