AirWatch LLC

Patent Trials and Appeals Board

Apr 17, 2020

15015631 - (D) (P.T.A.B. Apr. 17, 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.
15/015,631 02/04/2016 Christian Blake Sorensen W032.C1 (500103-1291) 6820
152577 7590 04/17/2020
Thomas | Horstemeyer, LLP (VMW)
3200 Windy Hill Road, SE
Suite 1600E
Atlanta, GA 30339
EXAMINER
VU, VIET D
ART UNIT PAPER NUMBER
2448
NOTIFICATION DATE DELIVERY MODE
04/17/2020 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):
docketing@thomashorstemeyer.com
ipadmin@vmware.com
uspatents@thomashorstemeyer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTIAN BLAKE SORENSEN
____________

Appeal 2019-001836
Application 15/015,631
Technology Center 2400
____________

Before CAROLYN D. THOMAS, JASON V. MORGAN, and
JAMES B. ARPIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a), the Examiner’s final
rejections of claims 21, 24, 26–29, 32–40, and 43–45. Appeal Br. 21–27
(Claims App.).2 Claims 1–20, 22, 23, 25, 30, and 31 are cancelled. Id. The
Examiner indicates that claims 41 and 42 recite allowable subject matter, but

1 “Appellant” here refers to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party-in-interest as VMware, Inc., which owns
AirWatch, LLC, the assignee of record. Appeal Br. 2.
2 In this Decision, we refer to Appellant’s Appeal Brief (“Appeal Br.,” filed
September 4, 2018) and Reply Brief (“Reply Br.,” filed December 31,
2018); the Final Office Action (“Final Act.,” mailed February 27, 2018) and
the Examiner’s Answer (“Ans.,” mailed November 2, 2018); and the
originally-filed Specification (“Spec.,” filed February 4, 2016). Rather than
repeat the Examiner’s findings and determinations and Appellant’s
contentions in their entirety, we refer to these documents.
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objects to those claims as dependent from a rejected base claim, claim 21.3
Final Act. 5. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
STATEMENT OF THE CASE
Appellant’s claimed invention relates to methods, systems, and
computer-readable media providing social media and data sharing controls.
Spec. ¶ 3.
As noted above, claims 21, 24, 26–29, 32–40, and 43–45 stand
rejected. Claims 21, 29, and 36 are independent. Appeal Br. 21 (claim 21),
29 (claim 23), 36 (claim 25) (Claims App.). Claims 24, 26–28, 41, 42, and
45 depend directly or indirectly from claim 21; claims 32–35, 43, and 44
depend directly or indirectly from claim 29; and claims 37–40 depend
directly from claim 36. Id. at 22–27.
Claim 21 recites “[a] method”; claim 29 recites “[a] system
comprising: a user device; and an agent executed by the user device, the
agent, when executed, being configured to cause the user device to at least”
perform functions, substantially as recited in claim 21; and claim 36 recites
“[a] non-transitory computer-readable medium embodying a program that,
when executed, causes at least one computing device to at least” perform
functions, substantially as recited in claim 21. Id. at 21, 23, 25. The
Examiner relies on the same references and substantially similar arguments
in rejecting claims 21, 29, and 36. Final Act. 2–4. Appellant only contests
the rejections of claims 43 and 44 separately from claims 21, 29, and 36.
See Appeal Br. 18–19. Therefore, because we find Appellant’s contentions

3 We do not address the merits of these objections. See MPEP § 706.01.
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with respect to the independent claims dispositive of the obviousness
rejections, we focus our analysis on independent claim 21 and the disputed
and overlapping limitations recited in independent claims 29 and 36.
Claim 21, reproduced below with disputed limitations emphasized, is
representative.
21. A method comprising:
receiving a request to transmit an element of data to a
recipient on behalf of a sender, the request identifying a service
through which the element of data is requested to be shared from
a mobile device associated with the sender;
determining whether the element of data is allowed to be
shared through the service based upon determining a first
category for a network address of a public server of the service
through which the element of data is requested to be shared;
identifying a contact record associated with the recipient;
determining whether the recipient is appropriate to
receive the element of data based upon whether the first category
corresponds to a second category determined for the contact
record associated with the recipient;
in response to determining that the recipient is appropriate
to receive the element of data and that the element of data is
allowed to be shared, causing the element of data to be
transmitted to the public server associated with the service; and
in response to determining that the recipient is not
appropriate to receive the element of data, performing at least
one remedial action.
Id. at 21 (emphases added).
REFERENCES AND REJECTIONS
The Examiner relies upon the following references in rejecting the
claims:
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Name4 Number Issued/Publ’d Filed
Cisler US 8,266,323 B2 Sept. 11, 2012 June 9, 2007
Sorensen US 9,270,777 B2 Feb. 23, 2016 June 6, 2013
Chung US 2010/0186065 A1 July 22, 2010 Apr. 23, 2008
Ramanathan US 2013/0006879 A1 Jan. 3, 2013 June 28, 2011
Specifically, claims 21, 24, 26–29, and 32–40 stand rejected under the
judicially-created doctrine of obviousness-type double patenting in view of
Sorensen. Final Act. 2. Claims 21, 24, 26–29, 32–40, and 45 also stand
rejected as unpatentable under 35 U.S.C. § 103 over the combined teachings
of Ramanathan and Cisler. Id. at 2–4. Claims 43 and 44 stand rejected as
unpatentable under 35 U.S.C. § 103 over the combined teachings of
Ramanathan, Cisler, and Chung. Id. at 4–5.
Appellant contests the obviousness rejection of independent claim 21
(Appeal Br. 5–9) and relies on the alleged deficiencies in that rejection to
overcome the rejections of the other independent claims and the dependent
claims (id. at 9–19). Because we determine that reversal of the rejection of
independent claim 21 is dispositive with respect to the obviousness
rejections; except for our ultimate decision, we do not discuss the merits of
the rejections of claims 24, 26–29, 32–40, and 43–45 or the objections to
claims 41 and 42 further herein. We review the appealed rejection of
independent claim 21 for error based upon the issues identified by
Appellant, and in light of the arguments and evidence produced thereon. Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). We
address the rejections of the pending claims below.

4 All reference citations are to the first named inventor only.
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ANALYSIS
1. Non-Provisional, Obviousness-Type Double Patenting Rejection
As noted above, the Examiner rejects claims 21, 24, 26–29, and 32–40
under the judicially-created doctrine of obviousness-type double patenting in
view of Sorensen. Final Act. 2. Appellant does not contest this rejection.
Therefore, because Sorensen is an issued patent, we summarily affirm this
rejection.
2. Non-Obviousness of Claim 21 over Ramanathan and Cisler
As noted above, the Examiner rejects independent claim 21 as
obvious over the combined teachings of Ramanathan and Cisler. Final
Act. 2–4. In particular, the Examiner finds Ramanathan and Cisler together
teach or suggest “determining whether the recipient is appropriate to receive
the element of data based upon whether the first category corresponds to a
second category determined for the contact record associated with the
recipient.” Appeal Br. 21 (Claims App.). The Examiner finds that
Ramanathan and Cisler together teach determining whether the recipient is
appropriate to receive the element of data based upon whether the identified
address of the public server of a service, such as Facebook.com or
LinkedIn.com, i.e., a first category, corresponds to a second category, i.e., a
group, determined for the contact record associated with the recipient. Final
Act. 2–3 (citing Ramanathan ¶¶ 28, 47, 85, 89; Cisler, 15:26–54). That is,
the Examiner finds
the combined teachings of Ramanathan and Cisler would have
suggested determining whether the recipient is appropriate to
receive data element based upon two determinations or
conditions: 1) a public server hosting the service is of (first)
approved category of servers and 2) the recipient is associated
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with a (second) approved category of groups. In the instant case,
the first category corresponds [to] the second category as they
are both “approved” category.
Ans. 4 (italics added). Appellant disagrees.
Referring to Figure 3, the Specification explains:
From stage 330, method 300 may advance to stage 340
where user device 100 may determine whether sharing is
appropriate. For example, agent application 234 may determine
whether the category of the data to be shared is compatible
and/or the same as the category of the recipient, such as where
personal category data is to be shared with a personal category
web site. In some embodiments, management application 230
may provide one and/or more rules governing what categories of
data may be shared with what categories of recipients. For
example, a rule may be configured such that personal web
browsing history may not be appropriate to be shared with work-
related recipients. Such a rule may be further configured to
allow an exception for sharing with a work-related recipient if,
for example, that work-related recipient is monitoring the device
for improper usage during business hours.
Spec. ¶ 48 (emphases added); see Appeal Br. 4. Thus, a first category may
be a personal network address, e.g., a Facebook® address, or a work
network address, e.g., a LinkedIn® address; and a second category may
define a recipient based on a contact record as a personal contact or a work
contact. Spec. ¶ 47 (“For example, user device 100 may analyze a contact
record associated with the recipient to determine whether the recipient
comprises a work or personal contact.”); see Appeal Br. 4; see also Spec.
¶ 45 (“For example, requests to share with some sites, such as a professional
networking site (e.g., LinkedIn®) may be categorized as professional and/or
work-related requests while requests to share with other sites (e.g.,
Facebook®) may be categorized as personal requests.”). Therefore, a
personal network address may “correspond[] to” a personal contact, and a
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work network address may “correspond[] to” a work contact.
As noted above, the Examiner finds “the first category corresponds
[to] the second category as they are both ‘approved’ category.” Ans. 4.
Nevertheless, in the Specification’s example, both the work and personal
network addresses and both the work and personal recipients would be
“approved.” Spec. ¶ 48. Thus, the Examiner’s reliance on “approved” to
teach or suggest both categories appears contrary to the Specification’s
disclosure.
Although the data to be shared may be categorized as approved or not
approved (id. ¶ 45), we do not understand this to be what is meant by the
term “corresponds to” with respect to the first and second categories, as
recited in claim 21. Instead, we interpret this term to describe that the type
of network address, e.g., work or personal (i.e., the first category), is the
same as or related to the type of recipient, e.g., work or personal (i.e., the
second category). See id. ¶¶ 45–48, Fig. 3 (items 320 (“Categorize
Request”) and 330 (“Categorize Recipient”)). Appellant contends, “the
Office Action has alleged that isolated portions of the claim element are
shown individually across these different references, but this ignores the
relationships between the elements and distorts the meaning of the claim
element as a result.” Appeal Br. 9. We agree.
Consequently, we are not persuaded the Examiner has shown that
Ramanathan and Cisler together teach or suggest this disputed limitation.
Therefore, we also are persuaded the Examiner erred in rejecting claim 21,
and we do not sustain the obviousness rejection of claim 21.
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3. The Remaining Claims
As noted above, Appellant challenges the obviousness rejection of
independent claims 29 and 36 for the same reasons as claim 21. See Final
Act. 4; Appeal Br. 9–18. Each of claims 24, 26–28, and 32–35, 37–40, and
43–45 depends directly or indirectly from independent claim 21, 29, or 36.
Id. at 21–27 (Claims App.). Because we are persuaded the Examiner erred
with respect to the obviousness rejection of claim 21, we also are persuaded
the Examiner erred with respect to the obviousness rejections of independent
claims 29 and 36 and of dependent claims 24, 26–28, and 32–35, 37–40, and
43–45, given that these claims also include the disputed limitations. For this
reason, we do not sustain the obviousness rejections of those claims.
DECISIONS
1. The Examiner did not err in rejecting claims 21, 24, 26–29, and 32–40
under the judicially-created doctrine of obviousness-type double
patenting.
2. The Examiner erred in rejecting claims 21, 24, 26–29, 32–40, and 45
under 35 U.S.C. § 103 as rendered obvious over the combined
teachings of Ramanathan and Cisler.
3. The Examiner erred in rejecting claims 43 and 44 under 35 U.S.C.
§ 103 as rendered obvious over the combined teachings of
Ramanathan, Cisler, and Chung.
4. Because the Examiner did not include claim 41 or 42 in the
obviousness-type double patenting rejection and because we reverse
the Examiner’s obviousness rejection of claim 21, the Examiner’s
objections to claims 41 and 42 are moot.
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5. Thus, on this record, claims 41–45 are not unpatentable.
CONCLUSION
Because we sustain the rejection of each of claims 21, 24, 26–29, and
32–40 on at least one ground, we affirm the Examiner’s decision rejecting
claims 21, 24, 26–29, and 32–40; but we reverse the Examiner’s decision
rejecting claims 43–45.
In summary:
Claims
Rejected
35 U.S.C. § Basis/References Affirmed Reversed
21, 24, 26–
29, 32–40
Obviousness-type
double patenting
21, 24, 26–
29, 32–40

21, 24, 26–
29, 32–40,
45
103 Ramanathan,
Cisler

21, 24, 26–
29, 32–40,
45
43, 44 103 Ramanathan,
Cisler, Chung
43, 44
Overall
Outcome
21, 24, 26–
29, 32–40
43–45
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART