Ex Parte Maidl et al

Patent Trial and Appeal Board

Mar 22, 2018

14124728 (P.T.A.B. Mar. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/124,728 03/13/2014 Monika Maid!
58898 7590 03/26/2018
Lempia Summerfield Katz LLC
20 South Clark
Suite 600
CHICAGO, IL 60603
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.
11371-13137A
(2011P03320
CONFIRMATION NO.
9495
EXAMINER
CHANG, KENNETH W
ART UNIT PAPER NUMBER
2438
NOTIFICATION DATE DELIVERY MODE
03/26/2018 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):
docket-us@lsk-iplaw.com
mail@lsk-iplaw.com
pair_lsk@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MONIKA MAIDL and STEP AN SEL TZSAM
Appeal2017-009168
Application 14/124,728 1
Technology Center 2400
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
GALLIGAN, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 17--45, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b). Claims 1-16 have been cancelled.
We AFFIRM. 2
1 According to Appellants, the real party in interest is Siemens
Aktiengesellschaft. App. Br. 1.
2 Our Decision refers to Appellants' Appeal Brief filed December 15, 2016
("App. Br."); Appellants' Reply Brief filed June 14, 2017 ("Reply Br.");
Examiner's Answer mailed April 14, 2017 ("Ans."); and Final Office Action
mailed February 19, 2016 ("Final Act.").
Appeal2017-009168
Application 14/124,728
STATEMENT OF THE CASE
Claims on Appeal
Claims 1 7, 44, and 45 are independent claims. Claim 1 7 is
reproduced below:
1 7. A method for accessing data stored in a cloud, with (a) a
provider of the cloud; (b) an entity that accesses the data, the
entity comprising at least one of a client application, a server
application, or a user wishing to access the data using the client
application, the server application or the client application and
the server application; ( c) at least one rights application; and ( d)
a rights server comprising a rights policy configured to be used
to define at least the following access rights: access rights of
users, user groups or the users and the user groups, and access
rights of client application, server application or the client
application and the server application; the method comprising:
inquiring the rights application about whether access to the
data by a accessing entity is allowed;
informing, by the rights application, the rights server of
the inquired access, the rights server not subject to the control of
the cloud provider;
providing the rights server an item of access information
that is configured to be used to determine whether the access is
allowed according to the access rights of the accessing entity;
and
accessing the data only when access is allowed according
to the access information.
Millman
Auradkar
References
US 2009/0210915 Al
US 2010/0318812 Al
2
Aug. 20, 2009
Dec. 16, 2010
Appeal2017-009168
Application 14/124,728
Examiner's Rejections
Claim 44 stands rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Final Act. 2-3.
Claims 17-35 and 37--45 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Auradkar. Id. at 4--19.
Claim 36 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Auradkar and Millman. Id. at 20-21.
Our review in this appeal is limited only to the above rejections and
the issues raised by Appellants. Arguments not made are waived. See
MPEP § 1205.02; 37 C.F.R. §§ 41.37(c)(l)(iv) and 41.39(a)(l).
ANALYSIS
Statutory Subject Matter: Claim 44
The Examiner rejects claim 44 under 35 U.S.C. § 101 because the
Examiner determines the claim encompasses software per se and, thus, is not
within one of the four classes of statutory subject matter. Final Act. 2-3;
Ans. 8. Appellants argue claim 44 "includes the limitation of a device, a
rights server, and is therefore directed to a machine which is a statutory
category of invention." Reply Br. 6; see App. Br. 12.
We are not persuaded. The Specification teaches that an "EDRM
[(Enterprise Digital Rights Management)] server may be functionalities
(comprising hardware and/or software) which are provided or installed on
computers." Spec. 6 (emphasis added). That is, the Specification expressly
teaches that a server is not only a hardware device but also may be embodied
as software. As such, Appellants' argument that the recitation of the term
"server" recites a device or machine, rendering the claim patent eligible
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Application 14/124,728
(Reply Br. 6; see App. Br. 12), is not persuasive.
The Examiner further determines, in view of the Specification, "the
limitation of 'a provider' would include a person or non-machine entity that
is void of hardware." Final Act. 3. Appellants argue the Examiner's
"reasoning is incorrect" because the "court in Enfzsh established that
software claims are not inherently abstract." App. Br. 13 (citing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). We find this argument
unpersuasive because Appellants fail to specifically respond to the
Examiner's determination that the claimed provider is void of hardware in
view of the Specification. For example, the Specification states that a
"service provider" is "also referred to as a cloud provider" (Spec. 20),
suggesting that "a provider of the cloud," as recited in claim 44,
encompasses an entity, such as a company. "For all categories except
process claims, the eligible subject matter must exist in some physical or
tangible form." Digitech Image Techs., LLC v. Electronics for Imaging,
Inc., 758 F.3d 1344, 1348 (Fed. Cir. 2014). Therefore, we sustain the
rejection of system claim 44 under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Anticipation: Claims 17-35 and 37-45
Appellants contend "Auradkar is an improper§ 102(b) reference."
App. Br. 6-7; Reply Br. 2-3. In particular, Appellants argue Auradkar was
published December 16, 2010, but the "effective filing date of the present
application" - based on a priority claim to German application DE 10 2011
077 218.9- "is June 8, 2011, only 6 months following the publication of
Auradkar." App. Br. 7; Reply Br. 3.
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Appeal2017-009168
Application 14/124,728
We are not persuaded the Examiner erred. Although Appellants argue
Auradkar does not anticipate as section 102(b) prior art, Auradkar, in any
case, anticipates under sections 102(a) and (e). Auradkar was published
December 16, 2010, before Appellants' earliest possible priority date, June
8, 2011, and, thus, qualifies as prior art under section 102(a). Further,
Auradkar was filed June 12, 2009, and, therefore, qualifies as prior art under
section 102( e ). Appellants rely on their German application's priority date
to disqualify Auradkar under 102(b); however, a "rejection under pre-AIA
35 U.S.C. 102(b) cannot be overcome by ... foreign priority dates." MPEP
§ 2133.02. Indeed, section 119(a) provides that "no patent shall be granted
on any application for patent for an invention which had been patented or
described in a printed publication in any country more than one year before
the date of the actual filing of the application in this country" (emphasis
added). 3
Appellants further contend the Examiner erred in finding Auradkar
discloses "a rights policy configured to be used to define at least the
following access rights: access rights of users, user groups or the users and
the user groups, and access rights of client application, server application or
the client application and the server application," as recited in claim 17 and
similarly recited in claims 44 and 45. App. Br. 7-11; Reply Br. 3---6.
Specifically, Appellants argue Auradkar "fails to disclose a rights policy
configured to be used to define both the access rights of users and/or user
groups as well as access rights of a client application and/or server
application." App. Br. 9 (emphasis added). According to Appellants, "there
3 We look to the pre-AIA version of 35 U.S.C. § 119(a). See AIA, Pub. L.
No. 112-29, § 3(n)(l ).
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Appeal2017-009168
Application 14/124,728
is no central or single rights policy for two or more subscribers" in
Auradkar. Reply Br. 5.
We are not persuaded. The Examiner finds (Final Act. 4--5), and we
agree, Auradkar provides "data selectively to subscribers requesting that
data based on subscriber identity information encoded in key information
generated in response to the subscriber requests" (Auradkar i-f 113; see
Auradkar i-fi-1 119, 128), i.e., data is accessed by subscribers according to "a
rights policy" that defines the subscribers' "access rights." The Examiner
further finds, and we agree, Auradkar teaches subscribers include users and
user groups. Final Act. 5 (citing Auradkar i-fi-1 140, 151, 154; see Auradkar
i-f 59). We additionally agree with the Examiner's finding (Ans. 4--5) that
Auradkar teaches that "client applications ... subscribe to data" (Auradkar
i-fi-1136, 161), i.e., subscribers include client applications.
Appellants' argument that "there is no central or single rights policy
for two or more subscribers" in Auradkar (Reply Br. 5; App. Br. 9--10) is not
commensurate with the scope of the claim. The claim does not recite, and
therefore, does not require, a central rights policy. Furthermore, the
Specification teaches ''files which comprise the rights policy," i.e., that a
rights policy can be a collection of multiple parts. Spec. 23 (emphasis
added), 35. Accordingly, even if each of Auradkar's subscribers had their
"own rights policy" as suggested by Appellants (Reply Br. 3), multiple
rights policies are within the scope of "a rights policy" in light of the
Specification.
Moreover, even if the claim did require a central rights policy,
Auradkar teaches a central rights policy. Auradkar discloses "a center for
key generation" (CKG) which "acts as a custodian for trust for publishers
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Application 14/124,728
encrypting data based on a public key, and hand[ s] out private keys to data
subscribers based on their capabilities." Auradkar i-f 161, Fig. 33. Thus, a
CKG provides multiple subscribers respective keys, depending on the
subscribers' access rights to data. Id. i-fi-1 128 ("publisher data is made
accessible to the subscriber ... based on the dynamically definable
capabilities granted"), 130 (CKG "customer(s) 1330 include ... subscribers
of data"), 161, Figs. 13, 15-17, 33. Accordingly, Auradkar's CKG discloses
a central rights policy for Auradkar's subscribers, e.g., users and client
applications, because the CKG provides those subscribers keys to access
data based on the subscribers' access rights policy.
We are not persuaded of Examiner error, and, therefore, we sustain
the anticipation rejection of independent claims 17, 44, and 45 4 as well as
the anticipation rejection of dependent claims 18-35 and 36-43, for which
Appellants present no additional arguments for patentability. We further
sustain the rejection of dependent claim 36 under 35 U.S.C. § 103(a) as
being unpatentable over Auradkar and Millman, for which Appellants
present no additional arguments for patentability.
4 Claim 45 recites "a rights policy configured to be used to define at least the
following access rights: access rights of users, access rights of a client
application, access rights of a server application or combinations thereof'
(emphasis added). That limitation initially requires all listed limitations by
reciting "at least the following," but the actual listed limitations are listed in
the alternative by reciting "or." Appellants argue claim 45 recites similar
limitations as claim 1. App. Br. 11. Because we determine the Examiner
has not erred in rejecting claim 1, and Appellants do not present separate
arguments for claim 45 (id.), we do not need to resolve this discrepancy to
determine the Examiner has not erred in rejecting claim 45. However, in the
event of further prosecution, the Examiner may wish to review claim 45 for
compliance with the definiteness requirement of 35 U.S.C. § 112, second
paragraph.
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Appeal2017-009168
Application 14/124,728
DECISION
We affirm the Examiner's decision rejecting claim 44 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
We affirm the Examiner's decision rejecting claims 17-35 and 37--45
under 35 U.S.C. § 102 as being anticipated by Auradkar.
We affirm the Examiner's decision rejecting claim 36 under 35 U.S.C.
§ 103(a) as being unpatentable over Auradkar and Millman.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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