Ex Parte Tolson et alDownload PDFPatent Trial and Appeal BoardApr 29, 201310944441 (P.T.A.B. Apr. 29, 2013) Copy Citation 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. 10/944,441 09/17/2004 Michael Tolson 101217.00038 3235 33649 7590 04/29/2013 Mr. Christopher John Rourk Jackson Walker LLP 901 Main Street, Suite 6000 DALLAS, TX 75202 EXAMINER JAMI, HARES ART UNIT PAPER NUMBER 2162 MAIL DATE DELIVERY MODE 04/29/2013 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 MICHAEL TOLSON AND ANDREW L. DALE ____________ Appeal 2010-011373 Application 10/944,4411 Technology Center 2100 ____________ Before THU A. DANG, JAMES R. HUGHES, and GREGORY J. GONSALVES, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-25, which are all the claims remaining in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 Application filed on Sept. 17, 2004, claiming benefit from U.S. Provisional Application No. 60/610,086 filed Sept. 14, 2004. The Real Party in Interest is H.E.B., LLC. (App. Br. 2.) Appeal 2010-011373 Application 10/944,441 2 Invention Appellants’ invention relates generally to “associating data access policies with objects.” (Spec. 1, ¶ [0004].)2 Representative Claim Independent claim 1, reproduced below further illustrates the invention: 1. A system for controlling access to policy managed objects by associating with the policy managed objects a number of policy objects that determine whether access to the policy managed object is permitted, comprising: a payload container object that securely stores a payload comprising arbitrary data, using data processing hardware, in a data memory; one or more interfaces for each policy managed object that each defines mechanisms for accessing the policy managed object or the payload; wherein each policy managed object is associated with a number of policy objects; wherein each policy object has executable instructions that define a policy for determining whether a type of access to an associated policy managed object is permitted, including each of a policy in which access is permitted if a user has a license to access a policy managed object, a policy in which access is permitted if the user is using a secure viewer, and a policy in which access is permitted only during business hours; wherein when a user attempts to access the policy managed object or the payload, such as by invoking one of the interfaces, any policies pertaining to the type of access 2 We refer to Appellants’ Specification (“Spec.”), Reply Brief (“Reply Br.”) filed June 7, 2010 and Appeal Brief (“App. Br.”) filed Jan. 11, 2010. We also refer to the Examiner’s Answer (“Ans.”) mailed Apr. 6, 2010. Appeal 2010-011373 Application 10/944,441 3 requested by the user are executed in order to determine whether the access is permitted; and wherein if the policies determine that the access is permitted, the user is allowed to access the policy managed object or the payload. Rejections on Appeal 1. The Examiner rejects claim 2 under 35 U.S.C. § 112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter which Applicants regard as the invention. 2. The Examiner rejects claims 2, 4, 5, and 11-13 under 35 U.S.C. § 102(b) as being anticipated by Kudoh (U.S. Pat. Pub. No. 2002/0077803 A1, published June 20, 2002 (filed Sept. 7, 2001)). 3. The Examiner rejects claim 1 under 35 U.S.C. § 103(a) as being unpatentable over Terzis (U.S. Pat. Pub. No. 2004/0243835 A1, published Dec. 2, 2004 (filed May 28, 2004) and Ram (U.S. Pat. Pub. No. 2002/0194485 A1, published Dec. 19, 2002 (filed July 18, 2002)). 4. The Examiner rejects claims 3, 14-17, and 20 under 35 U.S.C. § 103(a) as being unpatentable over Garcia (U.S. Patent No. 7,380,120 B1, issued May 27, 2008 (filed Feb. 12, 2002) and Shaji (U.S. Pat. Pub. No. 2004/0215650 A1, published Oct. 28, 2004 (filed Apr. 9, 2003)). 5. The Examiner rejects claims 18 and 19 under 35 U.S.C. § 103(a) as being unpatentable over Garcia, Shaji, and Tibbetts (U.S. Pat. Pub. No. 2003/0061463 A1, published Mar. 27, 2003 (Sept. 24, 2001)). 6. The Examiner rejects claims 6-10 under 35 U.S.C. § 103(a) as being unpatentable over Kudoh and Garcia. 7. The Examiner rejects claims 21-25 under 35 U.S.C. § 103(a) as being unpatentable over Kudoh and Tibbetts. Appeal 2010-011373 Application 10/944,441 4 Grouping of Claims Based on Appellants’ arguments in the Briefs, we will decide the appeal on the basis of representative claims 1, 2, 3, 4, 5, 12, 13, 14, 21, and 25. See 37 C.F.R. § 41.37(c)(1)(iv). FINDINGS OF FACT We adopt the Examiner’s findings in the Answer and the Final Office Action as our own, except as to those findings that we expressly overturn or set aside in the analysis as follows. ANALYSIS § 112, second paragraph Rejection of Claim 2 Issue Under § 112, second paragraph, did the Examiner err in determining that the “means plus function limitations” are indefinite? Discussion The Examiner contends that claim 2 is indefinite because Appellants’ “written description fails to clearly link or associated [sic] the disclosed structure, material, or acts to the claimed function such that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed functions.” (Ans. 3-4.) We disagree. “The test for indefiniteness is whether one skilled in the art would understand the bounds of the claim when read in light of the specification.” Miles Labs., Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir. 1993) (citation omitted). Under § 112, second paragraph and sixth paragraph, a means-plus function clause is indefinite if a person or ordinary skill in the art Appeal 2010-011373 Application 10/944,441 5 would be unable to recognize the structure in a specification and associate it with the corresponding structure in the claim. B. Braun Medical Inc., v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cr. 1997) We agree with Appellants that one skilled in the art would recognize the structure in a specification and associate it with the corresponding structure in claim 2. We conclude that one skilled in the art would associate the structure of the chart shown in Figure 3 (elements 115 and 302), and the flowchart shown in Figure 6 of the present application with the corresponding structure recited in claim 2, for essentially the same reasons argued by Appellants. (App. Br. 12-13.) Based on this record, we conclude that the Examiner erred in determining that claim 2 is indefinite. Accordingly, we reverse the Examiner’s rejection of claim 2 under § 112, second paragraph. Anticipation Rejection of Claim 2 Issue Under § 102, did the Examiner err in finding that Kudoh discloses “means for defining a policy for determining whether a type of access to an associated policy managed object is permitted” (emphasis added), within the meaning of representative claim 2? Discussion Appellants contend that Kudoh fails to disclose “a means for defining a policy for determining whether a type of access to an associated policy managed object is permitted.” (App. Br. 15.) We agree for the following reasons. Appeal 2010-011373 Application 10/944,441 6 We agree with Appellants that the portions of Kudoh relied on by the Examiner to disclose the preset limitation – specifically Kudoh, ¶ [0023] and Figure 5 (Ans. 5) – fail to disclose defining a policy as required by the claim. The relied upon portions of Kudoh (Ans. 5 citing Kudoh, ¶ [0023], and Fig. 5) disclose a process for determining whether to permit or inhibit access in response to an access request. We find that those sections relate to the function of applying access request conditions, not defining a policy. As such, we agree with Appellants that the cited portions of Kudoh fail to disclose “defining a policy” as recited in claim 2. Based on this record, we conclude that the Examiner erred in rejecting claim 2. Accordingly, we reverse the Examiner’s § 102 rejection of claim 2. Anticipation Rejection of Claims 4, 11, and 13 Issue Under § 102, did the Examiner err in finding that Kudoh discloses a “means for performing at least one operation on the data object,” within the meaning of claim 4? Discussion We agree with and adopt the Examiner’s findings with respect to claims 4. (Ans. 5-6.) We observe that independent claim 4, recites “[a] data object comprising . . . .” Therefore, claim 4 is directed to an arrangement of “data” which constitutes non-functional descriptive material and does not distinguish the present invention from the prior art. Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential). Appeal 2010-011373 Application 10/944,441 7 Appellants contend that the Examiner failed to cite functional descriptive material that discloses the structure corresponding to the limitation at issue. (Reply Br. 3-7; App. Br. 16.) We disagree. Assuming, arguendo, that the limitations of claim 4 are afforded patentable weight, we find, as did the Examiner, that the access control system performs operations on the data object. (Ans. 6 citing Kudoh, ¶¶ [0085], [0091].) Figure 2 of Kudoh is a flowchart showing an algorithm for the operation performed by access control system in Figure 1. Therefore, we disagree with Appellants that the Examiner failed to cite an equivalent structure for the limitation at issue. Appellants further contend that the cited portion of Kudoh teaches allowing access to the access controller (Kudoh, Fig. 5, S809), which is not the same as making a determination as to “whether at least one operation requested to be performed on the object is allowed.” (App. Br. 16.) We agree with the Examiner’s findings. (Ans. 6, 27.) Kudoh’s Figure 5 discloses making a determination as to whether at least one operation requested to be performed on the object is allowed. (Kudoh, Fig. 5, S809.) If access to the object is not allowed, access to the access controller is not granted and the requested operation is not allowed. (See Kudoh, ¶ [0105].) Therefore, we do not find Appellants’ arguments persuasive. Regarding claim 13, we observe that claim 13 essentially recites “data” within a “data object” (“the at least one policy object comprises, within the at least one policy object, at least one other policy object”). The other data object is not positively recited. Therefore, for essentially for the reasons discussed above, claim 13 is directed to non-functional descriptive Appeal 2010-011373 Application 10/944,441 8 material that does not distinguish the claimed invention from the prior art of record. Based on this record, we conclude that the Examiner did not err in rejecting independent claim 4 and dependent claim 13. Appellants did not argue for the patentability of dependent claim 11 with particularity. (App. Br. 13-17.) Accordingly, we affirm the Examiner’s § 102 rejection of claims 4, 11, and 13. Anticipation Rejection of Claim 5 Issue Under § 102, did the Examiner err in finding that Kudoh discloses “means for allowing an operation to be performed on the data object by invocation of one of the interfaces,” within the meaning of claim 5? Discussion Appellants contend that the cited portions of Kudoh are functional descriptive material and are not algorithms. (App. Br. 16.) We observe that dependent claim 5 is directed to data, and is therefore non-functional descriptive material, similar to the discussion (supra) regarding claim 4.3 In addition, we agree with the Examiner that Figure 4 of Kudoh discloses information sets (interfaces) that are exchanged by the blocks of the access control system. (Kudoh, ¶ [0096].) As discussed supra, the access control system is described in the flowchart of Figure 5. Thus, the cited portions of Kudoh are directed to algorithms, which are equivalent to the structure recited by claim 5. 3 With respect to claim 5, we further observe that the phase “by invocation of one of the interfaces” (emphasis added) lacks antecedent basis. Appeal 2010-011373 Application 10/944,441 9 Based on this record, we conclude that the Examiner did not err in determining that Kudoh discloses “means for allowing an operation to be performed on the data object by invocation of one of the interfaces,” within the meaning of claim 5. Accordingly, we affirm the Examiner’s § 102 rejection of claim 5. Anticipation Rejection of Claim 12 Issue Under § 102, did the Examiner err in finding that Kudoh discloses “wherein the at least one policy object is configured to receive input from at least one service, such input contributing at least partially to resolving whether conditions defined by the at least one policy object are satisfied” (emphasis added), within the meaning of claim 12? Discussion Appellants contend that the Examiner failed to identify how anything that the Examiner has variously relied on as a “policy object” of Kudoh is “configured to receive input from at least one service.” (App. Br. 16.) We agree for essentially the same reasons argued by Appellants. The Examiner relied on paragraph [0078] and Figure 1 of Kudoh to disclose the present limitation. (Ans. 7.) However, we agree with Appellants that the Examiner has not established, nor do we find, where the cited portions of Kudoh disclose “receiving input from at least one service” as required by claim 12. Based on this record, we conclude that the Examiner erred in rejecting claim 12. Accordingly, we reverse the Examiner’s § 102 rejection of claim 12, for essentially the reasons argued by Appellants. Appeal 2010-011373 Application 10/944,441 10 Obviousness Rejection of Claim 1 Issue Under § 103, did the Examiner err in rejecting independent claim 1? Discussion Appellants further contend that the cited combination of references fails to teach or suggest: one or more interfaces for each policy managed object that each defines mechanisms for accessing the policy managed object or the payload; . . . . wherein each policy object has executable instructions that define a policy for determining whether a type of access to an associated policy managed object is permitted, including each of a policy in which access is permitted if a user has a license to access a policy managed object, a policy in which access is permitted if the user is using a secure viewer, and a policy in which access is permitted only during business hours; as recited in claim 1. (App. Br. 17.) At the outset, we note that claim 1 recites a system that comprises one or more interfaces that define mechanisms for accessing the policy managed object or the payload. We do not find Appellants’ arguments persuasive. Regarding the limitation reciting “one or more interfaces for each policy managed object that each defines mechanisms for accessing the policy managed object or the payload” (claim 1) (emphasis added), we note that under a broad but reasonable interpretation, the present limitation is written in the alternative. Thus, the prior art need only teach or suggest accessing the payload. As a result, the second limitation at issue, which is directed policy objects, is moot if accessing the payload is taught or suggested. The Examiner concluded that Terzis (Terzis, ¶ [0052]) teaches “a Appeal 2010-011373 Application 10/944,441 11 payload container object that securely stores a payload comprising arbitrary data, using a data processing hardware.” (Ans. 8.) (emphasis omitted.) The Examiner also concluded that Terzis would have taught or suggested a user interface for accessing computer resources (payload). (Ans. 28.) Appellants did not dispute the Examiner’s findings. (See App. Br. 17.) Accordingly, Appellants’ arguments regarding the second limitation at issue are moot.4 Based on this record, we conclude that the Examiner did not err in rejecting claim 1. Accordingly, we affirm the Examiner’s § 103 rejection of claim 1. Obviousness Rejection of Claim 3 Issue Under § 103, did the Examiner err in finding that the cited combination of references collectively would have taught or suggested “receiving a request to access a policy managed object in a data memory using data processing hardware, wherein the policy managed object comprises a payload container object that securely stores a payload of data, a plurality of policy objects, and a plurality of interfaces” (emphasis added), within the meaning of claim 3? Discussion Appellants contend that the cited references would not have taught or suggested the limitation at issue. (App. Br. 18.) We agree. 4 With respect to all claims before us on appeal, arguments which Appellants could have made but chose not to make have not been considered and are deemed to be waived. Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Appeal 2010-011373 Application 10/944,441 12 The Examiner relied on Garcia to disclose or suggest the present limitation. (Ans. 11, 29.) We agree with Appellants that the cited portions of Garcia (Garcia, Fig. 2B, (elements 222, 224)) disclose only a header 222 and an encrypted portion 224, wherein the header 222 is not contained with the encrypted portion 224 and, therefore, cannot securely store policy objects and interfaces of the policy managed object as claimed. Based on this record, we conclude that the Examiner erred in rejecting claim 3. Accordingly, we reverse the Examiner’s § 103 rejection of claim 3. Obviousness Rejection of Claims 14-17 and 20 Issue Under § 103, did the Examiner err in determining that the cited combination of references would have taught or suggested “at least one payload container object that securely stores at least one payload comprising data” (emphasis added), within the meaning of claim 14? Discussion Appellants contend that the cited references would have taught or suggested the limitation at issue. (App. Br. 18-19.) At the outset, we note that independent claim 14 recites “[a]n execution context for managing data objects.” Similar to the discussion, supra, regarding independent claim 4, it is our view that claim 14 recites “data” (payload) stored within “data” (payload container object) within data (execution context) which is merely “data” that is nonfunctional descriptive material and does not distinguish claim 14 from the prior art. Nehls, 88 USPQ2d at 1889. Appeal 2010-011373 Application 10/944,441 13 Based on this record, we find that the Examiner did not err in rejecting independent claim 14. Accordingly, we affirm the Examiner’s § 103 rejection of claim 14. Regarding dependent claims 15-17 and 20, we observe that Appellants’ arguments essentially consist of a recitation of the claim, a recitation of the Examiner’s prima facie rejection and a conclusion that the cited references fail to teach or suggest the limitation recited in each of the claims. (App. Br. 19-20.) Merely reiterating the language of the claim is insufficient. This form of argument does not amount to a separate patentability argument and is unpersuasive of error in the Examiner’s rejection. See Ex parte Belinne, No. 2009-004693, 2009 WL 2477843 at *3-4 (BPAI Aug. 10, 2009) (informative); see also 37 C.F.R. § 41.37(c)(iv) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”). Appellants’ argument “do[es] not . . . explain why the Examiner’s explicit fact finding is in error.” Belinne, 2009 WL 2477843 at *4. Mere attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). This is applicable in the present case. Based on this record, we conclude that Appellants have not shown the Examiner erred in rejecting claims 15-17 and 20. Accordingly, we affirm the Examiner’s § 103 rejection of claims 15-17 and 20. Appeal 2010-011373 Application 10/944,441 14 Obviousness Rejection of Dependent Claims 18 and 19 Appellants contend that the cited combination of references fail to teach or suggest the limitations of the preset claims. (App. Br. 21.) We observe that claims 18 and 19 depend from claim 14 discussed supra. Similar to the above discussion, claims 18 and 19 recite an “execution context” which is non-functional descriptive material and the recited limitations, therefore, do not distinguish the present claims from the cited prior art. We agree with and adopt the Examiner’s findings with respect to claims 18 and 19. (Ans. 15-17.) Further, the cited portions of Tibbetts teach lifecycle occurrences. (Tibbetts, ¶ [0005].) Appellants’ argument regarding claim 19 does not address the Examiner’s findings, instead merely recites the claim language and concludes that the prior art fails to teach or suggest the claim limitation. (App. Br. 21.) We find this type of argument unavailing for the reasons discussed supra. Based on this record, we conclude that the Examiner did not err in finding the cited references would have taught or suggest the limitations recited in claims 18 and 19. Accordingly, we affirm the Examiner’s § 103 rejection of claims 18 and 19. Obviousness Rejection of Dependent Claims 6-10 We observe that claims 6-10 depend from claim 4 discussed supra. Similar to the above discussion, claims 6-10 recite a “data object” which is non-functional descriptive material and the recited limitations, therefore, do not distinguish the present claims from the cited prior art. We agree with and adopt the Examiner’s findings with respect to claims 6-10. (Ans. 17-19, 31.) Appeal 2010-011373 Application 10/944,441 15 Based on this record, we conclude that the Examiner did not err in finding the cited references would have taught or suggest the limitations recited in claims 6-10. Accordingly, we affirm the Examiner’s § 103 rejection of claims 6-10. Obviousness Rejection of Claims 21-24 Issue Under § 103, did the Examiner err in rejecting independent claim 21? Discussion Appellants contend: Claim 21 also includes determining, based on the execution of the at least one policy, whether performing the requested operation on the data object is allowed. The Examiner has admitted that Kudoh fails to disclose the preceding steps, but asserts that Kudoh discloses this step. However, the cited reference must disclose the method steps in the order required by the claims. E-Pass Corp. v. 3COM Corp., 473 F.3d 1213, 1222 (Fed. Cir. 2007) (“Substantively, because the language of most of the steps of its method claim refer to the completed results or the prior step, E-Pass must show that all of those steps were performed in order.) Since Kudoh fails to disclose the preceding steps, it cannot possibly disclose this step which depends on the preceding steps. (App. Br. 23.) Before making the above assertion, Appellants recite the previous two preceding limitations and conclude that the prior art (Kudoh) fails to disclose these elements. (Id.) The Examiner relied on Tibbetts to teach or suggest each of the limitations. (Ans. 20.) We observe that Appellants did not dispute the Examiner’s specific findings in either the Principal Brief or Reply Brief. We Appeal 2010-011373 Application 10/944,441 16 agree with and adopt the Examiner’s findings with respect to claim 21. (Ans. 19, 32.) As shown above, Appellants do not dispute the Examiner’s findings with respect to the limitation at issue. Appellants argue that the limitation is not taught or suggested because the two previous method limitations are not disclosed. We do not find this argument persuasive because as discussed above, the Examiner found that Tibbetts would have taught or suggested the two preceding limitations. Regarding claims 22-24, similar to the discussion, supra, regarding claims 16-19, Appellants’ arguments consist of reciting the claim language and concluding that Kudoh fails to teach or suggest the limitation recited in each of claims 22-24. (App. Br. 24.) As discussed above, we find this type of argument unavailing. Based on this record, Appellants have not shown the Examiner erred in rejecting independent claim 21 and dependent claims 22-24. Accordingly, we affirm the Examiner’s § 103 rejection of representative claim 21 and claims 22-24. Obviousness Rejection of Claim 25 Issue Under § 103, did the Examine err in finding that the cited references, collectively, would have taught or suggested “determining whether performing the requested operation on the data object is allowed further comprises receiving input from a service,” (emphasis added) within the meaning of claim 25? Appeal 2010-011373 Application 10/944,441 17 Discussion Appellants contend: As previously discussed, the services performed by the various system components of Kudoh are not services that provide input to data object, which the Examiner construes to be a table of Kudoh. The items identified by the Examiner as allegedly being “services” do not do anything to the tables of Kudoh. (App. Br. 24.) We agree. As discussed, supra, regarding claim 12, the cited portions of Kudoh, (Kudoh, ¶ [0078]; Fig. 1.) fail to teach or suggest services that provide input to a data object as claimed. Based on this record, we conclude that the Examiner erred in rejecting claim 25. Accordingly, we reverse the Examiner’s § 103 rejection of claim 25. CONCLUSIONS OF LAW Appellants have shown the Examiner erred in rejecting claim 2 under 112, second paragraph. Appellants have shown the Examiner erred in rejecting claims 2 and 12 under 102(b). Appellants have not shown that the Examiner erred in rejecting claims 4, 5, 11, and 13, under 35 U.S.C. § 102(b). Appellants have shown the Examiner erred in rejecting claims 3 and 25 under 35 U.S.C. § 103(a). Appellants have not shown the Examiner erred in rejecting claims 1, 6-10, 14-24 under 35 U.S.C. § 103(a). Appeal 2010-011373 Application 10/944,441 18 DECISION We reverse the Examiner’s rejection of claim 2 under 35 U.S.C. § 112, second paragraph. We reverse the Examiner’s rejection of claims 2 and 12 under 35 U.S.C. § 102(b). We affirm the Examiner’s rejection of claims 4, 5, 11, and 13 under 35 U.S.C. § 102(b). We reverse the Examiner’s rejection of claims 3 and 25 under 35 U.S.C. § 103(a). We affirm the Examiner’s rejection of claims 1, 6-10, 14-24 under 35 U.S.C. § 103(a). 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 llw Copy with citationCopy as parenthetical citation