Ex Parte Jin et al

Patent Trial and Appeal Board

Feb 24, 2017

13158893 (P.T.A.B. Feb. 24, 2017)

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.
13/158,893 06/13/2011 Hongxia Jin ARC920110036US1 1379
84374 7590 02/27/2017
LIEBERMAN & BRANDSDORFER, LLC
802 STILL CREEK LANE
GAITHERSBURG, MD 20878
EXAMINER
TORGRIMSON, TYLER J
ART UNIT PAPER NUMBER
2165
MAIL DATE DELIVERY MODE
02/27/2017 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 HONGXIA JIN and QIHUA WANG
Appeal 2016-003565
Application 13/158,89s1
Technology Center 2100
Before LARRY J. HUME, JOHN P. PINKERTON, and
NORMAN H. BEAMER, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—17 and 19—21, which are the only claims
pending in the application. Claim 18 is canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify International Business Machines Corp. as the real party
in interest. App. Br. 3.
Appeal 2016-003565
Application 13/158,893
STATEMENT OF THE CASE
Introduction
Appellants’ disclosed and claimed invention is generally directed to
mitigation of application sharing to unwarranted users in a shared pool of
configurable computing resources. Spec. 11.2
Claims 1 and 4 are representative and reproduced below (with the
disputed limitation emphasized)'.
1. A method comprising:
for an entity owning a file in a file sharing environment,
specifying a first tier of a mandatory access control policy to
the file, the mandatory access control policy controlling a
maximum sharing scope of the file and placing a restriction
around a discretionary sharing decision made by the entity;
generating a profile for an entity contact and storing the
generated profile in memory, the profile including a
collaboration vector comprising keywords representing
collaboration topics between the entity and the entity contact,
the keyword associated with a calculated weight;
calculating a contact score defining relevance matching
between the file and the entity contact, the contact score
calculated based upon the weight of each keyword in the profile
of the entity contact and keywords associated with the file;
interactively recommending a contact to the entity as a
candidate for file sharing based upon an associated contact
score;
2 Our Decision refers to the Final Action mailed Apr. 14, 2015 (“Final
Act.”); Appellants’ Appeal Brief filed Sept. 11, 2015 (“App. Br.”) and Reply
Brief filed Feb. 26, 2015 (“Reply Br.”); the Examiner’s Answer mailed
Dec. 31, 2015 (“Ans.”); and the original Specification filed June 13, 2011
(“Spec.”).
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Application 13/158,893
periodically updating the profile and the collaboration
vector of each entity contact using new collaboration
information; and
interactively adjusting the recommendation for file
sharing based on the updated contact profile, wherein the
interactive adjustment includes an automated evaluation.
4. The method of claim 1, wherein interactively
recommending a contact of the entity as a recipient for file
sharing includes computing a relevance matching between the
profile of a candidate contact and the keyword specified for the
file, wherein computing the relevance matching comprises
computing strength of connection.
Rejections on Appeal3
Claims 1—7, 9—12, 14—17, and 19-21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Schigel et al. (US 2009/0234876 Al;
published Sept. 17, 2009) (“Schigel”), Pannu (US 2006/0248573 Al;
published Nov. 2, 2006), and Keskar (US 2002/0087632 Al; published
July 4, 2002).
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schigel, Pannu, Keskar, and Kristiansson et al. (US
2011/0213785 Al; published Sept. 1, 2011) (“Kristiansson”).
Claims 8, 13, and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schigel, Pannu, Keskar, and Duncan et al. (US
2005/0114672 Al; published May 26, 2005).
3 We note the Examiner rejected claims 9-13 under 35 U.S.C. § 112, second
paragraph, for indefmiteness and under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter (see Final Act. 2-4), but
these rejections were subsequently withdrawn by the Examiner in view of
Appellants’ amendments to claim 9. See Advisory Action mailed July 28,
2015.
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Application 13/158,893
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in the Briefs and are not persuaded the Examiner erred. Unless
otherwise noted, we adopt as our own the findings and reasons set forth by
the Examiner in the Office Action from which this appeal is taken (Final
Act. 2—15) and in the Examiner’s Answer (Ans. 2—5), and we concur with
the conclusions reached by the Examiner. For emphasis, we consider and
highlight specific arguments as presented in the Briefs.
Rejection of Claims 1—3, 5—7, 9—12, 14—17, and 19—214 under § 103(a)
Appellants argue “Schigel, Pannu, and Keskar, applied separately or
in combination, do not teach or suggest, for an entity owning a file in a file
sharing environment, specifying a first tier of a mandatory access control
policy to the file, the mandatory access control policy controlling a
maximum sharing scope of the file and placing a restriction around a
discretionary sharing decision made by the entity, as claimed by
Appellants].”5 App. Br. 10—16. In regard to the Examiner’s finding that
Pannu teaches the limitation at issue, Appellants argue as follows:
As identified by Appellant in the Appeal Brief, Pannu teaches a
policy that filters out unwanted e-mails (e.g., spam e-mails) from
untrustworthy third party sources by placing a restriction around
receiving e-mails (i.e., the policy of Pannu prevents
4 We decide the rejection of claims 1—3, 5—7, 9-12, 14—17, and 19—21,
which are rejected under the first-stated ground of rejection, on the basis of
representative claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). Although claim 4 is
listed in the first-stated ground of rejection, we believe this was a mistake by
the Examiner because claim 4 is specifically rejected in the second-stated
ground of rejection. See Final Act. 13—14.
5 We note the disputed limitation is recited in representative independent
claim 1 and is similarly recited in independent claims 9, 14, and 19. See
App. Br. 23—28 (Claims App’x).
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unauthorized entry of files). In contrast to Pannu, Appellant
claims and discloses a policy that prevents file leakage by placing
a restriction around file sharing decisions (i.e., the policy of
Appellant prevents unauthorized exit of files). To be clear,
Appellant is not arguing that the difference between the
teachings of Pannu and Appellant’s claims is that a third party
source specifies the control policy for the entity of Pannu.
Rather, Appellant is arguing that the difference between the
teachings of Pannu and Appellant’s claims is that Pannu is
directed toward filtering incoming communications, while
Appellant’s claims are directed toward filtering outgoing
communications. Therefore, Pannu fails to remedy the
deficiencies of Schigel.
Reply Br. 3^4; see also App. Br. 13—14.
Appellants also argue there is no motivation to combine the references
as proposed by the Examiner, and the combination of references is improper
“because the Examiner relies on impermissible hindsight as motivation to
combine the teachings of Schigel and Pannu.” App. Br. 16—18.
We are not persuaded by Appellants’ arguments that the Examiner
erred. First, the Examiner finds, and we agree, Pannu “teach[es] ‘a
mandatory access control policy placing a restriction around a discretionary
sharing decision made by [an entity owning a file in a file sharing
environment].”’ Ans. 2—3. In that regard, the Examiner finds, and we agree,
the claim limitation at issue specifies a restriction is made “for an entity”
“around a discretionary sharing decision made by the entity” and, therefore,
“anyone may specify the mandatory access control policy for the entity.” Id.
The Examiner also finds:
Pannu teaches the restriction of rights to the file at various
sharing scopes (distance from the file owner with the social
network. Pannu at 0107; see also Pannu at 0008. This is a
restriction that is made for an entity owning a file that is placed
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around the discretionary sharing decision of the file owner since
the restriction holds for all those the file owner, at their
discretion, shares with directly and those who later receive it.
Id.
Based on the teachings of the cited portions of Pannu, we agree with
the Examiner’s finding. For example, paragraph 8 of Pannu teaches “the
trust policy may be established to provide different levels of access, or
different degrees of rights based upon different social distances” and “[t]he
trust policy . . . may be used for various types of applications including
SPAM filtering, resource and file sharing.” In addition, paragraph 107 of
Pannu teaches “[f]or example, a node with a short social distance (high
degree of trust) may have rights to view, edit, copy, and print a digital work
while a node with a higher social distance (lower degree of trust) may have
only the right to view the digital work.” See Final Act. 6—7.
Second, we are not persuaded by Appellants’ argument that Pannu
fails to remedy the deficiencies of Schigel because, as Appellants’ assert,
“Pannu is directed toward filtering incoming communications, while
Appellant’s claims are directed toward filtering outgoing communications.”
See Reply Br. 4. In that regard, we agree with the Examiner’s finding that
“the claim does not specify that the restriction is made to the file owner’s
ability to share the file, but merely that a restriction is placed around a
sharing decision made by the entity.” Ans. 3; see In re Self, 671 F.2d 1344,
1348 (CCPA 1982) (“[AJppellanf s arguments fail from the outset because
. . . they are not based on limitations appearing in the claims.”). Third, for
the same reason, we are not persuaded by Appellants’ argument that Pannu
is used to restrict e-mails to prevent inbox clutter, while the claimed file
sharing restriction is “to protect confidential information from being shared
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with an improper recipient” because protecting confidential information is
not recited in the claim or limitation at issue.
We also are not persuaded by Appellants’ arguments the Examiner
relies on impermissible hindsight as motivation to combine Schigel and
Pannu. See App. Br. 16—18. Here, the Examiner specifically finds the
motivation for combining Pannu with Schigel’s content sharing is the
suggestion in Pannu “to allow the sharers of content greater control over the
degree to which files are shared and the rights conferred to the recipients of
those files.” Ans. 4 (citing Pannu 7, 8). Thus, we find the Examiner has
provided sufficient articulated reasoning having rational underpinning such
that a person of ordinary skill in the art would have been motivated to
combine the teachings of Schigel and Pannu so as to render obvious the
subject matter of claim 1. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
418 (2007). In regard to Appellants’ argument the Examiner relies on
impermissible hindsight to combine Schigel and Pannu, it must be
recognized that any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning. However, so long as it takes
into account only knowledge which was within the level of ordinary skill at
the time the claimed invention was made, and does not include knowledge
gleaned only from the Appellants’ disclosure, such a reconstruction is
proper. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here,
we conclude the Examiner did not use impermissible hindsight because the
rejection is based on the references and what they would have taught or
suggested to a person of ordinary skill in the art.
In the Reply Brief, Appellants argue “[i]n addition to the arguments
presented in the Appeal Brief, Applicants respectfully submit that the
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combination of Schigel, Pannu, and Keskar is not prima facie obvious
because the combination teaches away from Appellant’s claimed invention.”
Reply Br. 4—5. Because this argument is raised by Appellants for the first
time in the Reply Brief not in response to a shift in the Examiner's position
and without otherwise showing good cause, it is waived. See 37 C.F.R.
§ 41.41(b)(2); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI
2010) (informative) (“[T]he reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner’s rejections, but were not.”).
Thus, we find a preponderance of the evidence supports the
Examiner’s findings that Pannu teaches or suggests the disputed limitation
of claim 1. Accordingly, we are not persuaded the Examiner erred in
(1) finding Pannu teaches or suggests the disputed limitation of claim 1 and
(2) concluding the combination of Schigel and Pannu renders the subject
matter of claim 1 obvious under 35 U.S.C. § 103(a). Thus, we sustain the
Examiner’s rejection of claim 1. For the same reasons, we sustain the
Examiner’s rejection of independent claims 9, 14, and 19, as well as
dependent claims 2, 3, 5—7, 10-12, 15—17, 20 and 21.
Rejection of Claim 46 under § 103(a)
Appellants argue the Examiner admits the combination of Schigel,
Pannu, and Keskar does not teach or suggest the limitations of claim 4, and
relies on Kristiansson to remedy these admitted deficiencies. App. Br. 19.
Appellants argue the teachings of Kristiansson are silent with respect to
6 Claim 4 is rejected under the second-stated ground of rejection based on
the combination of Schigel, Pannu, Keskar, and Kristiansson. See Final Act.
13-14.
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recommending candidates for file sharing because the contacts are already
connected prior to computing a social strength. Id. at 20. Appellants also
argue “the social strength of Kristiansson is computed between two contacts,
and is not computed between a contact and a keyword.” Id. Appellants also
argue “Kristiansson also does not teach that computing the relevance
matching comprises computing strength of connection.” Id. at 21.
We are not persuaded by Appellants’ arguments. Contrary to
Appellants’ argument the Examiner relies on Kristiansson as teaching the
limitations of claim 4, we find instead the Examiner relies on Schigel as
teaching “wherein interactively recommending a contact of the entity as a
recipient for file sharing includes computing a relevance matching between
the profile of a candidate contact and the keyword specified for the file,” and
relies on Kristiansson as teaching “wherein computing the relevance
matching comprises computing strength of connection.” Ans. 4—5; Final
Act. 13—14 (citing Schigel Fig. 4C (steps 452 and 460), Fig. 2C (item 280),
their corresponding description, and 1144; Kristiansson 112). Thus,
Appellants’ arguments that Kristiansson is silent with respect to
recommending candidates for file sharing and does not teach the social
strength being computed between a contact and a keyword are not
persuasive because they attack Kristiansson individually, whereas the
Examiner’s rejection is based on the combined teachings of Schigel and
Kristiansson. In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.”). The relevant inquiry is whether the claimed
subject matter would have been obvious to those of ordinary skill in the art
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in light of the combined teachings of the references. See In re Keller, 642
F.2d 413, 425 (CCPA 1981). Here, the Examiner finds the combination of
Schigel and Kristiansson teaches the limitations of claim 4:
[T]he combination taken together teaches the whole of the
limitation as Schigel teaches computing a relevance matching
between the profile of candidate contacts and a keyword
specified for the file (Schigel at Figure 4C steps 452 and 460,
Figure 2C item 280, and 0144), and Schigel further suggests
utilizing a strength of connection (Schigel at 0160-65) (similarity
metrics are used to determine relations between user profiles and
content). However Schigel did not explicitly disclose that there
is a strength of connection computed, which Kristiansson did.
Kristiansson at 0012. In view of the combination it would have
been clear to one of ordinary skill in the art to utilize the strength
of connection in Schigel’s similarity metrics. See generally
Schigel at 0160 et seq. Further, the applicant’s assertion that in
Kristiansson the contact connections are made prior to
computing the social strength (Applicant’s Appeal Brief at page
20) is irrelevant as the timing of such computation is not claimed
and it ignores the utilization of Schigel in the combination as
Schigel does perform the matching at the time of search (see
Schigel at Figure 4C step 452 and corresponding description).
Ans. 5.
For the reasons stated by the Examiner, we find the preponderance of
the evidence establishes that the combination of Schigel and Kristiansson
teaches or suggests the disputed limitations of claim 4. Accordingly, we are
not persuaded the Examiner erred in (1) finding the combination of Schigel
and Pannu teaches or suggests the limitations of claim 4 and (2) concluding
that the combination of Schigel and Pannu renders the subject matter of
claim 4 obvious under 35 U.S.C. § 103(a). Thus, we sustain the Examiner’s
rejection of claim 4.
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Rejection of Claims 8 and 13 under § 103(a)
Appellants advance no separate arguments for claims 8 and 13, which
are rejected under the third-stated ground of rejection. Appellants
apparently contend these claims are allowable for the same reasons argued
with respect to claims 1 and 9, from which they respectively depend. See
App. Br. 10, 16, 18. However, for the reasons discussed above regarding the
first-stated ground of rejection, we sustain the Examiner’s rejection of
independent claims 1 and 9 and, therefore, we sustain the rejection of claims
8 and 13.
DECISION
We affirm the Examiner’s rejections of claims 1—17 and 19—21 under
35U.S.C. § 103(a).
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
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