Ex Parte Bleizeffer et al

Board of Patent Appeals and Interferences

Nov 30, 2006

09877157 (B.P.A.I. Nov. 30, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TERRY MICHAEL BLEIZEFFER, MARK DAVID GILMORE, and
MARTIN JOSEPH CLAYTON PRESLER-MARSHALL
____________

Appeal No. 2006-2354
Application No. 09/877,157
Technology Center 3600
____________

ON BRIEF
____________

Before LEVY, NAPPI and HORNER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the examiner's
final rejection of claims 1-24, all of the claims pending in the application.
We affirm.
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BACKGROUND
The appellants’ invention relates to a method, apparatus, interface, and
computer program product for creating a privacy policy. Claims 1 and 23,
reproduced below, are exemplary of the subject matter on appeal.
1. A data processing apparatus-implemented method
for creating a privacy policy, comprising data processing
apparatus-implemented steps of:
creating a policy group;
moving a data element to the policy group; and
generating a privacy policy based on the policy group.
23. An interface for creating a privacy policy,
comprising:
a first portion for displaying predefined data elements;
a second portion for displaying groups of data elements,
wherein a group of data elements shares at least one
common property; and
a third portion for displaying a privacy policy generated
from the groups of data elements.
A copy of all of the claims on appeal can be found in the appendix to the
appellants’ brief.
The examiner relies upon the following as evidence of unpatentability:
Abraham et al. (Abraham) WO
98/40987
Sep. 17, 1998
Moriconi et al. (Moriconi) 6,158,010 Dec. 05, 2000
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The appellants seek our review of the examiner’s rejection of claims 1-24
under 35 U.S.C. § 103(a) as being unpatentable over Moriconi in view of
Abraham.
Rather than reiterate in detail the conflicting viewpoints advanced by the
examiner and the appellants regarding this appeal, we make reference to the
examiner's answer (mailed February 3, 2006) for the examiner's complete
reasoning in support of the rejection and to the appellants’ brief (filed January 31,
2005) and reply brief (filed March 31, 2006) for the appellants’ arguments.

OPINION
In reaching our decision in this appeal, we have carefully considered the
appellants’ specification and claims, the applied prior art, and the respective
positions articulated by the appellants and the examiner. As a consequence of our
review, we affirm the examiner’s rejection of claims 1-24 under 35 U.S.C. §
103(a).
Only those arguments actually made by the appellants have been considered
in this decision. Arguments that the appellants could have made but chose not to
make in the brief have not been considered. We deem such arguments to be
waived by the appellants. See 37 C.F.R. § 41.37(c)(1)(vii) (effective September
13, 2004, 69 Fed. Reg. 49959 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21
(September 7, 2004)).
Claims 1, 12, and 24
The appellants argue claims 1, 12, and 24 as a group. As such, we treat
claim 1 as the representative claim. In rejecting claims under 35 U.S.C. § 103(a),
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the examiner bears the initial burden of establishing a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). See also In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984). The examiner can satisfy this burden by showing that some
objective teaching in the prior art or knowledge generally available to one of
ordinary skill in the art suggests the claimed subject matter. In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Only if this initial burden is
met does the burden of coming forward with evidence or argument shift to the
appellant. Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki, 745
F.2d at 1472, 223 USPQ at 788.
In the rejection of independent claim 1, the examiner determined that
Moriconi discloses a method for creating a privacy policy as claimed except that it
does not explicitly disclose creating a policy group. The examiner relies on
Abraham for the teaching of creating a policy group. The examiner found that it
would have been obvious to one having ordinary skill in the art at the time the
invention was made to combine the method and apparatus of Moriconi with the
method and apparatus of Abraham in order to secure management of a computer
network. Answer, p. 3.
The appellants contend that the examiner has failed to meet his initial burden
of presenting a prima facie case of obviousness. Brief, p. 11 (citing In re Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444). Specifically, the appellants argue that
neither Moriconi nor Abraham teach or suggest any type of privacy policy, or the
creation of a privacy policy. Brief, pp. 11-12. The appellants contend that
Moriconi is directed to ensuring that clients are authorized to access securable
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components by use of a security policy, and that security and privacy are different
concepts such that the teaching of a security policy in Moriconi does not teach or
suggest a privacy policy as claimed. Brief, p. 12. The appellants presented
evidence demonstrating the differences between security and privacy policies and
services. Brief, pp. 12-13 (discussing evidence in Appendices A-C). The
appellants further argue that even if Moriconi discloses enforcement of a privacy
policy, claim 1 is not directed to enforcement, but rather it is directed to
establishment or creation of a privacy policy. Brief, p. 14. As such, the appellants
contend that the examiner has failed to establish any teaching or suggestion in the
prior art of creating a privacy policy, or any step of creating a privacy policy based
on a policy group. Brief, p. 14.
To determine whether a prima facie case of obviousness has been
established, we are guided by the factors set forth in Graham v. John Deere Co.,
383 U.S. 1, 17 (1966), viz., (1) the scope and content of the prior art; (2) the
differences between the prior art and the claims at issue; and (3) the level of
ordinary skill in the art.1
We first turn to the scope and content of the prior art and make the following
findings of fact.
1. Our review of the prior art relied upon by the examiner, shows that
Moriconi discloses a method for creating a security policy that
includes creating a policy group, moving a data element to a policy
group, and generating a security policy based on the policy group.

1 Although Graham also suggests analysis of secondary considerations such as commercial
success, long felt but unsolved needs, failure of others, etc., the appellants presented no such
evidence of secondary considerations for the Board’s consideration.
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2. In particular, we find that Moriconi describes a process for creating
and customizing rules to manage a security policy from a centralized
server in a distributed computer network. Moriconi, col. 3, lines 50-
54 and 57-63 and col. 4, lines 19-22.
3. Moriconi discloses that an administrator can use a policy manager to
create a global policy that specifies access privileges of the user to
securable components of the network. Moriconi, col. 4, lines 25-26.
4. The policy manager allows privileges to be grouped together and
granted to a role.
5. Moriconi teaches, “Roles are named groups of privileges that are
granted to users or other roles.” Moriconi, col. 7, lines 55-56.
6. “A role is often used to represent the set of privileges needed to
perform a job function.” Moriconi, col. 7, lines 57-58.
7. Moriconi discloses that the administrator may add global roles (912)
and local roles (916) on a server or client using the policy manager
(210), thereby teaching that the administrator can create policy
groups. Moriconi, col. 12, lines 35-39, see also col. 12, lines 55-61.
8. In this case, the data elements in Moriconi are the individual
privileges and the data elements (privileges) are combined into a
named group (based on a role), which has been defined by the
administrator creating the security policy, and the security policy is
then generated based on these groups (by assigning the privileges
associated with that role to the designated user(s)).
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9. The policy manager also allows different users to be grouped together.
Moriconi, col. 6, lines 28-29.
10. For example, Moriconi teaches that “[u]sers granted to a role are the
members of that role.” Moriconi, col. 7, lines 56-57.
11. In this example, the data elements in Moriconi are the individual users
and the data elements (users) are combined into a named group
(corresponding to a role), that is defined by the administrator, and the
security policy is then generated based on these groups by assigning
the certain privileges to the users within the named group. Moriconi,
col. 7, lines 42-54 and col. 9, lines 61-63.
12. The data elements (users) in the group, as in the claimed invention, all
share common properties, viz, they share the same role or job.
13. We find that Abraham similarly discloses a method for creating a
security policy that includes creating a policy group, adding data
elements to the group, and generating a security policy based on the
group.
14. Specifically, the system of Abraham discloses a method for a system
administrator to set specific policies for the users of a local area
network regarding what type of services and information each user
may have access to on the Internet. Abraham, page 8, lines 4-6.
15. The system administrator uses a graphical user interface to set policies
for each user and information about the policies is stored in tables in a
database. Abraham, page 10, lines 20-22; see also page 12, lines 10-
13.
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16. Abraham discloses allowing system administrators to group users of
the LAN together. Abraham, page 14, lines 30-32.
17. The system administrator can create (“add”) subgroups to a root group
and then move the data elements (“add users as members”) to the
subgroup via the graphical user interface. Abraham, page 15, lines 8-
13; see also page 29, lines 19-27.
18. Abraham teaches that the user inherits all of the policies and quotas of
the group to which it has become a member. Abraham, page 30, lines
2-3.
19. After the system administrator has added a new group, a record for the
group is added to a user group table in a database. Moriconi, page 28,
lines 3-5.
20. A record for a user is added to a transmit list stored in a database and
is used to construct a user policy table that is ultimately provided to
the filter executive. Moriconi, page 24, lines 25-32.
21. A filter executive loads the policies for each user from the database
and generates a policy (“set of rules”) for each user. These rules are
used by the filter engine to block unauthorized services or
information. Abraham, page 10, lines 32-34; see also page 13, lines
26-31 and Figures 15A-15C.
22. As such, we find that both prior art references teach or suggest the
method of claim 1 except that the method is used to generate a
security policy instead of a privacy policy.
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23. The appellants admit in the specification that the data elements of the
P3P specification are already known in the prior art:
The [prior art] P3P specification defines the syntax and
semantics of P3P privacy policies and the mechanisms
for associating policies with Web resources. P3P policies
consist of statements made using the P3P vocabulary for
expressing privacy practices. P3P policies also reference
elements of the P3P base data schema – a standard set of
data elements. The P3P specification includes a
mechanism for defining new data elements and data sets
and a simple mechanism that allows for extensions to the
P3P vocabulary. (Specification, page 1, line 27 – page 2,
line 3.)
24. As such, the claimed method merely provides a way to create a
privacy policy using known method steps, as taught by Moriconi and
Abraham, and using known data elements from the P3P specification.
25. Further, the recited step of “generating a privacy policy” is described
in the specification as merely generating a list of all of the selected
data elements in the policy. Specification, page 15, lines 28-30.
26. For example, the specification describes:
[P]olicy pane 430 in Figure 4 shows a list of all the data
elements in the policy. . . . This provides the user with an
immediate description of the state of the policy. The list
of data elements provides a summary of all data elements
in the policy to allow the user to easily match up with, for
example, a Web form that the policy may cover.
(Specification, page 15, line 29 – page 16, line 6.)
As such, the question before us is whether the difference between using the
claimed method to generate a list of data elements relating to privacy as opposed to
a data elements relating to security is unobvious and thus patentable. In other
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words, the question before us is whether patentable weight should be accorded to
the claim limitations that recite a “privacy” policy.
Functional versus non-functional descriptive material
Descriptive material can be characterized as either “functional descriptive
material” or “nonfunctional descriptive material.” Exemplary “functional
descriptive material” consists of data structures and computer programs, which
impart functionality when employed as a computer component. “Nonfunctional
descriptive material” includes but is not limited to music, literary works and a
compilation or mere arrangement of data. If we find that the underlying privacy
data elements used to generate the claimed privacy policy are nonfunctional
descriptive material, then the question before us is whether a claim that differs
from the prior art solely as to non-functional descriptive material is unobvious
under 35 U.S.C. § 103. Although no issue under 35 U.S.C. § 101 is before this
Board, the decisions of our reviewing courts on this issue do provide useful
guidance with respect to (a) distinctions between “functional” and “non functional”
descriptive material, and (b) how the distinctions impact the courts’ treatment of
each type of descriptive material.
Functional descriptive material
When functional descriptive material is recorded on some computer-readable
medium, it becomes structurally and functionally interrelated to the medium and
will be statutory in most cases since use of technology permits the function of the
descriptive material to be realized. Compare In re Lowry, 32 F.3d 1579, 1583-84,
32 USPQ2d 1031, 1035 (Fed. Cir. 1994) (claim to data structure stored on a
computer readable medium that increases computer efficiency held statutory) with
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In re Warmerdam, 33 F.3d 1354, 1361-62, 31 USPQ2d 1754, 1759-60 (Fed. Cir.
1994) (claim to computer having a specific data structure stored in memory held
statutory product-by-process claim but claim to a data structure that referred to
ideas reflected in nonstatutory process rather than referring to a physical
arrangement of the contents of a memory held nonstatutory).
Non-functional descriptive material
When nonfunctional descriptive material is recorded on a computer-readable
medium, in a computer or on an electromagnetic carrier signal, it is not statutory
because no requisite functionality is present to satisfy the practical application
requirement. Merely claiming nonfunctional descriptive material, i.e., abstract
ideas, stored in a computer-readable medium, in a computer, on an electromagnetic
carrier signal does not make it statutory. See Diamond v. Diehr, 450 U.S. 175,
185-86, 209 USPQ 1, 7-8 (1981) (noting that the claims for an algorithm in Benson
were unpatentable as abstract ideas because “[t]he sole practical application of the
algorithm was in connection with the programming of a general purpose
computer.”) Such a result would exalt form over substance. In re Sarkar, 588
F.2d 1330, 1333, 200 USPQ 132, 137 (CCPA 1978) (“[E]ach invention must be
evaluated as claimed; yet semantogenic considerations preclude a determination
based solely on words appearing in the claims. In the final analysis under 101, the
claimed invention, as a whole, must be evaluated for what it is.”) (quoted with
approval in In re Abele, 684 F.2d 902, 907, 214 USPQ 682, 687 (CCPA 1982)).
See also In re Johnson, 589 F.2d 1070, 1077, 200 USPQ 199, 206 (CCPA 1978)
(“form of the claim is often an exercise in drafting”). Thus, nonstatutory music is
not a computer component, and it does not become statutory by merely recording it
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on a compact disk. Protection for this type of work is provided under copyright
law.
Prior art rejections and descriptive material
When presented with a claim including nonfunctional descriptive material,
an Examiner must determine whether such material should be given patentable
weight. The Patent and Trademark Office (PTO) must consider all claim
limitations when determining patentability of an invention over the prior art. In re
Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983). The PTO may
not disregard claim limitations comprised of printed matter. See Gulack, 703 F.2d
at 1384, 217 USPQ at 403; see also Diamond v. Diehr, 450 U.S. at 191, 209
USPQ at 10. However, the PTO need not give patentable weight to descriptive
material absent a new and unobvious functional relationship between the
descriptive material and the substrate. See Gulack, 703 F.2d at 1386, 217 USPQ
at 404. See also In re Ngai, 367 F.3d 1336, 1338, 70 USPQ2d 1862, 1863-64 (Fed.
Cir. 2004); In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir.
1994). The burden of establishing the absence of a novel, nonobvious functional
relationship rests with the PTO. In re Lowry, 32 F.3d at 1584, 32 USPQ2d at
1034.
We conclude that when the prior art describes all of the claimed structural
and functional relationships between descriptive material and the substrate, but the
prior art describes a different descriptive material than the claim, then the claimed
descriptive material is non-functional and will not be constitute a sufficient
difference from the prior art to establish patentability. That is, we conclude that
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such a scenario presents no new and unobvious functional relationship between the
descriptive material and the substrate.
We find that the P3P data elements used in the method to generate a privacy
policy do not functionally change the data processing apparatus-implemented
method in that they do not alter how the process steps are to be performed to
achieve the utility of the invention. Rather, these data elements are analogous to
printed matter in that they represent merely underlying data in a database. See In
re Lowry, 32 F.3d 1579, 1583, 32 USPQ2d 1031, 1034 (Fed. Cir. 1994). In
particular, the prior art suggests using the method steps to create a security policy
using, for example, the data elements of users and/or privileges. Mariconi, col. _,
lines __. The present invention uses these same method steps to create a privacy
policy using the data elements from the P3P data base schema. The difference
between the prior art and the claimed invention is simply the starting data elements
that result in generation of privacy policy as opposed to a security policy. These
starting data elements neither enhance nor diminish the functionality of the steps
used to generate the policy.
This case is distinguished from Lowry, because in Lowry the claims were
directed to data structures stored in memory that contained both information used
by application programs and information regarding their physical
interrelationships within a memory. Id. As such, the court found that the claimed
data structures of Lowry’s invention were not analogous to printed matter because
they managed information by imposing a physical organization on the data and
provided increased computing efficiency. Id. By contrast, the present invention is
directed to a method where the only distinction to the prior art is the content of the
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data elements. Unlike in Lowry, the data in the present case does not impose any
functional requirements on the claimed method or otherwise depend functionally
on the information content of the data elements. Nonfunctional descriptive
material cannot render nonobvious an invention that would have otherwise been
obvious. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir.
2004). Cf. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir.
1983) (when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention form the prior art in terms of
patentability). See also Ex parte Curry, [cite], aff’d. In re Curry, [Westlaw cite]
(Fed. Cir. Mar. 10, 2006) (treating data as nonfunctional descriptive material).
We find this case similar to In re Bernhart, 417 F.2d 1395, 163 USPQ 611
(CCPA 1969) in which the court found a claimed method obvious in view of the
prior art where the only difference was the addition of a step of applying the
computer output to a plotting apparatus. The court found that any person would
know how to take the computer output and use it to control a drafting machine. Id.
In this case, the only difference in the claimed steps and the prior art is the step of
generating a privacy policy. This step is described in the specification as
generation of a list of all of the selected data elements in the policy. Specification,
page 15, lines 28-30. As demonstrated in the teachings of both Moriconi and
Abraham, a person skilled in the art at the time of the invention would know how
to take the policy groups and the selected data elements therein and generate a list
of these data elements. We find that the fact that the data elements in the list relate
to privacy, rather than security, is not a patentable distinction, because the content
of the data elements does not functionally relate to how they are displayed or
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otherwise used or manipulated by the claimed method. As such, we sustain the
examiner’s rejection of claims 1, 12, and 24 as unpatentable under 35 U.S.C. §
103.
The appellant did not separately argue the patentability of the rejected
dependent claims 2, 3, 8, 9, 13, 14, 19, and 20. Rather, the appellant relied on his
arguments for patentability of claims 1 and 12. As such, we treat claims 2, 3, 8, 9,
13, 14, 19, and 20 as standing or falling together with their respective independent
claims.
Claims 4 and 15
The appellants argue claims 4 and 15 as a group. We treat claim 4 as the
representative claim. The appellants contend that none of the cited references
suggest the claimed steps of updating a policy-wide property, and generating the
privacy policy based on the policy-wide property. Brief, p. 15. We find that
Abraham describes a method for allowing a system administrator to set policies,
e.g., file type policies that prevent groups and users from downloading certain
types of files, which can be policy-wide. Abraham, page 37, lines 7-10 (policy
becomes policy-wide if the administrator selects to apply it to the root group). As
discussed above in our discussion of claim 1, the system of Abraham then
generates the policy based on the settings selected by the administrator. As such,
we sustain the examiner’s rejection of claims 4 and 15.
Claims 5 and 16
The appellants argue claims 5 and 16 as a group. We treat claim 5 as the
representative claim. The examiner rejected claim 5 on the grounds that although
Moriconi does not expressly teach the step of generating a human-readable version
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of the policy, it would have been obvious that if the policy is manipulated via a
GUI that it would be readable to a user. Answer, p. 3. The appellants argue that
none of the references teach or suggest this step. Brief, p. 16. The appellants
further argue that the fact that a prior art device could be modified so as to produce
the claimed device is not a basis for an obviousness rejection unless the prior art
suggested the desirability of such a modification. Brief, p. 16 (citing In re Gordon,
733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984)).
We find that Abraham does, in fact, disclose the step of generating a human-
readable version of the policy. For example, when a system administrator sets a
site policy that allows a group to access all sites with the exception of specified
sites, or denies access to the group to all sites with the exception of specified sites,
the policy is displayed to the administrator in human readable form in the site
policy tab window, as shown in Figure 8O. Abraham, page 41, lines 17-30.
Accordingly, we sustain the rejection of claims 5 and 16 under 35 U.S.C. § 103(a).

Claims 6, 7, 17, and 18
The appellants argue claims 6, 7, 17, and 18 as a group. We treat claims 6
and 7 as representative claims. Claims 6 and 7 recite that the human readable
version of the policy is an HTML or XML version, respectively. The examiner
took Official Notice that generating a “hypertext markup language version of the
policy” or “an extensible markup language version of the policy” is common and
well known in the prior art in reference to policy management. Answer, p. 4. The
examiner made this same rejection of these claims based on Official Notice in the
Non-Final Office Action dated March 11, 2004 and in the Final Office Action
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dated September 9, 2004. The appellants, in Reply to these Office Actions, never
contested the supposed errors in the examiner’s action. See Reply to Non-Final
Office Action dated June 7, 2004 and Reply to Final Office Action dated
November 2, 2004. The appellants now belatedly argue that the examiner’s
assertion that the features of claims 6 and 7 are “well known” and thus obvious is
not a proper basis for making an obviousness rejection. Brief, p. 16. We treat
these findings as admitted because the appellants failed to challenge them and it is
clear from the record that the appellants had ample opportunity to demand that the
examiner produce authority for his statements. See In re Chevenard, 139 F.2d 711,
712-13, 60 USPQ 239, 241 (CCPA 1944) (declining to consider the belated
challenge by an appellant to an examiner’s assertion as to “common knowledge” in
the art “in the absence of any demand by appellant for the examiner to produce
authority for his statement”). See also In re Soli, 317 F.2d 941, 947, 137 USPQ
797, 801 (CCPA 1963) (affirming a previously uncontested obviousness rejection
based on official notice).
We agree with the examiner that it would have been obvious to one having
ordinary skill in the art at the time of the invention, possessed with the knowledge
that the use of HTML and XML protocols for displaying data is well known in the
art, to generate an HTML or XML version of the policy in order to provide a
format that is universally viewable across a wide variety of computer platforms and
operating systems. As such, we find that the examiner made out a prima facie case
of obviousness of claims 6, 7, 17, and 18. Accordingly, we sustain the examiner’s
rejections of these claims under 35 U.S.C. § 103(a).
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Claims 10 and 21
The appellants argue claims 10 and 21 as a group. As such, we treat claim
10 as the representative claim. The appellants argue that claim 10 is patentable
over the cited references because it claims generating a table of policy elements
that have a correlation to the policy statement. The appellants contend that the
examiner has failed to make a prima facie showing of obviousness because the
cited references do not teach or suggest this step. Brief, p. 17.
We find that Abraham discloses the step of generating a table of policy
elements that have a correlation to a policy statement. For example, when a system
administrator sets a site policy that allows a group to access all sites with the
exception of specified sites, or denies access to the group to all sites with the
exception of specified sites, the policy is displayed to the administrator in a table,
as shown in Figure 8O. Abraham, page 41, lines 17-21. We do not find the fact
that the table of policy elements has a correlation to a policy statement to be a
patentable distinction, in view of the admitted prior art described in the background
of the appellants’ own specification, which recognizes that P3P policies consist of
statements made using the P3P vocabulary for expressing privacy practices.
Specification, page 1, lines 29-31. Since it was known to express P3P policies as
policy statements, it would have been obvious to one having ordinary skill in the
art at the time of the invention, in view of the teaching of Abraham, to have
displayed the policy elements to the user in a table where the policy elements
correlate to P3P policy statements. Accordingly, we sustain the rejection of claims
10 and 21 under 35 U.S.C. § 103(a).
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Claims 11 and 22
The appellants argue claims 11 and 22 as a group. We treat claim 11 as the
representative claim. The examiner found the subject matter of claim 11 obvious
in view of Moriconi’s teaching of generating a log file, because it was well known
within modern computing systems to automate the generation of error reports from
log files. Answer, p. 4 (citing Moriconi, col. 11, lines 44-46). The appellants
argue that there is no teaching or suggestion in the cited references of generating an
error statement and that the examiner’s reliance on what is “well-known” in the art
is improper. Brief, p. 18.
We agree with the examiner and find that Moriconi teaches a parser/type
checker that reviews and reconstructs the policy rules to check for errors by
making sure that the rules are syntactically and semantically correct according to a
predefined policy language. Moriconi, col. 9, line 66 – col. 10, line 3 and col. 11,
lines 44-47. Moriconi further teaches maintaining an audit log that is accessible by
the administrator via a log viewer in the management station. Moriconi, col. 11,
lines 33-34. While Moriconi describes the audit log data file as containing a log of
information about authorization requests, we find that it would have been implicit
from the teaching of maintaining an audit log accessible by the administrator, and
from the teaching of checking the policy rules for errors, that any such errors
would be recorded in a log for access by the administrator to correct such errors
prior to distributing the policy to the client. In re Kahn, 441 F.3d 977, 987-88, 78
USPQ2d 1329, 1336 (quoting In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d
1313, 1317 (Fed. Cir. 2000) (“The test for an implicit showing is what the
combined teachings, knowledge of one of ordinary skill in the art, and the nature of
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Application No. 09/877,157

the problem to be solved as a whole would have suggested to those of ordinary
skill in the art.”) Accordingly, we sustain the examiner’s rejection of claims 11
and 22 under 35 U.S.C. § 103(a).
Claim 23
With regard to claim 23, the examiner determined that Moriconi discloses an
interface for creating a privacy policy as claimed, except that it does not explicitly
disclose a third portion for displaying a privacy policy generated from the groups
of data elements. The examiner found that Abraham discloses a third portion for
displaying a privacy policy generated from the groups of data elements and further
found that it would have been obvious to one having ordinary skill in the art at the
time the invention was made to combine the method of Moriconi with the method
of Abraham in order to secure management of a computer network. Answer, p. 6.
The appellants contend that Moriconi does not teach or suggest an interface
having a portion for displaying predefined data elements or a portion for displaying
groups of data elements. Brief, p. 18. The appellants further contend that
Abraham merely teaches using a graphical user interface to allow a user to input
information and does not teach or suggest an interface having a portion for
displaying a privacy policy generated from the groups of data elements. Brief, p.
19. The appellants argue that even when the teachings of Moriconi and Abraham
are combined, there is still no teaching or suggestion of an interface having the
three portions as claimed. Brief, p. 19.
We find that graphical user interface depicted in Figures 6 and 8O of
Abraham discloses all of the elements of claim 23. A disclosure that anticipates
under 35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103,
Appeal No. 2006-2354 Page 21
Application No. 09/877,157

for anticipation is the epitome of obviousness. In re Pearson, 494 F.2d 1399, 1402,
181 USPQ 641, 644 (CCPA 1974); see also In re Fracalossi, 681 F.2d 792, 794,
215 USPQ 569, 571 (CCPA 1982).
In particular, Figure 6 of Abraham shows a graphical user interface (70)
having a main window (84) with three portions. A first portion contains a list of
predefined data elements (user list 88) that identifies all users of the LAN.
Abraham, page 14, lines 14-15. A second portion displays groups of data elements
(group hierarchy 86). Abraham, page 14, line 32. In the example of Figure 5, the
root of the hierarchy is a group containing all of the users identified in the user list
88 and the subgroups contain users corresponding to various departments of a
corporation. Abraham, page 14, line 32 – page 15, line 4. As such, the users in the
root group and in the subgroups share at least one common property. In the case of
the root group, the common property is that all users are employees of the
corporation. In the case of subgroups, the common property is that the list users
are members of a particular corporate department. Finally, the interface (70)
includes a third portion that displays the policy generated from the groups of data
elements. In particular, Abraham teaches that the site policy tab 95 in the third
portion of the window 84 can be used by the administrator to set site policies for a
group in the group hierarchy 86. Abraham, page 41, lines 19-20. When the
administrator selects the site policy tab 95, a site policy tab window 145 is
generated by the interface (70), as shown in Figure 8O. Abraham, page 41, lines
20-21. When a system administrator sets a site policy that allows a group to access
all sites with the exception of specified sites, or denies access to the group to all
sites with the exception of specified sites, the generated policy is displayed to the
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Application No. 09/877,157

administrator, as shown in Figure 8O. Abraham, page 41, lines 26-30. As such,
we find that Abraham discloses all of the elements of claim 23. The only
difference between Abraham and the claimed interface is that the list of data
elements displayed in Abraham contains data elements relating to a security policy
instead of a privacy policy. For the same reasons provided above in the discussion
of claim 1, we find that this difference is not a patentable distinction over the prior
art. Accordingly, we sustain the examiner’s rejection of claim 23 under 35 U.S.C.
§ 103(a).

Appeal No. 2006-2354 Page 23
Application No. 09/877,157

CONCLUSION
To summarize, the collective teachings of Moriconi and Abraham teach or
suggest all limitations of claims 1-24. Even though, in some instances, we sustain
the examiner's rejections for different reasons than those advanced by the
examiner, our position is still based upon the collective teachings of the references
and does not constitute a new ground of rejection. In re Bush, 296 F.2d 491, 496,
131 USPQ 263, 266-67 (CCPA 1961); In re Boyer, 363 F.2d 455, 458 n.2, 150
USPQ 441, 444 n.2 (CCPA 1966). Accordingly, the decision of the examiner to
reject claims 1-24 under 35 U.S.C. § 103(a) is sustained.
Appeal No. 2006-2354 Page 24
Application No. 09/877,157

No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

)
STUART S. LEVY )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ROBERT E. NAPPI ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LINDA E. HORNER )
Administrative Patent Judge )
Appeal No. 2006-2354 Page 25
Application No. 09/877,157

Gerald R. Woods
IBM Corporation
T8/503
PO Box 12195
Research Triangle Park, NC 27709