AirWatch LLC

Patent Trials and Appeals Board

Apr 30, 2021

2019006269 (P.T.A.B. Apr. 30, 2021)

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.
15/426,926 02/07/2017 John Marshall W025.C1 (500102.1022) 9707
152577 7590 04/30/2021
Thomas | Horstemeyer, LLP (VMW)
3200 Windy Hill Road, SE
Suite 1600E
Atlanta, GA 30339
EXAMINER
SALAD, ABDULLAHI ELMI
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
04/30/2021 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):
docketing@thomashorstemeyer.com
ipadmin@vmware.com
uspatents@thomashorstemeyer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN MARSHALL and WILLIAM DEWEESE

____________________

Appeal 2019-006269
Application 15/426,926
Technology Center 2400
____________________

Before JOHN A. JEFFERY, ELENI MANTIS MERCADER, and
JOHNNY A. KUMAR, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 21–40. We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, AirWatch, LLC, is the real party
in interest. Appeal Br. 2.
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Appellants’ Invention
Appellant’s invention relates to resource watermarking and
management. See Spec. ¶ 1. 2 In a disclosed embodiment, one or more
servers configured to identify resources associated with a client device,
identify a watermark template, associate the watermark template with the
resources, and authorize the client device to perform actions on the
resources. See Spec. ¶ 3 and Fig. 3.
Illustrative Claim
Claim 21, reproduced below, is representative of the subject matter on
appeal.

21. A method for dynamically applying a digital watermark to
an electronic resource, comprising:
receiving, from a client device, an access request
for the electronic resource and a device profile for the
client device, the device profile comprising at least one
attribute associated with an operating state of the client
device;
identifying a digital watermark for the electronic
resource;

[L1] determining dynamic descriptive data of the
digital watermark based on [L2] the access request from
the client device and [L3] whether the device profile
received from the client device complies with a
compliance rule; and

overlaying the digital watermark on the electronic
resource.

2 We refer to Appellant’s Published Specification, Application No.
2017/0149686 A1 published on May 25, 2017.
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REFERENCES AND REJECTION

Claims 21–40 are rejected under 35 U.S.C. § 103 as being
unpatentable over Levy (US 2013/0086466 A1, pub. Apr. 4, 2013), Shapiro
(US 2013/0125196 A1, pub. May 16, 2013), Patel (US 2012/0159572 A1,
pub. June 21, 2012), and Peracha (US 9,372,786 B1, iss. June 21, 2016).

Appellant’s Contentions3
1. Appellant contends that the Examiner erred in rejecting claim
21 under 35 U.S.C. § 103 because the combination of Levy, Shapiro, Patel,
and Peracha fails to establish a prima facie case of obviousness with respect
to required limitation L1 and L3 of independent claim 21. Appeal Br. 6–10.
1(a). Appellant contends that Shapiro does not teach limitations L1
and L3 as claimed because Shapiro does not describe device profiles or
compliance rules. Appeal Br. at 7.
1(b). Appellant contends that Patel does not teach limitations L1 and
L3, because Patel is not directed to the dynamic determination of descriptive
data for digital watermarks. Appeal Br. at 8. According to Appellant, Patel
does not teach the device profile is received from a client device as claimed,
rather the “client profiles” of Patel are resident on the access manager
module and not received from the client device. Id.
1(c). Appellant contends that Peracha does not teach limitations L1
and L3, because Peracha is not directed to digital watermarks or the

3 Throughout this Decision, we refer to the Appeal Brief filed March 20,
2019 (“Appeal Br.”); the Reply Brief filed August 23, 2019 (“Reply Br.”);
Final Office Action mailed August 28, 2018 (“Final Act.”); and the
Examiner’s Answer mailed July 11, 2019 (“Ans.”).
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determination of descriptive data for digital mark. Appeal Br. 9. According
to Appellant, Peracha merely describes a device state from a client device.
Id. at 9–10.
2. Appellant contends that both Patel and Peracha are non-
analogous art. Appeal Br. 10–12.

Issues
I. Under § 103, has the Examiner erred in rejecting claim 21 by
finding that Levy, Shapiro, Patel, and Peracha collectively would have
taught or suggested the argued limitations L1 and L3?
II. Is the Examiner’s proposed combination of the cited references
supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion? This issue turns on whether
Patel and Peracha are analogous art.

Analysis
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred. See Appeal Br. 6–13; Reply Br. 2–
9. Further, we have reviewed the Examiner’s response to the arguments
presented by Appellant.
We disagree with Appellant’s arguments. To the extent consistent
with our analysis below, 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 set forth by the Examiner in the Examiner’s Answer in
response to Appellant’s Appeal Brief. Ans. 3–6. We concur with the
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conclusions reached by the Examiner. We highlight and address specific
findings and arguments for emphasis as follows.
Regarding independent claim 21, the Examiner finds that Shapiro
teaches limitations L1 and L2. Final Act 4 (citing Shapiro ¶¶ 15, 37, 51).
Although the Examiner acknowledges that Shapiro does not teach limitation
L3, the Examiner relies upon Patel and Peracha for teaching those features in
concluding that the claim would be obvious. Id. at 4–5.

Issue I: Whether the combination of Levy, Shapiro, Patel, and
Peracha teaches claim limitations L1 and L3
We first consider the claim construction under BRI (broadest
reasonable interpretation) of the disputed claim terms “dynamic descriptive
data” and “device profile.” We turn to the Specification for context, and find
the Specification provides a non-limiting, exemplary description for the
claim term “dynamic descriptive data”:

Dynamic descriptive data may include and/or describe, for
example, a prior action type taken on a resource 154, such as a
prior creation, prior access, prior modification, prior storage,
and prior transmission of the resource 154 by a user
device 100 and/or user of a user device 100. . . . In some
embodiments, a watermark template 156 may describe such
prior actions by including descriptive data detailing one and/or
more user identifiers, source identifiers, timestamps, locations,
prior action types, contextual details describing such prior
actions, a property associated with a user device 100 associated
with such prior actions.

Spec. ¶ 22 (emphasis added).
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Thus, “dynamic descriptive data” can be “user identifiers, source
identifiers or timestamps.” Spec. ¶ 22.
The Examiner equates Shapiro’s “user identifier,” “Internet Protocol
(IP) address [associated with the user],” “hardware address or identifier
[associated with the user],” or “timestamp” to the claimed dynamic
descriptive data. Ans. 3–4. We agree. Shapiro teaches:
Furthermore, the watermark can include a user identifier, an
Internet Protocol (IP) address associated with the user, a
hardware address or identifier associated with the user, a
timestamp, or any other information that can be used to identify
the origin of the decrypted file.

Ans. 4; Final Act. 4 (citing Shapiro ¶ 15) (emphasis added).
Regarding the claim terms “device profile,” the Specification
discloses:
Device profile 152 may comprise one or more indications of the
state of user device 100. For instance, device profile 152 may
represent device identifiers unique to user device 100, user
identifiers and/or credentials associated with one or more users
of user device 100, hardware features and/or components of
user device 100, version and configuration information of
various software features and applications installed on user
device 100, data transmission protocols enabled on user
device 100, version and usage information of various resources
stored on user device 100, and/or any other attributes associated
with the state of user device 100. The device profile 152 may
further comprise data indicating a date of last virus scan of user
device 100, a date of last access by an IT representative, a date
of last service by the IT representative, and/or any other data
indicating maintenance and usage of user device 100.
Moreover, the device profile 152 may comprise indications of
the past behavior of associated users, such as accesses to one or
more resource 154, charges for such accesses, and the inventory
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accessed from such resources 154. Furthermore, device
profile 152 may indicate a current location associated with user
device 100 and/or a home location associated with user
device 100. Similarly, device profile 152 may indicate a current
time associated with user device 100 and/or a home time
associated with user device 100, such as a time associated with
a home location associated with user device 100. Device
profile 152 may, for example, comprise data accessible to user
device 100 via functions of user device 100, such as GPS
location data, and/or via remote services communicatively
coupled to user device 100, such as current time data provided
by a remote time service.

Spec. ¶ 17 (emphasis added).
Thus, “device profile” includes “user identifiers and/or credentials
associated with one or more users.” Spec. ¶ 17.
The Examiner equates Patel’s “access request” or “requestor” to the
claimed device profile because the “access request” or “requestor” is
associated with the client device and used as credentials to determine
whether the access request/requestor is a valid request/candidate. Ans. 4. We
agree. Patel teaches:
The cloud computing apparatus includes a request validator
module operatively coupled to the access manager module and
configured to determine whether the access request is a valid
request and whether a requestor associated with the client
device is a valid candidate for utilization of the security logic
module.

Ans. 4; Final Act. 4 (citing Patel ¶ 10) (emphasis added).
Figure 1 of Patel reproduced below with annotations, shows that the
request/requestor is received from the client device. Ans. 4; Final Act. 4
(citing Patel ¶¶ 24–25 and Figure 1).

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Modified Figure 1 of Patel illustrates a cloud computing system with a
request/requestor from a client device.

In addition, the Examiner relies upon the “device state” of Peracha for
the claimed term of “device profile” as follows:
The device state 140 comprises one or more attributes relating
to the operational status of client device 104. Attributes
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contained within the device state 140 may comprise a number
of open file handles, remaining battery power, central
processing unit (CPU) usage, an amount of allocated memory,
remaining disk space, used disk space, file input/output (I/O)
statistics, power consumption rates, or other attributes.
Ans. 5; Final Act. 5 (citing Peracha 2:41–48) (emphasis added).
Given the evidence cited by the Examiner, and in accordance with our
claim construction above, we are not persuaded of error regarding the
Examiner’s underlying factual findings that support the ultimate legal
conclusion of obviousness.
The Examiner finds that Shapiro teaches limitations L1 and L2,
because Shapiro determines dynamic descriptive data applied to an
electronic source as a digital watermark, and the dynamic descriptive data is
associated with an access request. Final Act. 4 (citing Shapiro ¶¶ 15, 37, 51).
The Examiner further finds that Patel teaches the limitations of L2 and L3,
because
Patel discloses a system for resource authorization including
based on the access request from the client device and whether
the device profile for the client device complies with a
compliance rule.

Ans. 4; Final Act. 4 (citing Patel ¶¶ 10, 24–25, 89–90) (emphasis added). In
addition, the Examiner relies upon the “device state” of Peracha for further
supporting teachings of the claimed term of “device profile.” Final Act. 5
(citing Peracha 2:41–48).
As noted above, Appellant argues that Shapiro does not teach
limitations L1 and L3 as claimed because Shapiro does not describe device
profiles or compliance rules. Appeal Br. 7.
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Appellant also argues that Patel does not teach limitations L1 and L3,
because Patel is not directed to the dynamic determination of descriptive
data for digital watermarks. Appeal Br. 8.
In addition, Appellant argues that Peracha does not teach L1 and L3,
because Peracha is not directed to digital watermarks or the determination of
descriptive data for digital mark. Appeal Br. 9. According to Appellant,
Peracha merely describes a device state from a client device. Id. at 9–10.
Based on the record before us, Appellant’s arguments do not apprise
us that the Examiner erred in finding that the combination of Shapiro, Patel,
and Peracha teach the disputed limitations L1 and L3. More particularly,
Appellant’s arguments with respect to Shapiro, Patel, and Peracha do not
reflect the specific findings made by the Examiner.
Appellant’s arguments that Shapiro does not describe device profiles
or compliance rules, are arguments that Shapiro does not teach limitation L3.
But the Examiner finds that Patel, rather than Shapiro, teaches limitation L3.
See Final Act. 4–5. Therefore, Appellant’s arguments amount to an attack on
Shapiro, where the Examiner relies upon the combination of references to
teach limitations L1 and L3. One cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references. In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Similarly, Appellant’s argument that Patel is not “directed to the
dynamic determination of descriptive data for digital watermarks” (Reply
Br. 5) attacks Patel for not teaching limitations L1 and L3. Here, however,
the Examiner finds that Patel in combination with Shapiro and Peracha to
teach limitations L1 and L3. Final Act. 4–5.
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To the extent that Appellant argues that “Peracha . . . is not at all
directed to digital watermarks or the dynamic determination of descriptive
data for digital watermark” (Appeal Br. 9) (emphasis omitted), and that
“Peracha merely describes [a] . . . device state [from a] . . . client device”
(id.) (emphasis omitted), such alleged teaching in Peracha does not negate
the Examiner’s finding that Peracha further supports the device profile as
required by limitation L3. See Final Act. 4–5.
Appellant’s arguments above ignore the combined teachings of
Shapiro, Patel, and Peracha. Specifically, we find no error with the
Examiner’s proffered findings and conclusions that an ordinarily skilled
artisan would have had motivation to apply the teachings of Shapiro—
determining dynamic descriptive data of the digital watermark based on the
access request from the client device (see Final Act. 4)— the teachings of
Patel—resource authorization based on the access request from the client
device and whether the device profile received from the client device
complies with a compliance rule (id. at 4–5)—and the teachings of
Peracha— the device profile comprising at least one attribute associated with
an operating state of the client device (id. at 5) — collectively to arrive at the
claimed limitations of L1, L2, and L3.
Accordingly, based on the evidence before us, we are not persuaded
that the Examiner erred in finding that the combination of Levy, Shapiro,
Patel, and Peracha teaches limitations L1 and L3.

Issue II: Whether Patel and Peracha are analogous art
Appellant contends Patel and Peracha are non-analogous art, because
in contrast to the field of resource watermarking and management as this
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application, Patel is directed to “a cloud computing security system” and
Peracha is directed to “[a] state monitoring application [that] initiates the
execution of test operations on a client device.” Appeal Br. 10–11. Appellant
additionally contends neither Patel nor Peracha describes anything
reasonably pertinent to the problems or solutions of this application, such as
relying on the user of the device to manually watermark resources before
performing actions on the resources. Id.
Our reviewing court has recently discussed analogous art. See Donner
Technology, LLC v Pro Stage Gear, LLC, 979 F.3d 1353, 1359 (Fed. Cir.
2020) (“The scope of the prior art includes all analogous art.”).
Donner held the following:
“Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
2004). Whether a reference is analogous art is an issue of fact.
In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1378 (Fed.
Cir. 2007).
Donner, 979 F.3d at 1359. Further, “[a]lthough the dividing line between
reasonable pertinence and less-than-reasonable pertinence is context
dependent, it ultimately rests on the extent to which the reference of interest
and the claimed invention relate to a similar problem or purpose.” Id.
Here, Patel is at least reasonably pertinent to Appellant’s problem,
namely, authorizing a user device to access certain resources in accordance
with certain compliance rules. See, e.g., Appellant’s Spec. ¶¶ 3, 46 (noting
that a method includes authorizing a user device to perform actions on
resources in accordance with certain applicable compliance rules); Patel,
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Abstract (noting that a security logic module receives an access request and
determines whether the access request complies with a set of rules); Patel,
¶ 39 (noting that the security logic module denies access to the client
device if the access request is non-compliant with a first set of rules); Patel,
¶ 55 (noting that the security logic module controls access to services by a
requesting client based on a set of rules). Although Patel is related to a cloud
computing security system as Appellant indicates, it nonetheless also
involves with authorization of data access in accordance with certain rules.
That Patel may not state explicitly that the disclosed system addresses
resource watermarking and management as Appellant contends (Appeal Br.
10–11) does not preclude the fact that Patel’s authorization-based access
control functionality is at least reasonably pertinent to Appellant’s problem.
We reach a similar conclusion regarding Peracha’s functionality to
determine whether a client device meets a condition defined in a device
profile. See, e.g., Peracha 5:4–7 (noting that a device testing application
obtains a device state of a client device to determine if the client device still
meets a condition defined within a device profile); id. at 5:50–55 (noting that
the device test application determines if the client device meets a condition
defined in the device profile by comparing the device state to one or more
conditions defined in the device profile). This authorization-based control
functionality is at least reasonably pertinent to Appellant’s problem of
authorizing the user device for certain operations in accordance with certain
compliance rules despite Appellant’s arguments to the contrary. Appeal Br.
8–10. We find the above citations show how Peracha is at least reasonably
pertinent to Appellant’s problem. Thus, we are persuaded that Peracha is
analogous art.
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On this record, then, the Examiner’s proposed combination of the
cited references is supported by articulated reasoning with some rational
underpinning to support the Examiner’s conclusion of obviousness.

CONCLUSION

The Examiner did not err in rejecting claims 21–40 under 35 U.S.C.
§ 103 over the combined teachings and suggestions of the cited references.

DECISION

In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
21–40 103 Levy, Shapiro,
Patel, Peracha
21–40
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). See 37 C.F.R. §
1.136(a)(1)(iv).

AFFIRMED