Matthew Mulder et al.

Patent Trials and Appeals Board

Sep 22, 2020

2019000054 (P.T.A.B. Sep. 22, 2020)

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.
13/333,605 12/21/2011 Matthew Mulder 087762-000153CIP1 7972
70001 7590 09/22/2020
NIXON PEABODY LLP
70 WEST MADISON STREET
SUITE 3500
CHICAGO, IL 60602
EXAMINER
HUYNH, THU V
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
09/22/2020 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):
docketingchicago@nixonpeabody.com
ipairlink@nixonpeabody.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte MATTHEW MULDER and JOHN SAFA
____________________

Appeal 2019-000054
Application 13/333,605
Technology Center 2100
____________________

Before JOHN P. PINKERTON, CARL L. SILVERMAN, and
JASON M. REPKO, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–31, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Workshare, Ltd. as the real party in
interest. Appeal Br. 2.
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STATEMENT OF THE CASE
Introduction
Appellant generally describes the disclosed and claimed invention as
providing “a mechanism whereby a group of people operating individual
computer devices can view and share and collaboratively edit an electronic
document stored in a remote data repository.” Spec. ¶ 2.2
Claim 1 is the only independent claim and is reproduced below (with
formatting changes added):
1. A computer system for providing access to documents
comprised of:
a first server comprised of a first computer memory
device, said first computer memory device comprised of data
embodying a document
a second server in communication by a data network with
said first server and in further communication with a remote
device,
said remote device further comprised of a
receiving module adapted by logic to receive from the second
server data representing directory listings comprised of a data
referencing a document,
a first transmitting module adapted by logic to
transmit to the second server a data message containing a
request comprised of the reference to the document,

2 Our Decision refers to the Final Office Action mailed Sept. 21, 2017
(“Final Act.”); the Appeal Brief filed May 8, 2018 (“Appeal Br.”); the
Examiner’s Answer mailed July 27, 2018 (“Ans.”); the Reply Brief filed
Sept. 27, 2019 (“Reply Br.”); and the original Specification filed Dec. 21,
2011 (“Spec.”). The pages of the Appeal Brief and the Reply Brief are not
numbered. We consider the title page of each brief to be numbered page 1
and the following pages to be numbered consecutively thereafter.

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said second server being comprised of an authentication
module adapted by logic to authenticate the request received
from the remote device by executing a first security protocol
between the remote device and the second server to determine a
first authenticated logic state associated with the received
document request and in response to the first authenticated
logic state, execute a second security protocol between the first
server and the second server to determine a second
authenticated logic state for the received document request, and
in response to the second authenticated logic state,
transmit to the first server a request for the referenced
document, where the first server is further comprised of a
second transmitting module adapted by logic to transmit the
referenced document to the second server.
Appeal Br. 23 (Claims App.).
References
Name Patent or Publication
Number
Date
Skarbo et al.
(“Skarbo”)
US 6,317,777 B1 Nov. 13, 2001
Teugels et al.
(“Teugels”)
US 7,958,101 B1 June 7, 2011
Zilka US 8,117,225 B1 Feb. 14, 2012
Felsher et al.
(“Felsher”)
US 8,316,237 B1 Nov. 20, 2012
Cavage et al.
(“Cavage”)
US 8,776,190 B1 July 8, 2014
Saether et al.
(“Saether”)
US 2001/0042073 A1 Nov. 15, 2001
Sharif et al. (“Sharif”) US 2003/0009528 A1 Jan. 9, 2003
Yoshida et al.
(“Yoshida”)
US 2006/0277229 A1 Dec. 7, 2006
Zhang US 2007/0179967 A1 Aug. 2, 2007
Saito US 2009/0319480 A1 Dec. 24, 2009
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Ravi et al. (“Ravi”) US 2010/0064004 A1 Mar. 11, 2010
Egnor US 2010/0076985 A1 Mar. 25, 2010
Sharma et al.
(“Sharma”)
US 2010/0174826 A1 July 8, 2010
Heineken US 2011/0035655 A1 Feb. 10, 2011
Park US 2011/0125806 A1 May 26, 2011
Hebbar et al.
(“Hebbar”)
US 2014/0032489 A1 Jan. 30, 2014

Rejections on Appeal3
Claims 1, 3–5, 8, 13, 14–17, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Teugels, Sharma, Saito, and Felsher.
Claims 2 and 27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Teugels, Sharma, Saito, Felsher, Cavage, and Park.
Claims 6, 7, 9, and 10 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Teugels, Sharma, Saito, Felsher, and Saether.
Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Teugels, Sharma, Saito, Felsher, Saether, Egnor, and
Heineken.
Claims 18 and 26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Teugels, Sharma, Saito, Felsher, and Zilka.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Teugels, Sharma, Saito, Felsher, and Zhang.

3 The Examiner rejected claims 1–31 under 35 U.S.C. § 101 because the
system of claim 1 “appears to be software per se,” which is not statutory
subject matter. Final Act. 3. However, the Examiner subsequently
withdrew this rejection. Ans. 19.
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Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Teugels, Sharma, Saito, Felsher, and Yoshida.
Claims 23–25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Teugels, Sharma, Saito, Felsher, Ravi, Skarbo, and Zilka.
Claim 28 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Teugels, Sharma, Saito, Felsher, and Hebbar.
Claims 29–31 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Teugels, Sharma, Saito, Felsher, and Sharif.
ANALYSIS
The dispositive issue raised by the arguments in Appellant’s briefs is
whether the combination of Teugels, Sharma, Saito, and Felsher teaches or
suggests the limitation, in response to the first authenticated logic state,
“execute a second security protocol between the first server and the second
server to determine a second authenticated logic state for the received
document request,” as recited in claim 1 (hereinafter, “the disputed
limitation”).
The Examiner rejected independent claim 1 under 35 U.S.C. § 103(a)
as being unpatentable over Teugels, Sharma, Saito, and Felsher. Final Act.
2–4. The Examiner finds that Teugels’s disclosure of content addressable
storage (“CAS”) system 509 that stores a plurality of content units teaches
“a first server comprised of a first computer memory device, said first
computer memory device comprised of data embodying a document.” Final
Act. 4 (citing Teugels, Fig. 5B); Ans. 22 (citing Teugels 10:12–13, 10:48–
49). The Examiner also finds that Teugels’s disclosure of appliance 517 in
communication by a data network with CAS system 509 and in further
communication with user device 501 teaches “a second server in
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communication by a data network with said first server and in further
communication with a remote device.” Ans. 22 (citing Teugels 11:31–58).
The Examiner further finds that Teugels does not teach
the second server being comprised of an authentication module
adapted by logic to authenticate the request received from the
remote device by executing a first security protocol between the
remote device and the second server to determine a first
authenticated logic state associated with the received document
request; and in response to the first authenticated logic state,
execute second security protocol between the first server and the
second server to determine a second authenticated logic state for
the received document request.
Final Act. 5 (emphasis added). With respect to these limitations, the
Examiner finds that Sharma’s disclosure of network server 103 teaches
“second server being comprised of an authentication module” to authenticate
a document request from a client and, if the request is valid, determine if the
type of document request is authorized. Final Act. 5 (citing Sharma, Figs. 1,
2; ¶¶ 31–36). The Examiner also finds that Saito teaches “second server
being comprised of an authentication module” to execute a first security
protocol between the remote device and the second server. Id. at 6 (citing
Saito, Fig. 7; ¶ 94 (“server 30”)). The Examiner further finds that Felsher
teaches “authentication between parties to ensure . . . each of the parties is
[the] intended party to communicate/send data” and, therefore, Felsher
teaches “second security protocol between the first server and the second
server.” Id. (citing Felsher, Fig. 3; 28:30–45); Ans. 26 (citing Felsher, Fig.
3; 28:30–45; 29:3–6). Moreover, the Examiner finds that “the combination
of Felsher, Sharma, and Teugels teaches authentication between servers to
verify intended parties/servers.” Ans. 26 (emphasis omitted) (citing Felsher
29:3–6).
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In response to Appellant’s arguments that “Sharma does not disclose a
security protocol . . . conducted between a ‘first server’ and “second server’
as claimed” (see Appeal Br. 14–16), the Examiner, in the Answer, relies on
Figure 3 of Sharma, in addition to Figure 1, and finds that Sharma’s
disclosure of application server 301 in communication with “Web server
305, which similar to the network server 103 of Fig. 1 performs security
processing via a digital certificate authenticator 306 for performing a first
security procedure” (emphasis omitted) teaches “second server . . .
comprised of an authentication module adapted by logic to authenticate the
request received from the remote device by executing a first security
protocol.” Ans. 23–24 (citing Sharma, Fig. 3; ¶ 41). The Examiner also
finds that Sharma’s disclosure of application server 301 in communication
with Web server 305, which performs security processing via a “so-called
SiteMinder agent 307 [and Policy Server] for performing a second security
procedure” teaches in response to the first authenticated logic state “execute
second security protocol to determine a second authenticated logic state for
the document request.” Id. at 24–25 (citing Sharma ¶¶ 31–33, 41).
In the Appeal Brief, Appellant argues that Sharma fails to disclose
“execute a second security protocol between the first server and the second
server to determine a second authenticated logic state” because “Sharma’s
second security test is performed by the ‘policy server”—as is the first
security test.” Appeal Br. 15–16. In response to this argument, the
Examiner states that, as explained, Sharma teaches “first security protocol
(using digital certificate authenticator 306) and second security protocol
(SiteMinder Agent 307 and Policy Server).” Ans. 25. The Examiner then
states that “[b]esides using digital certificate authenticator 306 to
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authenticate user request to verify exchange of information is permitted,”
Sharma teaches application server 3014 has a “module to perform ‘Digital
Certificate Manager’ function.” Id. at 25–26 (citing Sharma, Fig. 3, ¶ 37).
However, the Examiner acknowledges that “Sharma does not explicitly
describe how the Digital Certificate Manager function authenticate[s]
between first server 301 and second server 305.” Id. at 26.
Appellant argues that the ‘“Network file server’ of Teugels and the
‘CAS System’ are all components of the same server with one file system--
they are not two logically distinct servers, that is, they do not disclose the
‘first server’ and ‘second server’ as recited in Appellant’s claims.” Appeal
Br. 11–13; Reply Br. 2–4. Appellant also argues that Sharma fails to
disclose “that a ‘request’ is passed to a ‘second security protocol between
the first server and the second server to determine a second authenticated
logic state”’ because “Sharma’s second security test is performed by the
‘policy server’—as is the first security test.” Appeal Br. 15 (citing Sharma,
Fig. 2). Appellant further argues that neither Felsher nor Saito disclose a
security protocol between the first server and second server as claimed. Id.
at 16–19.
We are persuaded by Appellant’s arguments that the Examiner erred.
Even assuming that Teugels’s disclosure of CAS system 509 teaches the
claimed “first server” and that Teugels’s disclosure of appliance 517 in
communication by a data network with CAS system 509, and in further
communication with user device 501, teaches the claimed “second server,”

4 The Examiner refers to “application server 310,” but we believe this is a
mistake because, in Sharma’s Figure 3, the application server is designated
301 and no component is designated as 310. Ans. 25.
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we find the Examiner has not demonstrated by a preponderance of the
evidence that the combination of Teugels, Sharma, Felsher, and Saito
teaches or suggests the disputed limitation.
First, the Examiner fails to demonstrate that application server 105 in
communication with network server 103, as shown in Figure 1 of Sharma, or
that application server 301 in communication with web server 305, as shown
in Figure 3 of Sharma, teaches or suggests the disputed limitation because,
as Appellant argues, “Sharma’s second security test is performed by the
‘policy server’—as is the first security test.” Appeal Br. 15. Regarding
Figure 1, Sharma discloses authenticating a request for information on a
particular user from the external aggregator 101 in a two-step process. In
the first check, Sharma discloses that network server 103 “sends the digital
certificate [from the external aggregator] to the policy server 113” to
determine whether the external aggregator is a valid or authorized requester.
Sharma ¶ 31. In an optional second security check to determine if the type
of information requested is the type the user is authorized to access, Sharma
discloses that the user’s credentials are “forwarded from the network server
103 to the policy server 113, which verifies whether the user is permitted to
access the type of information requested.” Sharma ¶ 32. Thus, we agree
with Appellant’s argument that the application server of Sharma “does no
authentication,” but is passed a request at step 208 of Figure 2 that has
already been authenticated with respect to the type of information requested
at step 206 by the “policy server.” Appeal Br. 16. Similarly, in regard to
Figure 3, Sharma discloses that application server 301 is in communication
with web server 305, which, similar to the network server 103 of Fig. 1,
performs security processing . . . as discussed above.” Sharma ¶ 41
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(emphasis added). Figure 3 depicts SiteMinder Policy Server in
communication with web server 305. Thus, like application server 105 in
Figure 1, application server 301 in Figure 3 does no authentication, but is
passed a request that has been authenticated by the “policy server.”
Second, as discussed above, in response to Appellant’s arguments that
Sharma’s security authentication is performed by the policy server, rather
than the application servers, the Examiner further finds that Sharma’s
application server 301 includes a “module to perform ‘Digital Certificate
Manager’ function.” Ans. 25–26 (citing Sharma, Fig. 3, ¶ 37). This finding
is unsupported and unconvincing, however, because as mentioned above, the
Examiner specifically acknowledges that “Sharma does not explicitly
describe how the Digital Certificate Manager function authenticates between
first server 301 and second server 305.” Id. at 26.
Third, with respect to Felsher and Saito, for the reasons stated by
Appellant, we determine the Examiner has not provided persuasive evidence
or technical reasoning demonstrating that either Felsher or Saito teaches or
suggests “execute a second security protocol between the first server and the
second server to determine a second authenticated logic state for the
received document request,” as recited in claim 1. See Appeal Br. 16–19.
We also fail to discern how either Felsher or Saito teaches or suggests the
disputed limitation. Thus, we determine that the Examiner has failed to
show that the combination of Teugels, Sharma, Felsher, and Saito teaches or
suggests the disputed limitation of claim 1.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 103(a). For the same reasons, we
do not sustain the Examiner’s rejection of dependent claims 2–31. Cf. In re
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Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are
nonobvious if the independent claims from which they depend are
nonobvious”).
DECISION
We reverse the Examiner’s rejection of claims 1–31 under 35 U.S.C.
§ 103(a).
SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–5, 8,
13, 14–17,
22
103(a) Teugels, Sharma,
Saito, Felsher
1, 3–5, 8,
13, 14–17,
22
2, 27 103(a) Teugels, Sharma,
Saito, Felsher,
Cavage, Park
2, 27
6, 7, 9, 10 103(a) Teugels, Sharma,
Saito, Felsher,
Saether
6, 7, 9, 10
11, 12 103(a) Teugels, Sharma,
Saito, Felsher,
Saether, Egnor,
Heineken
11, 12
18, 26 103(a) Teugels, Sharma,
Saito, Felsher,
Zilka
18, 26
19 103(a) Teugels, Sharma,
Saito, Felsher,
Zhang
19
21 103(a) Teugels, Sharma,
Saito, Felsher,
Yoshida
21
23–25 103(a) Teugels, Sharma,
Saito, Felsher,
Ravi, Skarbo, Zilka
23–25
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28 103(a) Teugels, Sharma,
Saito, Felsher,
Hebbar
28
29–31 103(a) Teugels, Sharma,
Saito, Felsher,
Sharif
29–31
Overall
Outcome
1–31

REVERSED