Ex Parte Mulder

Patent Trial and Appeal Board

Oct 30, 2017

13962096 (P.T.A.B. Oct. 30, 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.
13/962,096 08/08/2013 Matthew Mulder WS___ 18 9139
59830 7590 11/01/2017
TED SABETY, c/o Sabety +associates, PLLC
830 Third Avenue
5 th Floor
New York, NY 10022
EXAMINER
TRAN, BAOTRAM
ART UNIT PAPER NUMBER
2433
NOTIFICATION DATE DELIVERY MODE
11/01/2017 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):
TED@SABETY.NET
eofficeaction @ appcoll.com
docket@ sabety.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW MULDER
Appeal 2017-006379
Application 13/962,0961
Technology Center 2400
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, 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—15 and 19—33. Appellant has previously canceled
claims 16—18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellant, the real party in interest is Workshare, Ltd. App.
Br. 2. (We note Appellant's Briefs lack pagination, so we have numbered
the Briefs for ease of reference).
Appeal 2017-006379
Application 13/962,096
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed embodiments and claimed invention "relate[] to
the field of digital document management and security. More particularly,
the present invention relates to methods and systems for determining
whether the transmission of a document on a computer network would
comply with security policies set by the system operator." Spec. 12.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases added to contested limitations):
1. A method executed by a computer system for
securing an electronic message comprised of data stored on the
computer system, that is in the state of being composed as a
result of a user operating a computer program running on said
computer comprising:
automatically detecting a change in at least one of a
plurality of predetermined conditions of the data representing
the electronic message while the electronic message is being
composed;
in response to the automatic detection, applying at least
one security policy rule to the data representing the electronic
message while the electronic message remains in the state of
being composed, said at least one security policy being selected
by the computer system in dependence on which of the plurality
of predetermined conditions was detected as having been
changed.
2 Our Decision relies upon Appellant's Revised Appeal Brief ("App. Br.,"
filed Mar. 21, 2016); Reply Brief ("Reply Br.," filed Mar. 9, 2017);
Examiner's Answer ("Ans.," mailed Jan. 10, 2017); Final Office Action
("Final Act.," mailed July 21, 2015); and the original Specification ("Spec.,"
filed Aug. 8, 2013).
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Application 13/962,096
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Starikov US 2005/0268327A1 Dec. 1,2005
Broussard et al. ("Broussard") US 2008/0235760A1 Sept. 25, 2008
Rejections on Appeal
Rl. Claims 1—3, 13, 19—21, and 31 stand rejected under 35 U.S.C.
§ 112(b) as being indefinite. Final Act. 5.3
R2. Claims 1—6, 8—15, 19-24, and 26—33 stand rejected under 35
U.S.C. § 102(a)(1) as being anticipated over Broussard. Final Act. 7.4
R3. Claims 7 and 25 stand rejected under 35 U.S.C. § 103 as being
obvious over the combined teachings and suggestions of Broussard and
Starikov. Final Act. 15.
3 Although Appellant filed an After Final Amendment dated March 16,
2016 under 37 C.F.R. § 1.116, making amendments to the claims to
overcome the indefmiteness rejection, the Examiner denied entry of the
amendment.
4 As previously noted, claims 16—18 were cancelled. Accordingly, we have
corrected the claims listed in the explicit statement of the Examiner’s
anticipation Rejection R2. See Final. Act. 7.
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Appeal 2017-006379
Application 13/962,096
ISSUES AND ANALYSIS
1. $ 112(b) Indefiniteness Rejection R1 of Claims 1—3, 13, 19-21, & 31
Issue 1
The Final Action rejects claims 1—3, 13, 19—21, and 31 under 35
U.S.C. § 112(b). Final Act. 5. Appellant does not present any arguments
regarding this rejection in the Briefs. Arguments not made are waived.5
For these reasons, we summarily affirm Rejection R1 of claims 1—3,
13, 19-21, and 31 under § 112(b).6
2. $ 102 Rejection R2 of Claims 1—6, 8—15, 19-24, and 26—33
Issue 2
Appellant argues (App. Br. 11—18; Reply Br. 2—7) the Examiner's
rejection of claim 1 under 35 U.S.C. § 102(a)(1) as being anticipated by
Broussard is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art expressly or
inherently discloses "[a] method executed by a computer system for securing
an electronic message comprised of data stored on the computer system, that
is in the state of being composed as a result of a user operating a computer
program running on said computer" that includes, inter alia, the step of
"securing an electronic message comprised of data stored on the computer
5 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
6 In the event of further prosecution, we invite the Examiner's attention to
whether claims 4—12, 14, 15, 22—30, 32, and 33, depending from the rejected
base claims, should also be rejected under § 112(b).
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Application 13/962,096
system, that is in the state of being composed," as recited in claim 1
(emphasis added)?
Analysis
Based upon our review of the record, we find a preponderance of the
evidence supports particular arguments advanced by Appellant with respect
to the § 102 rejection of independent claims 1 and 19, for the specific
reasons discussed below. We highlight and address specific findings and
arguments for emphasis as follows.
Anticipation of a claim under 35 U.S.C. § 102 occurs when each
claimed element and the claimed arrangement or combination of those
elements is disclosed, inherently or expressly, by a single prior art reference.
Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir.
2010). A reference inherently discloses an element of a claim "if that
missing characteristic is necessarily present, or inherent, in the single
anticipating reference." Schering Corp. v. Geneva Pharms., 339 F.3d 1373,
1377 (Fed. Cir. 2003) (citation omitted) (emphasis added).
Further, under § 102, the prior art reference "must not only disclose
all elements . . . within the four comers of the document, but must also
disclose those elements arranged as in the claim." Net Money IN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (citation and internal
quotation marks omitted). "Thus, it is not enough that the prior art reference
discloses part of the claimed invention, which an ordinary artisan might
supplement to make the whole, or that it includes multiple, distinct teachings
that the artisan might somehow combine to achieve the claimed invention."
Id. at 1371 (underlining added).
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Appellant contends, "[t]he Examiner mistakes that checking an email
message data file 'prior to distribution' necessarily means during the period
that the email message is being composed by the user using a computer
program." App. Br. 12. Appellant specifically contends "Broussard's
disclosure describes searching an email message that is a completed data
file, not while it is being composed." App. Br. 13.
We agree with the Appellant that the Examiner has not adequately
shown how Broussard discloses the disputed limitation as required to
support an anticipation rejection. The Examiner finds Broussard's
verification mechanism possibly being implemented at a client side and
operating local to the electronic mail program 1010 discloses the disputed
limitation "message .. . that is in the state of being composed." Ans. 3—7.
We disagree with the Examiner's finding because the composition of
Broussard's email is finished before it is sent to the security engine.
Broussard 1122, Fig. 10, box 1020. We find Broussard's verification
mechanism being completed at the client side does not disclose the disputed
limitation. Therefore, we find, the Examiner's interpretation is unreasonable
and inconsistent with the plain language of the claim.
We disagree with the Examiner's claim construction because "the PTO
must give claims their broadest reasonable construction consistent with the
specification^ . . . claims should always be read in light of the specification
and teachings in the underlying patent." In re Suitco Surface, Inc., 603 F.3d
1255, 1259-60 (Fed. Cir. 2010) (internal citations and quotation omitted).
We find one of ordinary skill in the art, in light of the Specification and plain
meaning of the claim language, would have understood an email "that is in
the state of being composed" as distinct from Broussard's completed email
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ready to be sent to the security engine. We conclude the Examiner construes
the disputed limitation too broadly by including emails that are in the
process of being composed within its scope. Nor has the Examiner cited to
any evidence of record to allow for broadening the ordinary meaning of "is
in the state of being composed" in light of the disclosure of the
Specification.
Accordingly, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the disclosure of
Broussard to disclose the dispositive limitation of claim 1, such that we find
error in the Examiner's resulting finding of anticipation. Therefore, we are
constrained on this record to reverse the Examiner's anticipation rejection of
independent claim 1. For the same reasons, we reverse the Examiner's
rejection of independent claim 19, which recites the disputed limitation in
commensurate form. Similarly, we also reverse the rejection of dependent
claims 2—6, 8—15,
20—24, and 26—33 that variously depend from claims 1 and 19, and which
are also subject to anticipation Rejection R2.
§ 103(a) Rejection R3 of Claims 7 and 25
In light of our reversal of the rejection of independent claims 1
and 19, supra, we also reverse obviousness Rejection R3 under § 103 of
claims 7 and 25, which variously and ultimately depend from claims 1 and
19. On this record, the Examiner has not shown how the additionally cited
Starikov reference overcomes the aforementioned deficiencies with
Broussard, as discussed above regarding claims 1 and 19.
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CONCLUSIONS
(1) Based upon waiver, we sustain Rejection R1 of claims 1—3, 13,
19-21, and 31 under 35 U.S.C. § 112(b). See 37 C.F.R. § 41.37(c)(l)(iv).
(2) The Examiner erred with respect to anticipation Rejection R2 of
claims 1—6, 8—15, 19-24, and 26—33 under 35 U.S.C. § 102(a)(1) over the
cited prior art of record, and we do not sustain the rejection.
(3) The Examiner erred with respect to obviousness Rejection R3
of claims 7 and 25 under 35 U.S.C. § 103(a) over the cited prior art
combination of record, and we do not sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1—3, 13, 19—21,
and 31 under 35 U.S.C. § 112(b).
We reverse the Examiner's decision rejecting claims 1—6, 8—15,
19-24, and 26-33 under 35 U.S.C. § 102(a)(1).
We reverse the Examiner's decision rejecting claims 7 and 25 under
35 U.S.C. § 103(a).
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. § 41.50(f).
AFFIRMED-IN-PART
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