Ex Parte Bhogal et al

Patent Trial and Appeal Board

Aug 26, 2013

11562471 (P.T.A.B. Aug. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KULVIR S. BHOGAL, GREGORY J. BOSS,
RICK A. HAMILTON, II and ALEXANDRE POLOZOFF
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Appeal 2011-004515
Application 11/562,471
Technology Center 2400
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CAROLYN D. THOMAS, JOHNNY A. KUMAR and IRVIN E. BRANCH,
Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/562,471

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-5 and 7-22. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

THE INVENTION
Appellants’ claimed invention is directed to a method and a system
for encrypting portions of a document using selective annotation. See
Abstract.
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A method for encrypting a portion of a document written
with a digital pen, the method comprising:
defining an annotation border adjacent a first portion of a
document using a digital pen;
applying to the first portion of the document an
annotation verb, wherein the annotation verb specifies whether
the first portion of the document is to be encrypted; and
in the case that the annotation verb specifies that the first
portion of the document is to be encrypted, encrypting the first
portion of the document without encrypting a second portion of
the document.

REFERENCES and REJECTIONS
Claims 1-5 and 7-22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over O'Donnell Jr. (US 2002/0126105 A1; Sep. 12, 2002) in
view of Bargeron (US 2004/0252888 A1; Dec. 16, 2004), and further in
view of Sim (US 2006/0294599 A1; Dec. 28, 2006).

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Application 11/562,471

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ISSUE
The issue is whether the Examiner erred in finding that the
combination of O’Donnell, Bargeron, and Sim teaches the limitation of
“wherein the annotation verb specifies whether the first portion of the
document is to be encrypted” as recited in independent claim 1. Independent
claims 10, 16, and 21 recite commensurate limitations.
PRINCIPLE OF LAW
The claims, of course, do not stand alone. Rather, they are part
of “a fully integrated written instrument” consisting principally
of a specification that concludes with the claims. For that
reason, claims “must be read in view of the specification, of
which they are a part.” . . . [T]he specification “is always highly
relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a
disputed term.”
Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (citations
omitted).

ANALYSIS
Appellants argue that “it would not have been obvious to one of
ordinary skill in the art to combine the teachings of a reference entirely
unrelated to encryption (Bargeron et al.) with those of a reference teaching
encryption of an entire digital file (O'Donnell) ‘to provide a method for
encrypting portions of a document using selective annotation.’” (App. Br. 5;
Reply Br. 4).
Claim 1 requires, inter alia, an annotation verb that specifies whether
the first portion of the document is to be encrypted (see claim 1). We turn to
Appellants’ Specification to ascertain the meaning of the terms “annotation
verb” as recited in claim 1, because the Specification is the single best guide
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as to the meaning of a disputed term. See Phillips, 415 F.3d at 1315.
Appellants’ Specification describes an annotation verb to be a mechanism
for specifying whether and how the portion to which it is applied will be
encrypted. See Spec., ¶ [0016]. Appellants’ Specification further describes
examples of annotation verbs in Figure 2. See Spec., ¶ [0017] (describing
“Encrypt for Alex”, “Encrypt for Greg”, “Encrypt for Rick” as some
examples of annotation verbs to indicate the respective portions to be shared
only with Alex, Greg, and Rick). In other words, the annotation verbs select
the different portions of the document that are to be encrypted for the
different individuals – Alex, Greg, and Rick in this example. Thus, an
annotation verb encrypts portions of a document using selective annotation.
Here, the Examiner relies upon Bargeron to teach and/or suggest the
argued limitation. See Ans. 4. Therefore, our discussion will be limited
thereto. Specifically, Bargeron teaches different types of annotations. See
Bargeron, [ ] [ ]. However, the Examiner has not shown that
Bargeron teaches an annotation verb. In other words, there is no teaching in
Bargeron of selective annotation by using an annotation verb that encrypts
portions of a document, as required by the claims. Instead, Bargeron’s focus
is on classifying the annotations according to annotation type (i.e., underline,
circle, arrows, etc.), and anchoring the annotations to appropriate regions or
positions in a document. See Bargeron, Abstract. However, the Examiner
has not directed our attention to any selective annotation verb in Bargeron.
In addition, the Examiner has not shown that O’Donnell and Sim make up
for the deficiencies of Bargeron.
Since we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants’ other arguments. It
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follows that Appellants have shown that the Examiner erred in finding that
the combination of O’Donnell, Bargeron, and Sim renders claims 1-5 and 7-
22 unpatentable.
We are therefore constrained by the record before us to find that the
Examiner erred in rejecting independent claims 1, 10, 16, 21 and dependent
claims 2-5 and 7-9, 11-15, 17-20, and 22 for similar reasons.
In view of the above discussion, since Appellants have demonstrated
that the Examiner erred in finding the argued limitations in the disclosure of
Bargeron, the Examiner’s 35 U.S.C. § 103(a) rejection of representative
independent claim 1, as well as claims 2-22, is reversed.

DECISION
We reverse the Examiner’s § 103 rejection.

REVERSED

ELD