AT&T is seeking another patent on self-destructing e-mail messages. AT&T originally filed a patent application in January 2002 on this technology, which ripened into U.S. Patent No. 7,356,564. The latest patent application to publish in this family tree published on June 20, 2013 as U.S. Patent Application No. 20130159436. We profiled this back in August on IPWatchdog.com. See AT&T Seeks Patents on E-mail Self Destruct and 3D Media Content. Shortly thereafter, the United States Patent and Trademark Office issued a Non-Final Rejection of the application.
This application relates to e-mail, which virtually everyone reading will know is a messaging system used across the world to communicate information to other people. Indeed, so ubiquitous has e-mail become that it is hard to remember when electronic communications via e-mail did not exist. E-mail is so incredibly useful because it’s efficient and practically instantaneous. However, a sender has almost no way to protect confidential information once it has been sent across the Internet, and we have probably all sent one or more messages without thinking things through before clicking “send.” Many have also no doubt sent an e-mail by accident to someone who was not the intended recipient, which can range from a nuisance to embarrassing to completely catastrophic depending on the content.
Once an e-mail has been received, it can be printed, forwarded or shared with anyone and another person could store it for years. In this sense, there is a real permanence about e-mail communications. Perhaps a permanence that is problematic given how easy and quick it is to send something. Gone are the days where you had to write out a letter, find the address, stamp it and then carry it to the mailbox, which offered many opportunities to rethink.
This AT&T innovation may offer at least a partial solution. The patent application seeks to protect a system of providing for self-destructing e-mails that provide better protection for confidential information. In this system, a user could set a period of time after the e-mail has been sent for it to be automatically deleted, or a user could select a specific date instead for the same purpose. Users sending an e-mail over this system could obtain a return receipt so that they know when the e-mail was opened. Of course, even this is only a partial solution and doesn’t address all concerns given that a recipient could capture the e-mail with a screenshot, for example.
In any event, as Claim 31 (Claims 1 through 30 were cancelled) explains, this patent application has been filed to protect:
A method for transmitting self-destructing electronic mail messages comprising: receiving a request, at an electronic mail server, from a sender to send a self-destructing electronic mail message, the request identifying a time period after which the self-destructing electronic mail message is to be destroyed; sending a security warning to the sender when an electronic mail address of an intended recipient of the self-destructing electronic mail message is located beyond a home domain of the sender; sending the self-destructing electronic mail message to the electronic mail address of the intended recipient in response to input from the sender responsive to the security warning; deleting any instances of the self-destructing electronic mail message that are being stored at the electronic mail server after the sending and after expiration of the time period.
The other independent claim is Claim 45, which seeks to cover:
A computer readable medium storing computer program instructions for transmitting self-destructing electronic mail messages, which, when executed on a processor, cause the processor to perform operations comprising: receiving a request, at an electronic mail server, from a sender to send a self-destructing electronic mail message, the request identifying a time period after which the self-destructing electronic mail message is to be destroyed; sending a security warning to the sender when an electronic mail address of an intended recipient of the self-destructing electronic mail message is located beyond a home domain of the sender; sending the self-destructing electronic mail message to the intended recipient in response to input from the sender responsive to the security warning; deleting any instances of the self-destructing electronic mail message that are being stored at the electronic mail server after the sending and after expiration of the time period.
The Non-Final Rejection issued by the USPTO on August 29, 2013, rejects claims 31 through 50 on the ground of nonstatutory double patenting over claims 1 through 20 of the ‘564 patent. The examiner justification is that “the claims, if allowed, would improperly extend the right to exclude already granted in the patent.” Should AT&T wish to file a terminal disclaimer, this rejection can easily be overcome, but the resulting patent would have its term end as of the date of the ‘564 patent. For this and many other reasons, many large companies are not willing to file a terminal disclaimer. Time will tell how AT&T proceeds.
Also included in the Non-Final Rejection is a 101 rejection of Claims 45 through 50. The examiner explains that the claims are rejected because they do not limit the definition of computer readable medium to only non-transitory media. This type of rejection is courtesy of Judge Gajarsa (retired) and Judge Moore from In re Nuijten. In Nujuten, the Federal Circuit determined that a propagating signal cannot be patented because it is does not qualify as patentable subject matter. Frankly, I think the ruling in Nuijten can be simply summarized by saying that Judges Gajarsa and Moore didn’t understand the technology, but we have to live with the aftermath nonetheless. For more on Nujiten, see Remembering Nujiten and Comisky 5 Years Later.
Claims 31 through 50 were also rejected under pre-AIA 103(a) as being obvious.
Tags: AT&T, double patenting, email, Nujiten, patent, patent application, patents
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