Ex Parte Waugh et al

Patent Trial and Appeal Board

Aug 27, 2013

10379528 (P.T.A.B. Aug. 27, 2013)

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.)
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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).
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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:
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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.
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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).
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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
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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).
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§ 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.
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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.
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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

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