Ex Parte Kenrich

Patent Trial and Appeal Board

Oct 27, 2014

10690243 (P.T.A.B. Oct. 27, 2014)

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.
10/690,243 10/20/2003 Michael Frederick Kenrich 2222.5460000 3428
26111 7590 10/27/2014
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
HOMAYOUNMEHR, FARID
ART UNIT PAPER NUMBER
2495
MAIL DATE DELIVERY MODE
10/27/2014 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 MICHAEL FREDERICK KENRICH
______________

Appeal 2012-004512
Application 10/690,243
Technology Center 2400
____________

Before CARLA M. KRIVAK, JEFFREY S. SMITH, and
JOHNNY A. KUMAR, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 1–16, 18–38, and 45–51. Claims 17 and 39–44 have been canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (“App. Br.”) filed October 5, 2011, the Answer
(“Ans.”) mailed November 25, 2011, and the Reply Brief (“Reply Br.”) filed
December 13, 2011, for the respective details. We have considered in this
decision only those arguments Appellant actually raised in the Briefs. Any
Appeal 2012-004512
Application 10/690,243

2
other arguments which Appellant could have made but chose not to make in
the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

Appellant’s Invention
Appellant’s invention relates to a system and method for providing a
file security system with an approval process to implement security changes.
The approval process can be substantially automated as well as configurable
and/or flexible. The approval process can make use of a set of approvers
that can approve or deny a security change. Different security changes can
require the approval of different approvers. The approvers can also be
arranged into groups of approvers, and such groups can make use of a
hierarchical arrangement. Spec. ¶ 10.
Claim 1 is representative of the invention and reads as follows:
1. A method for approving a security change for a file
security system that secures electronic files, comprising:
receiving a request for the security change from a
requestor, the security change being used for determining
access rights comprising permission to retrieve and to receive
an electronic file from within a secure file store;
identifying a plurality of approvers to approve or
disapprove of the requested security change by accessing an
approver set in an approval manager module;
notifying the approvers of an approval request for the
requested security to change;
determining, for at least one response received from the
approvers, whether it remains possible for a quorum of the
approvers to approve the requested security change; and
determining whether the requested security change is
approved based on responses from the approvers to the
approval request.
Appeal 2012-004512
Application 10/690,243

3
The Examiner’s Rejections
The Examiner rejected claims 1, 4, 15, 30, 37, 38, 45, 46, and 49–51
under 35 U.S.C. § 103(a) as being unpatentable over Futagami (US
6,754,665 B1, filed June 13, 2000), Kleckner (US 2002/0156726 A1, Oct.
24, 2002), and Morinville (US 2002/0062240 A1, May 23, 2002). Ans. 4–8.
The Examiner rejected claims 2, 3, 5–14, 16, 18–29, 31–36, 47, and
48 under 35 U.S.C. § 103(a) as being unpatentable over Futagami, Kleckner,
Morinville, and Gune (US 7, 131,071 B2, filed Mar. 29, 2002). Ans. 8–14.
ISSUE
The issue is whether the Examiner erred in finding that the
combination of Futagami, Kleckner, and Morinville teaches the limitation of
“quorum,” as recited in independent claims 1, 15, 30, 34, 36, 49, 50, and 51.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to Appellant’s arguments as to claims 1–16, 18–38,
and 45–51. App. Br. 16–27; Reply Br. 1–8.
We disagree with Appellant’s conclusions. Arguments made for the
first time in the Reply Brief that could have been presented in the Appeal
Brief to rebut rejections made in the Final Office Action are waived and not
considered. Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative decision) (“[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.”).
Appeal 2012-004512
Application 10/690,243

4
We adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellant’s Appeal Brief. Ans. 5–19. We concur with the conclusions
reached by the Examiner. We highlight and address specific findings and
arguments for emphasis as follows.
Appellant argues, with respect to claim 1,1 that Morinville does not
teach “determining, for at least one response received from the approvers,
whether it remains possible for a quorum of the approvers to approve the
requested security change” (App. Br. 18–24), because according to the
Specification “a ‘quorum’ of the approvers is a majority of the approvers”
(Reply Br. 4 (citing Spec. ¶¶ 44 and 49)). Appellant has not given any
special meaning to the term “quorum,” rather, a non-limiting example is
given (see, e.g., Spec. ¶ 49 (“[f]or example”)), which does not specifically
define the claim terminology.2 Accordingly, we give this term its usual and
customary meaning which simply entails a select group. Merriam-Webster’s
Tenth Collegiate Dictionary, 10th ed., 252 (1995). Here, the Examiner has
shown that Morinville teaches identifying the right participants in a business
process (see Morinville ¶ 68). In other words, the Examiner has found the
term “quorum” to encompass “the group of selected managers.” Ans. 15.

1 Appellant focuses its contentions on claim 1, allowing independent claims
15, 30, 34, 36, and 49–51 to stand or fall with representative claim 1.
Appellant also allows claims 4, 37, 38, 45, and 46 to stand or fall with
independent claim 1. App. Br. 24–25.
2 Appellant’s Specification states, “For example, if an approver set has five
approvers and requires a quorum of three, then if responses from three
approvers have already denied approval, then approval by a quorum of
approvers is no longer possible.” Spec. ¶ 49 (emphasis ours).
Appeal 2012-004512
Application 10/690,243

5
Consistent with the Examiner’s stated position (Ans. 25–26) and based on
the broadest reasonable interpretation consistent with the usual and
customary meaning, Morinville’s identification of the right participants
meets the claim language. Appellant has not presented any persuasive
evidence to convince us that the Examiner’s interpretation of “quorum” is in
error.
Appellant provided additional arguments with respect to the
patentability of claims 2, 3, 5–14, 16, 18–29, 31–36, 47, and 48 (App. Br.
25–27). The Examiner has rebutted each of those arguments in the Answer
by a preponderance of the evidence (Ans. 9–14, 18–19). Therefore, we
agree with the Examiner’s findings and underlying reasoning and adopt
them as our own. Consequently, we conclude there is no reversible error in
the Examiner’s rejections of claims 2, 3, 5–14, 16, 18–29, 31–36, 47, and 48.
DECISION3
The Examiner did not err in rejecting claims 1, 4, 15, 30, 37, 38, 45,
46, and 49–51 under 35 U.S.C. § 103(a) as being unpatentable over
Futagami, Kleckner, and Morinville.
The Examiner did not err in rejecting claims 2, 3, 5–14, 16, 18–29,
31–36, 47, and 48 under 35 U.S.C. § 103(a) as being unpatentable over
Futagami, Kleckner, Morinville, and Gune.

3 We note claims 30 and 36 recite a computer-readable storage medium.
However, Appellant’s Specification does not define storage medium to
exclude transitory media. Consequently, the claimed storage medium
encompasses transitory media, which is not patent eligible. See Ex parte
Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential). In the event of
further prosecution, the Examiner should consider rejecting claims 30 and 36
under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Appeal 2012-004512
Application 10/690,243

6
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

msc