Ex Parte Statica et al

Patent Trials and Appeals Board

Jun 18, 2019

14314018 - (D) (P.T.A.B. Jun. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/314,018 06/24/2014
132114 7590
LaForgia Law - Wida Inc.
99 Winding Way
Woodcliff Lake, NJ 07677
06/20/2019
FIRST NAMED INVENTOR
Robert Statica
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. CONFIRMATION NO.
WICKP003 3900
EXAMINER
WADE, SHAQUEAL D
ART UNIT PAPER NUMBER
2437
NOTIFICATION DATE DELIVERY MODE
06/20/2019 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@wickr.com
patents@laforgialaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT STATICA, CHRISTOPHER A. HOWELL,
and KARALYNN COPPA1
Appeal2018-008749
Application 14/314,018
Technology Center 2400
Before CAROLYN D. THOMAS, JON M. WRGOV AN, and
SCOTT RAEVSKY, Administrative Patent Judges.
RAEVSKY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1--4 and 6-22, all the pending claims
in the present application. See App. Br. 15 (Claims Appendix). Claim 5 has
been cancelled. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Appellants name Wickr Inc. as the real party in interest. App. Br. 2.
Appeal2018-008749
Application 14/314,018
STATEMENT OF THE CASE
Appellants' invention generally relates to determining whether a time-
to-live value has not been exceeded, and if not, allowing access to a
message. See Abstract. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A system, comprising:
an interface configured to:
receive a secure communication from a sender, wherein
the secure communication includes an encrypted message, an
encrypted message key, and an encrypted time-to-live value;
a processor configured to:
decrypt the encrypted message key using a first
key;
decrypt the encrypted first time-to-live value with
the decrypted message key to obtain a first time-to-live
value;
store the first time-to-live value in a secure
database to prevent the first time-to-live value from being
tampered with;
determine an expiration time of the encrypted
message based, in part, on the first time-to-live value;
in response to a user's attempt to access the
encrypted message, obtain an external master clock time
to prevent circumvention of the first time-to-live value;
determine whether the external master clock time
is greater than the expiration time; and
in response to a determination that the external
master clock time is not greater than the expiration time,
allow access to the encrypted message; and
a memory coupled to the processor and configured to
provide the processor with instructions.
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Appeal2018-008749
Application 14/314,018
REJECTIONS
The Examiner made the following rejections:
Claims 1-3, 16, and 17 are rejected under 35 U.S.C. § 103 as being
unpatentable over Freeman et al. (US 2009/0006851 Al, publ. Jan. 1, 2009),
Bolt (US 2006/0224902 Al, publ. Oct. 5, 2006), and Medvinsky (US
2010/0138903 Al, publ. June 3, 2010). Final Act. 5.
Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over
Freeman, Bolt, Medvinsky, and Karstens et al. (US 2009/0069033 Al, publ.
Mar. 12, 2009). Id. at 11.
Claims 4, 7-12, 18, and 19 are rejected under 35 U.S.C. § 103 as
being unpatentable over Freeman, Bolt, Medvinsky, and Robbins et al. (US
2013/0194301 Al, publ. Aug. 1, 2013). Id. at 12.
Claims 13 and 20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Freeman, Bolt, Medvinsky, Robbins, and Ristock et al.
(US 8,824,664 Bl, publ. Sept. 2, 2014). Id. at 14.
Claims 14, 15, 21, and 22 are rejected under 35 U.S.C. § 103 as being
unpatentable over Freeman, Bolt, Medvinsky, and Chheda et al. (US
2006/0133346 Al, publ. June 22, 2006). Id. at 15.
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
ANALYSIS
Appellants propose a construction for the term "time-to-live value" in
independent claim 1 and argue that it would not have been obvious to
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Application 14/314,018
modify Freeman's time stamp to be a time-to-live value. App. Br. 7-8.
Appellants also contend the combination of Freeman, Bolt, and Medvinsky
applied to claim 1 was improper and based on hindsight reasoning. Id. at 7,
10-138. We address each contention in tum below.
First, Appellants ask us to construe claim 1 's "time-to-live value" as
"a limit on the time period during which a recipient is able to view or listen
to a message, or otherwise interact with the message and any attachments."
Id. at 9. Appellants contend the Specification defines the term and dispute
the Examiner's finding "interpret[ing] the 'time-to-live value' as any time
value." Id. at 8 (citing Spec. ,r 91); Final Act. 2. In response, the Examiner
does not address the Appellants' proposed construction. See Ans. 3.
Instead, the Examiner's takes the position that Bolt discloses a time-to-live
value because "Bolt discloses an expiration date and/or lifespan." Id.
We address the Answer's findings with respect to Bolt in more detail
below. As for the construction of "time-to-live value," Appellants do not
appear to rely on their proposed construction to distinguish claim 1 from the
cited references. Appellants instead focus their arguments on the
combination of references. App. Br. 10-13. While Appellants generally
assert, "the Office has not shown that time-to-live values, as defined by
Appellant, were known at the time the application was filed," this assertion
is belied by Appellants' concession that "Bolt teaches a time-to-live value."
Id. at 7, 13. We, therefore, conclude there is no need to construe "time-to-
live value" to resolve the issues in this case. See Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir.
2017) ("Because we need only construe terms that are in controversy, and
only to the extent necessary to resolve the controversy ... , we need not
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Application 14/314,018
construe the claim ... here where the construction is not material to the
obviousness dispute.") (internal citation and quotations omitted).
Appellants next contend that modifying Freeman's time stamp to be a
time-to-live value would yield unpredictable results and render Freeman
unsatisfactory for its intended purpose. App. Br. 10-11. Appellants contend
Freeman's purpose for using time stamps includes "allow[ing] the sender to
maintain knowledge of the original time that [a] message was sent or at least
encrypted for tracking purposes." Id. at 10; Freeman ,r 26. Consequently,
Appellants argue, replacing time stamps with a time-to-live value would
eliminate Freeman's "tracking functionality." App. Br. 11.
The Examiner finds, "substituting one known element (i.e.
[Freeman's] time stamp) with another known element (i.e. time-to-live
value) does not require any inventive step and such modification would have
been obvious and predictable to one having ordinary skill in the art." Final
Act. 6. The Examiner also finds it would have been obvious "to modify
Freeman with the teachings of Bolt to have an expiration date/lifespan [time-
to-live value] and use an external source to determine whether the expiration
condition is expired to provide the advantage of timely destruction of
expired data." Id. (emphasis added). In the Answer, the Examiner clarifies,
"the proposed modification of Freeman [with Bolt] was simply to add an
expiration date to provide the advantage of timely destruction of expired
data." Ans. 4 (emphasis added).
Appellants' argument against modifying Freeman's time stamp is
unpersuasive because it does not address all of the Examiner's rationales for
modifying Freeman. The Examiner not only finds it obvious to substitute
Freeman's time stamp with a time-to-live value but also finds it obvious to
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Application 14/314,018
add Bolt's expiration date to Freeman. See id.; Final Act. 6. The teachings
of Bolt also undercut Appellants' substitution argument because Bolt teaches
or suggests that a time-to-live value and a timestamp are interchangeable.
See Bolt ,r,r 26, 36 ("An expiration date and/or timestamp may be assigned
to the individual piece of removable storage media .... Each source of
authorization data will include a corresponding expiration timestamp.")
( emphasis added).
On Reply, Appellants argue the Examiner changed the rejection,
stating, "the Examiner's Answer presents a new ground of rejection by
proposing a new reason to modify the cited references." Reply Br. 2.
Specifically, Appellant contends the Examiner's "proposed modification of
Freeman ... to add an expiration date ... directly contradicts the position
taken by the Office in the previous Office Actions." Id. Appellants then
assert they "ha[ ve] not filed any response" to the alleged new ground of
rejection as "Appellant[s] ha[ve] not had a fair opportunity to react." Id. at
3. This argument is not persuasive because of the rules governing new
grounds of rejection in the Examiner's Answer. For example, "[a]n
examiner's answer may include a new ground of rejection." 37 C.F.R.
§ 4I.39(a)(2); see also MPEP § 1207.02 ("A new ground of rejection is
permitted in an examiner's answer."). If Appellants believed the Answer
failed to designate a new ground of rejection, Appellants' remedy was to
petition the Director under 3 7 C.F .R. § 1.181 to designate the new ground.
37 C.F.R. § 4I.40(a). "Failure of appellant to timely file such a petition will
constitute a waiver of any arguments that a rejection must be designated as a
new ground of rejection." Id. As Appellants have not filed a petition,
Appellants waived any argument that the Answer includes a new ground of
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rejection. Whether a rejection on appeal constitutes a new ground of
rejection is reviewed by way of petition, not appeal.
In any event, even if the Answer had explicitly designated a new
ground of rejection, Appellants' options were to either (1) reopen
prosecution or (2) maintain the appeal "by filing a reply brief." Id.
§ 41.39(b )(2). "Such a reply brief must address ... each new ground of
rejection." Id. ( emphasis added). Here, Appellants do not address the merits
of the Answer's clarified rationale to combine Bolt with Freeman. At most,
Appellants generically argue hindsight, contending, "[t]he Office has
adopted what it had been taught in the Appellant[s'] response and used this
teaching as a new motivation for modifying the cited references in the
Examiner's Answer." See Reply Br. 4. This assertion is conclusory and
unpersuasive.
The Appeal Brief sets forth two additional arguments. First,
Appellants contend, "the Office has failed to consider the independent
claims in their entireties." App. Br. 11. Specifically, Appellants contend,
"the Final Rejection has failed to identify a reason that would have prompted
a person of ordinary skill in the relevant field to combine the elements in the
manner set forth in claims 1--4 and 6-22." Id. at 12. However, as we
explained above, the Examiner did identify reasons to combine the
references. See, e.g., Final Act. 6-7. Appellants' argument is, therefore,
unpersuasive. Second, Appellants contend, "the rejection is improper since
it constitutes a hindsight reconstruction of quasi-known elements,
unsupported by reasoning but for the Appellant[s'] own reasoning for
applying time-to-live values to messages." App. Br. 13. Appellants'
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argument is conclusory and, therefore, unpersuasive. In any event, as
correctly noted by the Examiner,
[ A ]ny judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning. But so long as
it takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made,
and does not include knowledge gleaned only from the
Appellant[ s '] disclosure, such a reconstruction is proper.
Ans. 5 (quoting in part In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971)). Here, the Examiner took into account the teachings explicitly found
in Bolt and Freeman. Thus, we are not persuaded that the Examiner
improperly relied on hindsight.
Accordingly, we sustain the Examiner's rejection of claim 1.
Appellants' arguments regarding the rejection of independent claims 16 and
17 rely on the same arguments as for claim 1, and Appellants do not argue
separate patentability for the dependent claims. See App. Br. 11-13. We
therefore also sustain the Examiner's rejection of claims 2--4 and 6-22. See
37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
We affirm the Examiner's§ 103 rejections of claims 1--4 and 6-22.
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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