Ex Parte Sweets

Board of Patent Appeals and Interferences

Oct 29, 2009

10161919 (B.P.A.I. Oct. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ANTHONY SWEETS
__________

Appeal 2009-000131
Application 10/161,919
Technology Center 2100
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Decided: October 30, 2009
__________

Before HOWARD B. BLANKENSHIP, JAY P. LUCAS, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-5. Claims 6-13 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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Invention
The invention relates to storing and securing documents accessed via
the Internet (Spec. 1). It comprises a server that prevents unauthorized
document access through a crypt engine and secure storage (Spec. 4). The
crypt engine encrypts each document prior to storing documents in secure
storage and decrypts the document when retrieved from secure storage for
delivery to each requesting client (id.).
Independent claim 1 is illustrative:
1. A system for serving documents over the Internet to a
plurality of clients comprising:
a server in communication with the Internet, the server
sending documents over the Internet in response to a
request from at least one of the clients;
a secure storage holding encrypted documents; and
a crypt engine in communication with the server and the
secure storage, the crypt engine encrypting each
document when stored in the secure storage and
decrypting the document when retrieved from the secure
storage for delivery to each requesting client.
References
The Examiner relies upon the following references as evidence in
support of the rejections:
Dahl US 6,321,201 B1 Nov. 20, 2001
Serbinis US 6,584,466 B1 Jun. 24, 2003
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Rejections
Claims 1, 2, and 3 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Serbinis.
Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Serbinis and Dahl.
ISSUE 1
Appellant argues that “Serbinis’ store 30 cannot be a secure storage
because store 30 may store encrypted as well as unencrypted documents”
(App. Br. 3).
Issue: Has Appellant shown that the Examiner erred in finding that
Serbinis teaches a secure storage holding encrypted documents?
ISSUE 2
Appellant argues that Serbinis “does not teach, disclose, or suggest
Applicant’s crypt engine” (App. Br. 5).
Issue: Has Appellant shown that the Examiner erred in finding that
Serbinis teaches a crypt engine in communication with a server and a secure
storage that encrypts documents when stored in storage and decrypts
documents when retrieved from storage?
ISSUE 3
Appellant argues that “[o]ptionally encrypting a document during
upload does not teach, disclose, or suggest never permanently storing, as an
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unencrypted document outside of a secure storage, a document held in the
secure storage” (App. Br. 6).
Issue: Has Appellant shown that the Examiner erred in finding that
Serbinis teaches never permanently storing, as an unencrypted document
outside of secure storage, a document held in secure storage?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
1. Appellant’s Specification teaches that
[t]o prevent the unauthorized access of documents, system 20
includes crypt engine 28 and secure storage 30. Crypt engine
28 encrypts each document prior to storing in secure storage 30
and decrypts the document when retrieved from secure storage
30 for delivery to each requesting client 22. Such documents
held within secure storage 30 are referred to as secured
documents.
(Spec. 4, ll. 9-13 (emphasis added); fig. 1, 30).
2. Appellant’s Specification teaches that embodiments of the
invention may include “an unsecure storage [that] holds unencrypted
documents” (Spec. 2, ll. 16-17).
3. Appellant’s Specification teaches that a “[s]ystem administrator
34 [who] uploads unencrypted documents” (Spec. 5, l. 9 (emphasis
added)) “may . . . provide an indication as to whether or not [the]
uploaded documents are to be secured” (Spec. 5, ll. 10-11; fig. 2). “If
the information received is not secured . . . [s]erver 26 stores
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unsecured information in unsecure storage 32” (Spec. 5, ll. 25-26
(emphasis added); figs. 1-2). But, “[i]f the received information is to
be secured . . . [c]rypt engine 28 encrypts the received information”
(Spec. 5, ll. 27-28 (emphasis added); figs. 1-2).
4. Appellant’s Specification teaches that when “[a] client request
for information is received” (Spec. 6, l. 7), “[a] check is made to
determine if the stored information is secured” (Spec. 6, l. 11; fig. 3).
“If the requested information is secured . . . [c]rypt engine 28 retrieves
the secured document from secured storage 30” (Spec. 6, ll. 18-20
(emphasis added)). Unsecured documents are retrieved from unsecure
storage 32 (Spec. 6, ll. 23-24).
5. Serbinis teaches that encrypting a document (col. 10, ll. 65-67)
“may be automatically (or selectively, at the Originator’s request)
performed by DMS system 17 as part of a filtering processing during
upload and storage of the document” (col. 11, ll. 3-6).
6. Serbinis teaches that documents can be “uploaded and stored in
store 30” (col. 9, ll. 32-33) or downloaded from store 30 (col. 10,
ll. 7-10). “During the upload process . . . the document optionally
may be automatically or selectively filtered . . . . For example, the
document may be automatically . . . encrypted . . .” (col. 9, ll. 38-42).
The document may also be unencrypted during the retrieval process
(col. 12, ll. 46-48).
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PRINCIPLES OF LAW
Claim interpretation
“In the patentability context, claims are to be given their broadest
reasonable interpretations.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citations omitted). Any special meaning assigned to a term
“must be sufficiently clear in the specification that any departure from
common usage would be so understood by a person of experience in the
field of the invention.” Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d
1473, 1477 (Fed. Cir. 1998).

Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted). “[I]f
granting patent protection on the disputed claim would allow the patentee to
exclude the public from practicing the prior art, then that claim is
anticipated, regardless of whether it also covers subject matter not in the
prior art.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir.
1999) (internal citations omitted).

Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
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(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
ANALYSIS
Issue 1
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal with respect to issue 1 on the basis of claim 1 alone. See 37
C.F.R. § 41.37(c)(1)(vii).
The Specification provides no clear, special meaning for the term
“secure storage” (FF 1). See Multiform Desiccants Inc. v. Medzam Ltd., 133
F.3d at 1477. A reasonably broad interpretation is that storage is secure if
the documents in that storage are encrypted (FF 1). Similarly, storage is
unsecure if the documents in that storage are unencrypted (FF 2).
Appellant argues that Serbinis does not anticipate the claimed
invention because store 30 can contain both encrypted and unencrypted
documents (App. Br. 3). This is not persuasive. Serbinis’ store 30 can
comprise both secure storage (storage containing encrypted documents) and
unsecure storage (storage containing unencrypted documents) (FF 5, 6).
Appellant has not shown that the claimed secure storage cannot share a
common store with unsecure storage.
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For at least these reasons, we find that Appellant has not sustained the
requisite burden on appeal in providing arguments or evidence persuasive of
error in the Examiner’s 35 U.S.C. § 102(e) rejection of claims 1-3, or in the
Examiner’s 35 U.S.C. § 103(a) rejection of claims 4 and 5, with respect to
this issue.
Issue 2
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal with respect to issue 2 on the basis of claim 1 alone. See 37
C.F.R. § 41.37(c)(1)(vii).
As set forth above, Serbinis discloses a mechanism that encrypts
documents when the documents are stored in a storage (i.e., in
communication with the storage) and decrypts documents when retrieved
from storage (FF 6). In view of this explicit teaching by Serbinis, we
disagree with Appellant’s contention that Serbinis supposedly fails to
disclose or suggest this feature.
Appellant argues that “Applicant’s crypt engine does not optionally
encrypt, or decrypt, documents from its secure storage” (App. Br. 5). Since
Serbinis discloses encrypting documents when storing the documents in a
storage and decrypting documents when retrieving the documents from
storage (i.e., packaging documents “prior to uploading” by “using . . . [an]
encryption routine” (col. 10, ll. 65-67)), and since this feature appears to be
identical to the feature recited in claim 1, we find Appellant’s argument
unpersuasive.
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We also find no relevance in Appellant’s argument that document
encryption in Serbinis is “optional.” Appellant’s cited passage from Serbinis
discloses that documents are packaged using an encryption routine.
Appellant asserts but fails to demonstrate that this process in Serbinis is
“optional” and, therefore, not performed. More importantly, Appellant fails
to show that Serbinis, in fact, fails to disclose or suggest encrypting
documents when storing the documents in a storage. As set forth above,
Serbinis appears to explicitly disclose this feature (FF 6).
For at least these reasons, we find that Appellant has not sustained the
requisite burden on appeal in providing arguments or evidence persuasive of
error in the Examiner’s 35 U.S.C. § 102(e) rejection of claims 1-3, or in the
Examiner’s 35 U.S.C. § 103(a) rejection of claims 4 and 5, with respect to
this issue.
Issue 3
Appellant does not identify any teaching in Serbinis of “permanently
storing, as an unencrypted document outside of a secure storage, a document
held in the secure storage” (App. Br. 6). Serbinis fails to disclose or suggest
permanently storing unencrypted documents outside of the secure storage.
Therefore, Serbinis never permanently stores unencrypted documents
outside of the secure storage. In view of the fact that Serbinis never
permanently stores unencrypted documents outside of the secure storage, we
cannot agree with Appellant’s contention.
For at least these reasons, we find that Appellant has not sustained the
requisite burden on appeal in providing arguments or evidence persuasive of
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error in the Examiner’s 35 U.S.C. § 102(e) rejection of claim 2 with respect
to this issue.
CONCLUSION
Based on the findings of facts and analysis above, we find Appellant
has failed to demonstrate:
1. that the Examiner erred in finding that Serbinis teaches a secure
storage holding encrypted documents (issue 1);
2. that the Examiner erred in finding that Serbinis teaches a crypt
engine in communication with a server and a secure storage that encrypts
documents when stored in storage and decrypts documents when retrieved
from storage (issue 2); and
3. that the Examiner erred in finding that Serbinis teaches never
permanently storing, as an unencrypted document outside of secure storage,
a document held in secure storage (issue 3).
DECISION
We affirm the Examiner’s decisions rejecting claims 1-5.
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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Qwest Communications International Inc.
1801 California Street, # 900
Denver CO 80202