Ex Parte HoradanDownload PDFPatent Trial and Appeal BoardMar 30, 201613108935 (P.T.A.B. Mar. 30, 2016) Copy Citation 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. Appeal 2013-002904 Application 13/108,935 2 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. Appeal 2013-002904 Application 13/108,935 3 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). Appeal 2013-002904 Application 13/108,935 4 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? Appeal 2013-002904 Application 13/108,935 5 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 Appeal 2013-002904 Application 13/108,935 6 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 Appeal 2013-002904 Application 13/108,935 7 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 Appeal 2013-002904 Application 13/108,935 8 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. Appeal 2013-002904 Application 13/108,935 9 DECISION We reverse the Examiner’s rejections of claims 1–25. REVERSED Copy with citationCopy as parenthetical citation