Ex Parte DiMuro et al

Patent Trial and Appeal Board

Sep 30, 2016

13690174 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/690,174 11130/2012
131244 7590 09/30/2016
JPMorgan Chase/Hunton & Williams LLP
Intellectual Property Department
2200 Pennsylvania A venue, NW
Suite 800
Washington, DC 20037
FIRST NAMED INVENTOR
Jeffrey D. DiMuro
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
72167.000770 9132
EXAMINER
ZAIDI, SYED A
ART UNIT PAPER NUMBER
2493
MAIL DATE DELIVERY MODE
09/30/2016 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 JEFFREY D. DIMURO and DAVID JUDE FORD
Appeal2015-005819
Application 13/690,174
Technology Center 2400
Before KAL YANK. DESHPANDE, DAVID M. KOHUT, and JASON V.
MORGAN, Administrative Patent Judges.
KOHUT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-005819
Application 13/690,174
STATEMENT OF CASE1
Appellants seek review under 35 U.S.C. § 134(a) of the Examiner's
Final Rejection of claims 1-30, which constitute all the claims pending in
this application. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b ).
We AFFIRM.
INVENTION
The invention is directed to processing protected electronic
communications. Spec. i-f 2.
Claim 1 is illustrative of the invention and is reproduced below:
1. A method for processing inbound messages, comprising:
receiving an electronic message comprising protected
content at an electronic device comprising at least one computer
processor;
the at least one computer processor determining a manner
in which unprotected content corresponding to the protected
contest is accessed by a user;
the at least one computer processor accessing the
unprotected content using the determined manner for accessing
the unprotected content; and
the at least one computer process automatically sending
the unprotected content to a first storage location.
Linehan
Just
Goldstone
REFERENCES
us 5,495,533
US 6,567,914 Bl
US 2003/0142364 Al
Feb.27, 1996
May 20, 2003
July 31, 2003
1 Our Decision makes reference to Appellants' Reply Brief ("Reply Br.,"
filed May 15, 2015), and Appeal Brief ("App. Br.," filed November 19,
2014), and the Examiner's Answer ("Ans.," mailed March 19, 2015) and
Final Office Action ("Final Act.," mailed June 13, 2014).
2
Appeal2015-005819
Application 13/690,174
Sethi
Stoye
Gupte
Kulkarni
US 2006/0031586 Al
US 2006/0085503 Al
US 2006/0282389 Al
US 2007 /0067399 Al
REJECTIONS AT ISSUE2
Feb.9,2006
Apr. 20, 2006
Dec. 14, 2006
Mar. 22, 2007
Claims 1-5, 14, 16, 17, 20-23, and 28-30 stand rejected under 35
U.S.C. § 103(a) as obvious over the combination of Gupte and Kulkarni.
Final Act. 9-15.
Claims 6, 15, and 19 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Gupte, Kulkarni, and Goldstone. Final Act.
15-17.
Claims 7-11 and 24--26 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Sethi and Just. Final Act. 18-22.
Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Sethi, Just, and Linehan. Final Act. 22-24.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Gupte, Kulkarni, and Sethi. Final Act. 24--25.
Claim 27 stands rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Sethi, Just, and Stoye. Final Act. 18-22.
ISSUES
ISSUE I-Did the Examiner err in finding the combination of Gupte and
Kulkarni teaches "determining a manner in which unprotected content
2 The rejection of claim 11under35 U.S.C. § 112, second paragraph, as
being indefinite has been withdrawn. See Advisory Act. mailed July 31,
2014.
3
Appeal2015-005819
Application 13/690,174
corresponding to the protected content is accessed by a user," as recited in
independent claim 1?
ISSUE 2-Did the Examiner err in finding the combination of Gupte and
Kulkarni teaches "receiving an electronic message comprising protected
content," as recited in independent claim 1?
ISSUE 3-Did the Examiner err in finding the combination of Sethi and Just
teaches "marking the inbound electronic message with an indication that the
inbound electronic message comprises protected content," as recited in
independent claim 7?
ISSUE 4----Did the Examiner err in finding the combination of Sethi and Just
teaches "rewriting envelope information for the inbound electronic
message," as recited in dependent claim 8?
ANALYSIS
Claims 1-6, 14-23, and 28-30
Claim 1
ISSUE 1- Independent claim 1 recites "determining a manner in
which unprotected content corresponding to the protected content is
accessed by a user."
Appellants contend in order to determine the manner in which
unprotected content is accessed by a user, claim 1 requires first determining
the user's actions in accessing the unprotected content. App. Br. 7-8; Reply
Br. 3. Based upon this interpretation of claim 1, Appellants argue that Gupte
does not teach determining the manner of accessing the unprotected content
based upon the user's actions. App. Br. 7. Rather, Appellants contend that
Gupte' s server determines the manner in which the unprotected content is
4
Appeal2015-005819
Application 13/690,174
accessed independent of the user's actions. App. Br. 9-10 (citing Gupte if
24); Reply Br. 3--4. We are not persuaded of Examiner error.
Appellants' arguments are not commensurate in scope with claim 1.
Claim 1 recites, inter alia, "determining a manner in which unprotected
content ... is accessed by a user." Claim 1, however, does not specify how
the manner is determined. As such, we do not agree with Appellants'
argument that claim 1 requires determining the user's actions in accessing
the unprotected content. See App. Br. 7. Additionally, as found by the
Examiner, paragraph 33 of the Specification describes a method of
determining the manner for accessing unprotected content absent
determining user's actions. Ans. 4--5 (citing Spec. if 33).
The Examiner finds that Gupte teaches that a server determines the
algorithm, process, or key (i.e., manner of access) that is used to decrypt the
encrypted media and then sends the determined manner of access to the user.
Final Act. 9-10 (citing Gupte if 24); Ans. 9-10 (citing Gupte if 23). The
Examiner, therefore, finds the server's determination of the manner in which
the user will decrypt the encrypted media teaches "determining a manner in
which unprotected content corresponding to the protected content is
accessed by a user." Final Act. 9-10; Ans. 9-10. We agree with the
Examiner.
As discussed above, claim 1 does not require that user action
determines the manner in which a user accesses unprotected content.
Therefore, under the broadest reasonable interpretation of the claimed
language discussed above, the determination of the user's actions in order to
determine the manner for accessing the unprotected content is not required.
Additionally, we agree with the Examiner's finding that Gupte's server
5
Appeal2015-005819
Application 13/690,174
determining the manner of access teaches the disputed limitation because the
server sends the decryption method to the PVR so the unprotected content
may be accessed by the user. See Gupte i-f 22-24.
Accordingly, Appellants' argument that Gupte fails to teach
determining the manner in which unprotected content is accessed by a user
does not persuade us of Examiner error.
ISSUE 2-Independent claim 1 also recites "receiving an electronic
message comprising protected content."
Appellants argue Gupte' s electronic message does not contain
protected content. App. Br. 8-9. We disagree with Appellants. In contrast
to Appellants' argument, and, as found by the Examiner, paragraph 23 of
Gupte expressly states that Gupte' s electronic message may include "a
segment of the encrypted media content." Ans. 6 (citing Gupte i-f 23). The
Examiner finds, and we agree, that Gupte' s media content, being encrypted,
is protected. See Ans. 6 (citing Gupte i-f 23). Accordingly, we are not
persuaded of Examiner error.
Appellants also argue that Gupte' s media "content is not disclosed as
being received in an electronic message as that term is used in the context of
the specification." App. Br. 9-10. Rather, as argued by Appellants, Gupte's
media content is downloaded to a personal video recorder (PVR), and thus,
the media content is not received in an electronic message. Id. at 9 (citing
Gupte i-fi-122-23). We do not find this argument persuasive. The Examiner
relies on the decryption request of Gupte that contains a segment of the
encrypted media to teach the claimed electronic message, not the PVR
downloading encrypted media from the distribution server. See Final Act.
9-10; Ans. 12 (citing Gupte i-fi-122-23). That is, the decryption request is an
6
Appeal2015-005819
Application 13/690,174
electronic message and includes portions of the protected content. The
Examiner finds, and we agree, that Gupte' s decryption request may be
reasonably considered to be "an electronic message" because it, like the
electronic message described in the Specification, comprises protected
media, such as encrypted video or audio. Ans. 6-10 (citing Spec. i-fi-f 12, 38;
Gupte i-fi-122-23). Thus, we find the Examiner did not err in finding that
Gupte teaches "receiving an electronic message comprising protected
content." According! y, we sustain the Examiner's rejection of independent
claim 1.
Claims 2-6, 14-23, and 28-30
Appellants argue that claims 2---6, 14--23, and 28-30 are patentable for
the same reasons as claim 1. App. Br. 10---11. Therefore, we also sustain the
Examiner's rejection of claims 2-6, 14--23, and 28-30 for the same reasons
indicated above with respect to claim 1.
Claims 7-13 and 24-27
Claim 7
ISSUE 3-Independent claim 7 recites "marking the inbound
electronic message with an indication that the inbound electronic message
comprises protected content."
The Examiner finds the Specification discloses that marking or
altering a message indicates the message contains protected content. Ans.
15 (citing Spec. i1 65 3). The Examiner finds that Sethi teaches if a message
is received in an encrypted format, the message is altered by being decrypted
3 The Examiner incorrectly cites paragraph 67 of the Specification. See Ans.
15. We hold this to be harmless error and make the correction here.
7
Appeal2015-005819
Application 13/690,174
and re-encrypted prior to transmission to its final destination. Ans. 16
(citing Sethi i-f 9). The Examiner finds, based on the description in the
Specification, that Sethi' s alteration of the message teaches marking the
message with an indication that the message contains protected content.
Final Act. 18 (citing Sethi i-fi-19, 39); Ans. 16.
Appellants argue that the Examiner erred because Sethi is silent as to
how it determines whether a message contains protected content. App. Br.
12; Reply Br. 5---6. Appellants also argue that simply re-encrypting an
incoming message does not teach indicating that the incoming message
comprises protected content. Id.
We disagree with Appellants. Contrary to Appellants' arguments, and
as found by the Examiner, Appellants' Specification specifically discloses
that altering a message indicates the message contains protected content.
Ans. 15-16 (citing Spec. i-f 65). The Specification, however, does not
describe how the electronic message is to be marked or altered to indicate
that it contains protected content. Thus, we do not find Appellants'
argument persuasive because it fails to demonstrate error in the Examiner's
findings based upon Appellants' Specification. See Spec. i-f 65.
Appellants also argue that Just fails to teach "marking the inbound
electronic message with an indication that the inbound electronic message
comprises protected content" because removing key and header data and
then re-encrypting the header and message with an appropriate key does not
mark the message with an indication that it contains protected content. App.
Br. 13; see Reply Br. 7. We do not find Appellants' argument persuasive
because Appellants are responding to the rejection by attacking the
references separately, even though the rejection is based on the combined
8
Appeal2015-005819
Application 13/690,174
teachings of the references. As set forth above, the Examiner finds Sethi,
not Just, teaches "marking the inbound electronic message with an indication
that the inbound electronic message comprises protected content."
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
Accordingly, we sustain the Examiner's rejection of independent
claim 7.
Claim 8
ISSUE 4----Dependent claim 8 recites "rewriting envelope information
for the inbound electronic message" to indicate the message contained
within the envelope comprises protected content.
The Examiner finds that Just teaches removing extraneous key and
header information from a message prior to re-encrypting the message.
Final Act. 8 (citing Just 7:30-8:55, 10:20-29, Fig. 3; Ans. 17-22). The
Examiner finds the removal of extraneous key and header information and
re-encrypting the header teaches "rewriting envelope information for the
inbound electronic message." Final Act. 8; Ans. 21 (Just Fig. 3).
Appellants argue that Just's altering and re-encrypting a message's
header fails to rewrite the message's envelope information. App. Br. 13.
We disagree with Appellants. As the Specification explains, the header of a
message is part of its envelope (see Spec. i-f 64), and as set forth above, we
find that re-encrypting part of a message marks or indicates the message
9
Appeal2015-005819
Application 13/690,174
comprises protected content. As such, we do not find Appellants' argument
persuasive.
Accordingly, we sustain the Examiner's rejection of dependent claim
8.
Claims 9-13 and 24-27
Appellants argue that claims 9-13 and 24--27 are patentable because
they depend from claim 7. App. Br. 13. As indicated above, we sustain the
Examiner's rejection of claim 7. Therefore, we also sustain the Examiner's
rejection of claims 9-13 and 24--27 for the same reasons indicated above
with respect to claim 7.
CONCLUSION
The Examiner did not err in finding the combination of Gupte and
Kulkarni teaches "determining a manner in which unprotected content
corresponding to the protected content is accessed by a user," as recited in
independent claim 1.
The Examiner did not err in finding the combination of Gupte and
Kulkarni teaches "receiving an electronic message comprising protected
content," as recited in independent claim 1.
The Examiner did not err in finding the combination of Sethi and Just
teaches "marking the inbound electronic message with an indication that the
inbound electronic message comprises protected content," as recited in
independent claim 7.
10
Appeal2015-005819
Application 13/690,174
The Examiner did not err in finding the combination of Sethi and Just
teaches "rewriting envelope information for the inbound electronic
message," as recited in dependent claim 8.
SUMMARY
The Examiner's decision to reject claims 1-5, 14, 16, 17, 20-23, and
28-30 under 35 U.S.C. § 103(a) as obvious over the combination of Gupte
and Kulkarni is affirmed.
The Examiner's decision to reject claims 6, 15, and 19 under 35
U.S.C. § 103(a) as obvious over the combination of Gupte, Kulkarni, and
Goldstone is affirmed.
The Examiner's decision to reject claims 7-11 and 24--26 under 35
U.S.C. § 103(a) as obvious over the combination of Sethi and Just is
affirmed.
The Examiner's decision to reject claims 12 and 13 under 35 U.S.C.
§ 103(a) as obvious over the combination of Sethi, Just, and Linehan is
affirmed.
The Examiner's decision to reject claim 18 under 35 U.S.C. § 103(a)
as obvious over the combination of Gupte, Kulkarni, and Sethi is affirmed.
The Examiner's decision to reject claim 27 under 35 U.S.C. § 103(a)
as obvious over the combination of Sethi, Just, and Stoye is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
11