Ex Parte Kristiansen et al

Patent Trial and Appeal Board

Sep 29, 2016

12430372 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/430,372 0412712009 Morten Kristiansen
112978 7590 10/03/2016
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
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
ATTORNEY DOCKET NO.
RSW920080309US 1
8152-0152
CONFIRMATION NO.
2997
EXAMINER
HO, THOMAS
ART UNIT PAPER NUMBER
2494
NOTIFICATION DATE DELIVERY MODE
10/03/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MORTEN KRISTIANSEN,
PATRICK JOSEPH O'SULLIVAN, and HEMA SRIKANTH
Appeal2015-005339
Application 12/430,372 1
Technology Center 2400
Before JUSTIN BUSCH, NORMAN H. BEAMER, and ALEX S. YAP,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 1-20, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is IBM Corporation.
App. Br. 1.
Appeal2015-005339
Application 12/430,372
CLAIMED SUBJECT MATTER
Claims 1, 9, and 17 are independent claims. The claims generally
relate to methods and systems for transmitting "messages that include
encrypted content and, more particularly, to a method for defining access
rights to encrypted content." Spec. i-f 1. Claim 1 is representative and
reproduced below:
1. A computer-implemented method comprising:
encrypting, at a computing device, a portion of text
associated with a message intended for a group of recipients,
wherein the portion of text includes less than an entirety of the
message;
restricting access to the portion of text for a first subset of
the group of recipients of the message; and
allowing access to the portion of text to a second subset of
the group of recipients of the message, wherein
the message includes a textual secondary message
indicating that the portion of text has been encrypted.
REJECTIONS
Claims 9--16 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Final Act. 4. Claims 1-5, 7-13, and 15-20
stand rejected under 35 U.S.C. § 102(b) as being anticipated by Redlich et
al. (U.S. Pat. No. 7,669,051 B2, Feb. 23, 2010). Id. Claims 6 and 14 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable in view ofRedlich.
Id. at 8.
THE APPLIED PRIOR ART
Redlich
Redlich is directed to systems and methods for securing "data, and
particularly security sensitive words, characters or data objects in the data, in
a computer system with multiple independent levels of security (MILS)."
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Application 12/430,372
Redlich Abstract. Redlich "extracts the security sensitive words/data ...
from the source document for each MILS level, stores the extracted data ...
and permits reconstruction ... only in the presence of a predetermined
security clearance commensurate with each MILS level." Id. If desired,
"the system may include an encryption e feature." Id. at 24:57-58; see also
id. at 29:9-11 ("If the user implements an encryption system (see encryption
e 118 in FIG. IA), the extracted data is further secured by the encryption.")
(emphasis added), 33:35-36 ("The extracted data may be encrypted prior to
storage."). The extracted data may be replaced by placeholders "to provide
updated results, misinformation, dis-information, messages, alerts, links ...
and personalization and customization." Id. at 25:29-34 (emphasis added);
see also id. at 35:4--21, 38:39-57 (providing "an example of multiple level
encryption utilizing placeholder substitution," which "indicate[s] to the user
with less than superior security level that a certain word, term or phrase has
been extracted and stored by [sic] he or she is entitled to know that substitute
word, term or phrase has been inserted into the plain text document," and
further explaining that "any type of substitution character may be used for
the placeholder"). Redlich discloses displaying the secure information
differently depending on a user's security level. See, e.g., id. at 36:15--45,
38:39-57. For example, a "low level security clearance results in only
partial reconstruction of the plain text or source document," but "each
successively higher level of security clearance permits the user to see greater
degrees of reconstructed plain text obtained from the extracted data." Id. at
36:32-38.
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Application 12/430,372
OPfNION
35 USC§ 101 Rejection of Claims 9--16
The Examiner rejects claims 9-16, which recite a "computer program
product embodied on a computer readable storage medium," as directed to
non-statutory subject matter, explaining that paragraphs 14 through 16 of the
specification "suggest that computer readable storage media may encompass
electromagnetic signals, pulses, or other intangible media of a transitory
nature." Final Act. 4. The Examiner explains that the specification indicates
claims 9-16 may include transitory signals. See Ans. 9-13 (citing Spec.
iii! 14--16).
We agree with the Examiner that "[ n Jo singular interpretation of the
phrase 'computer-readable storage medium' can control across every
circumstance, case or application submitted to the USPTO ... as long as it is
within Applicant's power to define the meaning and scope of claim
limitations by the language of the specification." Ans. 13. In looking to the
paragraphs of Appellants' specification cited by the Examiner, we note the
specification explicitly states that a "computer-readable storage medium
may be, for example, but not limited to ... an electrical connection having
one or more wires, ... an optical fiber." Spec. if 15. First, the specification
merely provides examples and does not clearly place a limit on what is
included or excluded by the recitation of a "computer-readable storage
medium." Second, comparing the examples given for computer-readable
storage media, id., to the examples given for a computer-readable signal
media, id. if 16, the specification does not draw a clear line between
transitory and non-transitory media. More particularly, the specification
includes "an electrical connection having one or more wires" and "an optical
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Application 12/430,372
fiber" as examples of computer-readable storage media. Therefore, the
record indicates that a "computer-readable storage medium" includes simply
electrical wires or optical fiber, which are transitory in nature. Based on the
record, we agree with the Examiner that the specification does not exclude
transitory signals from the scope of "computer-readable storage medium"
and, therefore, claims 9--16 are directed to non-statutory subject matter.
Anticipation of Claims 1-5, 7-13, and 15-20 by Redlich and
Obviousness of Claims 6 and 14 in View of Redlich
As discussed above, Redlich discloses systems and methods for
securing documents or data involving extracting sensitive portions of those
documents or data, and may further include encrypting the extracted
portions. E.g., Redlich Abstract, 24:57-58. Claims 1, 9, and 17 each recite,
in part, encrypting a portion of text in a message, wherein "the message
includes a textual secondary message indicating that the portion of text has
been encrypted." Appellants acknowledge Redlich discloses a phrase
"within a message indicat[ing] that a certain word, term or phrase has been
extracted." App. Br. 32 (emphasis added); Reply Br. 7. Appellants also
acknowledge that Redlich discloses "encryption of certain portions of a
message." App. Br. 33; Reply Br. 6. Appellants contend, however, that
none of the cited passages disclose a secondary message indicating that the
removed portion of text is encrypted, and that such a message is not
inherent. App. Br. 32-34; Reply Br. 7-8 (explaining that a message stating
a portion of text was deleted "does not necessarily indicate that 'the portion
of text has been encrypted"'), 8 (arguing "the Examiner has erred by
asserting that Redlich identically discloses the limitations at issue" because
"Redlich is silent as to the specific content of the 'message"') (emphases
added).
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Therefore, the issue before us is the narrow question of whether
Redlich explicitly or inherently discloses a secondary message that indicates
the extracted text was encrypted. We find Redlich discloses to one of
ordinary skill in the art a textual secondary message, within a first message,
indicating that certain text has been extracted from the first message.
Redlich 38:39--57 (describing using substitutions "to indicate to the user ...
that a certain word, term or phrase has been extracted ... he or she is
entitled to know that substitute word, term or phrase has been inserted")
(emphases added). We also find that Redlich clearly discloses optionally
encrypting the portion of the document or data that was extracted. Id. at
29:9-11 ("the extracted data is further secured by the encryption").
However, as argued by Appellants, we find the passages cited by the
Examiner do not disclose indicating that the extracted portion of text is
encrypted. Encryption is an optional step and, even in embodiments
utilizing encryption, it is unclear from the cited passages that the substitution
words or placeholders would indicate that the extracted portions have been
encrypted. Accordingly, on this record, we find the cited passages are
insufficient to support the Examiner's anticipation rejections of claims 1-5,
7-13, and 15-20, and we reverse those rejections.
The Examiner finds Redlich fails to disclose using public and private
keys as recited in claims 6 and 14, but finds these claims would have been
obvious to one of ordinary skill in the art in view of Redlich because the use
of keys was well known, specifically referring to "public key infrastructure
(PK.I)." Final Act. 8-9. This finding, however, does not address whether it
would have been obvious, in view of Redlich, to use the secondary message
to indicate that the portion of text has been encrypted, as recited in
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independent claims 1 and 9, the claims from which claims 6 and 14 depend,
respectively. Accordingly, we reverse the Examiner's rejection of claims 6
and 14.
DECISION
For the above reasons, the Examiner's decision to reject claims 9-16
as directed to non-statutory subject matter is affirmed, but the Examiner's
decision to reject claims 1-5, 7-13, and 15-20 under 35 U.S.C. § 102(b) and
to reject claims 6 and 14 under 35 U.S.C. § 103(a) is reversed.
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-IN-PART
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