Ex Parte Shepherd et al

Patent Trial and Appeal Board

Jan 17, 2013

10791019 (P.T.A.B. Jan. 17, 2013)

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.
10/791,019 03/02/2004 Eric Robert Shepherd 112288.00002 1317
54975 7590 01/18/2013
HOLLAND & KNIGHT LLP
10 ST. JAMES AVENUE
BOSTON, MA 02116-3889
EXAMINER
SHIH, HAOSHIAN
ART UNIT PAPER NUMBER
2173
MAIL DATE DELIVERY MODE
01/18/2013 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 ERIC ROBERT SHEPHERD,
PAUL ROBERTS, and JOHN KLEEMAN
____________

Appeal 2010-012135
Application 10/791,019
1

Technology Center 2100
____________

Before CARLA M. KRIVAK, CAROLYN D. THOMAS, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1
The real party in interest is Question Mark Computing Limited.
Appeal 2010-012135
Application 10/791,019

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-21, which are all the claims pending in the
application. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
The Oral Hearing was waived.
We AFFIRM.
The present invention relates generally to a secure user interface. See
Spec., Abstract.
Claim 1 is illustrative:
1. A secure user interface method, for interacting with a
user through a browser, comprising:
controlling the browser to request a document from a
cooperative server, the browser providing data export support
functionality;
receiving data with the browser in response to the request;
automatically determining, based on a received data encoding
type, whether a secure browser or a normal browser is to be
employed, the secure browser having a set of functionality restricted
with respect to the normal browser, to enhance security of a received
document against data export;
receiving the secure content for presentation in the secure
browser; and
communicating an input from the user, through the secure
browser, to a cooperative server.

Appellants appeal the following rejections:

R1. Claims 1-21 are rejected under 35 U.S.C. § 112, first paragraph
for allegedly failing to comply with the written description requirement;
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Application 10/791,019

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R2. Claims 1-4 and 6-20 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Winneg (US 7,069,589 B1, June 27, 2006); and
R3. Claims 5 and 21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Winneg and Chang (US Patent Pub. 2002/0097416 A1,
July 25, 2002).

Claim Groupings
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of the claims as set forth below. See 37 C.F.R.
41.37(c)(1)(vii).

ANALYSIS
Rejection of claims 1-21 under § 112, first paragraph
Issue 1: Did the Examiner err in finding that the claims contain
subject matter which was not described in the specification in such a way as
to reasonably convey to one skilled in the relevant art that the inventor(s), at
the time the application was filed, has possession of the claimed invention?

Appellants contend that “Figs. 1 and 2 also clearly show the process
for invocation of a secure browser, and the ‘data encoding type’ or ‘data
type encoding’ as a basis for selecting the secure browser, as opposed to the
alternate, a normal browser (per clam 1) or an insecure browser (per claim
9)” (App. Br. 7). We agree with Appellants.
In order to satisfy the written description requirement, “the [original]
specification must describe an invention understandable to that skilled
artisan and show that invention actually invented the invention claimed.”
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Application 10/791,019

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Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010)(en banc). “[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Id. (citations omitted). One shows possession “by such descriptive means as
words, structures, figures, diagrams, formulas, etc. that fully set forth the
claimed invention.” Lockwood v. American Airlines, Inc., 107 F.3d 1565,
1572 (Fed. Cir. 1997). Here, we find that at least Appellants’ Fig. 2
sufficiently describes the use of a “normal” browser prior to transitioning to
a secure browser and then returning control back to the original browser
(i.e., the normal browser).
Thus, we conclude the Examiner’s finding that “[t]here is no mention
in the original specification of employing a normal browser” (see Ans. 3) is
unavailing given the description in at least Appellants’ Fig. 2.
Based on the record before us, we find error in the Examiner’s
rejection under 35 U.S.C. § 112, first paragraph, essentially for the reasons
given by Appellants.
Therefore, we reverse the rejection of claims 1-21 under 35 U.S.C.
§ 112, first paragraph.

Rejection of claims 1-4 and 6-20 under § 102(e)
Issue 2: Did the Examiner err in finding that Winneg discloses
“based on a received data encoding type,” as set forth in claim 1?

Appellants contend “that a ‘user type’ is clearly distinct and non-
overlapping with a ‘data encoding type’. . . the determination of whether a
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Application 10/791,019

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secure ‘environment’ is required is not based on any ‘received data encoding
type’ . . . there is no teaching . . . that these restrictions are . . . provided as
part of the document requested” (App. Br. 15).
We find Appellants’ contentions unavailing and, in any event, not
commensurate with the scope of the claim. While Appellants contend that
Winneg’s login procedure is not “encoded in, or provided as part of the
document requested” (id.), we point out that claim 1, for example, does not
require that any “data encoding type” be encoded in or provided as part of
the document requested. Instead, claim 1 merely requires “a received data
encoding type” (see claim 1), received by any form. Furthermore, what this
“data encoding type” is and how precisely this “data encoding type” is
received is not defined in the claims.
Appellants’ Specification states that “the user would encounter a
reference to the secure content within ordinary content, and would choose or
be directed to run it. The secure content is identified, for example, by a
MIME type (or other type that browsers can recognize) . . . which causes the
initiation of . . . a secure browser” (Spec. 4, ll. 21-25). In other words, in the
present invention a “reference” to the secure content is encountered which
allows the user to run it and the secure content is identified by any type of
data recognizable by the browser, even a passcode.
Consistent with Appellants’ description of encountering a secure
document, the Examiner found that “Winneg discloses matching a correct
type of password code data with the password code data that is
associated/encoded with the secure content provided/created by a content
provider” (Ans. 12). Specifically, Winneg discloses that “[t]he application
being securely executed may be any of a variety of types of applications, for
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example, a browser application” (see Abstract). Winneg further discloses “a
GUI that may be displayed to a user to determine which application to
initiate for an exam. . . . After the user has entered the class name and the
professor . . . and clicked on the OK button, the exam-taking application
may use this information to determine a first application to be executed”
(Winneg, col. 9, ll. 45-54). In addition, Winneg discloses that “a user may
be prompted to enter a password” (col. 10, ll. 5-6). In other words, Winneg
encounters a secure document via manipulating a GUI by entering specified
data type, i.e., a password code. In Winneg, if the password is not valid, the
secure browser/application is not initiated.
We find that the recited “data encoding type” and its use is strikingly
similar (at least conceptually) to Winneg’s secure browser triggered via a
password noted supra, and the Examiner’s reliance on this functionality is
therefore persuasive.
Appellants’ arguments notwithstanding, we sustain the Examiner’s
anticipation rejection of independent claims 1 and 9 for essentially the same
reasons argued by the Examiner. (Ans. 12-14). Claims 2-4, 6-8, and 10-20
fall with their respective independent claim.

Rejection of claims 5 and 21 under § 103(a)
Issue 3: Did the Examiner err in finding that the combination of
Winneg and Chang teaches and/or suggests rendering text information as
graphic objects, as claimed in claim 5?

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Appellants contend that “it is not believed that Chang et al. disclose
an application-level rasterizer, but rather a rasterizer that services all
applications on a device” (App. Br. 30).
The Examiner found that “Chang discloses render[ing] text
information as graphic objects” (Ans. 9). We agree with the Examiner.
Appellants actually agree that Chang discloses rendering text
information as graphics objects, but instead argue that such a rasterizer is not
at application-level (see App. Br. 30). However, the Examiner has shown
above that Winneg discloses a browser capable of initiating a secure
environment and further found that the combination of Winneg and Chang
would have suggested a browser performing text conversion. Thus,
Appellants’ arguments do not take into account what the collective teachings
of the prior art would have suggested to one of ordinary skill in the art and
are therefore ineffective to rebut the Examiner’s prima facie case of
obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)(“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.”) (citations
omitted, emphasis added). This reasoning is applicable here and Appellants
have failed to rebut the collective teachings.
For these reasons, and for the reasons previously discussed regarding
claim 1, we sustain the Examiner’s § 103 rejection of claims 5 and 21.

Appeal 2010-012135
Application 10/791,019

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DECISION
We affirm the Examiner’s § 102 and § 103 rejections.
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.
§ 1.136(a)(1)(iv) .

AFFIRMED

kis