Ex Parte Horadan

Patent Trial and Appeal Board

Mar 30, 2016

13108935 (P.T.A.B. Mar. 30, 2016)

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.
13/108,935 05/16/2011 Peter H. Horadan KEG.BUG 1441
82551 7590 03/31/2016
Mersenne Law
9600 S.W. Oak Street
Suite 500
Tigard, OR 97223
EXAMINER
TORGRIMSON, TYLER J
ART UNIT PAPER NUMBER
2165
MAIL DATE DELIVERY MODE
03/31/2016 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 PETER H. HORADAN
____________

Appeal 2013-002904
Application 13/108,935
Technology Center 2100
____________

Before MAHSHID D. SAADAT, JAMES R. HUGHES, and
KAMRAN JIVANI, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final decision rejecting claims 1–25. (App. Br. 1.)1 We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We refer to Appellant’s Specification (“Spec.”) filed May 16, 2011
(claiming benefit of US 61/345,673, filed May 18, 2010); Appeal Brief
(“App. Br.”) filed September 28, 2012; and Reply Brief (“Reply Br.”) filed
December 13, 2012. We also refer to the Examiner’s Answer (“Ans.”)
mailed October 16, 2012, and Final Office Action (Final Rejection) (“Final
Act.”) mailed June 25, 2012.
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Appellant’s Invention
The invention at issue on appeal concerns computer network systems
computer-readable media, and methods for protecting network (online)
content by detecting and deterring data access that does not comply with a
network access policy. The method receives a request for a particular
resource (content), reviews request with historical information (request
history) and determines if the request complies with the network access
policy. In the event the request is unlikely to comply with the access policy,
an alternate resource (alternate data), different from that requested, is sent to
the requester. (Spec. ¶¶ 2, 7, 18; Abstract.)
Illustrative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A method comprising:
receiving a request to transmit an identified resource to a
computer, the request associated with a user who is subject to
an access policy governing access to the identified resource;
storing information about the request in a database of
historical information;
reviewing the request and the database of historical
information to determine whether the request complies with the
access policy; and
if the request is unlikely to comply with the access policy,
transmitting an alternate resource, different from the identified
resource, to the computer.

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Rejections on Appeal
1. The Examiner rejects claims 11–13 and 15 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant regards as the
invention.
2. The Examiner rejects claims 1–5, 9–13, 16, 18, and 19 under 35
U.S.C. § 103(a) as anticipated by Fucarile (US 6,766,305 B1; July 20,
2004).
3. The Examiner rejects claims 6 and 15 under 35 U.S.C. § 103(a)
as being unpatentable over Fucarile and Shaffer (US 5,821,936; Oct. 13,
1998).
4. The Examiner rejects claims 7 and 8 under 35 U.S.C. § 103(a)
as being unpatentable over Fucarile and Dale-Thiebout (US 2010/0057630
A1; Mar. 4, 2010).
5. The Examiner rejects claim 14 under 35 U.S.C. § 103(a) as
being unpatentable over Fucarile and Mistry (US 2005/0125722 A1; June 9,
2005).
6. The Examiner rejects claim 17 under 35 U.S.C. § 103(a) as
being unpatentable over Fucarile and Hughes (US 2008/0005082 A1; Jan. 3,
2008).
7. The Examiner rejects claim 20 under 35 U.S.C. § 103(a) as
being unpatentable over Fucarile and Akita (US 2009/0094254 A1; Apr. 9,
2009).
8. The Examiner rejects claim 21 under 35 U.S.C. § 103(a) as
being unpatentable over Fucarile and Nation (US 2007/0208952 A1; Sept. 6,
2007).
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9. The Examiner rejects claim 22 under 35 U.S.C. § 103(a) as
being unpatentable over Fucarile and Rouse (US 2009/0313665 A1; Dec. 17,
2009).
10. The Examiner rejects claim 23 under 35 U.S.C. § 103(a) as
being unpatentable over Fucarile and Shimoni (US 2010/0192201 A1; July
29, 2010 (filed Jan. 29, 2010)).
11. The Examiner rejects claim 24 under 35 U.S.C. § 103(a) as
being unpatentable over Fucarile and Eynon (US 2010/0235909 A1; Sept.
16, 2010 (filed Mar. 13, 2009)).
12. The Examiner rejects claim 25 under 35 U.S.C. § 103(a) as
being unpatentable over Fucarile and Moran (US 2003/0163581 A1; Aug.
28, 2003).

ISSUE
Based upon our review of the administrative record, Appellant’s
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us follows:
1. Does the Examiner err in rejecting claims 11–13 and 15 as
being indefinite?
2. Does the Examiner err in finding that Fucarile discloses
“reviewing the request and the database of historical information to
determine whether the request complies with the access policy; and if the
request is unlikely to comply with the access policy, transmitting an
alternate resource, different from the identified resource, to the computer”
(hereinafter “disputed limitations”) within the meaning of Appellant’s claim
1 and the commensurate limitations of claims 10 and 16?
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ANALYSIS
The § 112, Second Paragraph Rejection
The Examiner rejects claims 11–13 and 15 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
(Final Act. 3–4; Ans. 2–3, 14–16.) The Examiner maintains that claims 11–
13 and 15 contain “nonsensical language,” i.e., language that is
grammatically incorrect — “the content protection means is to compare a
first access pattern” (claim 11) — and which is interpreted by the Examiner
as a “statement of intended use.” (Ans. 15; see Final Act. 3.) Appellant
contends that the Examiner is “conflating several conceptually similar ideas
into an unsustainable whole” (App. Br. 5) and the Examiner’s rejection is
not in compliance with examination guidelines (App. Br. 6).
We agree with Appellant that Examiner uses the incorrect standard for
rejecting the claims as being indefinite. The essence of the requirement
under 35 U.S.C. § 112, second paragraph is that the language of the claims
must make clear what subject matter the claims encompass — i.e., “‘whether
those skilled in the art would understand what is claimed when the claim is
read in light of the specification.’” Star Scientific, Inc. v. R.J. Reynolds
Tobacco Co., 655 F.3d 1364, 1380 (Fed. Cir. 2011) (quoting Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).
Here, Appellant’s language, while awkward, conveys that the function of the
means of claim 10 (content protection means) “is to compare a first access
pattern of an actual client to the webserver, to a second access pattern of a
hypothetical client to the webserver” (claim 11). In other words, for
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comparing the patterns. We find that one skilled in the art would have
understood the bounds of the claim (what subject matter the claims
encompass). Consequently, we are constrained by the record before us to
find that the Examiner erred in rejecting claims 11–13 and 15 as being
indefinite.
The § 102 Rejection
The Examiner provides the same basis for rejecting independent
claims 1, 10, and 16 (Final Act. 4–8; Ans. 3–7, 16–18), and rejects
representative claim 1 under 35 U.S.C. § 102(b) as being anticipated by
Fucarile. (Final Act. 4–5; Ans. 3–4.) Appellant contends that Fucarile does
not disclose the disputed features of representative claim 1. (App. Br. 8–11;
see Reply Br. 1–6.) Specifically, Appellant contends, inter alia, that
Fucarile does not review the request against the database of historical
information to determine whether the request complies with the access
policy as required by claim 1 —“Fucarile never makes such a
determination” (App. Br. 10) — and that Fucarile does not make the
“determination before sending a requested resource, so it cannot anticipate
the method of claim 1” (id.). Appellant further contends that the Examiner’s
interpretation of the “alternate resource” recited in claim 1 is unreasonable.
(App. Br. 10.)
We agree with Appellants that Fucarile does not disclose the recited
determination. (App. Br. 8–11; Reply Br. 1–6.) The Examiner maintains
that Fucarile describes two scenarios: (1) always sending something
different than the requested data (identified resource), that is, always sending
an alternate resource — the resource with a license form embedded (Final
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Act. 5, 16; Ans. 17); and (2) responding with an error message (which is an
alternate resource) (Final Act. 5; Ans. 16–17). The first scenario appears to
misconstrue the recited determination (which requires the request receiver
(requestee) to compare the request to a historical database and determine
compliance). Fucarile, at most, describes requesting licensed content and
embedding a license form in the licensed content (see Ans. 16–17 (citing
Fucarile 9:10–17, 20–22)). Alternately, the second scenario misconstrues
Fucarile. Fucarile describes the plug-in (program operating on the user
(requester) device) (see Fucarile Fig. 4) providing an error message (Ans. 16
(citing Fucarile 11:37–43)), not the requestee so providing (providing the
alternate resource). The Examiner’s interpretation of Fucarile and mapping
of Appellant’s disputed features to Fucarile’s disclosure is too broad and
does not sufficiently explain the relationship between the recited features
(the determination and the alternate resource recited in claim 1) as mapped
to Fucarile’s disclosure.
Consequently, we are constrained by the record before us to find that
the Examiner erred in concluding Fucarile discloses the disputed limitations
of Appellant’s claim 1. Independent claims 10 and 16 include limitations of
commensurate scope.2 Claims 2–4, 9, 11–13, 18, and 19 depend on claims

2 Neither the Examiner nor Appellant address whether claim 10, a system
claim reciting means plus function language, has a different scope than
claims 1 and 16. Appellant does explain that the means are not statements of
intended use, but this does not address the scope of claim 10 under § 112,
sixth paragraph. Thus, we do not address and make no findings whether
claim 10 has a different scope and whether Appellant’s Specification
provides sufficient structure for the means of claim 10 such that claim 10 is
not indefinite under § 112, second paragraph. In the event of further
prosecution, we leave it to the Examiner to consider whether the disputed
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1, 10, and 16, respectively. Accordingly, we reverse the Examiner’s
anticipation rejection of claims 1–5, 9–13, 16, 18, and 19.
The § 103 Rejections
With respect to the obviousness rejections of dependent claims 6–8,
14, 15, 17, and 20–25, rejected as obvious over Fucarile as well as Shaffer,
Dale-Thiebout, Mistry, Hughes, Akita, Nation, Rouse, Shimoni, Eynon,
and/or Moran, we reverse the Examiner’s obviousness rejections for the
same reasons set forth with respect to claim 1 (supra). The Examiner does
not sufficiently explain how Fucarile describes (teaches or suggests) the
relationship between the determination and the alternate resource recited in
claims. Accordingly, we agree with Appellant that the Examiner erred, as
the analysis in the Examiner’s rejection is not sufficient to show that claims
6–8, 14, 15, 17, and 20–25 are unpatentable without further explanation.

CONCLUSION
Appellant has shown that the Examiner erred in rejecting claims 1–5,
9–13, 16, 18, and 19 under 35 U.S.C. § 102(b).
Appellant has shown that the Examiner erred in rejecting claims 6–8,
14, 15, 17, and 20–25 under 35 U.S.C. § 103(a).

limitations meet the requirements under 35 U.S.C. § 112, second paragraph
in light of 35 U.S.C. § 112, sixth paragraph.
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DECISION
We reverse the Examiner’s rejections of claims 1–25.

REVERSED