Ex Parte Helak et al

Patent Trial and Appeal Board

Apr 26, 2017

13621491 (P.T.A.B. Apr. 26, 2017)

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.
13/621,491 09/17/2012 Dustin A. Helak TUC920120146US1 7701
65384 7590 04/28/2017
TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP
IBM Tucson
P.O. BOX 203518
AUSTIN, TX 78720
EXAMINER
LEUNG, ROBERT B
ART UNIT PAPER NUMBER
2494
NOTIFICATION DATE DELIVERY MODE
04/28/2017 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):
tmunoz @ tcchlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DUSTIN A. HELAK, DAVID C. REED,
THOMAS C. REED, and MAX D. SMITH
Appeal 2017-001282
Application 13/621,4911
Technology Center 2400
Before ST. JOHN COURTENAY III, CATHERINE SHIANG, and
JOHN D. HAMANN, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1, 2, 4, 5, 7, 8, 10, 11, 13, 14, 16, and
17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE CLAIMED INVENTION
Appellants’ claimed invention relates to “a remote inventory manager
for use with computer operations.” Spec. 11. Claim 1 is illustrative of the
1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 1.
Appeal 2017-001282
Application 13/621,491
subject matter of the appeal and is reproduced below.
1. A method for managing access to information provided
by a client to an entity, the method comprising:
executing a documentation inventory manager by an
entity, the documentation inventory manager comprising an
access module;
providing the information from the client to the entity via
the access module, the information comprising a client data set;
ensuring, via the access module, that the information is
only created once at a storage location of the entity;
after the information is accessed by the entity,
configuring the information within the storage location to be no
longer be readable so as to ensure that the client data set is only
read once, the configuring comprising performing a remove
operation on the client data set;
encrypting the information provided from the client to
the entity before providing the information to the entity; and,
storing the encrypted information to the storage location
of the entity via the access module; and wherein
access to the encrypted information is only via the access
module, the access module restricting output from being sent to
unknown writers; and,
the access module interacts with a resource access
control facility (RACF) to control who has access to the
information.
REJECTION ON APPEAL
The Examiner rejected claims 1, 2, 4, 5, 7, 8, 10, 11, 13, 14, 16, and
17 under 35 U.S.C. § 103(a) as being unpatentable over the combination
Grupe (US 2002/0194470 Al; published Dec. 19, 2002) and Willman (US
2005/0257048 Al; published Nov. 17, 2005).
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner erred. In reaching our decision, we consider
all evidence presented and all arguments made by Appellants.
We disagree with Appellants’ arguments and we incorporate herein
and adopt as our own the findings, conclusions, and reasons set forth by the
Examiner in (1) the Feb. 4, 2016 Final Office Action (“Final Act.” 2—10)
and (2) the Aug. 25, 2016 Examiner’s Answer (“Ans.” 2—6). We highlight
and address, however, specific findings and arguments below for emphasis.
(1) Only created once and only read once
Appellants argue the combination of Grupe and Willman fails to teach
or suggest ensuring, via an access module, that information (i.e., a client data
set) “is only created once at a[n entity’s] storage location” and can be “only
read once” in accordance with the limitations of claims 1, 7, and 13. App.
Br. 3^4. Appellants argue the cited portions of Grupe instead “generally
discuss[] using access logic to prevent forwarding, printing and saving of a
decrypted file” after the entity renders the decrypted file, and “generally
relate[] to processing information provided via emails.” Id.
The Examiner finds, and we agree, that the combination, and Grupe in
particular, teaches or suggests the disputed limitation. Ans. 4. The
Examiner finds, and we agree, Grupe teaches or suggests an executable
application (i.e., “access module”) that accompanies an encrypted data file
(i.e., “client data set”) and controls access to the file. Id. (citing Grupe
1143—45, 49). More specifically, the Examiner finds, and we agree, the
application is executed by the entity that receives the encrypted data file “to
control the access, decryption, and rendering of the data file,” and that the
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application prevents any copying, saving, or forwarding of the file (i.e.,
“only created once at the storage location of the entity”). Id. (citing Grape
156 (teaching that the executable application “prevents the message from
being copied, forwarded, printed or saved, during rendering”); 1 57). We
also agree with the Examiner’s finding that when the rendering of the file is
terminated, the decrypted and encrypted data files are deleted (e.g.
configured to be only read once). Id. (citing Grape H 49, 54, 56—57); see
also Grape 1 57 (teaching providing a “message indicating that the
confidential information will be rendered only once and asking the recipient
if he wants to proceed”).
Furthermore, we find Appellants’ arguments do not persuasively
address why the Examiner’s specific findings of what Grape teaches or
suggests are incorrect, and largely just recite the language of the claim and
assert that Grape does not disclose that limitation. See 37 C.F.R. §
41.37(c)(l)(iv) (“A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”);
see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that “the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art”).
(2) Via the access module
Appellants argue the combination of Grape and Willman, and
Willman in particular, fails to teach or suggest “storing the encrypted
information to the storage location of the entity via the access module” and
“access to the encrypted information is only via the access module, the
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Application 13/621,491
access module restricting output from being sent to unknown writers,” in
accordance with the limitations of claims 1, 7, and 13. App. Br. 4.
Appellants argue the cited portions of Willman “generally disclose a file
locker and a protected storage facility,” but “nowhere within Willman is
there any disclosure or suggestion of the disputed limitations.” Id.
The Examiner finds the combination of Grupe and Willman teaches
the disputed limitations. Ans. 5. The Examiner finds Willman teaches or
suggests “a protected storage facility that would have been incorporated into
the system of Grupe. Access to the storage facility is enforced by a file
locker. The file locker receives files from software and uses the protected
storage facility to seal (e.g. protect within a trusted environment) those files
. . . .” Id. (citing Willman || 34, 36). The Examiner also finds Willman’s
Figure 3 teaches “a software object 310 writes out data 301 to a file 306,
which is provided to a file locker 302 and securely stored in a protected
storage facility 206. Access to the file is controlled by the file locker and
only given to authorized entities.” Id. (citing Willman 140, Fig. 3). The
Examiner finds Willman, thus, teaches or suggests “features for limiting
access of encrypted information to only authorized object - thus,
unauthorized objects, or ‘unknown writers’ as recited in the claims, would
not be allowed access.” Id.
Appellants’ arguments do not persuasively address why the
Examiner’s specific findings of what the combination, and Willman in
particular, teaches or suggests are incorrect. Rather, Appellants simply
recite the language of the claim and assert that Willman does not disclose
that limitation, which is insufficient. See 37 C.F.R. § 41.37(c)(l)(iv) (“A
statement which merely points out what a claim recites will not be
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considered an argument for separate patentability of the claim.”); see also
Lovin, 652 F.3d at 1357.
(3) Documentation inventory manager and RACF
Appellants argue the combination of Grupe and Willman, and
Willman in particular, fails to teach or suggest “executing a documentation
inventory manager by an entity, the documentation inventory manager
comprising an access module” and “the access module interacts with a
resource access control facility (RACF) to control who has access to the
information,” in accordance with the limitations of claims 1, 7, and 13. App.
Br. 4; Reply Br. 1. According to Appellants, the Examiner cited portions of
Willman “generally disclose a file locker which uses sealed storage where
access to a file requires verification,” but “nowhere within Willman is there
any disclosure or suggestion of’ the disputed limitations. App. Br. 4 (citing
Willman H 35^10).
The Examiner finds that the combination of Grupe and Willman
teaches or suggests the disputed limitations. See Ans. 5—6; Final Act. 6—7.
For example, the Examiner finds that Grupe teaches or suggests an
executable application (i.e., “access module”) that, among other things,
controls access to the file. See Final Act. 5 (citing Grupe Tflf 44, 49); Ans. 5;
see also supra § 1. The Examiner also finds Willman teaches or suggests
secure storage and retrieval of data via a file locker (i.e., the RACF) that
“provides secure data storage for an entity, wherein only that entity has
access to that particular stored data.” Final Act. 6—7 (citing Willman H 1, 6,
34, 36-40).
Appellants’ arguments do not persuasively address why the
Examiner’s specific findings of what the combination, and Willman in
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Application 13/621,491
particular, teaches or suggests are incorrect. Rather, Appellants simply
recite the language of the claim and assert that Willman does not disclose
that limitation, which is insufficient. See 37 C.F.R. § 41.37(c)(l)(iv); see
also Lovin, 652 F.3d at 1357.
We also find Appellants have not shown good cause as to why any
arguments raised in the Reply Brief (see Reply Br. 1) that Willman fails to
teach or suggest the disputed limitations could not have been presented
earlier. As such, these arguments have not been considered, and are waived.
See Ex parte Borden, 93 USPQ2d 1473, 1473—74 (BPAI 2010) (informative)
(finding absent a showing of good cause, the Board is not required to
address arguments in Reply Brief that could have been presented in the
principal Appeal Brief).
CONCLUSION
Based on our findings above, we sustain the Examiner’s rejection of
claims 1, 7, and 13, as well as claims 2, 4, 5, 8, 10, 11, 14, 16, and 17, as
Appellants do not provide separate arguments for their patentability. See 37
C.F.R. §41.37(c)(l)(iv).
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Application 13/621,491
DECISION
We affirm the Examiner’s decision rejecting claims 1, 2, 4, 5, 7, 8, 10,
11,13, 14, 16, and 17.
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
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