Ex Parte Kolouch

Patent Trial and Appeal Board

Apr 30, 2013

10194742 (P.T.A.B. Apr. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/194,742 07/12/2002 James L. Kolouch STS 121 CIP CON1 7853
7590 04/30/2013
IP STRATEGIES PC
12 1/2 Wall Street
Suite 1
Asheville, NC 28801
EXAMINER
PICH, PONNOREAY
ART UNIT PAPER NUMBER
2615
MAIL DATE DELIVERY MODE
04/30/2013 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 JAMES L. KOLOUCH
____________________

Appeal 2010-011180
Application 10/194,742
Technology Center 2600
____________________

Before JOHN A. JEFFERY, DAVID C. McKONE,
and DANIEL N. FISHMAN, Administrative Patent Judges.

FISHMAN, Administrative Patent Judge.

STATEMENT OF CASE
Claims 95, 97-100, 106-112, and 116-119 are pending in the
application. Claims 1-94, 961, and 101-105 and claims 113-115 are
withdrawn. Appellant appeals under 35 U.S.C. § 134 from the rejections of

1 The Examiner noted on page 3 of the Answer that Appellant cancelled
claim 96 in the Appeal Brief filed April 2, 2010 and therefore withdrew the
related objections and rejections of claim 96.
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claims 95, 97-100, 106-112, and 116-119. App. Br. 8.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
The claims are generally directed to methods for selecting objects
based on a tag associated with each object and to encrypt the selected objects
according to a cryptographic scheme selected based on the tag of each
selected object. The encrypted objects are stored for subsequent access. See
generally claim 95. Claim 95, reproduced below, is illustrative of the
claimed subject matter:
95. A method of controlling access to a tagged object,
comprising:
selecting at least one object, wherein each selected object
has a respective object tag associated therewith, wherein the
respective object tag includes identification information
unrelated to access authorization;
selecting, from the at least one selected object, at least
one object based on the respective object tag associated
therewith; and
for each said object selected from the at least one
selected object,
encrypting the selected object according to a
cryptographic scheme, and
storing the encrypted object for subsequent access;
wherein encrypting the selected object includes selecting
the cryptographic scheme based on the respective object tag,
and encrypting the selected object according to the selected
cryptographic scheme.

2 Throughout this opinion, we refer to (1) the Appeal Brief filed April 2,
2010 (“App. Br.”); (2) the Examiner’s Answer mailed May 28, 2010
(“Ans.”); and (3) the Reply Brief filed July 22, 2010 (“Reply Br.”).
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Pond US 4,864,616 Sept. 5, 1989
Herz US 5,754,939 May 19, 1998
Kolouch US 6,694,433 B1 Feb. 17, 2004
Filed Oct. 20, 1999
Fletcher US 7,010,681 B1 Mar. 7, 2006
Filed Jan. 29, 1999

REJECTIONS
The Examiner rejected claims 95, 97-100, 108-112, 116, 117, and 119
under 35 U.S.C § 103(a) as being unpatentable over Herz and Pond.
Ans. 4-9.
The Examiner rejected claims 106, 107, and 118 under 35 U.S.C.
§ 103(a) as being unpatentable over Herz, Pond, and Fletcher. Ans. 10-11.
The Examiner rejected all claims (95, 97-100, 106-112, and 116-119)
under the ground of non-statutory obviousness-type double patenting as
unpatentable over claims 2, 3, 7, and 8 of Kolouch. Ans. 11-12.

THE § 103 REJECTION OF CLAIMS 95, 97-100,
108-112, 116, 117, AND 119
In rejecting claim 95, the Examiner finds that Herz discloses selecting
at least one object that has a respective object tag wherein the object tag
includes identification information unrelated to access authorization. Ans. 4
(citing col. 5, ll. 6-20; col. 6, ll. 7-33). The Examiner further finds that Herz
discloses selecting at least one object from the at least one object based on
the respective object tag. Ans. 4-5 (citing col. 5, ll. 6-20). The Examiner
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notes that Herz does not explicitly disclose encrypting the selected object3
and storing the encrypted object wherein the encrypting includes a
cryptographic scheme based on the object tag. Ans. 5. The Examiner finds
that Pond shows encrypting selected objects according to a cryptographic
scheme and storing the encrypted objects. Id. (citing col. 5, ll. 10-14; col. 3,
ll. 5-7; col. 6, ll. 22-34; Fig. 3, item 70). The Examiner further finds that
Pond shows that encrypting includes selecting the cryptographic scheme
based on the object tag of the object to be encrypted. Id. (citing col. 6, ll. 6-
9, 22-34; col. 6, l. 64 through col. 7, l. 2). The Examiner then concludes that
it would have been obvious to combine the teachings of Herz and Pond to
provide security in Herz for a user’s sensitive information. Ans. 5-6 (citing
Pond col. 2, ll. 56-59; Herz col. 6, ll.7-13; Herz col. 9, ll. 10-55).
Appellant argues that Herz fails to show object tags associated with
objects. App. Br. 14-15. Appellant also argues that Herz does not disclose or
suggest “the desirability of encrypting the objects” and thus there is no
reason to combine Herz with the encryption features of Pond. App. Br. 15-
16. Appellant further argues that even if Herz and Pond are properly
combinable, the combination fails to show that the cryptographic scheme
used to encrypt an object is selected based on the object tag. App. Br. 16-18.

Issues
Appellant’s arguments raise the following issues:

3 We note the lack of clarity in, for example, claim 95 where the recitation
“encrypting the selected object” does not have a proper antecedent basis in
that there are two “selected” objects recited in the claim. This issue does not
impact our decision and we suggest Appellant and the Examiner consider
appropriate clarifying amendments in any further prosecution.
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(1) Does Herz show an object tag that includes identification
information unrelated to access authorization?
(2) Has the Examiner articulated a reason based on rational
underpinnings for combining Herz and Pond?
(3) Does the combination of Herz and Pond show encrypting an object
according to a cryptographic scheme that is selected based on the
respective object tag?

Issue 1 Analysis
The Examiner finds that Herz shows objects having respective object
tags citing column 5, lines 6-20, and column 6, lines 7-33. Ans. 4. Herz there
recites “[t]he individual data that describe a target object and constitute the
target object’s profile are herein termed ‘attributes’ of the target object.”
Col. 6, ll. 18-20. Herz then enumerates various exemplary attributes such as
long text (news story, movie review, etc.), short text (movie director’s name,
language of an article, etc.), numeric measurements (product price, movie
rating, etc.), and associations with other types of objects. See, e.g., col. 6, ll.
20-33. Appellant argues that these attributes “are not tags, but instead are
collections of data that describe a target object.” App. Br. 15. We are
unpersuaded.
The Examiner notes that Appellant has not shown evidence of an
intended special meaning for “tag” by acting as their own lexicographer and
therefore concludes that “a tag could broadly but reasonably be interpreted
to be any descriptive word or phrase applied to anything as a label or means
of identification.” Ans. 12-13. We conclude that the Examiner’s construction
is reasonable. The Examiner further notes that Appellant’s characterization
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of the attributes of Herz as “collections of data that describe a target object”
fits the Examiner’s broad but reasonable interpretation. Id. We agree. The
Examiner notes that claim 95 limits what a tag is only in that a tag “includes
identification information unrelated to access authorization.” Ans. 13. The
Examiner further notes that the attributes of Herz such as movie director’s
name, product price, movie ratings, etc., clearly meet this limitation in that
they are identification information unrelated to access authorization. Id.
Appellant further argues that “tag” is term of art and is a “short form
of classification or identification of the data.” Reply Br. 4. Appellant quotes
Wikipedia as a definition in support of this assertion. Reply Br. 4-5. We are
unpersuaded. First we note that Wikipedia has been found to be an
unreliable source of information. See, e.g., Techradium, Inc. v. Blackboard
Connect Inc., 2009 WL 1152985, at *4, n.5 (E.D. Tex. 2009); Badasa v.
Mukasey, 540 F.3d 909, 910 (8th Cir. 2008). Furthermore, we find that the
attributes of objects in Herz still meet the quoted Wikipedia definition—the
attributes of Herz are at least words that aid in classification (i.e., classifying
objects such as movies directed by a particular director, products with a
particular price, movies with a particular rating, etc.).
We therefore find that Herz shows an object tag that includes
identification information unrelated to access authorization as recited in
claim 95.

Issue 2 Analysis
Appellant argues that there is no suggestion in Herz to modify Herz to
use the encryption of Pond. App. Br. 15. We are not persuaded.
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The Examiner notes that Herz fails to show, for each selected object,
encrypting the object according to a cryptographic scheme wherein the
cryptographic scheme is selected based on the respective object tag but finds
that Pond shows encryption features. Ans. 5. The Examiner reasons that
objects in Herz may include any type of file potentially including
confidential information and thus it would be obvious to one of ordinary
skill in the art at the time of the invention to modify Herz to use the
encryption features of Pond. Ans. 5-6.
Appellant argues that, although Herz discusses the desirability of
encrypting a user’s target profile summary (an encoding of a user’s
interests), Herz does not “disclose or suggest the desirability of encrypting
the objects themselves, and there doesn’t seem to be any apparent reason to
do so.” App. Br. 15. Appellant argues that since the objects in Herz are
available to a pool of users “[i]t would make no sense to safeguard data that
is available to all users.” Id. Appellant further argues that Pond uses a label
(attached to a file) that contains information regarding encryption of, and
access to, the file but argues that Pond’s label “does not include
identification information unrelated to access authorization, as required by
claim 95.” App. Br. 16.
Our reviewing Courts have made clear the test for obviousness.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
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In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted).
Appellant’s argument addresses Herz and Pond individually “[b]ut one
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on combinations of references.” Id. at 426.
Further, “there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006). The Examiner finds that objects in Herz
may include confidential information to be secured and finds that Pond
shows encryption techniques to secure objects such as the confidential
objects of Herz. Ans. 5-6. Thus, we conclude that the Examiner has not erred
in combining Herz and Pond and has expressed a reason for the combination
of Herz and Pond based on rational underpinnings.

Issue 3 Analysis
Appellant argues that, even if Herz and Pond are properly combined,
the combination still fails to show “encrypting an object according to a
cryptographic scheme that is based on the object tag.” App. Br. 16. We are
not persuaded.
The Examiner finds that Herz shows objects having attributes which
are interpreted as the recited “tags” (Ans. 4, 12-13) and finds that Pond
shows objects having labels also interpreted as the recited “tags” (Ans. 5,
15). The Examiner further finds that Pond shows “selecting a key stream
(i.e. key used for encryption and decryption) based on a bit flag of a Key
Mix” and shows that the Key Mix is part of Pond’s label. Ans. 15. Appellant
admits that Pond discloses “selecting a key stream based on a bit flag of a
Key Mix.” App. Br. 17. The Examiner thus concludes that Pond shows “that
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the key or other encryption scheme is selected based on the object tag.” Ans.
15. The Examiner further finds “incorporating Pond’s teachings within
Herz’s invention, Pond’s label would become an attribute in the Herz-Pond
combination invention.” Ans. 16. We agree with the Examiner and conclude
that Pond’s labels and Herz’s attributes are both reasonably interpreted as
tags and, when combined, show a tag providing both encryption information
used to select a cryptographic scheme (i.e., an encryption key) and
identification information unrelated to access authorization.
We therefore conclude that the combination of Herz and Pond shows
encrypting an object according to a cryptographic scheme that is selected
based on the respective object tag.
Independent claim 116 is similar to claim 95 and was rejected for
similar reasons. Ans. 8-9. Appellant presents the same arguments regarding
claim 116 as argued for claim 95 (see App. Br. 29-34) and for the same
reasons as claim 95 discussed above we are unpersuaded. Claims 97-100,
108-112, and 119 depend from claim 95 (directly or indirectly) and claim
117 depends from claim 116. Appellant does not argue these dependent
claims separately with particularity. App. Br. 19-29, 35-36.
In view of the above discussion, we find that the Examiner did not err
in rejecting claims 95, 97-100, 108-112, 116, 117, and 119.

THE § 103 REJECTION OF CLAIMS 106, 107, AND 118
Claims 106 and 107 depend from claim 95 and claim 118 depends
from claim 116. Claims 106, 107, and 118 each recite an additional
limitation wherein the objects and/or object tags are encoded in an
Extensible Markup Language (XML). The Examiner rejected each of these
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claims applying Herz and Pond (as in base claims 95 and 116) and relies on
Fletcher as showing objects provided in XML format. Ans. 10-11.
For each of claims 106, 107, and 118, Appellant repeats the argument
discussed above that Herz and Pond fail to show tags the include
identification information unrelated to access authorization. App. Br. 37-42.
For the same reasons discussed above with respect to claims 95 and 116, we
are unpersuaded.
Appellant further asserts for each of claims 106, 107, and 118 that “it
is unclear how the existence of the XML format would be applied or useful
within the context of the Herz et al. or Pond et al. systems, or why one of
skill in the art would find any reason to apply XML tags within these
systems.” Id. The Examiner explains that this assertion fails to state a valid
argument in that Appellant has not pointed out any specific error in the
Examiner’s rejection and fails to present any evidence for consideration.
Ans. 18. We agree.
Appellant further argues that the Examiner’s rejection of these claims
fails to establish a prima facie case of obviousness “by not fully explaining
how or why one of skill in the art would use XML-tagged data in the Herz et
al. system.” Reply Br. 7. We are unpersuaded. We find that the Examiner
has established a prima facie case of unpatentability.
[A]ll that is required of the [Patent] [O]ffice to meet its prima
facie burden of production is to set forth the statutory basis of
the rejection and the reference or references relied upon in a
sufficiently articulate and informative manner as to meet the
notice requirement of [35 U.S.C.] § 132.
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). The Examiner has met this
burden by identifying where Fletcher shows that XML is a known format
and reasoning that Fletcher’s XML format would be obvious to combine
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with Herz and Pond to “facilitate file and information sharing.” Ans. 10.
Moreover, the Examiner concludes that a skilled artisan would have made
this combination “because XML was designed to facilitate file and
information sharing,” Ans. 10, a reason we conclude has some rational
underpinning.
In view of the above discussion, we find that the Examiner did not err
in rejecting 106, 107, and 118.

NONSTATUTORY OBVIOUSNESS-TYPE DOUBLE PATENTING
REJECTION OF CLAIMS 95, 97-100, 106-112, AND 116-119
The Examiner rejects claims 95, 106, and 107 under nonstatutory
obviousness-type double patenting (“ODP”) as anticipated by claim 2 of
Kolouch, rejects claims 97-100 under ODP as anticipated by claim 3 of
Kolouch, rejects claims 108 and 116-119 under ODP as anticipated by claim
7 of Kolouch, and rejects claims 109-112 under ODP as anticipated by claim
8 of Kolouch. Ans. 11-12.
Each of claims 2, 3, 7, and 8 of Kolouch includes a recitation that an
object and/or an object tag is in the XML format. Appellant argues with
respect to the ODP rejection of claims 95, 106, and 107:
Thus, claim 2 of the ‘433 patent does not disclose an
object tag that includes identification information unrelated to
access authorization, as recited in claim 95. An object provided
consistent with Extensible Markup Language format can
include and often does include an object tag including
identification information unrelated to access authorization, but
this is not necessarily the case. It is submitted that claim 2 of
the ‘433 patent does not anticipate claim 95, or claims 96, 106,
and 107, which depend from claim 95.
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App. Br. 43-44 (emphasis added). We are unpersuaded. We note that the
emphasized sentence above admits that XML format information (i.e., an
XML formatted object or object tag) can and often does include
identification information unrelated to access authorization. Thus, supported
in part by Appellant’s admission, we conclude that the rejected claims’
recitation of a tag that includes identification information unrelated to access
authorization is met by claim 2 of Kolouch.
The Examiner further explains that the recitation that a tag includes
identification information unrelated to access authorization is “absurdly
broad” and thus could refer to an object having any other type of information
so long as it includes the recited information. Ans. 19. The Examiner points
out that, in accordance with XML encoding, one must specify in the encoded
information that the tags are XML tags and thus even this required
information is identification information unrelated to access authorization.
Ans. 20. The Examiner thus concludes:
Since virtually any required syntactical information related to
the use of XML could be interpreted to be information
unrelated to access authorization, the limitation that the object
having a data format in Extensible Markup Language (XML)
format as recited in claim 2 of the ‘433 patent inherently has the
limitation of the object includes identification information
unrelated to access authorization as recited in the claims of the
current application under consideration.
Id. We agree. Appellant presents the identical arguments for each of the
ODP rejections (see App. Br. 44-46) and we are similarly unpersuaded.
Thus, we conclude that the Examiner did not err in rejecting all claims under
nonstatutory obviousness-type double patenting.

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DECISION
For the above reasons, the Examiner’s rejections of all claims (95, 97-
100, 106-112, and 116-119) are affirmed.
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)(iv) (2009).

AFFIRMED

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