Ex Parte Marshall et al

Patent Trial and Appeal Board

Apr 25, 2017

13907932 (P.T.A.B. Apr. 25, 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.
13/907,932 06/02/2013 John Marshall W025.CIP1 9529
7590
AirWatch LLC
Darryl Smith
3401 Hill view Ave
Palo Alto, CA 94304
EXAMINER
SALAD, ABDULLAHI ELMI
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
04/27/2017 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):
pp@air-watch.com
ipteam @ vmware. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN MARSHALL and WILLIAM DeWEESE
Appeal 2016-007275
Application 13/907,9321
Technology Center 2400
Before HUNG H. BUI, IRVIN E. BRANCH, and SHARON FENICK,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1, 12, 15, 21—28, 30-36, 38, and 39,
which are all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.2
1 According to Appellants, the real party in interest is AirWatch LLC. App.
Br. 2.
2 Our Decision refers to Appellants’ Appeal Brief filed November 3, 2015
(“App. Br.”); Reply Brief filed July 21, 2016 (“Reply Br.”); Examiner’s
Answer mailed May 23, 2016 (“Ans.”); Final Office Action mailed June 12,
2015 (“Final Act.”); and original Specification filed June 2, 2013 (“Spec.”).
Appeal 2016-007275
Application 13/907,932
STATEMENT OF THE CASE
Appellants’ invention relates to “a method for providing shared
resource watermarking and management.” Spec. 10; Abstract. Appellants’
method, shown in Figure 4, is reproduced below:
^405 As shown in Figure 4, Appellants’
method includes:
(1) identifying requests to share
resources from a user device at step
410;
(2) identifying a watermark template
at step 415;
(3) associating the watermark template
with the resources at step 420; and
(4) authorizing the request to share the
resources from the user device at step
425.
Spec. 14, Abstract, Fig. 4.
Appellants’ Figure 4 shows a method of providing shared resource
watermarking and management.
Claims 1, 12, and 15 are independent. Representative claim 1 is
reproduced below with disputed limitations in italics:
1. A method comprising:
identifying, using a user device, a request to transmit at
least one resource;
responsive to the request to transmit the at least one
resource, identifying, using the user device, whether at least
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Application 13/907,932
one compliance rule specifies that the at least one resource is
required to be associated with at least one watermark template
in order for the user device to be authorized to transmit the at
least one resource;
responsive to identifying that the at least one compliance
rule specifies that the at least one resource is required to be
associated with the at least one watermark template in order
for the user device to be authorized to transmit the at least one
resource, identifying, using the user device, whether the at least
one watermark template is associated with the at least one
resource', and
responsive to identifying that the at least one watermark
template is not associated with the at least one resource'.
associating, using the user device, the at least one
watermark template with the at least one resource; and
adding, using the user device, data describing the at least
one resource to the at least one watermark template.
App. Br. 25 (Claims App’x).
Examiner’s Rejections and References
(1) Claims 1, 12, 15, 21—28, 30—36, 38, and 393 stand provisionally
rejected on the ground of nonstatutory obvious-type double patenting as
being unpatentable over claims 1—20 of co-pending application 13/907,930.
Final Act. 7.
(2) Claims 1, 12, 15, 21—25, 28, 30-36, 38, and 39 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Levy et al. (US
2013/0086466 Al; published Apr. 4, 2013; “Levy”) and Petrovic et al. (US
2013/0152210 Al; published June 13, 2013; “Petrovic”). Final Act. 8—14.
3 See Non-Final Action dated on September 13, 2013 for the obviousness-
type double patenting rejection.
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Application 13/907,932
(3) Claims 26 and 27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Levy and Official Notice. Final Act. 14.
Issue on Appeal
Based on Appellants’ arguments, the dispositive issue on appeal is
whether the prior art teaches or suggests several limitations of independent
claims 1, 12, and 15, including:
(1) “responsive to the request to transmit the at least one
resource, identifying, using the user device, whether at least one
compliance rule specifies that the at least one resource is required
to be associated with at least one watermark template in order for
the user device to be authorized to transmit the at least one
resource;”
(2) “responsive to identifying that the at least one
compliance rule specifies that the at least one resource is required
to be associated with the at least one watermark template in order
for the user device to be authorized to transmit the at least one
resource, identifying, using the user device, whether the at least
one watermark template is associated with the at least one
resource;” and
(3) “responsive to identifying that the at least one
watermark template is not associated with the at least one
resource:
[i] associating, using the user device, the at least
one watermark template with the at least one resource; and
[ii] adding, using the user device, data describing
the at least one resource to the at least one watermark
template.”
App. Br. 5—13; Reply Br. 4—11 (bracketing added).
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Application 13/907,932
ANALYSIS
At the outset, we note Appellants do not address the non-statutory
obviousness-type double patenting rejection of claims 1, 12, 15, 21—28, SO­
SO, 38, and 39 based on claims 1—20 of co-pending application 13/907,930.
As such, the final rejection of these claims on the ground of non-statutory
obviousness-type double patenting over claims 1—20 of co-pending
application 13/907,930 is sustained pro forma.
§ 103(a) Rejection of Claims 1, 12, 15, 21—28, 30—36, 38, and 39
based on Levy and Petrovic
In support of the rejection of independent claim 1, and similarly,
claims 12 and 15, the Examiner finds Levy teaches most aspects of
Appellants’ claimed method including:
[(1)] responsive to the request . . . identifying, using the
user device, whether at least one compliance rule specifies that
the at least one resource is required to be associated with at least
one watermark template in order for the user device to be
authorized to transmit the at least one resource;
(Final Act. 8 (emphasis omitted) (citing Levy H 26, 99-101, 123, 128—131,
207)) and
[(3)] responsive to identifying that the at least one
watermark template is not associated with the at least one
resource: [i] associating, using the user device, the at least one
watermark template with the at least one resource; and [ii]
adding, using the user device, data describing the at least one
resource to the at least one watermark template.
(Final Act. 8-9 (citing Levy 1121-22, 33-34,14-15, 79-80, 116-121,
212)).
The Examiner acknowledges Levy does not explicitly teach, but relies
on Petrovic for teaching:
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Application 13/907,932
[(2)] “responsive to identifying that the at least one
compliance rule specifies that the at least one resource is required
to be associated with the at least one watermark template in order
for the user device to be authorized to transmit the at least one
resource, identifying, using the user device, whether the at least
one watermark template is associated with the at least one
resource
to support the conclusion of obviousness. Final Act. 9 (citing Petrovic
11 138, 146,159, Fig. 7).
Appellants dispute the Examiner’s factual findings regarding Levy
and Petrovic. First, Appellants contend Petrovic does not teach or suggest
the disputed limitation:
responsive to identifying that the at least one compliance
rule specifies that the at least one resource is required to be
associated with the at least one watermark template in order for
the user device to be authorized to transmit the at least one
resource, identifying, using the user device, whether the at least
one watermark template is associated with the at least one
resource
as recited in claims 1,12, and 15. App. Br. 7—8; Reply Br. 4—6. In
particular, Appellants acknowledge paragraphs 138 and 157 of Petrovic
describe the use of storage units 714, shown in Figure 7, to store
“compliance rules associated with the usage of embedded content [i.e.,
watermark] and the associated enforcement actions.” App. Br. 7—8.
However, Appellants argue Petrovic’s compliance rules are used to control
usage of content, and do not specify “that the at least one resource is
required to be associated with at least one watermark template in order for
the user device to be authorized to transmit the at least one resource,” as
recited in claims 1, 12, and 15. App. Br. 8; Reply Br. 4—6.
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Second, Appellants contend Levy does not teach or suggest the
disputed limitation:
responsive to the request . . . identifying, using the user
device, whether at least one compliance rule specifies that the at
least one resource is required to be associated with at least one
watermark template in order for the user device to be authorized
to transmit the at least one resource
as recited in claims 1, 12, and 15. App. Br. 8—9; Reply Br. 6—8. Appellants
acknowledge Levy’s system is used to detect a watermark, but argue
“Levy’s system does not identify whether a watermark template is
associated with a resource ‘responsive to identifying that the at least one
compliance rule specifies that the at least one resource is required to be
associated with the at least one watermark template’” as recited in the
claims. App. Br. 8—9 (citing Levy 126). According to Appellants, Levy’s
watermark acts as a persistent link to associated metadata, but does not
associate with a resource as recited in claims 1,12, and 15. Reply Br. 6—8.
Third, Appellants also contend Levy does not teach or suggest the
disputed limitation:
responsive to identifying that the at least one watermark
template is not associated with the at least one resource:
[i] associating, using the user device, the at least
one watermark template with the at least one resource; and
[ii] adding, using the user device, data describing
the at least one resource to the at least one watermark
template
as recited in claims 1, 12, and 15. App. Br. 9—11; Reply Br. 8—10. In
particular, Appellants acknowledge Levy teaches (1) a “watermark decoder”
used to search for the presence of watermarks in media objects and to
decode watermarks, and (2) an encoder used to embed a watermark, but
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argue Levy’s watermark decoder does not “associate^]... at least one
watermark template with ... at least one resource” and “add[]. . . data
describing the at least one resource to the at least one watermark template,”
as recited in the claims. App. Br. 9-11 (citing Levy 8, 33—34).
The Examiner responds that (1) Petrovic’s compliance rules specify at
least one resource to be associated with at least one watermark template in
the context of a user device accessing restricted resource (Ans. 3^4 (citing
Petrovic Tflf 138, 146, 159, Fig. 7)); and (2) Levy teaches the remaining
limitations in the context of (i) Levy’s system checking whether a watermark
is present (Ans. 4 (citing Levy 1 8)); (ii) Levy’s watermark acting “as a
persistent link to associated metadata as the media object travels through
different systems, gets coded/decoded, gets modified, deleted etc.” (Ans. 4
(citing Levy Tflf 34, 58, 79)); and (iii)
Levy describes an instance where if watermark template is not
associated with the at least one resource the watermark module,
may invoking the appropriate decoder by extracting the type
parameter from the resource object and passing it and a reference
to the media object to the core module via the API. The API
routes the request to the appropriate core module, which in turn,
extracts the watermark. That is the watermark detector may be
used to extract a watermark bearing a content identifier inferring
if watermark is associated with the resource.
Ans. 6 (citing Levy 74—75, 212).
We do not agree with the Examiner. As recognized by Appellants,
neither Levy’s compliance rules used to control usage of content nor Levy’s
enforcement rules are considered the same as Appellants’ claimed
“compliance rule [that] specifies that the at least one resource is required to
be associated with at least one watermark template in order for the user
device to be authorized to transmit the at least one resource,” as recited in
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claims 1, 12, and 15. App. Br. 8; Reply Br. 4—6. Similarly, “whether or not
Levy’s ‘watermark act[s] as a persistent link to associated metadata as the
media object travels through different systems,’ has no bearing on the
above-quoted elements of claim 1.” Reply Br. 8. Likewise, Levy’s
watermark decoder is merely used to decode watermarks and does not
“associate]... at least one watermark template with ... at least one
resource” and “add[] . . . data describing the at least one resource to the at
least one watermark template,” as recited in claims 1,12, and 15. Reply Br.
9 (citing Levy 133).
Because Levy and Petrovic fail to teach or suggest the disputed
limitations of Appellants’ claims 1, 12, and 15, we decline to sustain the
Examiner’s obviousness rejection of independent claims 1, 12, and 15 and
their respective dependent claims 21—28, 30-36, 38, and 39.
OTHER ISSUES
In the event of further prosecution, we recommend the Examiner
claims 1,12, and 15 under 35U.S.C. § 112, first paragraph, as lacking
written description.
In particular, Appellants’ claim 1 recites, inter alia:
(1) “responsive to the request to transmit the at least one
resource, identifying, using the user device, whether at least one
compliance rule specifies that the at least one resource is required
to be associated with at least one watermark template in order for
the user device to be authorized to transmit the at least one
resource;”
(2) “responsive to identifying that the at least one
compliance rule specifies that the at least one resource is required
to be associated with the at least one watermark template in order
for the user device to be authorized to transmit the at least one
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resource, identifying, using the user device, whether the at least
one watermark template is associated with the at least one
resource;” and
(3) “responsive to identifying that the at least one
watermark template is not associated with the at least one
resource:
[i] associating, using the user device, the at least
one watermark template with the at least one resource; and
[ii] adding, using the user device, data describing
the at least one resource to the at least one watermark
template.”
Independent claims 12 and 15 recite similar limitations. Appellants
assert (1) paragraphs 25, 28, 30, 34, 44, and 49 of Appellants’ Specification
provide support for the first limitation; (2) paragraphs 21, 28, 31, 34, 44, and
49 of Appellants’ Specification provide support for the second limitation; and
(3) paragraphs 21—26, 28, 30, 32, 47-48, 53, Figure 3 at step 320, and Figure
4 at step 420 provide support for the third limitation. Appeal Br. 2—3.
However, these cited paragraphs of Appellants’ Specification do not support
what Appellants assert.
For example, paragraphs 25, 28, 30, 34, 44, and 49 of Appellants’
Specification do not teach or support the teaching that the user device
“identifying” “whether at least one compliance rule specifies that the at least
one resource is required to be associated with at least one watermark
template” in response to “the request to transmit the at least one resource” as
recited in claims 1,12, and 15. Instead, paragraph 25 of Appellants’
Specification describes “a watermark template 156 [shown in Figure 1]” as
including certain “static descriptive data.” Paragraph 28 of Appellants’
Specification describes the type of “resource” that may be “watermarked.”
Paragraph 30 of Appellants’ Specification describes how “watermark
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templates 156 may be associated with resources 154.” Paragraph 34 of
Appellants’ Specification describes “compliance rules 158 [shown in Figure
1]” used to “specify that certain resources 154 must be associated and/or
united with certain watermark templates 156 before certain user devices 100
may be authorized to perform certain actions on certain resources 154,” and
provides examples of such compliance rules including “encryption, metadata,
and/or file extensions.” Similarly, paragraph 44 of Appellants’ Specification
describes how “compliance rules 158 [shown in Figure 1]” are transmitted
from compliance server 230 to user device 100, via a network 240, shown in
Figure 2. None of these paragraphs referred to by Appellants supports the
limitation recited in claims 1,12, and 15.
Likewise, step 320 of Figure 3 and step 420 of Figure 4 only show the
association between a watermark template and a resource. None of the cited
paragraphs 21—26, 28, 30, 32, 47-48, and 53 of Appellants’ Specification
support the limitation:
responsive to identifying that the at least one watermark template
is not associated with the at least one resource: [i] associating,
using the user device, the at least one watermark template with
the at least one resource; and [ii] adding, using the user device,
data describing the at least one resource to the at least one
watermark template,
as recited in claims 1, 12, and 15.
Because there is no support of the disputed limitations, as discussed,
we recommend the Examiner consider rejecting claims 1,12, and 15, as
currently presented, under 35 U.S.C. § 112, first paragraph, as lacking written
description.
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DECISION
We AFFIRM the Examiner’s final rejection of claims 1, 12, 15, 21—
28, 30-36, 38, and 39 on the ground of non-statutory obvious-type double
patenting as being unpatentable over claims 1—20 of co-pending application
13/907,930. However, we REVERSE the Examiner’s final rejection of
claims 1, 12, 15, 21—28, 30-36, 38, and 39 under 35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. §
41.50(a)(1).
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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