Scott Wentao. Li et al.

Patent Trials and Appeals Board

Feb 20, 2020

14568621 - (D) (P.T.A.B. Feb. 20, 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.
14/568,621 12/12/2014 Scott Wentao Li RPS920140101USNP(710.364) 1036
58127 7590 02/20/2020
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
BROWN, CHRISTOPHER J
ART UNIT PAPER NUMBER
2439
MAIL DATE DELIVERY MODE
02/20/2020 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 PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT WENTAO LI, RUSSELL SPEIGHT VANBLON, and
DAVID RIVERA
Appeal 2018-005105
Application 14/568,621
Technology Center 2400
Before LARRY J. HUME, CARL L. SILVERMAN, and
JOYCE CRAIG, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant,0F1 Lenovo (Singapore) PTE.
LTD., appeals from the Examiner’s decision rejecting claims 1, 5–9, 11,
and 15–21, which are all claims pending in the application. Appellant has
canceled claims 2–4, 10, and 12–14. Appeal Br. 24–26 (Claims App.). We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Lenovo
(Singapore) PTE, LTD. Appeal Br. 3.
Appeal 2018-005105
Application 14/568,621

2
STATEMENT OF THE CASE1F2
The claims are directed to an encryption of media based on content.
See Spec. (Title). In particular, Appellant’s disclosed embodiments and
claimed invention relate to accessing and characterizing a media file as
being privacy sensitive or not privacy sensitive and, under certain
circumstances, automatically encrypting or obfuscating the media file data
prior to storage in the cloud. See generally, claim 1.
Exemplary Claims
Claims 1 and 21, reproduced below, are representative of the subject
matter on appeal (emphasis added to contested limitations):
1. A method, comprising:
accessing, on a device, a media file;
processing, using a processor of the device, image data of
the media file to characterize the media file as being privacy
sensitive or not privacy sensitive, wherein the processing
comprises parsing the image data to identify characteristics
included in the media file designated as privacy sensitive;
setting an indicator, using the processor, denoting the
media file as privacy-sensitive based on the processing;
in an automated synchronization process, notifying a user
regarding the indicator prior to permitting the media file to be
stored on a cloud account device;
determining, using the processor, whether a user response
to the notifying is received within a predetermined time; and

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Dec. 18, 2017); Reply Brief (“Reply Br.,” filed Apr. 16, 2018); Examiner’s
Answer (“Ans.,” mailed Feb. 16, 2018); Final Office Action (“Final Act.,”
mailed July 17, 2017); and the original Specification (“Spec.,” filed
Dec. 12, 2014).
Appeal 2018-005105
Application 14/568,621

3
in response to the user response not being received within
the predetermined time:
automatically encrypting or obfuscating the data of the
media file prior to permitting the media file to be stored on the
cloud account device in the automated synchronization process;
or
excluding, from the automated synchronization process,
the media file.
21. The method of claim 1, wherein the media file is
characterized as being privacy sensitive or not privacy sensitive
without use of a privacy beacon.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Zuta et al. (“Zuta”) US 2008/0189625 A1 Aug. 7, 2008
Vogel US 7,526,653 B1 Apr. 28, 2009
Liao US 2012/0059940 A1 Mar. 8, 2012
Holman et al. (“Holman”) US 2015/0106623 A1 Apr. 16, 2015
Thye US 2016/0285785 A1 Sept. 29, 2016
Rejections on Appeal
R1. Claim 21 stands rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Final Act. 3.2F3

3 We note the Examiner explicitly invokes the enablement requirement of
35 U.S.C. § 112(a) in Rejection R1 (see Final Act. 3), but the nature of the
rejection concerning the contested negative limitation appears to relate to the
written description portion of the statute, as Appellant acknowledges (see
Appeal Br. 13), and as correctly addressed by the Examiner. Ans. 3.
Appeal 2018-005105
Application 14/568,621

4
R2. Claims 1, 5, 6, 8, 9, 11, 15, 16, and 18–21 stand rejected under
35 U.S.C. § 103 as being unpatentable over the combination of Holman,
Zuta, Liao, and Thye. Final Act. 4.
R3. Claims 7 and 17 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Holman, Zuta, Liao, Thye, and Vogel.
Final Act. 7.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 13–22) and our
discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of
obviousness Rejection R2 of claims 1, 5, 6, 8, 9, 11, 15, 16, and 18–21 on
the basis of representative claim 1. We address Rejection R1 of separately
argued claim 21, infra.
Remaining claims 7 and 17 in Rejection R3, not argued separately,
stand or fall with the respective independent claim from which they depend.3F4
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).

4 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
Appeal 2018-005105
Application 14/568,621

5
We disagree with Appellant’s arguments with respect to claims 1, 5–
9, 11, and 15–21 and, unless otherwise noted, we incorporate by reference
herein and adopt as our own: (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken, and (2) the reasons
and rebuttals set forth in the Examiner’s Answer in response to Appellant’s
arguments. We highlight and address specific findings and arguments
regarding claims 1 and 21 for emphasis as follows.
1. § 112(a) Written Description Rejection R1 of Claim 21
Issue 1
Appellant argues (Appeal Br. 14–15; Reply Br. 15–17) the
Examiner’s rejection of claim 21 under 35 U.S.C. § 112(a) as lacking written
description support is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the negative limitation of “wherein
the media file is characterized as being privacy sensitive or not privacy
sensitive without use of a privacy beacon” lacks written description in the
disclosure as originally filed?
Principles of Law
The test for compliance with the written description requirement is
“whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he level of detail
required to satisfy the written description requirement varies depending on
the nature and scope of the claims and on the complexity and predictability
Appeal 2018-005105
Application 14/568,621

6
of the relevant technology.” Id.; cf. U.S. v. Telectronics, Inc., 857 F.2d 778,
785 (Fed. Cir. 1988) (“The test of enablement is whether one reasonably
skilled in the art could make or use the invention from the disclosures in the
patent coupled with information known in the art without undue
experimentation.”).
Furthermore, “[n]egative claim limitations are adequately supported
when the specification describes a reason to exclude the relevant limitation.
Such written description support need not rise to the level of disclaimer. In
fact, it is possible for the patentee to support both the inclusion and
exclusion of the same material.” Santarus, Inc. v. Par Pharmaceutical, Inc.,
694 F.3d 1344, 1351 (Fed. Cir. 2012) (emphasis added).
Analysis
The Examiner finds, “[t]he claims state that the data is characterized
‘without use of a privacy beacon’. [The] Examiner appreciates Applicant’s
willingness to amend the claims, but can find no support for said amendment
in the specification. Applicant points to [paragraph 34 of the Specification,
however the] Examiner does not see any statements in [0034] regarding a
privacy beacon.” Final Act. 3–4.
We note this paragraph of Appellant’s Specification describes:
[0034] Because an embodiment processes the media to
characterize it, an embodiment may detect at least one privacy-
sensitive characteristic of the media file at 330. As further
described herein, this may include examination of the actual
content of the media file. By way of specific example, a user
may include certain individuals in a privacy or exclusion list
such that when facial recognition processing of image content
indicates these individuals are present, the media file is subject
to additional processing, e.g., exclusion, obfuscation and/or
Appeal 2018-005105
Application 14/568,621

7
encryption. As another example, an embodiment may use
certain standardized parameters, e.g., detection of exposed skin,
detection of a body part, detection of sensitive key words or
topics, etc., to automatically implement additional or
specialized processing with respect to synchronization of the
media file. This specialized processing may include, for
example, prompting the user for review, automatically
encrypting the media file, and/or automatically applying
obfuscation (e.g., distorting a face of a user in the media file).
Spec. ¶ 34.
Appellant argues:
Applicant submits that one of ordinary skill in the art would
reasonably conclude that Applicant’s disclosure adequately
describes the claimed limitation at least because the claimed
limitation is at least implied (and arguably expressly described)
by the present application as it was originally filed. Applicant's
disclosure describes that the media file can be characterized by
detecting at least one privacy-sensitive characteristic of the
media file. See Specification at [0034]. This same paragraph
then describes that such detection may occur using facial
recognition, detection of exposed skin, detection of a body part,
detection of sensitive key words or topics, etc. See Id. None of
these methods require the use of a privacy beacon as used in the
reference Holman.
Appeal Br. 14–15.
We agree with the Examiner that there is no description of a privacy
beacon, or explicit lack thereof, in Appellant’s disclosure. In fact, it is only
in the Holman reference (see Rejection R2, infra) that any mention is made
of a “privacy beacon.” See, e.g., Holman (Abstract). It appears that the
negative limitation at issue in the written description rejection may have
been added during prosecution in an attempt to avoid the prior art.
Appeal 2018-005105
Application 14/568,621

8
Regarding the question of how much, if any, patentable weight should
be given to the negative limitation at issue, we find Appellant’s cited support
in the Specification (App. Br. 15, citing Spec. ¶ 34), does not identify any
“descri[ption of] a reason to exclude the relevant limitation.” Santarus, 694
F.3d at 1351 (“Negative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation. Such
written description support need not rise to the level of disclaimer. In fact, it
is possible for the patentee to support both the inclusion and exclusion of the
same material.”). “The mere absence of a positive recitation is not basis for
an exclusion.” MPEP § 2173.05(i).
Appellant repeats their argument in the Reply Brief. “Applicant
submits that one of ordinary skill in the art would reasonably conclude that
Applicant’s disclosure adequately describes the claimed limitation at least
because the claimed limitation is at least implied (and arguably expressly
described) by the present application as it was originally filed.” Reply
Br. 16.
“The test for compliance with the written description requirement is
“whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad, 598 F.3d at 1351. We disagree
with Appellant’s argument with respect to the implied or inherent
description of the contested negative limitation. On this record, Appellant
has not pointed to any evidence as to how a person with skill in the art would
interpret support for the contested negative limitation in light of the
Specification.
Appeal 2018-005105
Application 14/568,621

9
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s determination that the disputed
negative limitation lacks written description support.
Accordingly, we sustain the Examiner’s written description rejection
of claim 21.
2. § 103 Rejection R1 of Claims 1, 5, 6, 8, 9, 11, 15, 16, and 18–21
Issue 2
Appellant argues (Appeal Br. 16–22; Reply Br. 18–24) the
Examiner’s rejection of claim 1 under 35 U.S.C. § 103 as being obvious
over the combination of Holman, Zuta, Liao, and Thye is in error. These
contentions present us with the following issues:
(a) Did the Examiner err in finding the cited prior art combination
teaches or suggests a method that includes, inter alia, the step of
“automatically encrypting or obfuscating the data of the media file prior to
permitting the media file to be stored on the cloud account device in the
automated synchronization process,” as recited in claim 1?
(b) Did the Examiner err by combining the references in the stated
manner because of improper motivation to combine and because Holman
teaches away from the claimed invention.
Principles of Law
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
Appeal 2018-005105
Application 14/568,621

10
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” Id. at 425.
In KSR, the Court stated “[t]he 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).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill . . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
Finally, “[a] reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Gurley, 27
Appeal 2018-005105
Application 14/568,621

11
F.3d 551, 553 (Fed. Cir. 1994); Para-Ordnance Mfg., Inc. v. SGS Importers
Int’l., Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995).
Analysis
2(a) – the reference combination teaches or suggests all limitations
Appellant contends “Holman in view of Zuta, Liao, and Thye fail to
teach, or even suggest, ‘automatically encrypting or obfuscating the data of
the media file prior to permitting the media file to be stored on the cloud
account device in the automated synchronization process.’” Appeal Br. 19.
The Examiner responds by finding “[the] Examiner only relies on
Zuta for ‘automatic encryption’. While Holman teaches encryption, it does
not explicitly state ‘automatic’. Both Holman and Zuta are aimed at the
problem of protecting privacy sensitive characteristics in images. In contrast
to Appellant[’]s assertion, Holman does teach sending images to the cloud.”
Ans. 4; see also Final Act. 5 (citing Holman ¶ 301 and Zuta ¶ 451, claim 1,
claim 2). We agree with the Examiner’s findings.
We agree because “[t]he test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference . . . . Rather, the test is what the combined
teachings of those references would have suggested to those of ordinary skill
in the art.” Keller, 642 F.2d at 425.
2(b) – motivation to combine
Appellant contends:
Holman is directed to preventing the capturing of an image
before it is even taken and Zuta is directed to monitoring
pictures sent to another individual by grading the picture. See
Appeal 2018-005105
Application 14/568,621

12
Zuta at Abstract; see also Zuta at [0017]. In other words,
Applicant respectfully submits that Holman is only directed to
capturing the image, and if a privacy beacon is detected, the
image is destroyed. See Holman at [0307]. Holman does not
allow transmission of an image having a privacy beacon.
Accordingly, Applicant respectfully submits that if the image
has a privacy beacon, it would never get transmitted and the
process of Zuta would never occur, and neither Holman nor
Zuta provide details stating otherwise. Thus, Applicant
respectfully submits that the Office has not provided
evidentiary support or reasoning that supports why a person
skilled in the art would combine the teachings of Zuta with
Holman. Applicant respectfully submits that one skilled in the
art would not be persuaded to combine the teachings of Zuta
with Holman for at least the reasons stated above, specifically
because the teachings of Zuta and Holman are directed to
completely separate problems and therefore are directed to
completely separate solutions.
Appeal Br. 17 (emphasis added).
We do not find Appellant’s contention persuasive because the
references need not recognize the same problem solved by the Appellants.
See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). Moreover, “[a]
finding that two inventions were designed to resolve different problems . . .
is insufficient to demonstrate that one invention teaches away from another.”
Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed.
Cir. 2004). Therefore, on this record, we do not find Appellant’s contention
that Holman and Zuta are “directed to separate problems” (Appeal Br. 17)
sufficient to show the Examiner improperly combined the cited references
under § 103.
In connection with the argument concerning lack of proper motivation
to combine the references in the manner suggested by the Examiner,
Appeal 2018-005105
Application 14/568,621

13
Appellant also alleges “Holman specifically teaches away from [the
disputed] limitation. Specifically, Holman requires the inclusion of a DMC
beacon within the image in order to characterize the media file as being
privacy sensitive . . . . Applicant respectfully submits that this is clearly
distinguishable from the claimed limitations which do not require a
specialized device to be on the person.” Appeal Br. 20 (emphasis added).
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” Ricoh Co., Ltd. v. Quanta
Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations omitted). A
reference does not teach away if it merely expresses a general preference for
an alternative invention from amongst options available to the ordinarily
skilled artisan, and the reference does not discredit or discourage
investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004).
In response to Appellant’s argument, the Examiner finds “first, that
the DMC Beacon used by Holman is functionally equivalent to the claimed
invention which ‘does not require a specialized device to be on the person’.
As previously stated, the beacon of Holman may be a user’s face, or an
organic part of the person in the image . . . . [and] as cited in the Final
Rejection . . . Holman [0271]–[0274] meets this limitation in combination
with the other references.” Ans. 5–6. The Examiner further finds
paragraphs 205 and 273 of Holman “teach transmission of encrypted images
to refute Appellant’s argument that any image with a privacy beacon is
deleted.” Ans. 6.
Appeal 2018-005105
Application 14/568,621

14
Thus, in the absence of persuasive evidence to the contrary, we fail to
find that Holman’s DMC Beacon teaches away from the claimed invention.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 1, nor do we
find error in the Examiner’s resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 1, and grouped claims 5, 6, 8, 9, 11, 15, 16, and 18–21
which fall therewith. See Claim Grouping, supra.
3. Obviousness Rejection R3 of Claims 7 and 17
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R3 of claims 7 and 17 under § 103 (see Appeal
Br. 13), we sustain the Examiner’s rejection of these claims. Arguments not
made are waived.4F5
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 15–24) not in response to a shift in the Examiner’s position
in the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s

5 Appellant merely states, “[u]nless a claim is separately argued via listing
in a grouping of claims, for the purposes of this Appeal only, a claim may be
considered to stand or fall with the claim from which it depends.
Additionally, while one claim may be specifically referred to, Applicant
respectfully submits that this claim is used as a representative claim unless
otherwise stated.” Appeal Br. 13.
Appeal 2018-005105
Application 14/568,621

15
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSIONS
(1) The Examiner did not err with respect to written description
Rejection R1 of claim 21 under 35 U.S.C. § 112(a), and we sustain the
rejection.
(2) The Examiner did not err with respect to obviousness
Rejections R2 and R3 of claims 1, 5–9, 11, and 15–21 under 35 U.S.C.
§ 103 over the cited prior art combinations of record, and we sustain the
rejections.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References Affirmed Reversed
21 112(a) Written description 21
1, 5, 6, 8, 9, 11,
15, 16, 18–21 103
Obviousness
Holman,
Zuta, Liao,
Thye
1, 5, 6, 8, 9, 11,
15, 16, 18–21
7, 17 103
Obviousness
Holman,
Zuta, Liao,
Thye. Vogel
7, 17
Overall
Outcome 1, 5–9. 11, 15–21
Appeal 2018-005105
Application 14/568,621

16
FINALITY AND RESPONSE
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). See 37
C.F.R. § 41.50(f).
AFFIRMED