11052212 (P.T.A.B. Oct. 21, 2013)

Ex Parte Gomez et al

Patent Trial and Appeal BoardOct 21, 2013

11052212 (P.T.A.B. Oct. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 11/052,212 02/08/2005 Laurent Gomez 07781.0233-00 5390 60668 7590 10/21/2013 SAP / FINNEGAN, HENDERSON LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER WANG, HARRIS C ART UNIT PAPER NUMBER 2439 MAIL DATE DELIVERY MODE 10/21/2013 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 LAURENT GOMEZ, CEDRIC HEBERT, and CEDRIC ULMER ____________________ Appeal 2011-005343 Application 11/052,212 Technology Center 2400 ____________________ Before ST. JOHN COURTENAY III, THU A. DANG, and CARL W. WHITEHEAD Jr., Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005343 Application 11/052,212 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. A. INVENTION According to Appellants, the invention generally relates to electronic data processing, and more particularly, to document encryption (Spec. 1, [001]). B. ILLUSTRATIVE CLAIM Claim 1 is exemplary: 1. A computer processor executing computer instructions to create an adaptation engine for partial encryption of a document, the adaptation engine comprising: a paginator, the paginator paginating the document into at least one sub-page according to characteristics of a specific device class; and an encryptor, the encryptor separately encrypting a to-be- encrypted element of the at least one sub-page using a partial encryption mechanism known by a client device and based on the characteristics of the specific device class, wherein when the element of the at least one sub-page comprises the entire sub-page, the encryptor encrypts the entire sub-page and when the element of the at least one sub-page comprises less than the entire sub-page, only the element is encrypted. Appeal 2011-005343 Application 11/052,212 3 C. REJECTIONS The prior art relied upon by the Examiner in rejecting the claims on appeal is: Dettinger US Pat. App. Pub. No.: 2004/0181679 A1 Sep. 16, 2004 Hoekstra US Pat. App. Pub. No.: 2004/0267900 A1 Dec. 30, 2004 "Consensus Project: Deliverable D7 Adaptation Engine Installation and Configuration Guide Version 3.0" March 2003. (D7) Claims 1-5, and 8-23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over D7, Dettinger, and Hoeskstra. Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over D7, Dettinger, Hoeskstra and Applicants’ Admitted Prior Art (AAPA). II. ISSUE The dispositive issue before us is whether the Examiner has erred in concluding that Hoesktra, when combined with D7 and Dettinger, would have suggested an encryptor “separately encrypting a to-be-cencrypted element of the at least one sub-page… based on the characteristics of the specific device class” (claim 1, emphasis added). III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Hoesktra 1. Hoesktra discloses extending environments utilizing static profiles describing devices, wherein, while a profile may include a Hardware Appeal 2011-005343 Application 11/052,212 4 Platform section defining a Screen Size, one cannot determine a currently available screen size, which may be a dynamic value dependent on whether other applications, processes or output is utilizing screen resources (p. 4, [0040]). 2. A Profile Query QBE template indicates the provider desires to know the client current screen size, wherein a QBE template may be defined that defines but does not give a value to any other dynamic client characteristics or its environment such as specialized hardware available to the client (e.g., encryption processors and the like), etc. (p. 4, [0043]). IV. ANALYSIS Appellants contend that “Hoesktra discloses that ‘client characteristics’ do not have a ‘value’” and thus “Hoeskstra cannot disclose or suggest ‘encrypting… based on the characteristic of [a] specific device,’ as claimed” (App. Br. 13-14, emphasis omitted). In particular, Appellants contend that “[e]ncryption based on a ‘characteristic’ is meaningless if the characteristic has no ‘value’” (App. Br. 14). Appellants further contend that “Hoeskstra discloses that an ‘encryption processor’ available to the ‘client’ is itself a ‘characteristic’ in the ‘QBE template’” and therefore “since the ‘encryption processor’ in Hoekstra is itself an example of a ‘characteristic,’ Hoeskstra cannot be said to disclose or suggest the claimed ‘encrypting… based on the characteristic of [a] specific device’” (id., emphasis omitted). Although we agree with the Examiner that the claim language does not require “there to be a value” (Ans. 11), we cannot find any teaching in Appeal 2011-005343 Application 11/052,212 5 the sections of Hoesktra referenced by the Examiner of encrypting “based on” the characteristic of a specific device, as required by claim 1. In the sections of Hoesktra cited by the Examiner, a currently available screen size may be a dynamic value (FF 1), wherein a template is provided that indicates the provider desires to know the client current screen size, and the template defines but does not give a value to any other dynamic client characteristics or its environment such as specialized hardware available to the client (e.g., encryption processors and the like) (FF 2). That is, in the cited sections of Hoesktra, the template does not give any value to client characteristics or its environment such as encryption processors available to the client. Thus, we agree with Appellants that the cited portions of Hoeskstra “cannot disclose or suggest ‘encrypting… based on the characteristic of [a] specific device,’ as claimed” (App. Br. 13-14, emphasis omitted). That is, as Appellants point out, “since the ‘encryption processor’ in Hoekstra is itself an example of a ‘characteristic,’ Hoeskstra cannot be said to disclose or suggest the claimed ‘encrypting… based on the characteristic of [a] specific device’” (id., emphasis omitted). Accordingly, we find that the Examiner has failed to meet the initial burden of proof required for the rejection pursuant to 35 U.S.C. § 103(a).1 Therefore, we are constrained to reverse the Examiner’s rejection of representative claim 1 over D7, Dettinger in view of Hoesktra. Independent claims 8, 9, 11, and 18 recite similar limitations not taught or suggested by Hoeskstra, and thus, claims 8, 9, 11, and 18 (and claims 2-5, and 10, 12-17, and 19-23 depending respectively from claims 1, 1 See also 35 U.S.C. § 132. Appeal 2011-005343 Application 11/052,212 6 9, 11, and 18), stand with claim 1 over D7, Dettinger in view of Hoesktra. AAPA does not cure the deficiencies of D7, Dettinger and Hoesktra, and thus, claims 6 and 7 also stand over D7, Dettinger and Hoesktra in further view of AAPA. V. CONCLUSION AND DECISION The Examiner’s rejection of claims 1-23 under 35 U.S.C. § 103(a) is reversed. REVERSED Vsh