Ex Parte Bhamidipaty et al

Patent Trials and Appeals Board

May 28, 2019

13052676 - (D) (P.T.A.B. May. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/052,676 03/21/2011
89885 7590 05/28/2019
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
FIRST NAMED INVENTOR
Anuradha Bhamidipaty
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. CONFIRMATION NO.
IN9201 l 0023US 1
(790.117)
6898
EXAMINER
PATEL, HARESH N
ART UNIT PAPER NUMBER
2493
MAIL DATE DELIVERY MODE
05/28/2019 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
Appeal2018-002950
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
This case returns to us from a previous appeal, Appeal No.
2015-001243, decided on June 30, 2016, in which we affirmed various
rejections of claim 1-12 and 25. Op. 9. The pending claims have since been
amended, and claims 26 and 27 have been added. Appellants 1,2 appeal
under 35 U.S.C. § 134(a) from the Examiner's rejections of claims 1-12 and
25-27. We affirm.
1 Throughout this Opinion, we refer to the Final Office Action (Final Act.)
mailed April 24, 2017, the Appeal Brief (Appeal Br.) filed September 25,
2017, the Examiner's Answer (Ans.) mailed November 29, 2017, and the
Reply Brief (Reply Br.) filed January 29, 2018.
2 Appellants identify the real party in interest as International Business
Machines Corp. Appeal Br. 3.
Appeal2018-002950
Application 13/052,676
BACKGROUND
Appellants' invention detects non-compliant content. Spec. ,r 1.
Non-compliant content includes confidential or sensitive information. See
id. ,r 2. According to Appellants, the current methods require a user to look
for non-compliant information before sharing data. Id. Appellants'
invention analyzes data to be shared and identifies non-compliant content
before the data is shared. Id. ,r 3.
Independent claim 1 reads as follows:
1. A computer program product comprising:
a non-transitory 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 at an interface, a user selection to share
data content, trigger a content modification engine, wherein the
content modification engine comprises an input content
analyzer and a filter generator;
computer readable program code configured to, extract
and convert, using the input content analyzer of the content
modification engine, the data content to a form suitable for
analysis, and analyze the data content to be shared;
computer readable program code configured to
automatically identify, based on the analyzing, non-compliant
content within the data content prior to sharing the data content,
wherein non-compliant content comprises content associated
with a predetermined rule set identifying content having
restrictions on sharing and wherein the predetermined rule set is
generated by and associated with an corporation; and
computer readable program code configured to
automatically modify, responsive to the identification of
non-compliant content, at least a subset of the data content.
Appeal Br. 23 (Claims App'x).
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OBJECTION TO THE SPECIFICATION
Appellants raise arguments related to a petitionable matter. See
Appeal Br. 16 (requesting the objection related to the Abstract be
withdrawn). This issue is not within the jurisdiction of the Board, so we will
not address it. See MANUAL OF p ATENT EXAMINING PROCEDURE
§§ 1002 and 1201 (9th ed. Rev. 08.2017) (Jan. 2018); see also In re
Hengehold, 440 F.2d 1395, 1403 (CCPA 1971) (stating that there are many
kinds of decisions made by examiners, "which have not been and are not
now appealable to the board or to this court when they are not directly
connected with the merits of issues involving rejections of claims, but
traditionally have been settled by petition to the Commissioner.")
WITHDRAWN REJECTION
The rejection of claims 1-12 and 25-27 under 35 U.S.C. § 112,
second paragraph, has been withdrawn. Ans. 3. Thus, Appellants'
arguments related to this withdrawn rejection are moot.
THE PROVISIONAL OBVIOUSNESS-TYPE
DOUBLE PATENTING REJECTION
Claims 1-12 and 25-27 are provisionally rejected on the ground of
non-statutory double patenting over claims 1-12 of co-pending Application
No. 13/597,625. Final Act. 2-3. Appellants state "[w]ithout addressing the
propriety of the double-patenting rejection[], ... the rejection is moot"
because "of the amendments to the claims." Appeal Br. 18; Reply Br. 19.
Appellants do not explain how the claim amendments render the rejection
moot. Appeal Br. 18.
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Application 13/052,676
Given the facts in this record, we decline to reach the Examiner's
provisional rejection of claims 1-12 and 25-27 on the ground of
non-statutory obviousness-type double patenting. See Ex parte Monda,
95 USPQ2d 1884, 1885 (BP AI 2010) (precedential) (indicating panels have
the flexibility to reach or not to reach provisional obviousness-type double
patenting rejections).
THE OBVIOUSNESS REJECTION OVER BILLSUS,
LAMANNA, AND FREEMAN
Claims 1-5, 9, 12, 25, and 26 are rejected under 35 U.S.C. I03(a) as
being unpatentable over Billsus (US Pub. No. 2007 /0266095 Al, published
Nov. 15, 2007), Lamanna (US Pub. No. 2012/0051657 Al, published
Mar. 1, 2012), and Freeman (US Pub. No. 2006/0047650 Al, published
Mar. 2, 2006). Final Act. 4--12.
For each of the disputed rejections discussed in this Opinion,
Appellants argue claims 1 and 25 as a group and indicate the remaining
claims stand with the claims from which they depend. See Appeal Br. 16,
18-21. We select claim 1 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
Turning to the merits, Appellants argue Billsus does not teach
computer readable program code configured to
automatically identify, based on the analyzing, non-compliant
content within the data content prior to sharing the data content,
wherein non-compliant content comprises content associated
with a predetermined rule set identifying content having
restrictions on sharing and wherein the predetermined rule set is
generated by and associated with an [sic] corporation[,]
as claim 1 recites. Appeal Br. 19; Reply Br. 20. Appellants also argue
Billsus does not mention analyzing the transmitted message's content.
Appeal Br. 19; Reply Br. 20.
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Regarding Lamanna, Appellants argue this reference does not relate to
converting data to a form suitable for analysis. Id. at 21; Reply Br. 22.
ISSUES
Under§ 103, have Appellants demonstrated the Examiner erred by
determining that Billsus, Lamanna, and Freeman collectively would have
taught or suggested computer readable program code configured to:
(I) "automatically identify, based on the analyzing, non-compliant
content within the data content prior to sharing the data content, wherein
non-compliant content comprises content associated with a predetermined
rule set identifying content having restrictions on sharing and wherein the
predetermined rule set is generated by and associated with an [sic]
corporation;"
(II) "convert ... the data content to a form suitable for analysis," and
(III) "analyze the data content to be shared," as recited in claim 1?
ANALYSIS
Based on the arguments presented, we find no error. At the outset, we
underscore many of Appellants' argument attack Billsus and Lamanna
individually without considering the rejection's collective teachings (Billsus,
Lamanna, and Freeman). We are not persuaded because one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See In re Merck & Co., Inc., 800 F .2d
1091, 1097 (Fed. Cir. 1986).
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I.
For example, Appellants contend that Billsus fails to teach
computer readable program code configured to
automatically identify, based on the analyzing, non-compliant
content within the data content prior to sharing the data content,
wherein non-compliant content comprises content associated
with a predetermined rule set identifying content having
restrictions on sharing and wherein the predetermined rule set is
generated by and associated with an [sic] corporation.
Appeal Br. 19; Reply Br. 20. This argument is unpersuasive.
The rejection cite to both Lamanna (Final Act. 6-7) and
Freeman (id. at 7) to teach the above-recited features. See Ans. 5.
Appellants' argument concerning Billsus (Appeal Br. 19) does not
address the proposed rejection fully, including Lamanna's teachings
(Lamanna ,r,r 53-55, cited in Final Act. 6-7) and Freeman's teachings
(Freeman ,r,r 9, 27, cited in Final Act. 7). Because the Examiner's
findings and conclusions related to Lamanna and Freeman are
uncontested, we are not convinced that the Examiner erred in
determining the combination teaches or suggest the above disputed
limitation.
To be sure, Appellants further assert "the combination of references
fail to teach all the limitations of the claims." Appeal Br. 21; Reply Br. 22.
Nonetheless, Appellants provide no persuasive evidence to substantiate this
general contention. Appellants only support this assertion with "none of the
remaining references" teach the above-noted recitation. Appeal Br. 21
(emphasis added). See In re Huang, 100 F.3d 135, 139--40 (Fed. Cir. 1996);
see, e.g., In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). This argument
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also amounts to a mere assertion and an individual attack on the cited
references, which are unpersuasive. See Merck, 800 F .2d at 1097.
II.
As another example, Appellants argue Lamanna does not relate to the
recited "convert[ing] ... the data content to a form suitable for analysis."
See Appeal Br. 21; see Reply Br. 22. Billsus-not Lamanna-has been
relied upon to teach this feature of claim 1 in the proposed rejection. Final
Act. 5 (citing Billsus ,r,r 29, 37-38). Given the Examiner's findings related
to Billsus are uncontested, we are not convinced that the Examiner erred.
Appellants state that Lamanna requires metatags or templates to parse
complex files with images or non-textual information. Appeal Br. 20; Reply
Br. 21-22. Although discussing Lamanna, we fail to find an argument
related to a limitation in claim 1. Id. As stated in our previous opinion
(Op. 8-9), 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. Appeal Br. 23 (Claims App'x); see Ans. 10. Rather, claim 1 is
directed to converting "data content" generally. Additionally, we find
nothing in the claim that precludes using Lamanna's metatags and templates
to analyze data.
III.
Appellants further argue Billsus does not mention analyzing the
transmitted message's content, but rather modifies an email interface by
including an email notification indicating to whom the email will be sent.
Appeal Br. 19 (citing Billsus ,r,r 6, 28-29, Figs. 3--4); Reply Br. 20. This
argument is unpersuasive.
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Claim 1 does not recited analyzing "the transmitted message's
content," but, rather, "the data content to be shared." Appeal Br. 23 (Claims
App'x). Notably, claim 1 does not require that the "data" be the content in
the message's body. Moreover, claim 1 broadly recites code "configured to
automatically modify ... at least a subset of the data content" (id.), which
may or may not be in an email message's body. Thus, some of the presented
arguments related to Billsus are not commensurate in scope with claim 1.
Lastly, regarding the claimed code configured to "analyze the data
content to be shared" and "modify ... at least a subset of the data content"
limitations, the Examiner relies on various passages in Billsus. Final Act 5-
6 (citing Billsus ,r,r 29-35, 38, Fig. 3); Ans. 6-7 (same). Appellants
discusses only Paragraph 29, but do not address the disclosures in the other
cited paragraphs. Appeal Br. 19 (citing Billsus ,r 29, Fig. 3). As such, the
additional findings and conclusions related to Billsus remain unchallenged
on the record. In any event, Billsus discusses modifying a message's subject
or body and not just an email interface as disputed. Billsus ,r,r 29, 38.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 1 and claims 2-5, 9, 12, 25, and 26,
which are not argued separately.
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Application 13/052,676
THE OBVIOUSNESS REJECTION OVER BILLSUS,
ZHANG, AND FREEMAN
Claims 1-12, 25, and 26 3 are additionally rejected under 35 U.S.C.
I03(a) as being unpatentable over Billsus, Zhang (U.S. Pub. 2009/0313706
Al, published Dec. 17, 2009), and Freeman. Final Act. 15-25.
Appellants present the same arguments for Billsus for this rejection as
for the rejection based on Billsus, Lamanna, and Freeman. Appeal Br. 19,
21. We are not persuaded for reasons similar to those previously discussed.
We refer above for more details but note, in particular, this rejection does
not rely on Billsus alone to teach the disputed limitations in claim 1. Rather,
the rejection relies on the collective teachings in Billsus, Zhang, and
Freeman. Final Act. 15-19 ( citing Zhang ,r 24 and Freeman ,r,r 9, 27); see
Ans. 8-10.
Appellants additionally argue Zhang does not relate to modifying
non-compliant content automatically in claim 1. Appeal Br. 20. This
argument too attacks Zhang individually. That is, although relying on Zhang
to teach automatically identifying "non-compliant content" (Final Act. 17
(citing Zhang ,r 24)), the Examiner relies on Zhang in combination with
Billsus to teach modifying data content "responsive to the identification of
the non-compliant content" (id. at 17-18 (citing Billsus ,r,r 29-35, 38,
Fig. 3)).
Appellants further argue Zhang does not teach modifying the
non-compliant data content, including "based upon the content modification
engine." See Appeal Br. 20 (quotation marks omitted). However, these
3 Although the Examiner omits claim 26 from the rejection's heading (Final
Act. 15), the rejection's body discusses claim 26 (id. at 25).
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Application 13/052,676
additional arguments are not commensurate in scope with claim 1. Claim 1
does not recite modifying the data content using the content modification
engine. Instead, claim 1 recites code configured to ( 1) "extract and convert,
using the input content analyzer of the content modification engine, the data
content to a form suitable for analysis," (2) "analyze the data content to be
shared," without reciting that the content modification engine performs this
analysis, (3) "automatically identify, based on the analyzing, non-compliant
content," and (4) "automatically modify, responsive to the identification of
non-compliant content, at least a subset of the data content." Appeal Br. 23
(Claims App'x).
Moreover, concerning whether Zhang teaches modifying data content
using predetermined rules (see Appeal Br. 20), the Examiner further relies
on Freeman in combination with Billsus and Zhang to teach identifying
non-compliant content "associated with a predetermined rule set" (Final
Act. 18-19). This argument fails to consider fully the rejection as proposed
by the Examiner and thus is unpersuasive.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 1 and claims 2-12, 25, and 26, which
are not argued separately.
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Application 13/052,676
THE OBVIOUSNESS REJECTION OVER BILLSUS,
THOMPSON, AND FREEMAN
Claims 1-12, 25, and 26 are even further rejected under 35 U.S.C.
I03(a) as being unpatentable over Billsus, Thompson4 (U.S. Pub.
2010/0049807 Al, published Feb. 25, 2010), and Freeman. Final Act.
26-36.
Appellants present the same arguments concerning Billsus for this
rejection as for the previous discussed rejections. Appeal Br. 19, 21. We
are not persuaded for reasons similar to those previously discussed. We
refer above for more details but note, in particular, the rejection does not rely
on Billsus alone to teach the disputed limitations in representative claim 1.
Rather, the rejection relies on the collective teachings in Billsus, Thompson,
and Freeman. Final Act. 26-29 ( citing Thompson ,r,r 31, 56 and Freeman
,r,r 9, 27); see Ans. 8-10.
Appellants additionally argue Thompson does not relate to modifying
non-compliant content automatically in claim 1. Appeal Br. 20. This
argument too attacks Thompson individually. That is, although relying on
Thompson to teach automatically identifying "non-compliant content" (Final
Act. 28-29 ( citing Thompson ,r,r 31, 56) ), the Examiner relies on Thompson
in combination with Billsus to teach modifying data content "responsive to
the identification of the non-compliant content" (id. ( citing Billsus
,r,r 29-35, Fig. 3)).
4 The Examiner further lists "First Data Corporation" in the rejection's
heading. Final Act. 27. We presume the Examiner is referring to Thompson
and will use Thompson in the Opinion for simplicity.
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Appellants further argue Thompson does not teach modifying the non-
compliant data content, including "based upon the content modification
engine." See Appeal Br. 20 ( quotation marks omitted). We are not
persuaded for the reasons previously discussed when addressing the
rejection of Billsus, Zhang, and Freeman.
Moreover, concerning whether Thompson teaches modifying data
content using predetermined rules (see Appeal Br. 20), the Examiner relies
on Freeman in combination with Billsus and Thompson to teach identifying
non-compliant content "associated with a predetermined rule set" (Final
Act. 28-29). This argument fails to consider fully the rejection as proposed
by the Examiner and thus is unpersuasive.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 1 and claims 2-12, 25, and 26, which
are not argued separately.
THE REMAINING OBVIOUSNESS REJECTIONS
Claims 6-8, 10, and 11 are rejected under 35 U.S.C. I03(a) as being
unpatentable over Billsus, Lamanna, Freeman, and Chen 5 (US 7,509,384 B 1,
issued Mar. 24, 2009). Final Act. 12-15. Claim 27 is rejected under
35 U.S.C. I03(a) as being unpatentable over (a) Billsus, Lamanna, Freeman,
and Andrews (US Pub. 2012/0209839 Al, published Aug. 16, 2012) (id. at
15), (b) Billsus, Zhang, Freeman, and Andrews (id. at 25-26), and
(c) Billsus, Thompson, Freeman, and Andrews (id. at 36-37). These
rejections have not been separately argued. See Appeal Br. 16, 18-21. We
5 The Examiner refers to the reference as "Chen-IBM." Final Act. 12-13.
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sustain these rejections for the same reasons as those discussed above for
one of claims 1 and 25, from which claims 6-8, 10, 11, and 27 depend
directly or indirectly. Id. at 23-27 (Claims App 'x).
DECISION
1-5, 9, 12,
Billsus,
1-5, 9, 12,
§ 103 Lamanna, and
25, and 26 25, and 26
Freeman
Billsus,
6-8, 10,and
§ 103
Lamanna, 6-8, 10,
11 Freeman, and and 11
Chen
Billsus,
27 § 103
Lamanna,
27
Freeman, and
Andrews
1-12, 25,
§ 103
Billsus, Zhang, 1-12
' and26 and Freeman 25, and 26
Billsus, Zhang,
27 § 103 Freeman, and 27
Andrews
1-12, 25,
Billsus,
1-12
§ 103 Thompson, ' and26 25, and 26
and Freeman
Billsus,
27 § 103
Thompson,
27
Freeman, and
Andrews
Summary
1-12
and 25-27
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Application 13/052,676
We decline to reach the Examiner's provisional rejection of claims
1-12 and 25-27 on the ground of non-statutory obviousness-type double
patenting.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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