10942431 (P.T.A.B. Jul. 8, 2014)

Ex Parte Keohane et al

Patent Trial and Appeal BoardJul 8, 2014

10942431 (P.T.A.B. Jul. 8, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/942,431 09/16/2004 Susann Marie Keohane AUS920040477US1 1882 61043 7590 07/09/2014 IBM CORPORATION (MH) c/o MITCH HARRIS, ATTORNEY AT LAW, L.L.C. P.O. BOX 7998 ATHENS, GA 30604 EXAMINER PILLAI, NAMITHA ART UNIT PAPER NUMBER 2143 MAIL DATE DELIVERY MODE 07/09/2014 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 SUSANN MARIE KEOHANE, GERALD FRANCIS McBREARTY, SHAWN PATRICK MULLEN, JESSICA KELLEY MUNILLO, and JOHNNY MENG-HANSHIEH1 ____________ Appeal 2012-004883 Application 10/942,431 Technology Center 2100 ____________ Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and TINA E. HULSE, Administrative Patent Judges. HULSE, Administrative Patent Judge DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims relating to selectively masking the display of data field values in response to user input. The Examiner rejected the claims at issue as anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the Real Party in Interest as International Business Machines Corporation. (Br. 3.) Appeal 2012-004883 Application 10/942,431 2 STATEMENT OF THE CASE When using a computer system, information is typically presented to a user on a graphical or textual screen. (Spec. 1:26-28.) Information presented by the system generally must be displayed so the user may see the graphical display output. (Id. at 1:28-30) When the user inputs information, however, the graphical display is merely a reflection of the user input and provides confirmation that the input was made as intended. (Id. at 1:32-2:4.) With passwords, a mechanism called “masking” is typically used to secure the information from “over-the-shoulder” observation. (Id. at 2:6-8.) Masking typically hides the password by displaying a constant character such as an asterisk in the place of characters inputted by the user. (Id. at 2:8- 11.) Such masking is generally only practical when the inputted information is known to both the user and the system so the system can confirm whether the user inputted the masked information correctly. (Id. at 2:15-21.) Thus, according to the Specification, entry fields for new information are typically not masked. (Id. at 2:21-26.) The Specification then states that “it would be desirable to provide a method and system for masking data display fields to protect sensitive entry information while also providing for display of the entered information to the user.” (Id. at 2:28-31.) Accordingly, the claimed invention relates to a method and system for selectively masking the display of data field values in response to user input. (Id. at 1:10-11.) Claims 1-7, 21, and 23-34 are on appeal. (Br. 3.) Claim 1 is illustrative and is reproduced below: Appeal 2012-004883 Application 10/942,431 3 1. A method for selectively displaying sensitive information within at least one data field of a visual display, comprising: receiving a first user input to a masking state selection field separate from the at least one data field; setting a masking state of said at least one data field in response to said receiving said first user input, wherein the masking state specifies whether or not a display of data in the data field should be masked; receiving data for display in said at least one data field; displaying a masked representation of said data in said at least one data field of said visual display if said masking state is set to a first state indicating that the display of data in the data field should be masked; and displaying an unmasked representation of said data in said at least one data field of said visual display if said masking state is set to a second state indicating that the display of data in the at least one data field should not be masked. Claims 1, 2, 6, 21, 23, 24, 28, 30, and 31 stand rejected under 35 U.S.C. § 102(a) as anticipated by SplashID.2 (Answer 5-7.) Claims 3, 4, 22, 25, 26, 32, and 33 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over SplashID and Solimene.3 (Answer 7- 10.) The Examiner also rejected claims 7 and 29 under 35 U.S.C. § 103(a) as unpatentable over SplashID and “Mobile Merchant Center”4 (Answer 9- 10); and claims 5, 27, and 34 as unpatentable over SplashID, Solimene, and 2 “SplashID 3 Reviewer’s Guide,” dated June 19, 2004. 3 Solimene et al., US 5,828,376, issued October 27, 1998. 4 “Mobile Merchant CenterTM WAP Version User Guide, Version 0.8,” dated 2003. Appeal 2012-004883 Application 10/942,431 4 De Boor5 (Answer 10). Although Appellants did not specifically appeal these rejections, we understand that they are included in this appeal because Appellants stated that “Appellants appeal from all of the rejections of Claims 1-7, 21, and 23-34.” (Br. 3.) DISCUSSION The Examiner rejected each of the appealed claims as anticipated or rendered obvious by SplashID alone or in combination with other references. SplashID “safely and securely stores sensitive personal identification information . . . in a secure, encrypted database and is quickly accessible on a PDA, smartphone and/or desktop computer.” (SplashID 1.) Appellants’ sole argument on appeal is that SplashID does not constitute prior art to the claimed invention. (Br. 7.) During prosecution, Appellants provided three declarations under 37 C.F.R. § 1.131: (1) a declaration from the inventors stating that the claimed invention was conceived before March 22, 2004, as evidenced by an invention disclosure attached as Exhibit A (Keohane et al. Decl. ¶ 2); (2) a declaration from IBM’s in-house counsel stating that the invention disclosure was “entered into our system prior to March 22, 2004, as demonstrated in Exhibit A,” and that “[t]he disclosure was processed according to [IBM’s] internal procedure and sent to Attorney Andrew Mitchell Harris . . . for preparation of a U.S. Patent Application on June 14, 2004” (Baca Decl. ¶¶ 3-4); and (3) a declaration from IBM’s outside counsel stating that he received the invention disclosure “on or about June 18, 2004, which was 5 De Boor et al., US 6,173,316 B1, issued January 9, 2001. Appeal 2012-004883 Application 10/942,431 5 placed on my docket with at least 5 other patent applications in- process for preparation during the time period between June 18, 2004 and September 16, 2004” (Harris Decl. ¶ 2). The Examiner stated that “[t]here is not sufficient evidence . . . that the inventors and attorneys diligently pursued reduction to practice.” (Answer 11.) The Examiner further stated that “[t]he declaration does not clearly explain diligence by the Applicant from March 22, 2004 to June 18, 2004. The declaration does not include any factual evidence to support the period of March 22, 2004 to June 18, 2004.” (Id.) Appellants assert that the evidence provided in the declarations is sufficient to establish diligence, and that the Examiner has not provided a reason for the finding of non-diligence. (Br. 8-9.) We do not find Appellants’ assertion persuasive. 37 C.F.R. § 1.131(b) states that to swear behind a reference, “[t]he showing of facts shall be such, in character and weight, as to establish . . . conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application.” 37 C.F.R. § 1.131(b). The Examiner stated that there was “not enough factual evidence provided to prove Applicant’s statement of diligence.” (Answer 4.) We agree with the Examiner’s reasoning. The Baca Declaration merely states that the inventors’ disclosure was “processed according to [IBM’s] internal procedure” from some time before March 22, 2004, to June 14, 2004, when the disclosure was sent to outside counsel. (Baca Decl. ¶ 4.) Mr. Baca provides no explanation of what this internal processing entailed or why it took almost three months to complete. Without such an explanation, we Appeal 2012-004883 Application 10/942,431 6 agree with the Examiner that Appellants’ evidence is insufficient to establish diligence during the period of March 22, 2004, to June 18, 2004.6 Thus, we find that Appellants have not shown sufficient evidence to swear behind the SplashID reference and determine that the Examiner properly relied on SplashID to form the basis of the rejections. Because Appellants did not contest the substance of the rejections on appeal, Appellants have waived any such arguments. Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“When the appellant fails to contest a ground of rejection to the Board, . . . the Board may treat any argument with respect to that ground of rejection as waived.”). Accordingly, we affirm each of the Examiner’s rejections. Id. (“In the event of such a waiver, the PTO may affirm the rejection of the group of claims that the examiner rejected on that ground without considering the merits of those rejections.”). SUMMARY We affirm each of the Examiner’s rejections of claims 1-7, 21, and 23-34 on appeal. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED sl 6 We note that our reviewing court has affirmed a non-diligence finding where the attorney declaration provided more details than provided here. See In re Enhanced Security Research, LLC, 739 F.3d 1347, 1358 (Fed. Cir. 2014).