Desprez, LLC

Patent Trials and Appeals Board

Jul 12, 2021

2021003998 (P.T.A.B. Jul. 12, 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.
15/937,150 03/27/2018 James L Jacobs II 1009-051USU1 8311
145340 7590 07/12/2021
Caldwell Intellectual Property Law
200 Clarendon Street
59th Floor
Boston, MA 02116
EXAMINER
LHYMN, SARAH
ART UNIT PAPER NUMBER
2613
NOTIFICATION DATE DELIVERY MODE
07/12/2021 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):
alexander@caldwellip.com
emily@caldwellip.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Ex parte JAMES L. JACOBS II
_______________

Appeal 2021-003998
Application 15/937,150
Technology Center 2600
_______________

Before: ROBERT E. NAPPI, JOHN A. JEFFERY, and
JOYCE CRAIG, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1 and 3 through 18. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, Deprez, LLC, is the real party-in-
interest. Appeal Br. 3.
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Application 15/937,150

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INVENTION
The invention is directed to a system for secret sharing and secure
collaborative design of a three dimensional form. Abstract. Claim 1 is
illustrative of the invention and is reproduced below.
1. A system for secure collaborative graphical design
using secret sharing, the system comprising:
a secret owner device;
a memory, operatively connected to the secret owner
device, the memory configured to store a three-
dimensional graphical design including:
a first three-dimensional form including a first
three-dimensional shape and a first
dimension set in three dimensions; and
at least a local geometric feature;
a secret share generator executing on the secret owner device,
the secret share generator designed and configured to
generate the at least a graphical secret share, wherein
generating the at least a graphical secret share further
comprises:
generating a three-dimensional geometric primitive; and
replacing the first three-dimensional form with a second
three-dimensional form, wherein replacing the first
three-dimensional form comprises:
generating at least a dummy feature, wherein the at
least a dummy feature further comprises at
least a duplicate of the at least a local
geometric feature; and
generating a second three-dimensional form
comprising the three-dimensional geometric
primitive, the local geometric feature, and
the at least a dummy feature, wherein
generating the second three dimensional
form comprises combining the three-
dimensional geometric primitive with the at
least a local geometric feature and the at
least a dummy feature and wherein the
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second three-dimensional form is displayed
in the at least a graphical secret share;
a contributor interface executing on the secret owner device, the
contributor interface designed and configured to provide
the at least a graphical secret share to at least a
contributor device.

EXAMINER’S REJECTIONS2
The Examiner has rejected claims 1, 3, and 5 through 18 under
35 U.S.C. § 103 as being unpatentable over Grimaud (US 2007/0196030 A1
pub. Aug. 23, 2007), Glunz (US 2015/0248504 A1, pub. Sept. 3, 2015),
Phelps (US 2008/0022408 A1, pub. Jan 24, 2008) and McCormack (US
2014/0032930 A1, pub. Jan 30, 2014). Final Act. 9–25.
The Examiner has rejected claims 3 and 4 under 35 U.S.C. § 103 as
being unpatentable over Grimaud, Glunz, Phelps, McCormack and Milazzo
(US 2017/0279783 A1, pub. Sept. 28, 2017). Final Act 26–27

ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have persuaded us of error in the
Examiner’s rejection of claims 1 and 3 through 18.

With respect to independent claim 1, Appellant argues that the
combination of Grimaud, Glunz, Phelps, McCormack does not teach the

2 Throughout this Decision we refer to the Appeal Brief filed December 3,
2020 (“Appeal Br.”); Final Office Action mailed December 4, 2019 (“Final
Act.”); and the Examiner’s Answer mailed February 5, 2021 (“Ans.”).
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steps of “generating at least a dummy feature, wherein the at least a dummy
feature further comprises at least a duplicate of the at least a local geometric
feature” as recited in independent claim 1. Appeal Br. 9–14.
The Examiner responds to Appellant’s arguments, identifying that
Grimaud, like Appellant’s invention, is concerned with protecting, hiding
and making secret aspects of three dimensional images. Ans. 4 (citing
Grimaud Fig. 5, ¶¶ 3–8, 12). The Examiner finds that Grimaud teaches local
geometric features and that they can be protected by degrading the image to
prevent unauthorized use. Ans. 3, 4 (citing Grimaud Fig. 5, ¶¶ 12, 17, 107).
The Examiner finds that Phelps is also concerned with secrecy of data and
teaches replacing objects in an image with a dummy object. Ans. 5 (citing
Phelps Fig. 1, ¶¶ 5, 6, 11, 29–35). Based upon these findings, the Examiner
concludes the combination teaches “generating at least a dummy feature
(see mapping to Phelps), wherein the at least a dummy feature (Phelps)
comprises at least a duplicate of the at least a local geometric feature
(Phelps and Grimaud re: duplicate, and Grimaud re: at least a local
geometric feature), and the results of the modification would have been
obvious and predictable to one of ordinary skill in the art.” Ans. 5. Further,
the Examiner states “the argued claim feature of wherein the at least a
dummy feature comprises at least a duplicate of the at least a local
geometric feature, is clearly taught and obvious over the prior art. The
Examiner also provided a detailed motivation to combine in the Final
Rejection of 12/04/2019 (see pages 13-14 of the Final Rejection.” Ans. 5.
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of independent claim 1. Claim 1 recites a first three dimensional
object with a local geometric feature, generating a secret share three
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dimensional object which includes a step of generating a dummy feature that
is a duplicate of the local geometric feature, and generating a second three
dimensional form including the local geometric feature and the dummy
feature. We have reviewed the teachings of Phelps and Grimaud cited by
the Examiner, and concur with the Examiner that both references are
concerned with securing image data. Further, we concur with the Examiner
that Grimaud teaches local geometric features which are modified (by
degrading) when shared. See e.g. Grimaud Figs. 5−9. We also concur with
the Examiner that Phelps, teaches replacing objects in an image with a
dummy object. See Phelps Fig. 1. However, we have reviewed the cited
teachings and do not see that either of the references teaches or suggests
alone or in combination generating a dummy feature that is a duplicate of the
at least one local geometric feature as claimed. Nor do we find that ether of
the references teaches or suggests alone or in combination that both the
dummy feature and local geometric feature are used to generate a second
three dimensional form as claimed. Accordingly, we do not sustain the
Examiner’s obviousness rejection of independent claim 1 and dependent
claims 3 and 5 through 18 similarly rejected based upon the combination of
Grimaud, Glunz, Phelps, and McCormack.
The Examiner’s obviousness rejection of dependent claims 3 and 4
similarly relies upon the combination of Grimaud, Glunz, Phelps, and
McCormack to teach the limitations of independent claim 1. Accordingly,
we similarly do not sustain the Examiner’s obviousness rejection of claims 3
and 4.
Because we agree with at least one of the dispositive arguments
advanced by Appellant, we need not reach the merits of Appellant’s other
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contentions. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir.
1984) (finding an administrative agency is at liberty to reach a decision
based on “a single dispositive issue”).

CONCLUSION
We reverse the Examiner’s rejections of claims 1 and 3 through 18.

Claims
Rejected
35 U. S. C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 5–18 103 Grimaud, Glunz,
Phelps, McCormack
1, 3, 5–18
3, 4 103 Grimaud, Glunz,
Phelps,
McCormack,
Milazzo
3, 4
Overall
Outcome
1, 3–18

REVERSED