Ex Parte Bhogal et alDownload PDFPatent Trial and Appeal BoardAug 26, 201311562471 (P.T.A.B. Aug. 26, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KULVIR S. BHOGAL, GREGORY J. BOSS, RICK A. HAMILTON, II and ALEXANDRE POLOZOFF ____________ Appeal 2011-004515 Application 11/562,471 Technology Center 2400 ____________ CAROLYN D. THOMAS, JOHNNY A. KUMAR and IRVIN E. BRANCH, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004515 Application 11/562,471 2 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). Appeal 2011-004515 Application 11/562,471 3 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 Appeal 2011-004515 Application 11/562,471 4 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 Appeal 2011-004515 Application 11/562,471 5 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 Copy with citationCopy as parenthetical citation