Ex Parte Suleiman et al

Board of Patent Appeals and Interferences

Apr 12, 2012

11243858 (B.P.A.I. Apr. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MOHAMMAD A. SULEIMAN and HONGFENG WEI
____________

Appeal 2010-001632
Application 11/243,858
Technology Center 2400
____________

Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-001632
Application 11/243,858

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

STATEMENT OF THE CASE
Appellants’ invention securely transmits documents including
humanly-added indicia (highlighting, underlining, etc.) representing areas in
which confidential information is located for encryption. A hybrid
electronic document including encrypted and non-encrypted portions is then
generated and sent to a selected destination. See generally Abstract; Spec.
1-2. Claim 7 is illustrative with key disputed limitations emphasized:
7. A method for secure document transmission comprising the steps
of:
receiving a tangible document, which document includes humanly
added indicia representative of at least one area in which confidential
information is located;
scanning a received document to generate an electronic version
thereof;
encrypting the at least one area to a corresponding encrypted portion;
generating a hybrid electronic document inclusive of at least one non-
encrypted portion of the received document and the at least one encrypted
portion; and
communicating the hybrid electronic document to a selected
destination.

THE REJECTION
The Examiner rejected claims 1-18 under 35 U.S.C. § 103(a) as
unpatentable over Virga (US 5,321,749; June 14, 1994), Zdybel (US
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Application 11/243,858

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5,486,686; Jan. 23, 1996), and Herley (US 2002/0108035 A1; Aug. 8, 2002).
Ans. 3-8.1

CONTENTIONS
The Examiner finds that Virga’s secure document transmission
method has every recited feature of representative claim 7 except for (1)
receiving a document including humanly-added indicia representing at least
one area in which confidential information is located, and (2) generating a
hybrid electronic document including encrypted and non-encrypted portions,
but cites Zdybel and Herley as teaching these features in concluding that the
claim would have been obvious. Ans. 3-5, 8-11.
Appellants argue that the cited prior art collectively does not teach or
suggest these features. App. Br. 16-23; Reply Br. 1-14. Appellants
emphasize that the Examiner’ position is flawed since, among other things,
(1) Virga encrypts an entire original document (not portions); (2) Zdybel’s
annotations do not represent an area containing confidential information, nor
does Zdybel generate a hybrid document as claimed; and (3) Herley divides
an original file into two files according to a pattern based on information in
the original file, not on the recited humanly-added indicia. Id. The issue
before us, then, is as follows:

1 Throughout this opinion, we refer to (1) the Appeal Brief filed July 24,
2009; (2) the Examiner’s Answer mailed October 5, 2009; and (3) the Reply
Brief filed October 27, 2009.
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Application 11/243,858

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ISSUE
Under § 103, has the Examiner erred in rejecting claim 7 by finding
that Virga, Zdybel, and Herley collectively would have taught or suggested a
secure document transmission method including (1) receiving a document
including humanly-added indicia representing at least one area in which
confidential information is located, and (2) generating a hybrid electronic
document including encrypted and non-encrypted portions?

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of representative claim 7. First, Virga’s system
encrypts “combination documents” that include textual and non-textual
information as shown in Figure 1. Virga, Abstract; col. 6, ll. 15-49; col. 7, l.
27–col. 9, l. 14; Figs. 1-2, 10. To this end, Virga scans the document to
produce a bitmap representation that is then encrypted and printed. Virga,
col. 7, l. 27–col. 8, l. 10. The printed encrypted bitmap, however, includes
various user-entered comments and other information (page numbers, dates,
etc.) that are not encrypted. Virga, col. 7, l. 34–col. 8, l. 10; col. 8, ll. 52-60;
Figs. 4, 10. The resulting document therefore includes both encrypted and
unencrypted information. Virga’s Figure 4 showing the first page of this
encrypted printed output and Figure 1 showing the corresponding original
document are reproduced below:
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Virga’s Figures 1 and 4 showing original document and corresponding
encrypted printed output

Notably, the original document in Virga’s Figure 1 includes humanly-
added indicia including handwritten signature 5; indeed, the entire document
can be handwritten. Virga, col. 6, ll. 19-22; Fig. 1. Despite the fact that this
humanly-added indicia arguably represents the area in which confidential
information is located, since the indicia is encrypted in the area
corresponding to the output document’s encrypted portion in Figure 4 (i.e.,
where the coded symbols 62 are located), the Examiner nonetheless cites
Zdybel to show that providing humanly-added indicia (e.g., annotations) on
a received document to represent an area for later encryption would have
been obvious. Ans. 4-5, 8-9. We see no error in this position, particularly
since Zdybel’s information encoding operations can depend on handwritten
marks on documents. Zdybel, col. 5, ll. 8-12. Moreover, Appellants’
contention that encrypted information is not necessarily confidential as
claimed (App. Br. 19; Reply Br. 12-13) is unavailing, for this contention is
not commensurate with the scope of the limitation in light of the Examiner’s
cited definition of “confidential.” Ans. 11. In any event, that Virga labels
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the document in Figure 4 as a “Confidential Document” only further bolsters
the Examiner’s position in this regard.
Nor do we find error in the Examiner’s position (Ans. 4-5, 11) that
Zdybel generates a hybrid electronic document with encrypted and non-
encrypted portions as claimed. As the Examiner indicates (Ans. 11), nothing
in claim 7 precludes Zdybel’s hybrid document which includes both
encrypted and non-encrypted portions, namely the machine-readable and
human-readable document representations 45, 101 shown in Zdybel’s
Figures 3 and 4. See Zdybel, col. 8, ll. 30-50; col. 9, ll. 13-67; Figs. 3-4.
Lastly, we see no error in the Examiner’s reliance on Herley merely to
show that selecting areas of a document via indicia to provide corresponding
encrypted portions would have been obvious, particularly in light of
Herley’s teaching that patterns used to divide a file for encryption can be
user-selected or related to the file’s content. Ans. 5, 10 (citing Herley, ¶
0029). Notably, Herley’s Figure 3 shows an image file 300 that is divided
by selecting particular areas of the corresponding image and encrypting
those portions in a second file 320. Herley, ¶ 0027-29; Fig. 3. This user-
based area selection at least suggests providing humanly-added indicia
representing those areas in which confidential information is located after
encryption. That Zdybel also provides indicia in the form of machine-
readable border patterns 111 in Figure 3 and start-end codes 112, 113 in
Figure 4 that represent the area in which confidential information is located
(i.e., the glyphs) only bolsters the Examiner’s position. See Zdybel, col. 9,
ll. 13-37; Figs. 3-4.
Although Appellants generally argue the individual shortcomings of
the cited references (see App. Br. 16-23; Reply Br. 1-14), such individual
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attacks do not show nonobviousness where, as here, the rejection is based on
the references’ collective teachings—a position that we find reasonable on
this record. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). We are therefore not persuaded that the Examiner erred in rejecting
representative claim 7, and claims 1-6 and 8-18 not separately argued with
particularity.

CONCLUSION
The Examiner did not err in rejecting claims 1-18 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-18 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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