10985314 (B.P.A.I. May. 11, 2012)

Ex Parte Daniels et al

Board of Patent Appeals and InterferencesMay 11, 2012

10985314 (B.P.A.I. May. 11, 2012)

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. 10/985,314 11/10/2004 Fonda Daniels LOT920040080US1 (062) 5213 46321 7590 05/11/2012 CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP STEVEN M. GREENBERG 950 PENINSULA CORPORATE CIRCLE SUITE 2022 BOCA RATON, FL 33487 EXAMINER HAILU, TESHOME ART UNIT PAPER NUMBER 2434 MAIL DATE DELIVERY MODE 05/11/2012 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 FONDA DANIELS, DAVID B. KUMHYR, and RUTHIE D. LYLE ____________________ Appeal 2010-000505 Application 10/985,314 Technology Center 2400 ____________________ Before ERIC S. FRAHM, KRISTEN L. DROESCH, and ERIC B. CHEN, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-000505 Application 10/985,314 2 STATEMENT OF CASE1 Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-20, all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Exemplary Claim Exemplary independent claim 1 under appeal reads as follows: 1. A presence sensing security method comprising the steps of: detecting a presence of at least one of an authorized user and an unauthorized user; and, securing only a portion of a display of a computing device in response to detecting the presence of an unauthorized user while permitting access to another portion of the display of the computing device despite the presence of the unauthorized user. The Examiner’s Rejections (1) The Examiner rejected claims 1 and 10 under 35 U.S.C. § 112, first paragraph, as failing to provide adequate written description of the claimed invention, specifically the phrase “only a portion of a display of a computing device.” Ans. 3-4. The Examiner determines that paragraphs [0009] and [0011] of the Specification and the Abstract (Spec. 17) only provide support for “only a portion of a computing device” (Ans. 4), rather than a portion of a display of a computing device. 1 We refer throughout our decision to the Appeal Brief (“App. Br.”) filed April 6, 2009; the Examiner’s Answer (“Ans.”) mailed May 12, 2009; and the Reply Brief (“Reply Br.”) filed July 13, 2009. Appeal 2010-000505 Application 10/985,314 3 (2) The Examiner rejected claims 1-3, 7-14, and 18-20 as being unpatentable under 35 U.S.C. § 103(a) over McKeeth (US 6,766,456 B1) and Kipust (US 6,002,427). Ans. 4-7. (3) The Examiner rejected claims 4-6 and 15-17 as being unpatentable under 35 U.S.C. § 103(a) over McKeeth, Kipust, and Kent (US 2004/0078596 A1). Ans. 7-9. (4) The Examiner rejected claims 1 and 10 as being unpatentable under 35 U.S.C. § 103(a) over McKeeth, Kipust, and Forlenza (US 7,346,769 B2). Ans. 10-11. Appellants’ Contentions With regard to the written description rejection of claims 1 and 10 under 35 U.S.C. § 112, first paragraph, Appellants contend (App. Br. 4-5; Reply Br. 2-3) that the Examiner erred in rejecting claims 1 and 10 because claims 1 and 10 are adequately supported by paragraphs [0020] and [0022], as well as Figure 2 which shows a display of a computing device which includes (i) a messaging client portion, (ii) an “X” close window control portion, and (iii) a portion of the display having a masked messenger content. Appellants contend that Figure 2 along with paragraph [0022] of the “[S]pecification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, Appellants were in possession of the invention” (App. Br. 5). With regard to the obviousness rejections of claims 1-20 over the base combination of McKeeth and Kipust, Appellants contend (App. Br. 6-12; Reply Br. 3-4) that the Examiner erred in rejecting independent claims 1, 10, and 12 under 35 U.S.C. § 103(a) because: Appeal 2010-000505 Application 10/985,314 4 (1) column 4, lines 33-38 of McKeeth discloses granting limited access to a user such that the user has less than complete access to the computer system 100, but does not disclose securing “only a portion of a display of a computing device” as set forth in claim 1 (App. Br. 8-11; Reply Br. 3-4); (2) the Examiner erred in construing claims 1, 10, and 12 by reading out the limitation of a “display,” because securing only a portion of the display and not another portion of the display is supported by the Specification and Figure 2 (App. Br. 9-11; Reply Br. 3-4); (3) the Examiner has failed to account for the differences between McKeeth and the claim limitations of securing only a portion of a display of a computing device in response to detecting the presence of an unauthorized user, while permitting access to another portion of the display of the computing device despite the presence of the unauthorized user (App. Br. 11); and (4) McKeeth only discloses that limited access to a computing system is granted when detecting duress from the actions of an authorized user (Reply Br. 3-4). With regard to the obviousness rejections of claims 1 and 10 over the combination of McKeeth, Kipust, and Forlenza, Appellants contend (Reply Br. 4-5) that the Examiner erred in rejecting independent claims 1 and 10 under 35 U.S.C. § 103(a) because: (1) “[t]he teachings of Forlenza do not address the securing of a portion of a display in response to the presence of an unauthorized user” (Reply Br. 4 (emphasis in original)); (2) “McKeeth fails to cure this deficiency” because McKeeth only Appeal 2010-000505 Application 10/985,314 5 describes limited access to a computer system when a user experiences duress, as disclosed in column 4, lines 33-38 of McKeeth (Reply Br. 4); and (3) Forlenza’s document encryption performed by a user prior to display of a document is not the same as securing a portion of a display in response to detecting the presence of an unauthorized user (Reply Br. 5). Issues on Appeal Based on Appellants’ arguments, the following issues are presented on appeal: (1) Did the Examiner err in determining that the originally filed Specification fails to reasonably convey to one of ordinary skill in the art that Appellants had possession of “only a portion of a display of a computing device” as set forth in claim 1, and “only a portion of a display of said protected computing device” as set forth in claim 10? (2) Did the Examiner err in rejecting claims 1-20 as being obvious because the combination of McKeeth and Kipust fails to teach or suggest “securing only a portion of a display of a computing device,” as set forth in independent claim 1 and similarly set forth in remaining independent claims 10 and 12? (3) Did the Examiner err in rejecting claims 1 and 10 as being obvious because the combination of McKeeth, Kipust, and Forlenza fails to teach or suggest “securing only a portion of a display of a computing device in response to detecting the presence of an unauthorized user,” as set forth in independent claim 1 and similarly set forth in independent claim 10? Appeal 2010-000505 Application 10/985,314 6 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments in the Appeal Brief (App. Br. 4-12) and Reply Brief (Reply Br. 1- 5) that the Examiner has erred. We agree with Appellants’ conclusions as to issues (1) and (2) specifically listed above (i.e., the written description rejection under § 112, first paragraph, and the obviousness rejections under § 103(a) over the base combination of McKeeth and Kipust). However, as to issue (3), we agree with the Examiner that the combination of McKeeth, Kipust, and Forlenza teaches or suggests the presence sensing security method and system as set forth in respective claims 1 and 10. § 112, First Paragraph, Rejection Because Appellants’ Figure 2 clearly shows a display of a computing device which includes (i) a messaging client portion, (ii) an “X” close window control portion, and (iii) a portion of the display having a masked messenger content (e.g., the conversation between Ruthie and Fonda masked with a multiple X’s), the originally filed Specification reasonably conveys to one of ordinary skill in the art that Appellants had possession of “only a portion of a display of a computing device” as set forth in claim 1, and “only a portion of a display of said protected computing device” as set forth in claim 10. § 103(a) Rejections Over Base Combination of McKeeth and Kipust The Examiner erred in construing the claims to read out the “display” limitation based on an alleged failure of the Specification to support securing “only a portion of a display” (App. Br. 12-13), and in determining that McKeeth teaches this limitation (App. Br. 12). Appellants’ arguments (App. Br. 8-11; Reply Br. 3-4) that the combination of McKeeth and Kipust fails to Appeal 2010-000505 Application 10/985,314 7 teach the claim limitation “securing only a portion of a display of a computing device in response to detecting the presence of an unauthorized user while permitting access to another portion of the display of the computing device despite the presence of the unauthorized user” are persuasive. McKeeth does not disclose or suggest securing only a portion of a display of a computing device. In view of the foregoing, we will not sustain the Examiner’s rejections of claims 1-20 as being obvious because the base combination of McKeeth and Kipust. § 103(a) Rejection Over the Combination of McKeeth, Kipust, and Forlenza Appellants’ argument that “[t]he teachings of Forlenza do not address the securing of a portion of a display in response to the presence of an unauthorized user” is not persuasive (Reply Br. 4 (emphasis in original). The Examiner relies upon Kipust (col. 2, ll. 27-31 and 57-61) as disclosing securing a computing device upon detection of the presence/absence of at least one of an authorized user and an unauthorized user using a proximity sensor, and relies upon Forlenza (Abs.; Figs. 4b and 5b) as disclosing securing portions of a document on a display using encryption, while other portions of the document displayed remain displayed as created (Ans. 11). We note that each reference cited by the Examiner must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references). In this light, Appellants have not demonstrated that the combination of McKeeth, Kipust, Appeal 2010-000505 Application 10/985,314 8 and Forlenza do not teach or suggest the presence sensing security method and system as set forth in claims 1 and 10. CONCLUSIONS (1) Appellants have demonstrated that the Examiner erred in determining that the originally filed Specification fails to reasonably convey to one of ordinary skill in the art that Appellants had possession of “only a portion of a display of a computing device” (claim 1), and “only a portion of a display of said protected computing device” (claim 10), and in rejecting claims 1 and 10 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. (2) Appellants have also demonstrated that the Examiner erred in rejecting claims 1-20 as being unpatentable under 35 U.S.C. § 103(a) over the base combination of McKeeth and Kipust. (3) The Examiner did not err in rejecting claims 1 and 10 as being obvious because the combination of McKeeth, Kipust, and Forlenza teaches or suggests “securing only a portion of a display of a computing device in response to detecting the presence of an unauthorized user,” as set forth in independent claim 1 and similarly set forth in independent claim 10. (4) Claims 1 and 10 are not patentable. Appeal 2010-000505 Application 10/985,314 9 DECISION2 The Examiner’s decision to reject claims 1 and 10 under § 112, first paragraph, is reversed. The Examiner’s decision to reject (i) claims 1-3, 7-14, and 18-20 as being unpatentable under 35 U.S.C. § 103(a) over McKeeth and Kipust, and (ii) claims 4-6 and 15-17 as being unpatentable under 35 U.S.C. § 103(a) over McKeeth, Kipust, and Kent is reversed. The Examiner’s decision to reject claims 1 and 10 as being unpatentable under 35 U.S.C. § 103(a) over McKeeth, Kipust, and Forlenza 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-IN-PART msc 2 We have decided the appeal before us. However, should there be further prosecution of claims 2-9 and 11-20, we suggest the Examiner review the claims and the prior art to determine if (i) claims 2, 3, 7-9, 11-14, and 18-20 are unpatentable over the combination of McKeeth, Kipust, and Forlenza, and (ii) claims 4-6 and 15-17 are unpatentable over the combination of McKeeth, Kipust, Forlenza, and Kent.