Ex Parte Shea et al

Patent Trial and Appeal Board

Nov 2, 2016

13491875 (P.T.A.B. Nov. 2, 2016)

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.
13/491,875 06/08/2012 James T. Shea IPCP115US 4405
24041 7590 11/04/2016
SIMPSON & SIMPSON, PLLC
5555 MAIN STREET
WTEETAMSVTT.TE, NY 14221-5406
EXAMINER
MAHMOOD, REZWANUL
ART UNIT PAPER NUMBER
2164
NOTIFICATION DATE DELIVERY MODE
11/04/2016 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):
patentEFS @ idealawyers.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES T. SHEA, SAMUEL C. BAXTER, NATALIA V.
BRITVIKHINA, and JOHN E. MECZYNSKI JR.
Appeal 2015-006860
Application 13/491,875
Technology Center 2100
Before ERIC S. FRAHM, CATHERINE SHIANG, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—9, 19, and 20, which are all the claims pending and
rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
STATEMENT OF THE CASE
Introduction
The present invention relates to searching confidential documents.
See generally Spec. 1. Claim 1 is exemplary:
1. A computer-based method for searching confidential documents,
comprising:
Appeal 2015-006860
Application 13/491,875
storing, in at least one memory element of at least one computer,
computer readable instructions; and,
executing, using at least one processor for the at least one computer,
the computer readable instructions to:
receive from a first source entity:
a first confidential document; and,
first non-confidential information for the first confidential
document;
store the first confidential document and the first non-
confidential information in the at least one memory element;
restrict access to the first confidential document stored in the at
least one memory element to:
the first source entity and a library entity only; or,
the first source entity only;
receive a search request, from a searching entity, including a
first search parameter;
identify the first search parameter as being applicable to the
first confidential document; and,
transmit for access by the searching entity, the first non-
confidential information,
wherein the first non-confidential information includes contact
information for the author or the organization.
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References and Rejections
Claims 1—3 and 7—9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cheng (US Pub 2012/0233209 Al; published Sept. 13,
2012), Rajamani (US Pub 2009/0112868 Al; published Apr. 30, 2009), and
Chupp (US Pub 2010/0169365 Al; published July 1, 2010).
Claims 4—6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cheng, Rajamani, Chupp, and Bradford (US Pub
2004/0133574 Al; published July 8, 2004).
Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cheng, Rajamani, and Bradford.
ANALYSIS
We disagree with Appellants’ arguments, and agree with and adopt
the Examiner’s findings and conclusions in (i) the action from which this
appeal is taken and (ii) the Answer (excluding claim 20) to the extent they
are consistent with our analysis below.1
Claims 1—9
On this record, the Examiner did not err in rejecting claim 1.
Appellants contend Chupp does not teach a “confidential” document,
because its system is open and the word confidential does not appear in
Chupp. See App. Br. 10-11.
1 To the extent Appellants advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R. §41.41 (b)(2).
3
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Application 13/491,875
Appellants’ argument is unpersuasive because the Examiner cites
Cheng—not Chupp—for teaching the claimed “confidential” document. See
Final Act. 7.
Further, it is unclear why Appellants highlight the claim limitation
“wherein the first non-confidential information includes contact information
for the author or the organization” (App. Br. 10), as that claim limitation
does not recite “confidential,” and Appellants do not advance any argument
regarding that claim limitation. If Appellants are arguing because the
Examiner cites Chupp for the wherein claim limitation, Chupp must also
teach other limitations of the claim, Appellants are mistaken as explained
above.
In the Reply Brief and for the first time, Appellants belatedly argue
the Examiner has applied impermissible hindsight, “[tjhere is no teaching,
suggestion, or motivation in the cited references to support the Examiner’s
assertion [reason to combine the references],” and Chupp teaches away from
the claimed invention. See Reply Br. 5. Appellants have waived such
arguments because they are untimely, and Appellants have not demonstrated
any “good cause” for the belated presentation. See 37 C.F.R. § 41.41(b)(2)
(2012).
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of claim 1, and corresponding dependent
claims 2—9, which Appellants do not separately argue with substantive
contentions.
Claim 19
On this record, the Examiner did not err in rejecting claim 19.
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I
Appellants contend Cheng does not teach “store the first and second
confidential documents and the first and second non-confidential
information in the at least one memory element. . . delete the first and
second confidential documents from the at least one memory element,” as
recited in claim 19 (emphases added). See App. Br. 13—19; Reply Br. 7—15.
In particular, Appellants contend Cheng teaches “storing the information as
authored content 134” (App. Br. 15), but Cheng’s paragraphs 22 and 47
teach deleting information from indexes, such as indexes 132, which are
separate from authored content 134. See App. Br. 15; Reply Br. 10-11.
Appellants’ argument is unpersuasive because it does not address the
Examiner’s specific mapping. The Examiner maps “the at least one memory
element” to Cheng’s memory 1104 of Figure 11, which includes both
authored content 134 and indexes 132. See Ans. 8—9; Cheng Fig. 11. In
contrast, Appellants argue the Examiner incorrectly maps “the at least one
memory element” to Cheng’s authored content 134. See App. Br. 15; Reply
Br. 10-11.
Further, Appellants advance arguments that are not commensurate
with the scope of the claim. See, e.g., App. Br. 12 (“The cited references do
not teach deleting a confidential document while leaving a related non-
confidential document in place”) (emphasis omitted); App. Br. 15—17 (the
cited references do not teach “deleting] the confidential document while
leaving the related non-confidential document”) (emphasis omitted).
II
Appellants contend:
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Claim 19 recites:
“receive a search request from a searching entity
including a first search parameter;
identify the first search parameter as being applicable to
the first and second confidential documents by searching the
index to match the first search parameter with the at least one
index parameter;
rank the first and second confidential documents,
according to relevance with respect to the first search
parameter, in a first order; and,
transmit for access by the searching entity, the first and
second non-confidential information ranked in the first order.”
i. Claim 19 recites a two-step ranking process.
1. First, confidential documents are ranked
according to a search parameter.
2. Second, associated non-confidential
information for the confidential documents is
ranked according to the ranking of the respective
confidential documents. That is, the first ranking is
used to perform the second ranking.
Thus, the non-confidential information is ranked
according to a search of related confidential documents with
respect to a search parameter, not according to relevance of the
content of the non-confidential information with respect to the
search parameter.
App. Br. 19-20 (emphases omitted). In particular, Appellants contend “the
‘209 Publication does not teach a second ranking using the first ranking.
That is, the ranking of search results taught by the ‘209 Publication is not
used to rank other information related to the search results.” App. Br. 20
(emphasis omitted).
The above excerpt explicitly teaches that all search
results are ranked en masse — there is no distinction between
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Application 13/491,875
ranking of public or private data. . . . there is no teaching,
suggestion, or motivation to rank only data having restricted
access and to then use that ranking on related data having
unrestricted access. Thus, the cited references and the ‘209
Publication in particular are silent regarding the two-step
ranking process of claim 19.
App. Br. 22—23 (emphasis omitted); see also App. Br. 24—25. Appellants
summarizes:
[T]he ‘209 Publication does not teach, suggest, or
motivate a second ranking using the first ranking. That is, the
ranking of search results taught by the ‘209 Publication is not
used to rank other information related to the search results.
Even more specifically, the ‘209 Publication does not
teach, suggest, or motivate ranking confidential documents and
using that ranking to then rank related non-confidential
documents.
App. Br. 25 (emphasis omitted).
Appellants’ above arguments are unpersuasive, because Appellants
have not shown the arguments are commensurate with the scope of the
claim. Specifically, claim 19 does not require the second ranking step
argued by Appellants: it does not require “ranking confidential documents
and using that ranking to then rank related non-confidential documents,” as
Appellants argue (App. Br. 25) (emphasis omitted).
In the Reply Brief and for the first time, Appellants belatedly
challenge the Examiner’s findings about the claim limitation “identity the
first search parameter as being applicable to the first and second confidential
documents by searching the index to match the first search parameter with
the at least one index parameter.” See Reply Br. 15—24. Appellants have
waived such arguments because they are untimely, and Appellants have not
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demonstrated any “good cause” for the belated presentation. See 37 C.F.R.
§ 41.41(b)(2) (2012).
Claim 20
We have reviewed the Examiner’s rejection in light of Appellants’
contentions and the evidence of record. We concur with Appellants’
contention that the Examiner erred in finding Cheng teaches
receive from first and second source entities', first and second
confidential documents, respectively . . . block access to the
first confidential document stored in the at least one memory
element to all except the first source entity; block access to the
second confidential document stored in the at least one memory
element to all except the second source entity,
as recited in claim 20 (emphases added).2 See App. Br. 29-30; Reply Br.
25-30.
The Examiner maps the claimed first source entity to Cheng’s
enterprise. See Final Act. 48; Ans. 21. The Examiner cites Cheng’s
paragraphs 18 and 25 for teaching “block access to the first confidential
document stored in the at least one memory element to all except the first
source entity.” See Final Act. 49—50; Ans. 21—22.
Cheng states “the internal index may be used to provide information
only to individuals affiliated with the enterprise, e.g., employees or other
users authorized to access particular enterprise information.'1'’ Cheng 118
(emphasis added). Cheng also states “other documents . . . might only be
2 Appellants raise additional arguments with respect to claim 20. Because
the identified issue is dispositive of the appeal with respect to claim 20, we
do not reach the additional arguments.
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available to employees of the enterprise or others with authorized access.'1'’
Cheng 125 (emphasis added).
The Examiner has not explained how Cheng’s “other users authorized
to access particular enterprise information” constitute the claimed “first
source entity” under the Examiner’s mapping. Nor has the Examiner
explained how Cheng’s “others with authorized access” constitute the
claimed first source entity under the Examiner’s mapping. As a result, the
Examiner has not shown Cheng teaches “receive from first and second
source entities', first and second confidential documents, respectively . . .
block access to the first confidential document stored in the at least one
memory element to all except the first source entity,” as required by claim
20 (emphases added).
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of claim 20.
DECISION
We affirm the Examiner’s decision rejecting claims 1—9 and 19.
We reverse the Examiner’s decision rejecting claim 20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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