Ex Parte DiMuro et alDownload PDFPatent Trial and Appeal BoardSep 30, 201613690174 (P.T.A.B. Sep. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/690,174 11130/2012 131244 7590 09/30/2016 JPMorgan Chase/Hunton & Williams LLP Intellectual Property Department 2200 Pennsylvania A venue, NW Suite 800 Washington, DC 20037 FIRST NAMED INVENTOR Jeffrey D. DiMuro 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 72167.000770 9132 EXAMINER ZAIDI, SYED A ART UNIT PAPER NUMBER 2493 MAIL DATE DELIVERY MODE 09/30/2016 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 JEFFREY D. DIMURO and DAVID JUDE FORD Appeal2015-005819 Application 13/690,174 Technology Center 2400 Before KAL YANK. DESHPANDE, DAVID M. KOHUT, and JASON V. MORGAN, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal2015-005819 Application 13/690,174 STATEMENT OF CASE1 Appellants seek review under 35 U.S.C. § 134(a) of the Examiner's Final Rejection of claims 1-30, which constitute all the claims pending in this application. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ). We AFFIRM. INVENTION The invention is directed to processing protected electronic communications. Spec. i-f 2. Claim 1 is illustrative of the invention and is reproduced below: 1. A method for processing inbound messages, comprising: receiving an electronic message comprising protected content at an electronic device comprising at least one computer processor; the at least one computer processor determining a manner in which unprotected content corresponding to the protected contest is accessed by a user; the at least one computer processor accessing the unprotected content using the determined manner for accessing the unprotected content; and the at least one computer process automatically sending the unprotected content to a first storage location. Linehan Just Goldstone REFERENCES us 5,495,533 US 6,567,914 Bl US 2003/0142364 Al Feb.27, 1996 May 20, 2003 July 31, 2003 1 Our Decision makes reference to Appellants' Reply Brief ("Reply Br.," filed May 15, 2015), and Appeal Brief ("App. Br.," filed November 19, 2014), and the Examiner's Answer ("Ans.," mailed March 19, 2015) and Final Office Action ("Final Act.," mailed June 13, 2014). 2 Appeal2015-005819 Application 13/690,174 Sethi Stoye Gupte Kulkarni US 2006/0031586 Al US 2006/0085503 Al US 2006/0282389 Al US 2007 /0067399 Al REJECTIONS AT ISSUE2 Feb.9,2006 Apr. 20, 2006 Dec. 14, 2006 Mar. 22, 2007 Claims 1-5, 14, 16, 17, 20-23, and 28-30 stand rejected under 35 U.S.C. § 103(a) as obvious over the combination of Gupte and Kulkarni. Final Act. 9-15. Claims 6, 15, and 19 stand rejected under 35 U.S.C. § 103(a) as obvious over the combination of Gupte, Kulkarni, and Goldstone. Final Act. 15-17. Claims 7-11 and 24--26 stand rejected under 35 U.S.C. § 103(a) as obvious over the combination of Sethi and Just. Final Act. 18-22. Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as obvious over the combination of Sethi, Just, and Linehan. Final Act. 22-24. Claim 18 stands rejected under 35 U.S.C. § 103(a) as obvious over the combination of Gupte, Kulkarni, and Sethi. Final Act. 24--25. Claim 27 stands rejected under 35 U.S.C. § 103(a) as obvious over the combination of Sethi, Just, and Stoye. Final Act. 18-22. ISSUES ISSUE I-Did the Examiner err in finding the combination of Gupte and Kulkarni teaches "determining a manner in which unprotected content 2 The rejection of claim 11under35 U.S.C. § 112, second paragraph, as being indefinite has been withdrawn. See Advisory Act. mailed July 31, 2014. 3 Appeal2015-005819 Application 13/690,174 corresponding to the protected content is accessed by a user," as recited in independent claim 1? ISSUE 2-Did the Examiner err in finding the combination of Gupte and Kulkarni teaches "receiving an electronic message comprising protected content," as recited in independent claim 1? ISSUE 3-Did the Examiner err in finding the combination of Sethi and Just teaches "marking the inbound electronic message with an indication that the inbound electronic message comprises protected content," as recited in independent claim 7? ISSUE 4----Did the Examiner err in finding the combination of Sethi and Just teaches "rewriting envelope information for the inbound electronic message," as recited in dependent claim 8? ANALYSIS Claims 1-6, 14-23, and 28-30 Claim 1 ISSUE 1- Independent claim 1 recites "determining a manner in which unprotected content corresponding to the protected content is accessed by a user." Appellants contend in order to determine the manner in which unprotected content is accessed by a user, claim 1 requires first determining the user's actions in accessing the unprotected content. App. Br. 7-8; Reply Br. 3. Based upon this interpretation of claim 1, Appellants argue that Gupte does not teach determining the manner of accessing the unprotected content based upon the user's actions. App. Br. 7. Rather, Appellants contend that Gupte' s server determines the manner in which the unprotected content is 4 Appeal2015-005819 Application 13/690,174 accessed independent of the user's actions. App. Br. 9-10 (citing Gupte if 24); Reply Br. 3--4. We are not persuaded of Examiner error. Appellants' arguments are not commensurate in scope with claim 1. Claim 1 recites, inter alia, "determining a manner in which unprotected content ... is accessed by a user." Claim 1, however, does not specify how the manner is determined. As such, we do not agree with Appellants' argument that claim 1 requires determining the user's actions in accessing the unprotected content. See App. Br. 7. Additionally, as found by the Examiner, paragraph 33 of the Specification describes a method of determining the manner for accessing unprotected content absent determining user's actions. Ans. 4--5 (citing Spec. if 33). The Examiner finds that Gupte teaches that a server determines the algorithm, process, or key (i.e., manner of access) that is used to decrypt the encrypted media and then sends the determined manner of access to the user. Final Act. 9-10 (citing Gupte if 24); Ans. 9-10 (citing Gupte if 23). The Examiner, therefore, finds the server's determination of the manner in which the user will decrypt the encrypted media teaches "determining a manner in which unprotected content corresponding to the protected content is accessed by a user." Final Act. 9-10; Ans. 9-10. We agree with the Examiner. As discussed above, claim 1 does not require that user action determines the manner in which a user accesses unprotected content. Therefore, under the broadest reasonable interpretation of the claimed language discussed above, the determination of the user's actions in order to determine the manner for accessing the unprotected content is not required. Additionally, we agree with the Examiner's finding that Gupte's server 5 Appeal2015-005819 Application 13/690,174 determining the manner of access teaches the disputed limitation because the server sends the decryption method to the PVR so the unprotected content may be accessed by the user. See Gupte i-f 22-24. Accordingly, Appellants' argument that Gupte fails to teach determining the manner in which unprotected content is accessed by a user does not persuade us of Examiner error. ISSUE 2-Independent claim 1 also recites "receiving an electronic message comprising protected content." Appellants argue Gupte' s electronic message does not contain protected content. App. Br. 8-9. We disagree with Appellants. In contrast to Appellants' argument, and, as found by the Examiner, paragraph 23 of Gupte expressly states that Gupte' s electronic message may include "a segment of the encrypted media content." Ans. 6 (citing Gupte i-f 23). The Examiner finds, and we agree, that Gupte' s media content, being encrypted, is protected. See Ans. 6 (citing Gupte i-f 23). Accordingly, we are not persuaded of Examiner error. Appellants also argue that Gupte' s media "content is not disclosed as being received in an electronic message as that term is used in the context of the specification." App. Br. 9-10. Rather, as argued by Appellants, Gupte's media content is downloaded to a personal video recorder (PVR), and thus, the media content is not received in an electronic message. Id. at 9 (citing Gupte i-fi-122-23). We do not find this argument persuasive. The Examiner relies on the decryption request of Gupte that contains a segment of the encrypted media to teach the claimed electronic message, not the PVR downloading encrypted media from the distribution server. See Final Act. 9-10; Ans. 12 (citing Gupte i-fi-122-23). That is, the decryption request is an 6 Appeal2015-005819 Application 13/690,174 electronic message and includes portions of the protected content. The Examiner finds, and we agree, that Gupte' s decryption request may be reasonably considered to be "an electronic message" because it, like the electronic message described in the Specification, comprises protected media, such as encrypted video or audio. Ans. 6-10 (citing Spec. i-fi-f 12, 38; Gupte i-fi-122-23). Thus, we find the Examiner did not err in finding that Gupte teaches "receiving an electronic message comprising protected content." According! y, we sustain the Examiner's rejection of independent claim 1. Claims 2-6, 14-23, and 28-30 Appellants argue that claims 2---6, 14--23, and 28-30 are patentable for the same reasons as claim 1. App. Br. 10---11. Therefore, we also sustain the Examiner's rejection of claims 2-6, 14--23, and 28-30 for the same reasons indicated above with respect to claim 1. Claims 7-13 and 24-27 Claim 7 ISSUE 3-Independent claim 7 recites "marking the inbound electronic message with an indication that the inbound electronic message comprises protected content." The Examiner finds the Specification discloses that marking or altering a message indicates the message contains protected content. Ans. 15 (citing Spec. i1 65 3). The Examiner finds that Sethi teaches if a message is received in an encrypted format, the message is altered by being decrypted 3 The Examiner incorrectly cites paragraph 67 of the Specification. See Ans. 15. We hold this to be harmless error and make the correction here. 7 Appeal2015-005819 Application 13/690,174 and re-encrypted prior to transmission to its final destination. Ans. 16 (citing Sethi i-f 9). The Examiner finds, based on the description in the Specification, that Sethi' s alteration of the message teaches marking the message with an indication that the message contains protected content. Final Act. 18 (citing Sethi i-fi-19, 39); Ans. 16. Appellants argue that the Examiner erred because Sethi is silent as to how it determines whether a message contains protected content. App. Br. 12; Reply Br. 5---6. Appellants also argue that simply re-encrypting an incoming message does not teach indicating that the incoming message comprises protected content. Id. We disagree with Appellants. Contrary to Appellants' arguments, and as found by the Examiner, Appellants' Specification specifically discloses that altering a message indicates the message contains protected content. Ans. 15-16 (citing Spec. i-f 65). The Specification, however, does not describe how the electronic message is to be marked or altered to indicate that it contains protected content. Thus, we do not find Appellants' argument persuasive because it fails to demonstrate error in the Examiner's findings based upon Appellants' Specification. See Spec. i-f 65. Appellants also argue that Just fails to teach "marking the inbound electronic message with an indication that the inbound electronic message comprises protected content" because removing key and header data and then re-encrypting the header and message with an appropriate key does not mark the message with an indication that it contains protected content. App. Br. 13; see Reply Br. 7. We do not find Appellants' argument persuasive because Appellants are responding to the rejection by attacking the references separately, even though the rejection is based on the combined 8 Appeal2015-005819 Application 13/690,174 teachings of the references. As set forth above, the Examiner finds Sethi, not Just, teaches "marking the inbound electronic message with an indication that the inbound electronic message comprises protected content." Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Accordingly, we sustain the Examiner's rejection of independent claim 7. Claim 8 ISSUE 4----Dependent claim 8 recites "rewriting envelope information for the inbound electronic message" to indicate the message contained within the envelope comprises protected content. The Examiner finds that Just teaches removing extraneous key and header information from a message prior to re-encrypting the message. Final Act. 8 (citing Just 7:30-8:55, 10:20-29, Fig. 3; Ans. 17-22). The Examiner finds the removal of extraneous key and header information and re-encrypting the header teaches "rewriting envelope information for the inbound electronic message." Final Act. 8; Ans. 21 (Just Fig. 3). Appellants argue that Just's altering and re-encrypting a message's header fails to rewrite the message's envelope information. App. Br. 13. We disagree with Appellants. As the Specification explains, the header of a message is part of its envelope (see Spec. i-f 64), and as set forth above, we find that re-encrypting part of a message marks or indicates the message 9 Appeal2015-005819 Application 13/690,174 comprises protected content. As such, we do not find Appellants' argument persuasive. Accordingly, we sustain the Examiner's rejection of dependent claim 8. Claims 9-13 and 24-27 Appellants argue that claims 9-13 and 24--27 are patentable because they depend from claim 7. App. Br. 13. As indicated above, we sustain the Examiner's rejection of claim 7. Therefore, we also sustain the Examiner's rejection of claims 9-13 and 24--27 for the same reasons indicated above with respect to claim 7. CONCLUSION The Examiner did not err in finding the combination of Gupte and Kulkarni teaches "determining a manner in which unprotected content corresponding to the protected content is accessed by a user," as recited in independent claim 1. The Examiner did not err in finding the combination of Gupte and Kulkarni teaches "receiving an electronic message comprising protected content," as recited in independent claim 1. The Examiner did not err in finding the combination of Sethi and Just teaches "marking the inbound electronic message with an indication that the inbound electronic message comprises protected content," as recited in independent claim 7. 10 Appeal2015-005819 Application 13/690,174 The Examiner did not err in finding the combination of Sethi and Just teaches "rewriting envelope information for the inbound electronic message," as recited in dependent claim 8. SUMMARY The Examiner's decision to reject claims 1-5, 14, 16, 17, 20-23, and 28-30 under 35 U.S.C. § 103(a) as obvious over the combination of Gupte and Kulkarni is affirmed. The Examiner's decision to reject claims 6, 15, and 19 under 35 U.S.C. § 103(a) as obvious over the combination of Gupte, Kulkarni, and Goldstone is affirmed. The Examiner's decision to reject claims 7-11 and 24--26 under 35 U.S.C. § 103(a) as obvious over the combination of Sethi and Just is affirmed. The Examiner's decision to reject claims 12 and 13 under 35 U.S.C. § 103(a) as obvious over the combination of Sethi, Just, and Linehan is affirmed. The Examiner's decision to reject claim 18 under 35 U.S.C. § 103(a) as obvious over the combination of Gupte, Kulkarni, and Sethi is affirmed. The Examiner's decision to reject claim 27 under 35 U.S.C. § 103(a) as obvious over the combination of Sethi, Just, and Stoye is affirmed. 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 11 Copy with citationCopy as parenthetical citation