Ex Parte Daniels et al

Patent Trial and Appeal Board

Aug 29, 2013

11186361 (P.T.A.B. Aug. 29, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/186,361 07/21/2005 Fonda J. Daniels LOT920050076US1 (108) 5654
46321 7590 08/29/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
ZHANG, SHIRLEY X
ART UNIT PAPER NUMBER
2442
MAIL DATE DELIVERY MODE
08/29/2013 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 FONDA J. DANIELS and RUTHIE D. LYLE
____________

Appeal 2011-003370
Application 11/186,3611
Technology Center 2400
____________

Before CAROLYN D. THOMAS, JOHN A. EVANS, and
JUSTIN BUSCH, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is International Business Machines Corporation.
Appeal 2011-003370
Application 11/186,361

2

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1-23, which are all the claims
pending in the application. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates generally to securing the content of
messages in a human-to-human messaging system. See Spec., ¶ [0001].
Claim 1 is illustrative:
1. A data processing system for sender managed
privacy comprising:
a data processing system comprising at least one
processor coupled to memory elements through a system bus;
privacy management logic executing in the memory by
the at least one processor in the data processing system;
a sender messaging client coupled to the privacy
management logic and configured for communicative linkage to a
recipient messaging client coupled to proximity detection logic over a
data communications network;
said privacy management logic comprising program code
enabled to secure a message designated for delivery to a designated
recipient in said recipient messaging client responsive to said
proximity detection logic detecting a person other than the designated
recipient.

Appeal 2011-003370
Application 11/186,361

3
Appellants appeal the following rejections: 2

R1. Claims 16-23 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter; and
R2. Claims 1-23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Horvitz (US Patent Pub. 2004/0254998 A1, Dec. 16,
2004) and Shinbrood (US Patent Pub. 2005/0204008 A1, Sept. 15, 2005).

Claim Groupings
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claims as set forth below. See 37 C.F.R.
41.37(c)(1)(vii).

ANALYSIS
Rejection under 35 U.S.C. § 101 of Claims 16-23
Issue 1: Did the Examiner err in finding that claims 16-23 are
directed to non-statutory subject matter?
The Examiner found that “[a] computer program product comprising
transmission medium is itself transmission medium, therefore is directed to
non-patentable subject matter” (Ans. 13).
In response, Appellants contend that “the specification has been
amended to remove the words ‘propagate,’ ‘transport,’ and ‘propagation
medium’” (Reply Br. 2).
Even if Appellants’ Specification has been amended, the USPTO
provides the following guidance:

2 The Examiner withdrew the rejection of claims 1, 8, and 16 under
35 U.S.C. § 112, 1st paragraph (Ans. 3).
Appeal 2011-003370
Application 11/186,361

4
The broadest reasonable interpretation of a claim drawn to a
computer readable medium . . . typically covers forms of non-
transitory tangible media and transitory propagating signals per
se in view of the ordinary and customary meaning of computer
readable media, particularly when the specification is silent. . . .
When the broadest reasonable interpretation of a claim covers a
signal per se, the claim must be rejected under 35 U.S.C. § 101
as covering non-statutory subject matter.

David J. Kappos, Subject Matter Eligibility of Computer Readable Media,
1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).

In short, Appellants’ amendment to the Specification—without a
corresponding claim amendment—falls short of overcoming the Examiner’s
§ 101 rejection of claim 16. See id. (noting that adding the term “non-
transitory” to a claim drawn to computer readable medium that covers both
transitory and non-transitory embodiments can avoid a rejection under §
101). Accord Ex parte Busche, No. 2009-007718, 2010 WL 5184640, at *5
(BPAI 2010) (non-precedential).
Thus, based on the record before us, we find no error in the
Examiner’s non-statutory rejection of claims 16-23, essentially for the
reasons indicated by the Examiner, given that no corresponding claim
amendments were made.

Rejection under 35 U.S.C. § 103(a) of Claims 1-23
Issue 2: Did the Examiner err in finding that the combination of
Horvitz and Shinbrood teaches and/or suggests proximity detection logic
detecting a person other than the designated recipient, as set forth in the
claims?
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Application 11/186,361

5
Appellants contend that the “Examiner’s evidence sorely lacks
teachings for all claimed limitations of claims 1, 8, and 16 and in particular,
‘the securing of a message in response to proximity detecting a person other
than a designated recipient . . .’” (App. Br. 10).
The Examiner found that “[i]t is implicit in Horvitz’s disclosure of the
example that the automated system is capable of detecting the presence of
‘someone stepping into a doorway’” (Ans. 14). We agree with the
Examiner.
Here, the Examiner relies upon Horvitz to disclose the above-noted
limitations. As such, we shall look for error in the Examiner’s interpretation
of Horvitz.
We do not find Appellants’ arguments persuasive, as we find ample
support within the disclosure of Horvitz to support the Examiner’s stated
position (Ans. 14). In particular, Horvitz discloses “various sensing
modalities . . . in connection with learning or inferring an attentional status
and/or location of users” (¶ [0010]), “. . . information that is sensed locally
through sensors on or near a device” (¶ [0026]), and that “[o]ne or more
endpoint devices 310 are associated with one or more sensors 314 (e.g.,
motion, proximity)” (¶ [0059]). Horvitz further discloses a scenario
“whereby a dialog has been broken by someone stepping into a doorway and
talking with the user” (¶ [0064]) and that under such a situation, “the system
can wait to continue” (id.).
In other words, Horvitz expressly discloses proximity detection logic
using local sensors on or near a device which is capable of detecting
someone stepping into a doorway and talking to a user. We find that the
Appeal 2011-003370
Application 11/186,361

6
claimed “proximity detection logic detecting a person other than the
designated recipient” reads on the above noted disclosures of Horvitz.
In view of the above discussion, since Appellants have not
demonstrated that the Examiner erred in finding the argued limitations in the
disclosure of Horvitz, the Examiner’s 35 U.S.C. § 103(a) rejection of
representative independent claim 1, as well as claims 2-23 not separately
argued by Appellants, is sustained.

DECISION
We affirm the Examiner’s § 101 and § 103(a) rejections.
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
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