Ex Parte Baker et al

Patent Trial and Appeal Board

Oct 22, 2012

09825431 (P.T.A.B. Oct. 22, 2012)

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.
09/825,431 04/03/2001 Stuart D. Baker 209.1001 2071
7590 10/22/2012
DAVIDSON, DAVIDSON & KAPPEL, LLC
485 Seventh Avenue, 14th Floor
New York, NY 10018
EXAMINER
HUTTON JR, WILLIAM D
ART UNIT PAPER NUMBER
2176
MAIL DATE DELIVERY MODE
10/22/2012 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 STUART D. BAKER and PHILIP C. STRASSBURGER
_____________

Appeal 2010-012454
Application 09/825,431
Technology Center 2100
______________

Before JAMESON LEE, HOWARD B. BLANKENSHIP, and
BRIAN F. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-012454
Application 09/825,431

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This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1- 27, 41-59 and 71-73. App. Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE the Examiner’s rejection of these claims.

INVENTION
The invention is directed to the field of electronically created
documents, including electronic mail (“e-mail”) messaging, and to the
field of e-mail routing. See Spec. [0001].

Claims 1 and 18 are representative of the invention and
reproduced below:
1. A digital communication system to denote
confidentiality of a digital communication comprising:
a first memory containing a program executable by a
processor to:
attach a privileged attribute to a digital
communication, the privileged attribute selected by the
creator of the digital communication before the digital
communication is sent; and
create a privileged distribution list of at least one
intended recipient and associate the privileged
distribution list with the digital communication when the
digital communication is created; and
a second memory containing a program executable by a
processor to:
restrict access to the privileged digital
communication to the at least one intended
recipient according to the privileged distribution
list;
restrict routing of the privileged digital
communication to the intended recipients and prevent
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Application 09/825,431

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forwarding of the digital communication to an
unintended recipient; and
store the privileged digital communication in a
segregated location for privileged digital communications on a
data storage device,
wherein the intended recipients are selected by the
creator of the digital communication before the digital
communication is sent.

18. A digital communication system for denoting
confidentiality of a digital communication comprising:
a processor; and
a memory containing a program executable by the
processor to attach an executable module to a digital
communication when the digital communication is created, the
executable module constructed and arranged to:
create a privileged distribution list of intended
recipients of the digital communication to which it is
attached when the digital communication is created;
restrict access to the digital communication to which it is
attached to the intended recipients; and
restrict routing of the digital communication to which it
is attached to the intended recipients and prevent forwarding of
the digital communication to an unintended recipient, wherein
the intended recipients are selected by the creator of the digital
communication before the digital communication is sent.

REFERENCES
TURNBULL US 6,092,201 Jul. 18, 2000

DICKINSON, III US 2003/0196098 A1 Oct. 16, 2003

LIU US 6,760,752 B1 Jul. 6, 2004

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REJECTIONS AT ISSUE
Claims 1-2, 12, 17-18, 23, 25, 26, 49, 53, 56-59, and 71-72 were
rejected as unpatentable under 35 U.S.C. §103(a) as being obvious over the
combination of Turnbull and Liu. Ans. 4-7.
Claims 3-11, 13-16, 19-22, 24, 27, 41-48, 50-52, 54-55, and 73 were
rejected as unpatentable under 35 U.S.C. §103(a) as being obvious over the
combination of Turnbull, Liu and Dickinson. Ans. 7-20.

ISSUES
Did the Examiner incorrectly determine that:
1. Lui discloses “store the privileged digital communication in a
segregated location for privileged digital communications on a data
storage device” recited in claim 1;
2. Turnbull discloses “a program executable by the processor to
attach an executable module to a digital communication” recited in
claim 18?1
ANALYSIS
35 U.S.C. § 103(a) – Turnbull and Liu
Claim 1-2, 12, 17-18, 23, 25, 26, 49, 53, 56-59, and 71-72
Appellants’ arguments have persuaded us of error in the Examiner’s
rejection of claims 1-2, 12, 17-18, 23, 25, 26, 49, 53, 56-59, and 71-72.

1 Appellant make additional arguments regarding many of the pending
claims. App. Br. 8-29. We do not reach these additional issues since these
two issues are dispositive of the case.
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Claim 1 recites “stor[ing] the privileged digital communication in a
segregated location for privileged digital communications on a data storage
device.” Appellants argue that while Lui does disclose storing a private key,
a private key is not a “privileged digital communication” and Lui does not
disclose storing “privileged digital communication” in a segregated location.
App. Br. 9 (citing Lui, col. 6, ll. 32-45; col. 21, ll. 11-14). We are persuaded
by this argument.
The Examiner finds that Lui discloses storing a privileged
communication in a key server as shown in “figure 1, figure 2B, 258 where a
message is transmitted to a key server.” Ans. 21-22. We disagree. The
specification recites that “a server object on a mail sever stores privileged
emails in a segregated location on a server.” Spec. ¶ [0019] (emphasis
added). The message sent to the key server is not an email. Step 258 of
Figure 2b recites “Generate Send Message Request and Transmit to Key
Server.” Lui, figure 2B, 258. At best, Lui discloses that the “send message
request” includes “the E-mail address (or hash of the E-mail address) of the
recipient, the E-mail address (or hash of the E-mail address) of the sender
and the hash of the message to be sent.” Lui, col. 16, ll. 15-25 (emphasis
added). However, the “send message request” does not include the email
message itself.
The Examiner finds that “the key server of Liu discloses storing
secure emails on the server . . . ” (Ans. 21-22). In addition to the send
message request, the key server also stores “public keys and status
information” (Lui, col. 3, ll. 12-14). However, public keys and status
information do not include the email message itself. Thus, for the reasons
above, we find the Examiner has not cited to any teaching or suggestion in
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Lui of storing privileged emails on the key server. Thus, we do not sustain
the Examiner’s rejection of claim 1.
Claim 18
Claim 18 recites “a program executable by the processor to attach an
executable module to a digital communication.” Appellants argue that
“Appellants were not able to find a mention or a description of such a
module in the Turnbull patent or the Liu patent.” App. Br. 13. We are
persuaded by this argument. The Examiner argues that “column 3, lines 52-
column 4, lines 1-5 [of Turnbull] . . . discuss[es] an executable module for
performing the method steps of claim 1.” (Ans. 26). The section of
Turnbull cited by the Examiner recites:
An end-user that has administrative responsibilities for other
end-users is referred to as an administrator. The programming
instructions executed by the end-users will described below
[sic] stored in memory 28-32 and may, for example, be based
on encryption software such as Entrust/Client manufactured by
Entrust Technologies, Limited. The memory 28-32 may be
read-only memory, random access memory, hard drive
memory, floppy disk memory, magnetic tape memory, or any
other means for storing digital information.

Turnbull, col. 3, l. 52 – col. 4, l. 5. We do not find any reference to, or
teaching or suggestion of, attaching an executable module to an email in the
above paragraph relied on by the Examiner or any other portion of Turnbull
cited by the Examiner. Thus, we do not sustain the Examiner’s rejection of
claim 18.

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Summary
For the reasons stated above, we do not sustain the Examiner’s
35 U.S.C. § 103(a) rejection of independent claims 1 and 18, independent
claims 49, 57, 71, and 72 which contain essentially the same limitations, and
claims 2, 12, 17-18, 23, 25, 26, 49, 53, 56, 58, and 59 dependent thereon, as
unpatentable over the combination of Turnbull and Lui.
35 U.S.C. § 103(a) – Turnbull, Liu and Dickinson
Claims 3-11, 13-16, 19-22, 24, 27, 41-48, 50-52, 54-55, and 73
The Examiner’s rejection of independent claim 41 under 35 U.S.C. §
103(a) as unpatentable over Turnbull, Liu and Dickinson cites to the same
sections of Lui and Turnbull to show essentially the same limitations as
those discussed above. See Ans. 8-9. For the same reasons as discussed
supra, we do not sustain the Examiner’s 35 U.S.C. § 103(a) rejection of
claims 41 and claims 3-11, 13-16, 19-22, 24, 27, 42-48, 50-52, 54-55, and 73
(which depend from claim 41 or certain of the independent claim discussed
above) over Turnbull, Liu and Dickinson.
DECISION
The Examiner’s decision to reject claims 1- 27, 41-59 and 71-73 is
reversed.

REVERSED

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