Ex Parte Teixeira

Board of Patent Appeals and Interferences

Apr 13, 2010

10605644 (B.P.A.I. Apr. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte STEVEN L. TEIXEIRA
____________________

Appeal 2009-004088
Application 10/605,6441
Technology Center 2400
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Decided: April 14, 2010
____________________

Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and JAMES
R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed October 15, 2003. The real party in interest is Check
Point Software Technologies., Inc. (Br. 3.)
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STATEMENT OF THE CASE
The Appellant appeals from the Examiner’s rejection of claims 1-55
under authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
We reverse.

Appellant’s Invention
Appellant invented a computer system and method for securing
sensitive user information. The system receives a user’s sensitive
information, computes a “data shadow” of the user’s sensitive information,
stores the data shadow, discards the user’s sensitive information, detects any
attempted transmission of the user’s sensitive information utilizing the data
shadow, and blocks the unauthorized attempted transmission of the user’s
sensitive information. (Spec. ¶¶ [0007], [0014].)2

Representative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. In a computer system, a method for protecting
sensitive information, the method comprising:
receiving input of sensitive information from a user;
computing a data shadow of the sensitive information for
storage in a repository, and thereafter discarding the input so
that the sensitive information itself is not stored;

2 We refer to Appellant’s Specification (“Spec.”) and Appeal Brief (“Br.”)
filed November 13, 2007. We also refer to the Examiner’s Answer (“Ans.”)
mailed January 23, 2008.
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based on the data shadow stored in the repository,
detecting any attempt to transmit the sensitive information; and
blocking any detected attempt to transmit the sensitive
information that is not authorized by the user.

References
The Examiner relies on the following reference as evidence of
unpatentability:
Margolus US 2004/0162808 A1 Aug. 19, 2004
(filed Jan. 7, 2004)
(Divisional of Appl. No. 09/785,535 filed Feb. 16, 2001)

Rejections on Appeal
The Examiner rejects claims 1-55 under 35 U.S.C. § 102(e) as being
anticipated by Margolus.

ISSUE
Based on Appellant’s contentions, as well as the findings and
conclusions of the Examiner, the pivotal issue before us is as follows.
Does the Examiner err in finding the Margolus reference discloses:
(1) discarding user sensitive information so that it is not stored in the system;
and (2) blocking unauthorized transmission of the user sensitive
information?

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FINDINGS OF FACT (FF)
Appellant’s Specification
1. Appellant’s Specification describes computing a “data shadow”
from user sensitive information – a data structure element that may include a
regular expression (format information for the user sensitive information)
and a hash of the user sensitive information (for example, an MD-5 hash),
i.e., a “fingerprint” of the user sensitive information – but the user sensitive
information itself is not stored and is discarded after the data shadow is
computed. (¶¶ [0042]-[0048], [0078].) Appellant’s Specification also
describes detecting and blocking unauthorized transmission of the user
sensitive information utilizing the data shadow. (¶¶ [0063], [0085].)

Margolus Reference
2. Margolus describes a computer data repository (data storage
system) and method that stores data to locations associated with a digital
“fingerprint” or “dataname.” Margolus receives a user data item, encrypts
the data item, creates a dataname (digital fingerprint) for the data item, and
stores the data item and the dataname in the system. (¶¶ [0010]-[0011],
[0058]-[0060].)
3. Margolus also describes determining whether a data item is
already stored in the system utilizing a comparison of datanames. (¶¶
[0011], [0012], [0060].)

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PRINCIPLES OF LAW
Burden on Appeal
The allocation of burden requires that the United States Patent and
Trademark Office (USPTO) produce the factual basis for any rejection in
order to provide an applicant with notice of the reasons why the applicant is
not entitled to a patent on the claim scope sought. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir.
1984); Ex Parte Frye, No. 2009-006013, 2010 WL 889747, *3 (BPAI)
(Precedential). An appellant has the opportunity on appeal to the Board to
demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can
overcome a rejection by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998), overruled in part on other grounds, KSR, 550 U.S. at 422);
Ex Parte Frye, 2010 WL 889747 at *4.

Anticipation
Anticipation is a question of fact. In re Schreiber, 128 F.3d 1473,
1477 (Fed. Cir. 1997). Under 35 U.S.C. § 102, “[a] claim is anticipated only
if each and every element as set forth in the claim is found, either expressly
or inherently described, in a single prior art reference.” Verdegaal Bros.,
Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987) (citations
omitted); see also Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375
(Fed. Cir. 2005)(citation omitted).

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ANALYSIS
Appellant contends that the disclosed “improved lockbox approach
(which expressly eschews storage of the data item itself) is not taught or
suggested by Margolus’ network storage solution, which clearly stores at
least one copy of the data item of interest, as it is in fact a network storage
system.” “Margolus teaches, if anything in this regard, away from
Appellant’s claimed approach.” (Br. 11.) Appellant also contends that
“Margolus provides no teaching or suggestion that would suggest his system
may detect and trap outbound transmission of sensitive user information, all
without ever storing a copy of the user information itself.” (Br. 9.) In
summary, Appellant contends that Margolus fails to disclose (and actually
teaches away from): (1) discarding user sensitive information so that it is not
stored in the system; and (2) blocking unauthorized transmission of the user
sensitive information. The Examiner, on the other hand, finds that the
Margolus reference discloses each feature of Appellant’s claim 1 and
maintains that the claim is properly rejected. (Ans. 3, 12.) Accordingly, we
decide the question of whether Margolus discloses discarding user sensitive
information so that it is not stored, and blocking unauthorized transmission
of the user sensitive information.
After reviewing the record on appeal, we agree with Appellant, and
we find the Margolus reference does not disclose discarding (and/or not
storing) user sensitive information, as well as blocking unauthorized
transmission of the user sensitive information. We broadly, but reasonably
construe the disputed limitations of Appellant’s claim 1, in view of
Appellant’s Specification disclosure, to compute a “data shadow” or
“fingerprint” from received user sensitive information such that the user
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sensitive information itself is not stored and is discarded after the data
shadow is computed; and also to detect and block unauthorized transmission
of the user sensitive information utilizing the data shadow. (FF 1.)
The Margolus reference describes receiving a user data item,
encrypting the user data item, computing a dataname (fingerprint) for the
user data item, and determining whether a particular user data item is already
stored in the system by utilizing a comparison of datanames. (FF 2-3.) Thus
we find that Margolus teaches several features of Appellant’s
system/method, including receiving a user data item, computing a fingerprint
for the user data item, and detecting a particular user data item using the
fingerprint. However, Margolus also describes storing the user data item
and the dataname in its repository. (FF 2.) There is simply no explicit or
inherent disclosure in Margolus of discarding (and not storing) user sensitive
information, nor blocking transmission of user sensitive information. Thus,
we are constrained by the record before us, and find that Margolus does not
disclose discarding, not storing, and blocking user sensitive information.
Accordingly, we reverse the Examiner’s anticipation rejection of
independent claim 1 and its dependent claims 2-32.
Appellant’s independent claim 33 includes limitations of similar scope
directed to discarding and trapping user sensitive information. We,
therefore, reverse the Examiner’s anticipation rejection of independent claim
33 and its dependent claims 34-46 for the reasons set forth with respect to
claim 1, supra.
Appellant’s independent claim 47, while slightly different in scope,
also includes limitations directed to not saving and detecting outgoing
transmission of user sensitive information. For the reasons set forth
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previously with respect to claim 1, we find that Margolus also does not
disclose these limitations. Accordingly, we reverse the Examiner’s
anticipation rejection of independent claim 47 and its dependent claims 48-
55.

CONCLUSION OF LAW
On the record before us, we find that Appellant has established that
the Examiner erred in finding the Margolus reference discloses discarding
user sensitive information so that it is not stored in the system, and blocking
unauthorized transmission of the user sensitive information.

DECISION
We reverse the Examiner’s rejection of claims 1-55 under 35
U.S.C. § 102(e).

REVERSED

erc

John A. Smart
201 Los Gatos Saratoga Rd., #161
Los Gatos, CA 95030-5308