2019001202 (P.T.A.B. May. 27, 2020)

JPMORGAN CHASE BANK, N.A.

Patent Trials and Appeals BoardMay 27, 2020

2019001202 (P.T.A.B. May. 27, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 13/690,174 11/30/2012 Jeffrey D. DiMuro 72167.000770 9132 131244 7590 05/27/2020 Hunton Andrews Kurth LLP/JPMorgan Chase Intellectual Property Department 2200 Pennsylvania Avenue, NW Suite 800 Washington, DC 20037 EXAMINER ZAIDI, SYED A ART UNIT PAPER NUMBER 2432 NOTIFICATION DATE DELIVERY MODE 05/27/2020 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): PATDCDOCKET@hunton.com sloftis@hunton.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JEFFREY D. DIMURO and DAVID JUDE FORD1,2 ____________________ Appeal 2019-001202 Application 13/690,174 Technology Center 2400 ____________________ Before KALYAN K. DESHPANDE, DAVID M. KOHUT, and JASON V. MORGAN, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1, 3, 5, 7, 9, 11, 13, 21, 22, 24, 25, 27, 1 Our Decision makes reference to Appellant’s Reply Brief (“Reply Br.,” filed November 26, 2018), and Appeal Brief (“Appeal Br.,” filed May 29, 2018), the Examiner’s Answer (“Ans.,” dated September 25, 2018), and Final Office Action (“Final Act.,” dated November 9, 2017). 2 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies JPMorgan Chase Bank, N.A. as the real party in interest. Appeal Br. 1. Appeal 2019-001202 Application 13/690,174 2 and 32–41.3 This appeal is related to a prior appeal, number 2015-005819, decided September 30, 2016. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART and enter a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b). INVENTION Appellant’s invention relates to the processing of protected electronic communications. Spec. ¶ 2. Independent claim 1 is illustrative of the claimed invention and is reproduced below. 1. A method for processing inbound messages, comprising: receiving an electronic message comprising content encrypted with password at an electronic device comprising at least one computer processor; the at least one computer processor receiving, at the electronic device and from a user, the password; the at least one computer processor using the password to decrypt the content encrypted with the password; the at least one computer processor automatically sending the content encrypted with the password to a first storage location for storage; and the at least one computer processor automatically sending the password to a second storage location for future retrieval and decryption of the encrypted content. Appeal Br. 16 (Claims App.). 3 Claims 2, 4, 6, 8, 10, 12, 14–20, 23, 26, and 28–31 were cancelled previously. Appeal Br. 17–20. Appeal 2019-001202 Application 13/690,174 3 REFERENCES The Examiner relies on the following prior art: Gupte Goldstone Kulkarni et al. (“Kulkarni”) Hendricks et al. (“Hendricks”) Chin Sethi et al. (“Sethi”) Stoye et al. (“Stoye”) Just et al. (“Just”) US 2006/0282389 Al US 2003/0142364 Al US 2007/0067399 Al US 2007/0201702 Al US 2011/0282785 A1 US 2006/0031586 Al US 2006/0085503 A1 US 6,567,914 B1 Dec. 14, 2006 July 31, 2003 Mar. 22, 2007 Aug. 30, 2007 Nov. 17, 2011 Feb. 9, 2006 Apr. 20, 2006 May 20, 2003 REJECTIONS Claims 1, 3, 5, 21, 22, 32, 33, and 40 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Gupte, Goldstone, Kulkarni, and Hendricks. Final Act. 10–17. Claims 34–36 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Gupte, Goldstone, Kulkarni, and Chin. Final Act. 22–24. Claims 7, 9, 11, 13, 24, 25, and 41 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Sethi, Goldstone, and Hendricks. Final Act. 17–21. Claim 27 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Sethi, Goldstone, Hendricks, and Stoye. Final Act. 21– 22. Claims 37 and 38 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Sethi, Goldstone, Hendricks, and Chin. Final Act. 24–25. Claim 39 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Sethi, Goldstone, Hendricks, and Just. Final Act. 25–27. Appeal 2019-001202 Application 13/690,174 4 ANALYSIS Claims 7, 9, 11, 13, 24, 25, 27, 37–39, and 41 Independent claim 7 requires “sending . . . the content encrypted with the password to an electronic device” and “receiving, from the electronic device . . . the password.” Appeal Br. 17 (Claims App.). The Examiner relies on Sethi for teaching sending encrypted content to an electronic device. Final Act. 17 (citing Sethi ¶¶ 9, 39 (“[M]essages transmitted to the client computer E 506 are to be encrypted”)). The Examiner relies on Goldstone for teaching receiving the password 55 from the electronic device 40 (Final Act. 19 (citing Goldstone ¶¶ 28, 29, Fig. 2)), and concludes it would have been obvious to modify Sethi with Goldstone’s password “with the motivation to decrypt and retrieve messages using a password” (Final Act. 18). Appellant first argues that Sethi fails to disclose “receiving, from the electronic device associated with the recipient, the password.” Appeal Br. 14; Reply Br. 6–8. Appellant secondly argues that Goldstone teaches away from being combined with Sethi as proposed, stating Goldstone discloses either sending an encrypted message to the recipient’s secure machine 50 . . . or receiving the password from the mobile recipient device 40 so that the message can be decrypted at the email server 30 and sent to the mobile recipient device 40 . . . . Thus, because Goldstone uses two different devices - one that is secure (secure machine 50) for decrypting the message locally, in which the password is not provided to the email server, and one that is not secure (mobile recipient device 40) that provides the password to the email server 30 and receives a decrypted message – Goldstone teaches away from delivering an encrypted message to a recipient electronic device and receiving the password from the recipient electronic device. Goldstone discloses one or the other, but not both, and Appeal 2019-001202 Application 13/690,174 5 consequently teaches away from doing both. Appeal Br. 12; See Reply Br. 6–8. We are not persuaded by either argument. Appellant’s argument that Sethi fails to disclose “receiving, from the electronic device associated with the recipient, the password” improperly addresses Sethi individually, rather than the proposed combination. See Appeal Br. 14. The Examiner relies on Sethi for teaching a server sending an encrypted message to an electronic device (destination, e.g., Computer E 506, Sethi ¶¶ 9, 39, Fig. 5). Final Act. 17–19; Ans. 10–11. However, the Examiner relies on Goldstone (not Sethi) for teaching receiving a password from an electronic device. Final Act. 18–19; Ans. 11–13 (citing Goldstone ¶¶ 27–29, Figs. 1–3). And, Appellant agrees, Goldstone teaches a server receiving a password (password 55) from an electronic device (recipient 40), in order for the server to decrypt the email and send the decrypted email to the electronic device. Appeal Br. 12 (“Goldstone discloses . . . receiving the password from the mobile recipient device 40 so that the message can be decrypted at the email server 30 and sent to the mobile recipient device 40”); Goldstone Fig. 1. We are further unpersuaded by Appellant’s argument that Goldstone teaches away from the proposed modification. Appellant has not pointed to anything in Goldstone that would “criticize, discredit, or otherwise discourage” modifying Sethi’s electronic device (506) to send a password to e.g., server 301. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Furthermore, we agree with the Examiner that it would have been obvious to modify Sethi to “decrypt and retrieve messages using a password” (e.g., that it would have been obvious to decrypt messages at Appeal 2019-001202 Application 13/690,174 6 server 301 rather than at electronic device 506, and retrieve decrypted messages at the electronic device 506, using a password). Final Act. 18. Thus, Sethi as modified in the manner proposed by the Examiner, would provide electronic device 506 with the option of either decrypting messages itself or allowing server 301 to decrypt messages by sending a password. This could be beneficial, for example, if the server with better computational power is able to perform decryption activities quicker than the electronic device and the recipient does not require a particular message to remain encrypted during transmission from the server to the electronic device. See Goldstone ¶ 12 (explaining that low available computational power at recipient electronic devices affects decryption capabilities). As we “take account of the inferences and creative steps that a person of ordinary skill in the art would employ,” we conclude that the proposed combination would have been obvious to a person of ordinary skill in the art. KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 418 (2007). For the reasons discussed, we affirm the Examiner’s rejection of claim 7. Appellant does not present separate arguments for claims 9, 11, 13, 24, 25, 27, 37–39, and 41, which depend from independent claim 7. Appeal Br. 11–15. Thus, we sustain the Examiner’s rejections of claims 9, 11, 13, 24, 25, 27, 37–39, and 41 for the same reasons set forth above for claim 7. Claims 1, 3, 5, 21, 22, 32, 33–36, and 40 Independent claim 1 recites “an electronic device comprising at least one computer processor . . . receiving, at the electronic device and from a user, the password . . . the at least one computer processor using the password to decrypt” content encrypted with the password. Appeal Br. 16 (Claims App.). Claims 3, 5, 21, 22, 3236, and 40 depend upon claim 1. Appeal 2019-001202 Application 13/690,174 7 The Examiner finds Gupte teaches an electronic device comprising at least one computer processor (distribution service 120 operating on servers comprising processors). Final Act. 11 (citing Gupte ¶¶ 22, 23). The Examiner also finds Gupte teaches a password or user key to decrypt encrypted content. Id. (citing Gupte ¶ 30, which discloses a program key to decrypt media content). The Examiner also finds that Gupte discloses an access password that is entered by a user, and the action of entering a password is receiving “from a user” a password. Final Act. 12 (citing Gupte, e.g., ¶¶ 19, 20, 23, 24, 178–86); see also Ans. 9 (“[U]ser has to provide password input . . . in order to access and decrypt (unprotect) media.”). The Examiner concludes that it would have been obvious to modify Gupte to include encrypting/decrypting messages using passwords as taught by Goldstone with the motivation to decrypt and retrieve messages using a password. Ans. 10 (citing Goldstone ¶¶ 17, 29). Appellant argues that the proposed combination of Gupte, Goldstone, Kulkarni, and Hendricks fails to disclose the password to decrypt encrypted content that is from a user. Appeal Br. 9–10. Specifically, Appellant argues that Gupte’s access password is from a user but not used “to decrypt” encrypted content. Id. at 10. Appellant further argues that Gupte’s program key is used in decryption but is not “from a user.” Id. We are persuaded that the Examiner has not sufficiently shown that the combination proposed teaches the electronic device receiving, from a user, the password to decrypt the content encrypted with the password. Gupte’s access password, provided from a user, is not used to decrypt the content encrypted. Rather than being used to decrypt, Gupte’s access password is used to validate the login or payment. Gupte ¶ 180. In addition, Appeal 2019-001202 Application 13/690,174 8 Gupte’s program key for decrypting encrypted content is not sent “from a user” and received at the electronic device (i.e., at the distribution service 120). Rather, Gupte explains that the password for decrypting content is sent from the distribution service to the user (e-PVR 110) via a decryption message. Gupte ¶ 30, Fig. 20. Moreover, the Examiner does not sufficiently explain how Gupte could be modified with Goldstone (or Kulkarni or Hendricks) to remedy this deficiency. See Final Act. 11–12; see Ans. 8–9. For the reasons discussed, we reverse the Examiner’s rejections of claims 1, 3, 5, 21, 22, 32, 33–36, and 40. NEW GROUNDS OF REJECTION Claim 1 The following new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b). Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over Goldstone and Gupte. Goldstone teaches a method for processing inbound messages. Goldstone ¶ 15 (“communication system in which encrypted e-mail messages and/or their corresponding attachments can be decrypted and converted to another format to be delivered to some other device other than the recipient’s main, secure, machine”). Goldstone further teaches receiving an electronic message (“encrypted message 57”) comprising content encrypted with a password (“password or shared secret 55”) at an electronic device comprising at least one computer processor (“email server 30”). Id. ¶¶ 28, 29, Fig. 1. Goldstone teaches that the at least one computer processor receiving, at the electronic device and from a user (“recipient 40”) the password. Id. ¶ 29. Goldstone teaches that the at least one computer Appeal 2019-001202 Application 13/690,174 9 processor uses the password to decrypt the content encrypted with the password (“decrypted email message 58 from the e-mail server”). Id. Goldstone further teaches that the at least one computer processor automatically sends the content encrypted with the password to a first storage location (encrypted message automatically sent to “recipient’s secure machine 50”) for storage. Id. Although not preferred, Goldstone also teaches that decryption passwords can be stored on servers. Id. ¶ 13. Accordingly, Goldstone teaches all of the limitations of claim 1, except for the limitation of “at least one computer processor automatically sending the password to a storage location for future retrieval and decryption of the encrypted content.” Gupte teaches that passwords can be automatically sent to a local storage location for future retrieval and decryption of the encrypted content, eliminating the need to re-request and re-enter decryption passwords when a user desired to retrieve encrypted content. See Gupte ¶¶ 92, 94, 154, 135. Specifically, Gupte discloses that passwords can be automatically saved locally as “local decryption information 222”/“LEPK 220” and saved to “common local library 340” of “storage device 254” in order to retrieve passwords at a later time to decrypt encrypted media content, thereby eliminating the need to re-request or re-enter passwords. Id., Fig. 10. Some of the advantage of storing passwords at a local location are that doing so allows a user to reuse a password when later attempting to retrieve and decrypt content, thereby streamlining access to content and enhancing the user experience by reducing the time and effort for the user, and storing passwords locally allows for them to be accessed even if remote connectivity is interrupted. See, e.g., Gupte ¶ 94, 135, 154. Appeal 2019-001202 Application 13/690,174 10 It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Goldstone’s computer processor/server to automatically send a password to a local storage device for future retrieval and decryption, in view of Gupte’s disclosure of automatically saving passwords locally, such that the password is stored locally in Goldstone’s recipient device or secure machine, so that the recipient does not have to manually reenter the password at the recipient device when the password is again needed, even if connectivity to a remote server is interrupted. A person with ordinary skill in the art would have made such a combination in order to reduce the time and effort required by a user to access content, even without access to remote storage of the password. Accordingly, for the foregoing reasons, we enter a new ground of rejection under 35 U.S.C. § 103(a) with respect to claim 1 in order to afford Appellant a fair opportunity to respond. No inference should be drawn from the failure to make a new ground of rejection for the other claims.4 As the Board’s function is primarily one of review, we leave it to the Examiner to determine the patentability of the dependent claims in view of the new grounds of rejection and the prior art. 4 See 37 C.F.R. § 41.50(b). See also Manual of Patent Examining Procedure (MPEP), 9 ed., rev. Aug. 2017, § 1213.02 (“Since the exercise of authority under 37 CFR§ 41.50(b) is discretionary, no inference should be drawn from a failure to exercise that discretion.”). Appeal 2019-001202 Application 13/690,174 11 CONCLUSION In summary: Claims Rejected 35 U.S.C. § References Affirmed Reversed New Ground 1, 3, 5, 21, 22, 32, 33, 40 103(a) Gupte, Goldstone, Kulkarni, Hendricks 1, 3, 5, 21, 22, 32, 33, 40 34–36 103(a) Gupte, Goldstone, Kulkarni, Chin 34–36 7, 9, 11, 13, 24, 25, 41 103(a) Sethi, Goldstone, Hendricks 7, 9, 11, 13, 24, 25, 41 27 103(a) Sethi, Goldstone, Hendricks, Stoye 27 37, 38 103(a) Sethi, Goldstone, Hendricks, Chin 37, 38 39 103(a) Sethi, Goldstone, Hendricks, Just 39 1 103(a) Goldstone, Gupte 1 Overall Outcome 7, 9, 11, 13, 24, 25, 27, 37–39, 41 1, 3, 5, 16, 21, 22, 32– 36, 40 1 FINALITY OF DECISION AND RESPONSE This Decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides: When the Board enters such a non-final decision, [Appellant], within two months from the date of the decision, must exercise one of the following two options with respect to Appeal 2019-001202 Application 13/690,174 12 the new ground[s] of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground[s] of rejection [are] binding upon the Examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground[s] of rejection designated in the decision. Should the examiner reject the claims, [Appellant] may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground[s] of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground[s] of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in MPEP § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART; 37 C.F.R. § 41.50(b)