Ex Parte DOGU et al

Patent Trial and Appeal Board

Dec 18, 2018

14042732 (P.T.A.B. Dec. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/042,732 10/01/2013
95765 7590 12/20/2018
Adam S. Langley
c/o RYUKA USA LLP
111 North Market Street
Suite 300
San Jose, CA 95113
FIRST NAMED INVENTOR
ToshioDOGU
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.
DGA-0006US 6456
EXAMINER
KIM,TAEK
ART UNIT PAPER NUMBER
2492
NOTIFICATION DATE DELIVERY MODE
12/20/2018 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):
usdocket@ryuka.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOSHIO DOGU and NORIYUKI TAKAHASHI
Appeal2017-002020
Application 14/042,732
Technology Center 2492
Before JEFFREYS. SMITH, IRVINE. BRANCH, and AMBER L. HAGY,
Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-002020
Application 14/042,732
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-10, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Representative Claim
1. An electronic file transmission system comprising:
a data acquiring section, included in or in communication with
a first communication terminal, that acquires data including an
electronic file that is created or attached by the first
communication terminal and transmitted to a second
communication terminal via a network;
an extracting section, included in or in communication with the
first communication terminal, that extracts from the data the
electronic file and rec1p1ent identification information
identifying a correct recipient of the electronic file;
an encoding section, included in or in communication with the
first communication terminal, that encodes the extracted
electronic file; and
a management information transmitting section, included in or
in communication with the first communication terminal, that
transmits, via the network and not via the second
communication terminal, a pass phrase needed to decode the
encoded electronic file, first file identification information
identifying the encoded electronic file, and the recipient
identification information to a pass phrase management
apparatus so as to make the pass phrase available to the correct
recipient through subsequent transmission of the pass phrase
from the pass phrase management apparatus to the second
communication terminal via the network.
2
Appeal2017-002020
Application 14/042,732
Kouznetsov
Drudis
Prior Art
US 2004/0268137 Al
US 2009/0016538 Al
Examiner's Rejection
Dec. 30, 2004
Jan. 15,2009
Claims 1-10 stand rejected under 35 U.S.C. § 103 as unpatentable
over Kouznetsov and Drudis.
ANALYSIS
We adopt the findings of fact and conclusions of law made by the
Examiner in the Final Action and Examiner's Answer as our own. We
affirm the rejection for the reasons given in the Examiner's Answer. 1, 2 We
highlight the following for emphasis.
We agree with the Examiner that paragraph 92 of Kouznetsov teaches
sending an email with an encrypted file that includes encrypted content and
a decryption key to a server, and that the server obtains the decryption key
from the encrypted file. We agree that Drudis teaches sending an encrypted
email to a receiver (i-f 51 ), and sending a decryption key to a server in a
1 In the event of further prosecution, the Examiner should consider whether
Japanese Application Publication Number 2010-154419 (submitted in an
Information Disclosure Statement on Nov. 2, 2013), alone or in combination
with the art of record, renders the claims obvious. The Abstract teaches
transmitting an email with an encrypted file to a receiver, transmitting a
decryption password to a server, and transmitting the decryption password
from the server to the receiver.
2 In the event of further prosecution, the Examiner should also consider
whether any of the art cited in the rejections from the Japanese Patent Office
(submitted in Information Disclosure Statements on Oct. 6, 2014, Feb. 23,
2015, and Nov. 2, 2015) renders the claims obvious.
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Appeal2017-002020
Application 14/042,732
separate email (i-f 62). Drudis teaches a benefit of sending the key to the
server is obtaining payment from the receiver, before sending the decryption
key to the receiver (i1i152-54). A person of ordinary skill would have
encrypted a file before sending it to a receiver as taught by Kouznetsov, and
would have sent the decryption key to a server as taught by Drudis, for the
benefit of obtaining payment from the receiver as taught by Drudis.
Appellant contends that modifying the server of Kouznetsov to
receive a key from a sender as taught by Drudis would change its principle
of operation, because storing a large number of keys for a large number of
senders would be unnecessary and detrimental. Reply Br. 8-16. However,
Appellant agrees with the Examiner that the combination would work for a
single sender. Reply Br. 9 ("As correctly pointed out in the Examiner's
Answer, the 'one or two' in the Appeal Brief refers to the simple example of
a single sender."). "It is enough that the combination would sometimes
perform all the [ claimed functions], including" for a single sender. See
Unwired Planet, LLC v. Google, Inc., 841 F.3d 995, 1002 (Fed. Cir. 2016).
Further, Appellant does not provide persuasive evidence showing that
the server's principle of operation for storing keys would change if the
server needed to store a large number of keys, especially in light of Drudis' s
teaching of storing keys at a server. Appellant's allegations that the server
taught by the combination of Kouznetsov and Drudis needs to store a lot of
data but is unable to do so (Reply Br. 8-16) is attorney argument,
unsupported by evidence. Attorney argument is not evidence. In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Nor can it take the place of
evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 782
(CCPA 1977).
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Appeal2017-002020
Application 14/042,732
DECISION
The Examiner's rejection 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). See 37
C.F.R. § 4I.50(f).
AFFIRMED
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