Ex Parte Chakra et al

Patent Trial and Appeal Board

Dec 22, 2014

11873006 (P.T.A.B. Dec. 22, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte AL CHAKRA, FRANK L. JANIA, DAVID M. OGLE, and
HEMA SRIKANTH
___________

Appeal 2012-007746
Application 11/873,006
Technology Center 2400
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Before STEVEN D. A. MCCARTHY, DAVID M. KOHUT, and
ERIC B. CHEN, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-007746
Application 11/873,006

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This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1–4, 7–14, and 17–20. Claims 5, 6, 15, and 16 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to preventing context sensitive
information from being transmitted from an instant message (IM) client. At
least one policy is received that includes an entry of disallowed terms.
Words typed into an IM message of an IM client by a user are monitored. In
response to any of the words typed into the IM message matching any
disallowed terms, transmission of the IM message is temporarily halted.
(Abstract.)
Claim 1 is exemplary, with disputed limitations in italics:
1. A method for protecting context sensitive information
from being transmitted from an instant message (IM) client, the
method comprising:
receiving at least one policy, wherein the at least one policy
includes an entry of one or more disallowed terms, and rules that
define different actions to be taken based on which of the one or more
disallowed terms are being communicated and between whom;
monitoring words typed into the IM client of a sender, wherein
the words form an IM message to be communicated to a second IM
client of a recipient;
determining that at least a first word of the words typed into the
IM client matches a first disallowed term of the one or more
disallowed terms;
determining that the first word matching the first disallowed
term satisfies a first condition of a first rule of the rules;

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determining that the sender and the recipient satisfy a second
condition of the first rule; and
responsive to determining that the first and the second
conditions of the first rule are satisfied, performing a first action
defined by the first rule, wherein the first action comprises
temporarily halting transmission of the IM message.

Claims 1–4, 7–14, and 17–20 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Arnold (US 2004/0177271 A1; Sept. 9, 2004).

ANALYSIS
We are unpersuaded by Appellants’ arguments (App. Br. 4–5; see also
Reply Br. 2–3) that Arnold does not describe the preamble language
“protecting context sensitive information from being transmitted from an
instant message (IM) client,” as recited in independent claim 1.
The Examiner found that the unsent electronic message (e.g., AOL
Instant Messenger (AIM) or Microsoft Messenger™) of Arnold corresponds
to the preamble language “protecting context sensitive information from
being transmitted from an instant message (IM) client.” (Ans. 9.) We agree
with the Examiner.
Claim 1 recites “[a] method for protecting context sensitive
information from being transmitted from an instant message (IM) client”
(emphasis added).
Appellants’ Specification discloses that “[a]ccording to the exemplary
embodiment, an IM monitoring application 24 is provided that monitors in
real-time words typed into the [IM message] 18 of the sender’s IM client 16,
and protects context-sensitive information [from] being transmitted to the
recipient 22” (emphasis added). (Spec. para. 11; see also Fig. 1.) Thus,
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Appellants’ IM monitoring application 24 performs the function of
“protecting context sensitive information from being transmitted from an
instant message (IM) client.”
Appellants’ Specification further discloses that “[i]n one embodiment,
the IM monitoring application 24 may reside on the same computer as the
IM client 16 that it monitors” (emphasis added). (Spec. para. 11.) Because
IM monitoring application 24 resides on the same computer as the IM
client 16 in one embodiment, Appellants’ Specification provides an implicit
disclosure that in alternate embodiments, IM monitoring application 24 can
reside at a different location from IM client 16.
Accordingly, under the broadest reasonable interpretation consistent
with Appellants’ Specification, we interpret the preamble language
“protecting context sensitive information from being transmitted from an
instant message (IM) client” as either: (i) directly preventing transmission
for the IM client (i.e., IM monitoring application 24 resides on the same
computer as the IM client 16); or (ii) indirectly preventing transmission from
the IM client (i.e., IM monitoring application 24 can reside at a different
location from IM client 16).
Arnold relates to “electronic screening tools for managing electronic
message communications.” (Para. 1.) Arnold explains that “[t]he present
invention is directed to . . . identifying content in an unsent electronic
message composed by a sender” such that “[a]n electronic screening tool is
applied to the unsent electronic message prior to transmission of the unsent
electronic message from a server” and if the unsent electronic message is
objectionable, one option is to forward the “unsent electronic message to a
supervisor or designated company official for approval.” (Para. 4.)
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Arnold further explains that the invention can be used to filter instant
messages and includes message accessor module 500 that retrieves
electronic messages for processing by message analyzer module 600.
(Para. 139.) Arnold also explains that “[t]he examples also describe the
implementation of a proxy service . . . acting as a proxy between a user’s
instant messaging (IM) client such as AOL Instant Messenger (AIM) or
Microsoft Messenger™” such that “message accessor 500 that received a
raw AIM instant message may parse the message for the salient components
such as sender, recipient, message body, attachments, etc.” (Id.) Even if the
preamble language limits claim 1, because Arnold explains that message
accessor 500 filters AIM or Microsoft Messenger™ instant messages,
Arnold describes the preamble language “protecting context sensitive
information from being transmitted from an instant message (IM) client.”
Appellants argue that “Arnold disclose[s] a proxy filtering service that
evaluates a communication after it has been sent by the sender, and not
before the communication has been sent from the sender” but “[t]he claims
recite specific language about securing communications transmitted with the
instant messaging mechanism, and not a proxy filtering service.” (App.
Br. 4.) Similarly, Appellants argue that “[n]ot only will the message [of
Arnold] have been sent, but the instant message is passed through a message
accessor before arriving at the back-end for processing” and thus, “the
message has been sent from the instant messenger client.” (Reply Br. 3.)
However, as discussed previously, the preamble language “protecting
context sensitive information from being transmitted from an instant
message (IM) client” is broad enough to encompass the AOL Instant
Messenger (AIM) or the Microsoft Messenger™ of Arnold, in which the IM
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is screened. Under the broadest reasonable interpretation, claim 1 does not
exclude the AIM or Microsoft Messenger™ of Arnold, because the claim
does not require direct prevention of transmission from the IM client.
Appellants further argue that “[i]f an instant message is examined in
accordance with Arnold, then the message would already be exposed to a
messenger server because it is not examined until reaching a proxy filter
service in the back-end” (emphasis omitted) and “the message is already at
an AOL Instant Messenger or Microsoft® Instant Messenger server.” (App.
Br. 5.) Again, Appellants’ arguments are not commensurate in scope with
claim 1, because the preamble language “protecting context sensitive
information from being transmitted from an instant message (IM) client”
does not exclude analysis of the IM message after the message is forwarded
to the server.
Therefore, we agree with the Examiner that Arnold describes the
preamble recitation “protecting context sensitive information from being
transmitted from an instant message (IM) client,” as recited in independent
claim 1.
We are further unpersuaded by Appellants’ arguments (App. Br. 4)
that Arnold does not describe the limitation “monitoring words typed into
the IM client of a sender,” as recited in independent claim 1.
The Examiner found that the message analyzer of Arnold, which
scans for keywords or phrases, corresponds to the limitation “monitoring
words typed into the IM client of a sender.” (Ans. 5, 9–10.) We agree with
the Examiner.
Arnold explains that when a message is received by message
analyzer 600, such message is processed by risk assessment module 700,
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which includes broad analysis processor 712 and deep analysis knowledge
processor 716. (Para. 87.) Arnold explains that “the message is initially
scanned by the broad analysis knowledge base processor 712 looking for
occurrence(s) of key words or phrases that appear in the module’s 700
associated (content-specific) knowledge base 720 (e.g., Collusion, Price
Fixing, Corporate Fraud.).” (Para. 88.) Because Arnold explains that
electronic messages are processed by risk assessment module 700 for
keywords or phrases, Arnold describes the limitation “monitoring words
typed into the IM client of a sender.”
Appellants argue that “Arnold does not disclose or suggest monitoring
words as the words are typed into an email client” because “[m]onitoring
words as they are typed into an instant messaging client arises from the
‘instant’ character of instant message communications.” (App. Br. 4.)
Similarly, Appellants argue that “Arnold may have catch-all language for
‘any electronic communications media,’ but this catch-all language arguably
supports an argument that the proxy filtering service of Arnold can be
applied to a variety of electronic communications media” but “[t]he proxy
filter service . . . does not disclose or suggest monitoring words as they are
typed into an instant messenger client examining those words against the
disallowed list of words.” (Id.) However, Appellants’ arguments are not
commensurate in scope with claim 1, because the claim does not require
instant (i.e., real-time) monitoring of characters, as such characters are being
typed by a user.
Therefore, we agree with the Examiner that Arnold describes the
limitation “monitoring words typed into the IM client of a sender,” as recited
in independent claim 1.
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Accordingly, we sustain the rejection of independent claim 1 under
35 U.S.C. § 102(b). Claims 2–4 and 7–10 depend from independent claim 1,
and Appellants have not presented any substantive arguments with respect to
these claims. Therefore, we sustain the rejection of claims 2–4 and 7–10
under 35 U.S.C. § 102(b) for the same reasons discussed with respect to
independent claim 1.
Independent claim 11 recites limitations similar to those discussed
with respect to independent claim 1, and Appellants have not presented any
substantive arguments with respect to this claim.1 We sustain the rejection
of claim 11, as well as dependent claims 12–14 and 17–20, for the same
reasons discussed with respect to claim 1.

DECISION
The Examiner’s decision to reject claims 1–4, 7–14, and 17–20 is
affirmed.

1 In the event of further prosecution, the Examiner should consider whether
the recitation of “[a]n executable software product stored on a computer-
readable medium” in independent claims 11 complies with 35 U.S.C. § 101,
in view of the disclosure that “[t]he medium can be an electronic, magnetic,
optical, electromagnetic, infrared, or semiconductor system (or apparatus or
device) or a propagation medium” in paragraph 28 of Appellants’
Specification. See In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007) (“A
transitory, propagating signal like Nuitjen’s is not a ‘process, machine,
manufacture, or composition of matter.’ . . . [T]hus, such a signal cannot be
patentable subject matter.”); see also MPEP § 2106 (I) (“Non-limiting
examples of claims that are not directed to one of the statutory categories . . .
[include] transitory forms of signal transmission (for example, a propagating
electrical or electromagnetic signal per se.”)).
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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

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