Ex Parte Daniels et al

Patent Trial and Appeal Board

Jan 23, 2014

11554065 (P.T.A.B. Jan. 23, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FONDA J. DANIELS, JAMES PATRICK GALVIN, JR.,
RUTHIE D. LYLE, MICHAEL MULLER,
MARTIN PRESLER-MARSHALL, and DAVID M. WENDT
____________

Appeal 2011-003596
Application 11/554,065
Technology Center 2900
____________

Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
THOMAS F. SMEGAL, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-003596
Application 11/554,065

2
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 4-11, 13-17, and 19-21. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Claimed Subject Matter
Claims 1, 11, 17, and 21 are independent. Claim 1, reproduced below,
is illustrative of the subject matter on appeal.
1. A method for transferring authorization rights to access a
file, the method comprising:
designating a storage location for the file;
creating a file-transfer-reference for the file based on the
storage location, wherein the file-transfer-reference identifies
the storage location;
creating an authorization protocol for the file;
selecting at least one recipient of the file-transfer-
reference; and
forwarding the file-transfer-reference to the at least one
recipient according to the authorization protocol, wherein the
authorization protocol includes a plurality of authorization
levels, wherein the at least one recipient is accorded at least one
of the plurality of authorization levels, and wherein the least
one of the plurality of authorization levels empowers the at least
one recipient to create a new authorization protocol.

Rejections
Claims 1, 4, 5, 7-11, 13-17, and 19-21 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bentley (US 2003/0217275 A1, pub. Nov. 20,
2003) and Wesley (US 2003/0188019 A1, pub. Oct. 2, 2003).
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Bentley, Wesley, and Kobayashi (US 6,275,825 B1, iss. Aug. 14, 2001).
Appeal 2011-003596
Application 11/554,065

3
OPINION
The rejection of claims 1, 4, 5, 7-11, 13-17, and 19-21 as unpatentable over
Bentley and Wesley
Claims 1, 4, 5, and 7-10
The Examiner finds that Bentley discloses “creating an authorization
protocol for the file,” as recited in claim 1. Ans. 4 (citing Bentley, para.
[0064]). More specifically, the Examiner finds that Bentley’s files are
“encrypted and then licenses are created for other users of the file” and that
Bentley’s “[l]icenses can be viewed as authorization protocol.” See id.
(emphasis omitted); see also Ans. 9-10 (citing Bentley, paras. [0064] and
[0042]).
The Examiner finds that Bentley discloses “forwarding the file-
transfer-reference to the at least one recipient according to the authorization
protocol,” as recited in claim 1. Ans. 4 (citing Bentley, para. [0071]). The
Examiner also finds that Bentley discloses, “wherein the authorization
protocol includes a plurality of authorization levels, wherein the at least one
recipient is accorded at least one of the plurality of authorization levels,” as
recited in claim 1. Id. (citing Bentley, paras. [0017]) and [0030])).
The Appellants contend that “[p]aragraph [0030] of Bentley makes no
reference to the alleged ‘authorization protocol’ of paragraph [0064].” Br. 6.
The Appellants’ contention is unpersuasive.
Bentley’s licenses (authorization protocol) are for selected users, e.g.,
“recipients,” and these licenses may contain, among other things, a
recipient’s rights, e.g., give the users the ability to perform or disallow
certain operations to an encrypted file, e.g., viewing, printing, exporting,
copying to a clipboard, accessing history, and editing. See Bentley, paras.
[0030], [0042], and [0064], and Ans. 4 and 9-10. The licenses are stored in
Appeal 2011-003596
Application 11/554,065

4
a special area of a design file, e.g., a license storage area. See Ans. 10
(citing Bentley, para. [0042]).
In the alternative, the Appellants contend that the licenses, which
specify operations a user/recipient can perform or disallow, are not part of
the authorization protocol. See Br. 6. However, the Appellants lack an
explanation for this contention. As such, this contention is also
unpersuasive.
The Appellants also assert that “[t]here is no support in paragraph
[0071] that ‘transfer to recipient’ is based upon the alleged ‘authorization
protocol’ identified by the Office in paragraph [0064] of Bentley.” Br. 6. In
other words, the Appellants contend that the Examiner essentially
“identifie[s] disparate items in Bentley and cited these disparate items
without reliance on a logical connection between those items that teaches
each and every feature of Appellant’s invention.” Id. The Appellants’
contention is unpersuasive.
The Examiner finds that Bentley’s “digital signature is the reference
for transferring the file,” i.e., “file-transfer-reference.” See Ans. 3-4
(emphasis omitted). The Examiner also finds that the electronic transfer of a
file to a user/recipient may include a digital signature permanently attached
to the file. See Ans. 4 and 11 (citing Bentley, para. [0071]). As discussed
above, licenses are stored in a special area of a design file, e.g., a license
storage area. In sum, the Examiner finds that Bentley discloses that a digital
signature may be permanently attached to a file, the file may contain a
license, a license may contain the ability to perform or disallow certain
operations, and a license can be viewed as the authorization protocol (see
Ans. 4 and 9-11). As such, the Examiner finds and we agree that Bentley
Appeal 2011-003596
Application 11/554,065

5
discloses forwarding to a recipient (i.e., licensee) a file which includes a
digital signature and a license and that disclosure corresponds to
“forwarding the file-transfer-reference to the at least one recipient according
to the authorization protocol,” as recited in claim 1.
Thus, the rejection of claim 1 and its dependent claims as
unpatentable over Bentley and Wesley is sustained.
Claims 11, 13-17, and 19-21
The Appellants point out limitations of independent claims 11, 17, and
21 that are similar to the limitations of claim 1 and argue that it should be
clear from their discussion of the rejection of independent claim 1 that the
Examiner’s rejection of independent claims 11, 17, and 21, and their
dependent claims, should be reversed. Br. 7-8. For similar reasons as those
discussed above, we disagree with the Appellants and sustain the rejection of
claims 11, 13-17, and 19-21 as unpatentable over Bentley and Wesley.

The rejection of claim 6 as unpatentable over Bentley, Wesley, and
Kobayashi
At page 8 of the Answer the Examiner rejects claim 6. The
Appellants contend “that the Office fails, inter alia, to show that the
proposed combination of Bentley, Wesley, and Kobayashi teaches or
suggests each and every feature of the claimed invention” and request
reversal of the rejection. Br. 9. However, the Appellants do not offer a
cogent explanation supporting that contention. See Ans. 13-14. As such, the
Appellants’ contention is unpersuasive.
Thus, the rejection of claim 6 as unpatentable over Bentley, Wesley,
and Kobayashi is sustained.
Appeal 2011-003596
Application 11/554,065

6

DECISION
We AFFIRM the rejections of claims 1, 4-11, 13-17, and 19-21.
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

mls