Ex Parte Bhamidipaty et al

Patent Trial and Appeal Board

Jun 30, 2016

13052676 (P.T.A.B. Jun. 30, 2016)

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.
13/052,676 03/21/2011 Anuradha Bhamidipaty IN920110023US1
(790.117)
6898
89885 7590 06/30/2016
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
PATEL, HARESH N
ART UNIT PAPER NUMBER
2493
MAIL DATE DELIVERY MODE
06/30/2016 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 ANURADHA BHAMIDIPATY and ANUBHA VERMA
____________

Appeal 2015-001243
Application 13/052,676
Technology Center 2400
____________

Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–12 and 25. App. Br. 5.1 Claims 13–24 have been
canceled. Id. at 21, Claim App’x. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

1 Throughout this opinion, we refer to (1) the Final Rejection (Final Act.)
mailed January 14, 2014; (2) the Appeal Brief (App. Br.) filed June 4, 2014;
(3) the Examiner’s Answer (Ans.) mailed August 27, 2014; and (4) the
Reply Brief (Reply Br.) filed October 27, 2014.
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INVENTION
Appellants’ invention detects non-compliant content. Spec. ¶ 1.
Non-compliant content includes confidential or sensitive information. See
id. ¶ 2. Current methods require a user to look for non-compliant
information before sharing data. Id. ¶ 2. Appellants’ invention analyzes
data to be shared and identifies non-compliant content before the data is
shared. Id. ¶ 3. Claim 1, reproduced below with our emphasis, is
illustrative:
1. A computer program product comprising:
a computer readable storage medium having computer
readable program code embodied therewith, the computer
readable program code comprising:
computer readable program code configured to,
responsive to receiving a user selection to share data, convert
data to a form suitable for analysis, and analyze the data to be
shared; and
computer readable program code configured to
automatically identify noncompliant content within the data prior
to sharing the data, wherein the non-compliant content is
determined using at least one set of rules.

The Examiner relies on the following as evidence of unpatentability:
Chen US 7,509,384 B1 Mar. 24, 2009
Zhang US 2009/0313706 A1 Dec. 17, 2009
Thompson US 2010/0049807 A1 Feb. 25, 2010
Lamanna US 2012/0051657 A1 Mar. 1, 2012
(filed Aug. 30, 2010)

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THE REJECTIONS2
Claims 1–5, 9, 12, and 25 are provisionally rejected on the ground of
non-statutory obviousness-type double patenting over U.S. Patent
Application No. 13/597,625. Final Act. 4.
Claims 1–12 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter. Final Act. 9–11.
Claims 1–5, 9, 12, and 25 are rejected under 35 U.S.C. § 102(e) as
anticipated by Lamanna. Final Act. 11–15.
Claims 6–8, 10, and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lamanna and Chen. Final Act. 15–16.
Claims 1–12 and 25 are rejected under 35 U.S.C. § 102(b) as
anticipated by Zhang. Final Act. 17–20.
Claims 1–12 and 25 are rejected under 35 U.S.C. § 102(b) as
anticipated by Thompson. Final Act. 21–24.

THE UNCONTESTED REJECTIONS
I
Claims 1–5, 9, 12, and 25 are provisionally rejected on the ground of
non-statutory obviousness-type double patenting over U.S. Patent
Application No. 13/597,625. Final Act. 4. Appellants do not argue this
rejection. See App. Br. 14–18; Reply Br. 2.
Based on the facts in this record, we decline to reach the Examiner’s
provisional rejection of claims 1–5, 9, 12, and 25 on the ground of

2 The Examiner’s § 112 rejection (Final Act. 8–9) has been withdrawn.
Ans. 2–3. Accordingly, Appellants’ arguments related to this rejection
(App. Br. 16–17) are moot.
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non-statutory obviousness-type double patenting. See Ex parte Moncla,
95 USPQ2d 1884 (BPAI 2010) (precedential) (indicating panels have the
flexibility to reach or not to reach provisional obviousness-type double
patenting rejections).
II
The Examiner additionally rejects (1) claims 1–12 under 35 U.S.C.
§ 101, and (2) claims 1–12 and 25 under 35 U.S.C. § 102(b) as anticipated
by each of (a) Zhang and (b) Thompson, individually. Ans. 2. Although
Appellants appeal from the last decision of the Examiner (see Notice of
Appeal, filed April 4, 2014), Appellants do not argue these rejections.
See App. Br. 14–18; Reply Br. 2.
Because Appellants do not contest these rejections (see App. Br. 14–
18; Reply Br. 2), we summarily sustain the rejections of (1) claims 1–12
under § 101 and (2) claims 1–12 and 25 under § 102(b) as anticipated by
each of (a) Zhang and (b) Thompson. Ans. 2. See Hyatt v. Dudas, 551 F.3d
1307, 1314 (Fed. Cir. 2008) (explaining that when appellant fails to contest a
ground of rejection, the Board may affirm the rejection without considering
its substantive merits); see also 37 C.F.R. § 41.37(c)(1)(iv) and Manual of
Patent Examining Procedure (MPEP) § 1205.02, 9th ed. (Nov. 2015) (“If a
ground of rejection stated by the examiner is not addressed in the appellant’s
brief, that ground of rejection will be summarily sustained by the Board.”).
Although we do not reach the merits of the Examiner’s § 101
rejection, we note that claims 1–12 recite a “computer program product
comprising: computer readable storage medium . . . .” Our precedent
indicates that those of ordinary skill in the art would interpret a storage
medium broadly, but reasonably, to include signals per se, which is
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non-statutory subject matter, when the Specification lacks a definition to the
contrary. See Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013)
(precedential) (citing In re Nuijten, 500 F.3d 1346, 1356–57 (Fed. Cir.
2007)).

THE ANTICIPATION REJECTION OVER LAMANNA
Contentions
The Examiner finds that Lamanna discloses all limitations of claim 1,
including converting data to a form suitable for analysis. Final Act. 11–13
(citing Lamanna ¶¶ 53–55). According to the Examiner, Lamanna
automatically identifies and removes sensitive information from files.
Final Act. 12.
Appellants argue that Lamanna does not convert data to a form
suitable for analysis. App. Br. 15. According to Appellants, Lamanna
requires metatags or templates to parse complex files with images or
non-textual information. Id. at 14.
Dependent claims 2–5, 9, and 12 and independent claim 25 are not
argued separately. We select claim 1 as representative. App. Br. 14–15.

Issue
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Lamanna converts data to a form suitable for analysis?

Analysis
Based on the record before us, we find no error in the Examiner’s
rejection of claim 1, which calls for, in pertinent part, “computer readable
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program code configured to . . . convert data to a form suitable for
analysis.”
As understood, the Examiner’s citation to paragraph 53 indicates that
Lamanna’s document comparison corresponds to the recited code configured
to “analyze the data to be shared.” See Final Act. 12. Furthermore, in
response to Appellants’ contention concerning Lamanna, the Examiner cites
to paragraph 59 describing a fingerprint library. Ans. 4. Accordingly,
Lamanna’s mapped analysis of “the data to be shared” (e.g., document
comparison) is carried out using two pieces of information obtained from the
document: containment coefficients (Lamanna ¶ 53, cited in Final Act. 12)
and document fingerprints (Lamanna ¶ 59, cited in Ans. 4). Based on this
understanding, we further understand the Examiner finds Lamanna’s
containment coefficients and document fingerprints correspond to the recited
data after being converted to “a form suitable for analysis.” See
Final Act. 12; Ans. 4.
Turning now to the limitation at issue, Appellants do not argue that “a
form suitable for analysis” is expressly defined in the Specification. See
App. Br. 15. Rather, Appellants note that the Specification merely provides
examples of this form. Id. at 15 (citing Spec. ¶ 28). For example, the raw
data could be converted to strings or phrases. Spec. ¶ 28. Although this
non-limiting embodiment (id.) informs our construction of the limitation at
issue, we understand that the recited converted form encompasses different
styles. This breadth is significant, for nothing on this record precludes the
recited “a form suitable for analysis” from constituting, among other things,
Lamanna’s containment coefficients (Lamanna ¶ 53, cited in Final Act. 12)
or document fingerprints (Lamanna ¶ 59, cited in Ans. 4).
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Lamanna uses document fingerprints to compare documents.
Lamanna ¶ 31. Before comparing documents, Lamanna creates a fingerprint
for a document. Id. ¶ 59 (referring to the methods “described above,” e.g.,
paragraphs 23–30). These document fingerprints are created using hashing.
See id. ¶ 59; see also, e.g., id. ¶ 23 (describing minwise hashing) and 30.
This hashing generates hash values from the document’s word units.
Id. ¶¶ 59, 26. Lamanna extracts word units from the document’s text.
Id. ¶ 25; see also ¶ 59, Fig. 1. For example, a number can be assigned to
each character in a word unit. Id. ¶ 26. A hash function then converts the
sum of these numbers into a hash value. Id. The fingerprint values are
based on these hash values. See id. ¶¶ 59, 30. The document’s fingerprint is
an ordered set of these fingerprint values. Id. ¶ 30. According to Lamanna,
this ordered set makes comparing fingerprints easy. Id.
On this record, we see no error in the Examiner’s finding that
Lamanna discloses “code configured to . . . convert data to a form suitable
for analysis.” Ans. 4 (citing Lamanna ¶ 59). Like the conversion described
in the Specification (Spec. ¶ 28, cited in App. Br. 15), Lamanna’s document-
to-fingerprint conversion produces a string—e.g., the ordered set of values.
See Lamanna ¶ 30. Furthermore, the Examiner’s finding that Lamanna
discloses data converted a form suitable for analysis (see Ans. 4) is
supported by Lamanna’s discussion of the ease using these fingerprints (see
Lamanna ¶ 30). That is, the easy comparison that comes with using
fingerprints based on their nature makes this format a suitable one for
analysis. See id.
Lamanna also uses a second form to carry out the document
comparison: the containment coefficient. Id. ¶ 53, cited in Final Act. 12. In
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particular, the containment coefficient is based on at least one document.
See id. ¶ 30. In one embodiment, the containment coefficient is calculated
from the document’s fingerprint. See, e.g., id. ¶¶ 31–33, 44–46. And as
described above, Lamanna converts the document’s text to create the
fingerprint. Id. ¶¶ 59, 23–30. So through these calculations, the document’s
data is converted to a containment coefficient. See id. ¶ 53.
The Examiner’s finding that Lamanna’s containment coefficients are
suitable for analysis (Final Act. 12 (citing Lamanna ¶ 53)) is reasonable.
We agree with the Examiner that the recited analysis reads on Lamanna’s
document comparison, which uses the containment coefficient.
Lamanna ¶ 53. For example, Lamanna discusses using the coefficient to
determine a document is a template for another document and to group the
document into a particular sensitivity level. Id. As another example,
Lamanna compares the containment coefficient to a threshold to determine
whether one document is a subset of another. Id. ¶ 46. Accordingly, we are
unpersuaded by Appellants’ argument that Lamanna lacks the recited “code
configured to . . . to convert data to a suitable form for analysis.”
App. Br. 14–15.
We are also unpersuaded by Appellants’ argument that Lamanna
requires metatags or templates to parse particular complex files with images
or non-textual information. Id. at 14. This argument is not commensurate
with the scope of the claim; that is, claim 1 does not recite specific files with
images or non-textual information. Id. Nor does the claim recite “complex
documents or data,” as mentioned by Appellants. See id. at 15. Rather,
claim 1 is directed to converting “data” generally. To the extent that the
Examiner’s rejection depends on Lamanna’s metatags and templates for
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analyzing images or non-textual information (see Ans. 4), we find nothing in
the claim that precludes their use.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 1 and claims 2–5, 9, 12, and 25 not
separately argued with particularity. See App. Br. 14–15; Reply Br. 2.

THE OBVIOUSNESS REJECTION
Claims 6–8, 10, and 11 depend directly or indirectly from claim 1 and
are rejected under § 103 based on Lamanna and Chen. Final Act. 15–16.
Appellants fail to present any additional arguments against these rejections.
See App. Br. 14–18; Reply Br. 2. The issues before us, then, are the same as
those in connection with claim 1, and we refer Appellants to our previous
discussion.

CONCLUSIONS
The Examiner did not err in rejecting (1) claims 1–12 under § 101; (2)
claims 1–12 and 25 under § 102; and (3) claims 6–8, 10, and 11 under § 103.

DECISION
The Examiner’s decision rejecting claims 1–12 and 25 is affirmed.
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