Ex Parte Wu et al

Board of Patent Appeals and Interferences

Apr 16, 2012

11137684 (B.P.A.I. Apr. 16, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/137,684 05/24/2005 Ju Wu 34874-721002US 6460
64280 7590 04/16/2012
MINTZ, LEVIN, COHN, FERRIS, GLOVSKY & POPEO, P.C.
ONE FINANCIAL CENTER
BOSTON, MA 02111
EXAMINER
NOFAL, CHRISTOPHER P
ART UNIT PAPER NUMBER
2156
MAIL DATE DELIVERY MODE
04/16/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JU WU and QIAN WU
____________

Appeal 2010-006221
Application 11/137,684
Technology Center 2100
____________

Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
JENNIFER S. BISK, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1 and 7-9. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ invention delivers specific sections of electronic reports
by (1) augmenting a selected report section with security metadata, and
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(2) inserting the section within an electronic document. See generally
Abstract; Spec. ¶¶ 0011-13. Claim 1 is illustrative:
1. A computer storage product with a computer-readable medium,
comprising executable instructions to:

select a report including information automatically retrieved from a
data source, where the information is structured in accordance with a report
schema specifying the form in which the information is presented;

select a section of the report;

augment the section of the report with security metadata;

insert the section of the report into an electronic document, wherein
the metadata maintains contextual report and data source information,
including data security settings for data source and report source
information.

RELATED APPEALS
This appeal is said to be related to three appeals in connection with
the following applications: (1) 11/166,039; (2) 11/318,074 (Appeal No.
2010-002378); and (3) 11/137,710 (Appeal No. 2010-001624). Br. 4; Ans.
2. The ‘039 application, however, was allowed and issued as U.S. Patent
7,580,928.

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THE REJECTIONS1
1. The Examiner provisionally rejected claim 1 on the ground of
obviousness-type double patenting over claim 1 of Application No.
11/137,710 and Houser (US 5,606,609; Feb. 25, 1997). Ans. 5-7.2
2. The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Tracy (US 2002/0042687 A1; Apr. 11, 2002) and Houser.
Ans. 7-13.
3. The Examiner rejected claims 7 and 8 under 35 U.S.C. § 103(a) as
unpatentable over Tracy, Houser, and Weissman (US 6,212,524 B1; Apr. 3,
2001). Ans. 13-16.
4. The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Tracy, Houser, and Levine (US 6,073,129; June 6, 2000).
Ans. 16-18.

THE DOUBLE PATENTING REJECTION
Since Appellants present no arguments pertaining to the Examiner’s
provisional double patenting rejection (Ans. 5-7), we summarily sustain that
rejection. See MPEP § 1205.02, 8th ed., Rev. 8, July 2010 (“If a ground of

1 The Examiner’s entry of amendments filed after final rejection overcame
rejections under §§ 101 and 112. See Br. 5; Ans. 2. Accordingly, those
rejections are not before us.
2 Throughout this opinion, we refer to the Appeal Brief filed August 11,
2009 and the Examiner’s Answer mailed November 20, 2009 (supplemented
December 28, 2009).
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rejection stated by the examiner is not addressed in the appellant’s brief, that
ground of rejection will be summarily sustained by the Board.”).

THE OBVIOUSNESS REJECTION OVER TRACY AND HOUSER
The Examiner finds that Tracy discloses every recited feature of
representative claim 1 including:
(1) selecting a “report” (network scan file 708 or host profile file 710)
including automatically-retrieved information structured according to a
report schema;
(2) augmenting a selected report section (the network scan file’s
“Host” section) with “security metadata” (e.g., metadata involving IP
addresses, patch levels, and secret operating environment) via profile
integrator 706; and
(3) inserting the report section within an electronic Certification and
Accreditation (C&A) document. Ans. 9-12, 22-28.
Although the Examiner acknowledges that Tracy does not explicitly
illustrate a finished C&A document containing a “Host” section of the
network scan “report,” the Examiner nonetheless concludes that inserting
this “report” section in an electronic document would have been obvious in
view of Tracy’s “customizable” publishing process. Id. The Examiner adds
that since both Tracy and Houser’s metadata provide data security settings
for data source and report source information as claimed, this feature would
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have been obvious either over Tracy alone or, alternatively, Tracy and
Houser collectively. Ans. 11-13, 26-28.
Appellants argue that neither Tracy nor Houser discloses a “report” as
claimed and defined in the Specification, namely information that is
(1) automatically retrieved from a data source, and (2) structured according
to a report schema specifying the form in which the information is presented.
Br. 6-9. Appellants add that Tracy and Houser do not augment a selected
report section with security metadata as claimed, let alone that the metadata
includes data security settings for data source and report source information
as claimed. Br. 9-11. The issue before us, then, is as follows:

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Tracy and Houser collectively would have taught or suggested
(1) selecting a report including automatically-retrieved information
structured according to a report schema specifying the form in which the
information is presented; (2) augmenting a selected report section with
security metadata including data security settings for data source and report
source information; and (3) inserting the report section within an electronic
document?

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ANALYSIS
We begin by construing the key disputed limitation of claim 1, which
recites, in pertinent part, a “report.” As Appellants indicate (Br. 6-7), the
term is expressly defined in the Specification, and refers to information that
is (1) automatically retrieved from a data source (e.g., a database, data
warehouse, and the like), and (2) structured according to a report schema
specifying the form in which the information is presented. Spec. ¶ 0008.
Automatically-retrieved information is a key aspect of a “report” in
Appellants’ parlance that distinguishes it from “non-report” electronic
documents, which typically require at least some manual intervention to
establish content and formatting. Compare Spec. ¶ 0008 with ¶ 0009.
Despite the Examiner’s assertion to the contrary (Ans. 20-22), we find
Appellants clearly and unambiguously define the term “report” as noted
above, notwithstanding using open-ended and exemplary terms in
connection with the associated data source. Although broad, this definition
hardly lacks “clarity, deliberateness, and precision” as the Examiner alleges
(Ans. 21). The Examiner’s assertion in this regard is therefore unavailing.
That said, however, we find no error in the Examiner’s alternative
position that interprets the recited “report” in light of this definition. Ans.
22-28. First, even assuming, without deciding, that the recited “electronic
document” is a non-report electronic document notwithstanding the lack of
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the term “non-report” in the claim,3 the distinction between a “report” and a
“non-report” is without a structural or functional difference here, for it
merely pertains to how the data is acquired—not to the data itself. That is,
the functions recited in claim 1 pertain to the data itself in terms of its
selection, augmentation, and insertion, but are not germane to the data’s
previous acquisition (i.e., either manually or automatically), which
characterizes the data as a “report” or otherwise.
In any event, we see no reason why Tracy’s network scan file 708
cannot constitute a selected “report” as claimed, for it includes
automatically-retrieved information structured according to a “report
schema,” namely the Microsoft “.INI” file format as the Examiner indicates.
See Ans. 8-9, 22-24 (citing Tracy, ¶¶ 0056-58, 0063-64); see also id., ¶ 0059
(listing information written to a network scan file); Fig. 8 (illustrating this
file). Appellants’ contention that the published document in Tracy’s
Paragraph 0143 is not a “report” (Br. 8) is unavailing, for this argument does
not squarely address—let alone show error in—the Examiner’s mapping
Tracy’s network scan file to the recited “report” noted above. Rather, the
Examiner maps the published document in Tracy’s Paragraph 0143 to the
recited “electronic document” as noted above. Ans. 11.
Nor do we find error in the Examiner’s position that Tracy’s profile
integrator 706 augments a selected report section (the network scan file’s

3 But see claim 1 of related application 11/318,074 (Appeal No. 2010-
002378) (reciting a “non-report electronic document”) (emphasis added).
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“Host” section) with “security metadata” including data security settings for
data source and report source information. Ans. 9-10, 23-25. As shown in
Tracy’s Figure 8, the network scan file’s “Host” section 808 is a subset of
the information retrieved from the associated data source, and therefore fully
meets a “report section” given the term’s scope and breadth. And this
“report section” is augmented with at least information from host profile file
710 by the profile integrator as the Examiner indicates. Ans. 9, 23-25; see
also Tracy, ¶ 0065; Fig. 8 (“Host” section 810).
We also see no error in the Examiner’s position (Ans. 9-10, 12, 24-25)
that this information (e.g., IP addresses, operating environment conditions)
also constitutes “security metadata” given the scope and breadth of the
limitation. Leaving aside the fact that the metadata’s data security settings
for data source and report source information (as well as these two pieces of
information) constitute non-functional descriptive material as they merely
describe data and therefore do not functionally limit the claimed invention,4
we find no error in the Examiner’s position (Ans. 12, 25) that Tracy’s
metadata includes data security settings, at least regarding a data source
(database) and a report source (network) secure operating environment.
Appellants’ arguments regarding Tracy’s shortcomings regarding the recited
data security settings (Br. 10) are not commensurate with the scope of the

4 See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also Ex parte
Nehls, 88 USPQ2d 1883, 1887-89 (BPAI 2008) (precedential) (discussing
cases pertaining to non-functional descriptive material).
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claim, and, in any event, fail to persuasively rebut the Examiner’s position
noted above.
Nor are we persuaded of error in the Examiner’s alternative position
based on Houser. Ans. 10-13, 25-28. The Examiner cites Houser merely to
show that providing security information for documents is known, and
enhancing Tracy’s metadata with such security-based information would
have been obvious. Id. Not only are the data security settings non-
functional descriptive material as noted above, but enhancing Tracy’s
metadata with Houser’s security-based features as the Examiner proposes
merely predictably uses prior art elements according to their established
functions—an obvious improvement. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007). And even assuming, without deciding, that Houser’s
documents are not “reports” as Appellants contend (Br. 8-9), where, as here,
if a technique (including security information) has been used to improve one
device (electronic documents) and an ordinarily skilled artisan would
recognize that it would improve similar devices in the same way (e.g.,
reports), using the technique is obvious unless its actual application is
beyond his or her skill. See id.
Lastly, we see no error in the Examiner’s position that it would have
been obvious to insert the selected report part within an electronic C&A
document in view of Tracy’s customizable publishing process for the
reasons indicated by the Examiner. Ans. 11.
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We are therefore not persuaded that the Examiner erred in rejecting
claim 1.

THE OTHER OBVIOUSNESS REJECTIONS
Since Appellants present no arguments pertaining to the Examiner’s
obviousness rejections of claims 7-9 (Ans. 13-18), we summarily sustain
those rejections. See MPEP § 1205.02.

CONCLUSION
The Examiner did not err in rejecting (1) claim 1 on the ground of
obviousness-type double patenting, and (2) claims 1 and 7-9 under § 103.

ORDER
The Examiner’s decision rejecting claims 1 and 7-9 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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