Ex Parte Calow et al

Patent Trial and Appeal Board

Apr 4, 2013

11128074 (P.T.A.B. Apr. 4, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THOMAS JEFFREY CALOW, CHRISTOPH LUECKING,
MARTING THOMAS MOORE, and MARY ELLEN ZURKO
____________________

Appeal 2010-0110751
Application 11/128,074
Technology Center 2100
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Before JEAN R. HOMERE, JASON V. MORGAN, and JOHN G. NEW,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is International Business Machines Corp. (App
Br. 3.)
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 6, 7, 10, 13, 14, and 17. Claims 3-5, 8, 9, 11,
12, 15, 16, and 18-20 have been canceled. (App. Br. 3.) We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method and system for handling an electronic
document within a collaborative software environment. ([0001].) In
particular, upon determining that an identified document file type supports
active content, the document is classified as being possibly compromised,
and it is thereby restricted from being executed. ([0007], [0008], [0019],
[0026], [0028].)
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method of handling electronic documents within an
application program executing within a computer system, the
method comprising:
determining at least one safety parameter of an electronic
document, wherein the at least one safety parameter comprises
whether the electronic document is a file type that supports
active content;
classifying the electronic document based upon the at
least one safety parameter;
selecting a restriction policy, stored within the computer
system, based upon said classifying step; and
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implementing the selected restriction policy for handling
the electronic document,
wherein determining, classifying, selecting, and
implementing are performed and are executable by the
computer system.

Prior Art Relied Upon
Margalit US 2003/0079142 A1 Apr. 24, 2003

Rejection on Appeal
The Examiner rejects claims 1, 2, 6, 7, 10, 13, 14, and 17 under 35
U.S.C. § 102(b) as being anticipated by Margalit.

ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 8-14.

Dispositive Issue: Under 35 U.S.C. § 102, did the Examiner err in
finding that Margalit describes determining whether an electronic document
within an application program has a file type that supports active content, as
recited in claim 1?

Appellants argue that Margalit does not describe the disputed
limitations emphasized above. (App. Br. 8-9.) In particular, Appellants
argue that while Margalit discloses comparing the digital object
characteristics (e.g., header vs. a file extension) to determine if they match
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each other, the disclosed comparison is not used to indicate whether the
document type supports active content as required by claim 1. (Id.)
In response, the Examiner finds that Margalit’s disclosure of a digital
object being a webpage discloses a file name extension (html/htm), which
describes a file type supporting active content. (Ans. 5.)
Based upon our review of the record before us, we find no error with
the Examiner’s finding anticipation regarding claim 1. Margalit discloses a
digital object selected from the set of a webpage, a file, an e-mail
attachment, and a storage medium ([0012], [0042]) has certain
characteristics (e.g., file name extension, header) ([0045], [0048]) that are
compared with one another whereupon a mismatch occurring therebetween,
the digital is classified as having malicious content, thereby causing the
digital object to be subsequently discarded ([0057], [0058]). We note at the
outset that Appellants have failed to particularly address the specific
findings made by the Examiner in the Answer. Therefore, Appellants have
failed to persuasively rebut the Examiner’s specific finding of anticipation.
Further, we find that the malicious contents identified to be contained within
Margalit’s webpage describe active contents associated with the webpage as
identified by its file type (html file name extension). We are therefore
satisfied that the cited disclosures of Margalit adequately describe the
disputed limitations. Accordingly, we find no error in the Examiner’s
anticipation rejection of claim 1.
Regarding claims 2, 6, 7, 10, 13, 14, and 17, Appellants reiterate
substantially the same arguments submitted for patentability of claim 1
above. (App. Br. 10-14.) As discussed above, these arguments are not
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persuasive. See 37 C.F.R. § 1.37(c)(1)(vii). Further, while Appellants
raised additional arguments for patentability of the cited claims, we find that
the Examiner has rebutted in the Answer each and every one of those
arguments by a preponderance of the evidence. (Ans. 5-8.) Therefore, we
adopt the Examiner’s findings and underlying reasoning, which are
incorporated herein by reference. Consequently, we have found no error in
the Examiner’s rejection of claims 2, 6, 7, 10, 13, 14, and 17.

DECISION
We affirm the Examiner’s rejection of claims 1, 2, 6, 7, 10, 13, 14,
and 17 as set forth above.
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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