Ex Parte Herbach

Patent Trials and Appeals Board

Mar 22, 2013

11585418 - (D) (P.T.A.B. Mar. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JONATHAN D. HERBACH
1

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Appeal 2010-009716
Application 11/585,418
Technology Center 2100
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Before DAVID M. KOHUT, JASON V. MORGAN, and LARRY J. HUME,
Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
rejection of claims 1 and 4-37. Appellant has previously cancelled claims 2
and 3. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1
The Real Party in Interest is Adobe Systems Incorporated. (App. Br. 2.)
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STATEMENT OF THE CASE
2

The Invention
Appellant’s invention is directed to controlling access to data files.
Spec. p. 1, ¶ [0001].
Exemplary Claim
Claim 1 is an exemplary claim representing an aspect of the invention
which is reproduced below (emphasis added):
1. A method of provisioning access to a data file, the
method comprising:
using one or more processors to perform at least a portion
of one or more of the following acts of:
generating the data file;
generating a policy, the policy including one or more
unassigned accounts and an access control definition defining
an access permission associated with each of the one or more
unassigned accounts, the one or more unassigned accounts not
having an association with a user or an entity;
associating the policy with the data file;
embedding the policy within the data file;
associating a target user with a first unassigned account
of the one or more unassigned accounts; and

2
Our decision refers to Appellant’s Appeal Brief (“App. Br.,” filed
Mar. 16, 2010); Reply Brief (“Reply Br.,” filed June 15, 2010); Examiner’s
Answer (“Ans.,” mailed Apr. 21, 2010); Final Office Action (“FOA,” mailed
Oct. 29, 2009); and the original Specification (“Spec.,” filed Oct. 23, 2006).
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communicating authentication data pertaining to the first
unassigned account to the target user, the authentication data
used by the target user to access the data file.
Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Patterson US 6,122,741 Sep. 19, 2000
Ouye US 2003/0154381 A1 Aug. 14, 2003
Orchier US 6,070,244 May 30, 2000
Rejections on Appeal
3

1. Claims 1, 4-5, 10-11, 15-25, 30-32, and 35-37 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Ouye and Patterson. Ans. 4.
2. Claims 6-9, 12-14, 26-29, and 33-34 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Ouye,
Patterson, and Orchier. Ans. 20.
ISSUE
Appellant argues (App. Br. 11-13; Reply Br. 2-5) that the Examiner’s
unpatentability rejection of claim 1 under 35 U.S.C. § 103(a) over the

3
We note that the Examiner’s Answer incorrectly stated that the rejection of
claims 1, 4, 5, 10, 11, 15-25, 30-32, and 35-37 was based on anticipation by
Ouye (Ans. 4), but the detailed analysis of the rejection in the Answer (Ans.
4-19), the statement of the rejection in the Final Office Action (FOA 4-19),
and Appellant’s response (App. Br. 9) are consistent with an unpatentability
rejection, and not anticipation.
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combination of Ouye and Patterson is in error. These contentions present us
with the following issue:
Did the Examiner err in finding that the combination of Ouye
and Patterson teaches or suggests Appellant’s claimed method
of provisioning access to a data file, which includes, inter alia,
the step of “generating a policy, the policy including one or
more unassigned accounts . . . the one or more unassigned
accounts not having an association with a user or an entity,” as
recited in claim 1?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We agree with Appellant’s
conclusions with respect to claim 1, and we disagree with (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons and rebuttals set forth by the Examiner in the
Examiner’s Answer in response to Appellant’s Arguments (Ans. 4-7, 22-29).
We highlight and address specific findings and arguments regarding claim 1
for emphasis as follows.
Appellant contends that “neither Ouye nor Patterson nor, in turn, the
combination of Ouye in view of Patterson discloses ‘one or more unassigned
accounts not having an association with a user or an entity’ as recited in
independent claims 1, 16, 30, 35, and 37.” Reply Br. 4. We agree with
Appellant’s contentions.
The Examiner’s findings cited above do not address the specific
limitation of “one or more unassigned accounts not having an association
with a user or an entity,” as recited in independent claim 1. We do find that
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the reference combination teaches the use of templates defined for selected
application programs as follows:
The security administrator can manage the rights assigned to a
particular user by graphically moving rights back and forth
between the lists of assigned and unassigned rights.
Additionally, the security administrator can define templates
for selected application programs. A template comprises a
selected subset of rights for a selected application program.
The security administrator can assign a template to a user or a
defined group of users.
Patterson col. 2:8-15 (emphasis added).
However, we find that this teaching, in addition to the other portions
of Peterson cited by the Examiner (see Ans. 28 (citing Peterson col. 1:55-58;
col. 4:50-63 and 64-67; col. 5:1-9 and 41-61; col. 6:3-8; and Figs. 4, 7, and
8)), may not reasonably be interpreted to render obvious Appellant’s
recitation of “unassigned accounts not having an association with a user or
an entity.” We find no teaching or suggestion in the combination of Ouye
and Patterson that deals with, addresses, or even acknowledges the use of
unassigned accounts that are unassigned to a user, as required by claim 1
and, as discussed, for example, in Appellant’s disclosure. See Spec.
¶ [0019].
For the same reasons argued by Appellant (App. Br. 11-13; Reply Br.
2-5), we reverse the Examiner’s unpatentability rejection of independent
claim 1, and also the unpatentability rejections of independent claims 16, 30,
35, and 37, which recite the disputed limitation in commensurate form. For
the same reasons, we also reverse the various unpatentability rejections of
claims 4-15, 17-29, 31-34, and 36 that depend therefrom.
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CONCLUSIONS
The Examiner erred with respect to the unpatentability rejections of
claims 1 and 4-37, and we cannot sustain the rejections.
DECISION
The decision of the Examiner to reject claims 1 and 4-37 is reversed.
REVERSED

ELD