David Mohler et al.

Patent Trials and Appeals Board

Jul 27, 2021

2020000788 (P.T.A.B. Jul. 27, 2021)

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.
11/955,170 12/12/2007 David S. Mohler 4366-551 5185
48500 7590 07/27/2021
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
EXAMINER
DEBNATH, SUMAN
ART UNIT PAPER NUMBER
2495
NOTIFICATION DATE DELIVERY MODE
07/27/2021 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):
cjacquet@sheridanross.com
edocket@sheridanross.com
pair_Avaya@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID S. MOHLER and JASON H. VICK
____________

Appeal 2020-000788
Application 11/955,170
Technology Center 2400
____________

Before ELENI MANTIS MERCADER, ADAM J. PYONIN, and
GARTH D. BAER, Administrative Patent Judges.

BAER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–8, 11–14, 16–19, and 25–30, which are all
pending claims. Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies Avaya Inc. as the real party in interest. Appeal Br. 2.
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BACKGROUND
A. The Invention
Appellant’s invention is directed to “associating a sensitive
information identifier with information identified as sensitive” in
conjunction with processing electronic mail. Spec. 4:19–20. Claims 1, 11,
and 26 are independent; claim 1 is reproduced below:
1. A method of managing information comprising:
associating, by a processor, a sensitive information
identifier with information identified as sensitive, wherein the
sensitive information identifier is associated with an email
received by a user;
tracking actions, by the processor, relative to the
sensitive information, wherein tracking the actions comprises
appending a new sensitive information identifier to an email
forwarded by the user that was forwarded based on the received
email; and
performing, by the processor in response to tracking the
actions, an action to protect the sensitive information from
unauthorized access based on the sensitive information
identifier, wherein the action performed is to delete or sanitize
the email and the forwarded email.

Appeal Br. 17 (Claims App.).

B. The Rejections on Appeal
The Examiner rejects claims 1, 11, and 26 under 35 U.S.C. § 103(a) as
unpatentable over Brown (US 2007/0033283 A1; Feb. 8, 2007) and
LeVasseur (US 2007/0113101 A1; May 17, 2007). Final Act. 6.
The Examiner rejects claims 2, 3, 6, 7, 12, 13, 16, 17, 19, and 27
under 35 U.S.C. § 103(a) as unpatentable over Brown, LeVasseur, and
Zasman (US 7,693,877 B1; Apr. 6, 2010). Final Act. 9.
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The Examiner rejects claims 4, 5, and 14 under 35 U.S.C. § 103(a) as
unpatentable over Brown, LeVasseur, Zasman, and Elgressy
(US 2006/0265446 A1; Nov. 23, 2006). Final Act. 12.
The Examiner rejects claims 8, 18, 25, 28, and 30 under 35 U.S.C.
§ 103(a) as unpatentable over Brown, LeVasseur, Zasman, and Chiasson
(US 2007/0192604 A1; Aug. 16, 2007). Final Act. 13.
The Examiner rejects claim 29 under 35 U.S.C. § 103(a) as
unpatentable over Brown, LeVasseur, Zasman, and Kinder (US
2008/0301770 A1; Dec. 4, 2008). Final Act. 15.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2018). Except where noted,
we adopt the Examiner’s findings and conclusions as our own, and add the
following primarily for emphasis.

A. Obviousness Rejection of Claim 1
Appellant argues in the Appeal Brief that “LeVasseur does not teach
that the Message ID can be used to determine if the email itself contains
sensitive information or not” (Appeal Br. 8 (citing LeVasseur ¶¶ 168–169)),
and that “LeVasseur is silent on deleting email threads, let alone what
steps/identifiers are used to delete an email thread.” Appeal Br. 10 (citing
LeVasseur ¶¶ 75, 78, Figs. 36, 38). In the Reply Brief, Appellant contends
that Brown lacks “any teaching or reasonab[le] suggestion of appending a
sensitive information identifier, new or otherwise, to an email” (Reply Br. 3
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(citing Brown ¶¶ 81, 85, 95)) and that “[w]hat Brown teaches is the scanning
of information that may contain sensitive information, whether it be a
particular string or ‘other types of sensitive information.’” Reply Br. 4
(citing Brown ¶ 81).
We are not persuaded by Appellant’s arguments. The Examiner finds,
and we agree, that “Brown teaches tracking actions for email relative to
sensitive information and in response to tracking the actions, performs
action[s] to quarantined (i.e. sanitized) the sensitive information.” Ans. 6
(citing Brown ¶¶ 81, 85, 95). The Examiner further finds, and we agree, that
LeVasseur’s “Message ID” is equivalent to Applicant’s
“information identifier” which is an identifier of an email that
was forwarded (e.g., see, [LeVasseur ¶ 168]; herein [the]
forwarded email has a message id and messages that are
forwarded contains the message id and also the parent message
id in order to group the original email and the forwarded or
replied emails in a thread).
Ans. 6. Appellant attacks Brown and LeVasseur individually, and thus fails
to address the Examiner’s findings. See In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references.”).
Further, Appellant’s argument that in LeVasseur, “deleting a message
threat is not what is claimed” (Reply Br. 5) fails to address the Examiner’s
findings (see Ans. 6). Further, we find one skilled in the art would recognize
a successful information sanitization would require all emails containing the
sensitive information originating from the email to be sanitized, otherwise
the sensitive information would be available for retransmission and thus
ripe for mischief.
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Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 1, as well as independent claims 11 and 26 commensurate
in scope, as well as dependent claims 2, 4–8, 11, 12, 14, 16–19, 27, and 28
not separately argued. See Appeal Br. 11.

B. Obviousness Rejection of Claims 3 and 13
Claim 3 recites “[t]he method of claim 1, further comprising
detecting, by the processor, a tamper attempt and performing, by the
processor, an accelerated action based on the sensitive information
identifier.” Appellant argues “Zasman does not suggest that the deletion is
based on any type of security or protection of sensitive information as
recited in claim 3.” Appeal Br. 12.
We agree. The Examiner finds, and we agree that “Zasman discloses
deleting data (i.e. triggering a deletion process) when retention periods
expire[] (i.e. an expiration time for data)” and that “deletion was triggered
by expiration of retention period; thus the action was accelerated.” Ans. 11–
12 (citing Zasman 4:35–53). However, the Examiner’s findings do not
identify any teaching or suggestion in the references regarding the detection
of the claimed “tamper attempt.”
Accordingly, we are constrained by the record to reverse the
Examiner’s obviousness rejection of dependent claim 3, and dependent
claim 13 commensurate in scope.

C. Obviousness Rejection of Claims 25 and 30
Claim 25 recites “[t]he method of claim 1, wherein the action is to
sanitize the sensitive information and further comprises altering, by the
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processor, a login or boot process by hiding the sanitization of the sensitive
information by providing a dummy login screen or blanking the screen while
the sensitive information is sanitized.” Appellant argues that
[t]he reason why the system Chiasson does not boot-up is to
protect the sensitive information so an unauthorized user cannot
access it. The way Chiasson protects data is to prevent access
to the data where claim 1 protects the data by sanitizing the
data.
Appeal Br. 13 (citing Chiasson ¶ 8).
We agree. The Examiner adds Chiasson as teaching claim 25’s
limitations, finding that because Chiasson teaches that an “authentication
key is not verified then the boot-up sequence will be disabled” (Final Act. 13
(citing Chiasson ¶ 8)) and also finding that “Chiasson discloses the step of
providing a blank screen by disabling a boot-up sequence (e.g. see,
[Chiasson ¶ 8]); when a boot-up sequence is disabled, [the] computer screen
would appear blank.” Ans. 12. Here, the Examiner provides no explanation
how disabling a boot-up sequence will provide either a blank screen or a
dummy login screen while the sensitive information is sanitized, or how the
references’ combined teachings accomplish these simultaneous operations.
Accordingly, we are constrained by the record to reverse the
Examiner’s obviousness rejection of dependent claim 25, and claim 30 based
on its dependency from dependent claim 25.

D. Obviousness Rejection of Claim 29
Claim 29 recites
[t]he method of claim 1, wherein the sensitive
information identifier further comprises information about a
geographical region, wherein the information about the
geographical region allows the sensitive information to be
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accessed only when a communication device of the user that
contains the sensitive information is operating within the
geographical region, and wherein the geographical region is
based on a calendar application of the user.
Appellant argues that
[w]hile [Kinder ¶ 25] does teach that if a “user is on a physical
machine located in a public location (e.g., a terminal in the
public kiosk), the user may be denied access to some of the
VMs 103 in the VM map 184 that contains sensitive
information,” [Kinder ¶ 25] does not even mention any kind of
calendar of the user.
Appeal Br. 14–15. In response, the Examiner finds
that a calendar application is included with any computer, and
furthermore, Kinder discloses wherein the information about a
geographical region allows the sensitive information to be
accessed only when a communication device of the user that
contains the sensitive information is operating within the
geographical region.
Ans. 13 (citing Kinder ¶ 13). Even if the Examiner’s finding that “a
calendar application is included with any computer” — a finding with no
factual support — were true, the Examiner has not provided any reasoning
regarding how the combined references teach or suggest the claimed
“geographical region is based on a calendar application of the user.” Here,
Kinder’s reliance on “public location” does not appear to be tied to any
temporal determination.
Accordingly, we are constrained by the record to reverse the
Examiner’s obviousness rejection of dependent claim 29.

CONCLUSION
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In summary:

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
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 11, 26 103(a) Brown, LeVasseur 1, 11, 26
2, 3, 6, 7,
12, 13,
16, 17,
19, 27
103(a) Brown, LeVasseur,
Zasman
2, 6, 7, 12,
16, 17, 19,
27
3, 13
4, 5, 14 103(a) Brown, LeVasseur,
Zasman, Elgressy
4, 5, 14
8, 18, 25,
28, 30
103(a) Brown, LeVasseur,
Zasman, Chiasson
8, 18, 28 25, 30
29 103(a) Brown, LeVasseur,
Zasman, Kinder
29
Overall
Outcome
1, 2, 4–8, 11,
12, 14, 16–
19, 26–28
3, 13, 25, 29,
30