Ex Parte Myers

Patent Trial and Appeal Board

Feb 6, 2017

13898742 (P.T.A.B. Feb. 6, 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.
13/898,742 05/21/2013 Alan Myers 20120888 8820
25537 7590
VERIZON
PATENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
EXAMINER
HO, DAO Q
ART UNIT PAPER NUMBER
2497
NOTIFICATION DATE DELIVERY MODE
02/08/2017 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):
patents @ verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN MYERS
Appeal 2016-003715
Application 13/898,7421
Technology Center 2400
Before JEAN R. HOMERE, DAVID J. CUTITTAII, and
MICAHEL J. ENGLE, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1—20, which constitute all of the
claims pending in this appeal. App. Br. 4—5. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 Appellant identifies the real party in interest as Verizon Communications
Inc. App. Br. 1.
Appeal 2016-003715
Application 13/898,742
Appellant’s Invention
Appellant invented a method and system for providing authorized
users with limited access to sensitive data. Spec. 111. In particular, upon
receiving from an authorized requestor (102) a request to access data
maintained at a primary data center (105) of a secure private network, the
primary data center (105) examines the request type and the authorization of
the requestor to determine a subset of the data to be transmitted to a secure
data store of the requestor through a private firewall (120). Id. Tflf 45—47,
Fig. 1.
Illustrative Claim
Independent claim 1 is illustrative and reads as follows:
1. A method comprising:
receiving a request for access to data maintained at a
primary data center of a secure private network from an
authorized requestor;
determining a subset of the data to be transmitted to a
secure data store associated with the requestor through a private
firewall of the primary data center,
wherein the determining of the subset of data is
based on a request type and an authorization of the
requestor; and
initiating transmission of the subset of the data to the
secure data store.
Prior Art Relied Upon
Savage US 7,437,550 Oct. 14,2008
Rejection on Appeal
Claims 1—20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Savage. Final Rej. 3—7.
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Appeal 2016-003715
Application 13/898,742
ANALYSIS
We consider Appellant’s arguments, seriatim, as they are presented in
the Appeal Brief, pages 6—13, and the Reply Brief, pages 2—5.
Regarding the rejection of claim 1, Appellant argues the textual
portions of Savage upon which the Examiner relies do not describe
determining a subset of the data to be transmitted to a secure data store of
the requestor through a private firewall based on the request type and the
authorization of the requestor. Id. According to Appellant, Savage is
generally directed to secure and anonymous browsing on the Internet. App.
Br. 9 (citing Savage 3:55—61). In particular, Appellant argues elements
301—308 in Figure 3 of Savage merely describe generalized functionality
(e.g., web browsing, email, file storage transfer) between a requestor and a
client without indicating whether data retrieved to be transferred is based on
the request type and the requestor authorization. Id. (citing Savage 9:42—
44). This argument is not persuasive.
At the outset, we note that during examination claims must be
construed under the broadest reasonable interpretation.2 Therefore, as
correctly noted by the Examiner, Savage’s disclosure of an authenticated
user selecting the file transfer option (304) to retrieve data from a server
describes the user determining a type of request to send to the server based
upon the user being authenticated and selecting data transfer from among
other options, e.g., e-mail. Ans. 2—3 (citing Savage Fig. 3).
Appellant argues in the Reply Brief that the Examiner’s interpretation
of a subset of data as “a given set that can be the same as the given set or
2 See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (stating that “claims
must be interpreted as broadly as their terms reasonably allow”).
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Application 13/898,742
smaller” is unreasonably broad. Reply Br. 2 (citing Ans. 2). We find this
argument unpersuasive because Appellant fails to establish the Specification
clearly sets forth a different definition of the term3 and fails to provide
sufficient evidence that the Examiner’s interpretation is inconsistent with the
Specification.4
Next, we note Appellant argues for the first time in the Reply Brief
that the Examiner improperly maps the claimed private firewall to item 140
of the prior art, thereby relying upon more than a single prior art to establish
a prima facie case of anticipation against the claim. Reply Br. 4. This
argument is not persuasive because it was not presented in a timely manner.
Because Appellant’s belated arguments presented in the Reply Brief are not
in response to new evidence or arguments proffered by the Examiner in the
Answer, those arguments are waived absent a showing of good cause for
their late consideration. 37 C.F.R. § 41.41(b)(2). In particular, we find no
justification on this record as to why Appellant could not have raised earlier
the cited arguments. We have held that new arguments in the Reply Brief
are inappropriate and will not be considered. See 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.”).
3 See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (“the PTO applies
to the verbiage of the proposed claims the broadest reasonable meaning of
the words in their ordinary usage . . . taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant's specification”).
4 See Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed.
Cir. 2004) (claims must be given their plain meaning unless the plain
meaning is inconsistent with the specification).
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Application 13/898,742
Accordingly, we are not persuaded of error in the Examiner’s
anticipation rejection of claim 1.
Regarding the rejection of dependent claims 4, 11, and 20, Appellant
argues that Savage does not describe encrypting the data subset using a
common key associated with the primary data center and the requestor.
App. Br. 11. This argument is not persuasive. As correctly noted by the
Examiner, Savage discloses a requestor encrypting with a public key a
request being sent to a server, as well as the server encrypting the requested
data being sent to the client. Ans. 4 (citing Savage 9:5—8, 23—26).
Accordingly, we find no error in the Examiner’s anticipation rejection of
claims 4, 11, and 20.
Because Appellant does not present separate patentability arguments
against the rejection of claims 2, 3, 5—10, and 12—19, these claims fall with
claims 1 and 4. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
For the above reasons, we affirm the Examiner’s obviousness
rejection of claims 1—20.
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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