Ex Parte Ashley et al

Patent Trial and Appeal Board

Nov 16, 2012

10976266 (P.T.A.B. Nov. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PAUL ANTHONY ASHLEY, SRIDHAR R. MUPPIDI, and
MARK VANDENWAUVER,
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Appeal 2010-004579
Application 10/976,266
Technology Center 2400
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Before ALLEN R. MacDONALD, BRYAN F. MOORE, and
LARRY J. HUME, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-004579
Application 10/976,266

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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows:
1. A method for processing data for a privacy policy within a
data processing system, the method comprising:
receiving, at a proxy, a first message from a server to a client;
and
in response to a determination at the proxy that the first
message initiates collection of personally identifiable information
from the client by the server, sending a second message from the
proxy to the client, wherein the second message requests consent from
a user of the client to a privacy policy that concerns management of
the personally identifiable information.

Examiner’s Rejection
The Examiner rejected claims 1-27 under 35 U.S.C. § 102(a) as being
anticipated by Feng (US 2004/0083243 Al).
Appellants’ Contention
Appellants contend that the Examiner erred in rejecting claims 1-27
because (emphasis omitted):
The Feng WSP does not intercept server-client messages,
and it does not perform the requisite determination of whether
the message being received from the server and intended for the
client “initiates collection” of such PII data from the client.
Rather, in Feng, the WSP is called directly by the WSC and
only prompts the end user (directly or via the WSC) when it is
Appeal 2010-004579
Application 10/976,266

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necessary to update the WSP’s local cache of WSC privacy
policies.
(App. Br. 16).

Issue on Appeal
Did the Examiner err in rejecting claims 1-27 as being anticipated
because Feng fails to disclose the argued limitation?

ANALYSIS
We agree with the Appellants’ above contention. The Examiner has
erred in finding that Feng anticipates the claims.
We particularly note the Examiner’s discussion at the last paragraph
of page 11 of the Answer. This discussion centers on what Appellants’
Specification shows is a well-known enterprise handling of personally
identifiable information. Such discussion might be appropriate for a
rejection under 35 U.S.C. § 103(a). However, we find no such rejection
before this panel.

CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1-27 as being anticipated under 35 U.S.C. § 102(a).
(2) On this record, claims 1-27 have not been shown to be
unpatentable.
Appeal 2010-004579
Application 10/976,266

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DECISION
The Examiner’s rejection of claims 1-27 is reversed.

REVERSED

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