Ex Parte Willey

Patent Trial and Appeal BoardMar 15, 2016

12957634 (P.T.A.B. Mar. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/957,634 12/01/2010 90140 7590 03/17/2016 BlackBerry Limited (HFZ) 2200 University A venue East Waterloo, ON N2K OA 7 CANADA FIRST NAMED INVENTOR William Daniel Willey 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. 1578.1256 (30799-US-CNT) CONFIRMATION NO. 1479 EXAMINER SHAW, PELING ANDREW ART UNIT PAPER NUMBER 2444 NOTIFICATION DATE DELIVERY MODE 03/17/2016 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): patdoctc@fr.com portfolioprosecution@blackberry.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM DANIEL WILLEY Appeal2014-000774 Application 12/957 ,634 Technology Center 2400 Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134 from a Final Rejection of claims 21-30 and 41-60. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm-in-part. The invention relates to alerting a communication device user of entries in a mail message distribution list that are addressed to non-secure addresses (Spec. i-f 2). Claim 21, reproduced below, is illustrative of the claimed subject matter: Appeal2014-000774 Application 12/957,634 21. An apparatus comprising: a display configured to display at least a portion of a mail message; a detector configured to detect a characteristic of a distribution list entry of the mail message; and an annunciator configured to generate a visual annunciation when a distribution list entry has the characteristic detected by the detector. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Seifert Meister Beninato Willey US 2004/0068543 Al US 2004/0103162 Al US 2006/0098650 Al US 7 ,865,555 B2 REJECTIONS The Examiner made the following rejections: Apr. 8, 2004 May 27, 2004 May 11, 2006 Jan. 4, 2011 Claims 21, 24--28, 41--45, 48-53, and 56-60 stand rejected under the non-statutory doctrine of obviousness-type double patenting over claims 1- 18 of U.S. Patent 7,865,555 B2 to Willey. Claims 21, 24--26, 28-30, 41, 42, 48-51, and 59 stand rejected under 35 U.S.C Â§ 102(b) as being anticipated by Meister. Claims 22, 23, 46, and 47 stand rejected under 35 U.S.C Â§ 103(a) as being unpatentable over Meister and Beninato. Claims 27, 43--45, 52-58, and 60 stand rejected under 35 U.S.C Â§ 103(a) as being unpatentable over Meister and Seifert. 2 Appeal2014-000774 Application 12/957,634 ANALYSIS The Double Patenting Rejection Appellant does not present arguments traversing the double patenting rejection. Therefore, we affirm, proforma, the double patenting rejection of claims 21, 24-28, 41--45, 48-53, and 56-60. The Anticipation Rejection Claims 21, 24, 25, and 28-30 Appellant contends: Meister does not, however, describe an annunciator configured to generate a visual annunciation when a distribution list entry has the characteristic detected by the detector. To the contrary, Meister presents a confirmation box for every email address, regardless of any characteristic of a distribution list entry, as set forth in claim 21. Thus, the Examiner has erred. (App. Br. 7). We disagree with Appellant. In response to Appellant's arguments, the Examiner finds Meister's claim 1 discloses the limitation "a detector configured to detect a characteristic of a distribution list entry of the mail message," as recited in Appellant's claim 21, as follows: [A]n e-mail method, comprising: recogmzmg whether a complete electronic mail message having a valid recipient address is to be sent, after a send function has been initiated, from a sending side to a receiving side; alerting a system user on the sending side as to the message being sent; and allowing the user to authorize sending of the message. Here Meister describes detecting (recognizing) a characteristic of a distribution list entry (incomplete or improper addresses) of the mail message (before a message is sent). (Ans. 4). Further, the Examiner finds Meister's dialog box 30 in Figure 2 discloses the claimed "annunciator configured to generate a visual 3 Appeal2014-000774 Application 12/957,634 annunciation when a distribution list entry has the characteristic detected by the detector" (id.). In other words, Meister discloses detecting the characteristic of whether a mail message has a valid recipient, and generating a visual annunciation of this detected characteristic by providing a user with a dialog box in order to confirm the sending of the mail message. We agree with the Examiner's findings and are not persuaded the Examiner erred, particularly in the absence of arguments in Appellant's Reply Brief traversing the Examiner's finding that Meister's claim 1 discloses detecting a characteristic of a distribution list entry. We are, therefore, not persuaded the Examiner erred in rejecting claim 21, and claims 24, 25, and 28-30 not specifically argued separately. Claim 26 Appellant contends "Meister does not describe or suggest that the detector is configured to detect a domain of the mail message. In fact, the word 'domain' is not found anywhere in the specification of ivieister. '' (App. Br. 7). We disagree with Appellant. Meister discloses the following examples of potential recipients of an email: "smith.j im@companyx.com"; "ej ones@companyy.com"; "lisa@bbb.com" (Meister i-f 35). The Examiner finds, and we agree, that sending an email in Meister requires detecting the domain in the email address, for example, "companyx.com" in "smith.jim@companyx.com" (see Ans. 5). We are, therefore, not persuaded the Examiner erred in rejecting claim 26. 4 Appeal2014-000774 Application 12/957,634 Claims 41, 42, 48-51, and 59 The Examiner finds Meister discloses all the limitations of claims 41 and 59 for the same reasons as claims 21 and 25, and additionally because Meister discloses "wherein the unauthorized agent comprises one of a virus, a Trojan horse and an agent other than an owner of a mail client source of the message" and "recognizing ... a send operation initiated by an unauthorized agent" (Final Act. 6; Ans. 6-7; Meister, claims 3 and 5). Appellant contends the Examiner failed to present a prima facie case for claims 41 and 59 because the respective limitations "non-secure address" and "non-secure electronic message address" are not found in claims 21 and 25, even though the Examiner rejected claims 41 and 59 "for the same reasons as for claims 21 and 25." (App. Br. 8). Further, Appellant contends: The Examiner's Answer confuses sending of an unauthorized message (e.g., "a send operation initiated by an unauthorized agent comprising one of a virus, a Trojan horse and an agent other than an owner of a mail client source of the message") with sending a message to a non-secure address. . . . Whether a message is authorized is different than whether the addresses of the message are non-secure. (Reply Br. 2). We agree with Appellant. The Examiner has not shown Meister discloses determining whether an address is "non-secure" as recited in claims 41 and 59. Specifically, the fact that Meister discloses recognizing that an unauthorized message is being sent by a virus or other agent does not necessarily mean the message will be sent to a non-secure address. We are, therefore, constrained by the record to find the Examiner erred in rejecting independent claims 41 and 59, and dependent claims 42 and 48-51 for similar reasons. 5 Appeal2014-000774 Application 12/957,634 The Obviousness Rejections Claims 22, 23, and 27 Appellant does not present separate arguments for claims 22, 23, and 2 7, but rather relies on the same arguments presented for claim 21, from which claims 22, 23, and 27 depend (see App. Br. 7). For the same reasons discussed above regarding claim 21, we are not persuaded the Examiner erred in rejecting claims 22, 23, and 27. Claims 43-47 and 60 The Examiner has not shown the Beninato and Seifert references cure the deficiency of Meister discussed above regarding claims 41 and 59, from which claims 43--47 and 60 depend. We therefore must also reverse the rejection of claims 43--47 and 60. Claims 52-58 The Examiner finds the combination of ivieister and Seifert discloses all the limitations of claim 52, including. Appellant contends: Neither Meister nor Seifert provides a warning of an address having a different domain name. As shown above, Meister presents a confirmation box for every email address, regardless of email address characteristics, and does not provide a warning of an address having a different domain name. Seifert, likewise, does not mention providing a warning. Thus, the Examiner has erred because no combination of Meister and Seifert can result in a system that provides a warning of an address having a different domain name. (App. Br. 9). We are not persuaded by Appellant's argument that neither Meister nor Seifert discloses "providing a warning of an address having a different 6 Appeal2014-000774 Application 12/957,634 domain name," as recited in claim 52. As the Examiner makes clear, the rejection is based on the combination of the references. That is, the Examiner finds Meister teaches "providing a warning of an address" and Seifert teaches identifying "domain names from which e-mail is accepted ... for the purpose of processing e-mail for acceptance and transmission" (see Final Act. 9--10; Ans. 7). Appellant has failed to explain why one of ordinary skill in the art would not have combined Meister's alert when a user sends an email (see Meister i-f 28; Fig. 2) with Seifert's teaching of identifying certain domain names with which email correspondence is allowed (see Seifert i-f 11) to achieve the claimed "providing a warning of an address having a different domain name," as proposed by the Examiner. Rather, Appellant merely argues neither reference individually discloses the disputed limitation (see App. Br. 9). We are, therefore, not persuaded the Examiner erred in rejecting claim 52, and claims 53-58 not specifically argued separately. CONCLUSIONS Under the doctrine of non-statutory obviousness-type double patenting, Appellant has not shown the Examiner erred in rejecting claims 21, 24--28, 41--45, 48-53, and 56-60. Under 35 U.S.C. Â§ 102(b), the Examiner did not err in rejecting claims 21, 24--26, and 28-30, but did err in rejecting claims 41, 42, 48-51, and 59. Under 35 U.S.C. Â§ 103(a), the Examiner did not err in rejecting claims 22, 23, 27, and 52-58, but did err in rejecting claims 43--47 and 60. 7 Appeal2014-000774 Application 12/957,634 DECISION For the above reasons, the Examiner's rejections of claims 21-30, 41- 45, and 48---60 are affirmed, and the Examiner's rejection of claims 46 and 4 7 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 8