Ex Parte Baker et al

Patent Trial and Appeal BoardOct 22, 2012

09825431 (P.T.A.B. Oct. 22, 2012)

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. 09/825,431 04/03/2001 Stuart D. Baker 209.1001 2071 7590 10/22/2012 DAVIDSON, DAVIDSON & KAPPEL, LLC 485 Seventh Avenue, 14th Floor New York, NY 10018 EXAMINER HUTTON JR, WILLIAM D ART UNIT PAPER NUMBER 2176 MAIL DATE DELIVERY MODE 10/22/2012 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 STUART D. BAKER and PHILIP C. STRASSBURGER _____________ Appeal 2010-012454 Application 09/825,431 Technology Center 2100 ______________ Before JAMESON LEE, HOWARD B. BLANKENSHIP, and BRIAN F. MOORE, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-012454 Application 09/825,431 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1- 27, 41-59 and 71-73. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE the Examiner’s rejection of these claims. INVENTION The invention is directed to the field of electronically created documents, including electronic mail (“e-mail”) messaging, and to the field of e-mail routing. See Spec. [0001]. Claims 1 and 18 are representative of the invention and reproduced below: 1. A digital communication system to denote confidentiality of a digital communication comprising: a first memory containing a program executable by a processor to: attach a privileged attribute to a digital communication, the privileged attribute selected by the creator of the digital communication before the digital communication is sent; and create a privileged distribution list of at least one intended recipient and associate the privileged distribution list with the digital communication when the digital communication is created; and a second memory containing a program executable by a processor to: restrict access to the privileged digital communication to the at least one intended recipient according to the privileged distribution list; restrict routing of the privileged digital communication to the intended recipients and prevent Appeal 2010-012454 Application 09/825,431 3 forwarding of the digital communication to an unintended recipient; and store the privileged digital communication in a segregated location for privileged digital communications on a data storage device, wherein the intended recipients are selected by the creator of the digital communication before the digital communication is sent. 18. A digital communication system for denoting confidentiality of a digital communication comprising: a processor; and a memory containing a program executable by the processor to attach an executable module to a digital communication when the digital communication is created, the executable module constructed and arranged to: create a privileged distribution list of intended recipients of the digital communication to which it is attached when the digital communication is created; restrict access to the digital communication to which it is attached to the intended recipients; and restrict routing of the digital communication to which it is attached to the intended recipients and prevent forwarding of the digital communication to an unintended recipient, wherein the intended recipients are selected by the creator of the digital communication before the digital communication is sent. REFERENCES TURNBULL US 6,092,201 Jul. 18, 2000 DICKINSON, III US 2003/0196098 A1 Oct. 16, 2003 LIU US 6,760,752 B1 Jul. 6, 2004 Appeal 2010-012454 Application 09/825,431 4 REJECTIONS AT ISSUE Claims 1-2, 12, 17-18, 23, 25, 26, 49, 53, 56-59, and 71-72 were rejected as unpatentable under 35 U.S.C. §103(a) as being obvious over the combination of Turnbull and Liu. Ans. 4-7. Claims 3-11, 13-16, 19-22, 24, 27, 41-48, 50-52, 54-55, and 73 were rejected as unpatentable under 35 U.S.C. §103(a) as being obvious over the combination of Turnbull, Liu and Dickinson. Ans. 7-20. ISSUES Did the Examiner incorrectly determine that: 1. Lui discloses “store the privileged digital communication in a segregated location for privileged digital communications on a data storage device” recited in claim 1; 2. Turnbull discloses “a program executable by the processor to attach an executable module to a digital communication” recited in claim 18?1 ANALYSIS 35 U.S.C. § 103(a) – Turnbull and Liu Claim 1-2, 12, 17-18, 23, 25, 26, 49, 53, 56-59, and 71-72 Appellants’ arguments have persuaded us of error in the Examiner’s rejection of claims 1-2, 12, 17-18, 23, 25, 26, 49, 53, 56-59, and 71-72. 1 Appellant make additional arguments regarding many of the pending claims. App. Br. 8-29. We do not reach these additional issues since these two issues are dispositive of the case. Appeal 2010-012454 Application 09/825,431 5 Claim 1 recites “stor[ing] the privileged digital communication in a segregated location for privileged digital communications on a data storage device.” Appellants argue that while Lui does disclose storing a private key, a private key is not a “privileged digital communication” and Lui does not disclose storing “privileged digital communication” in a segregated location. App. Br. 9 (citing Lui, col. 6, ll. 32-45; col. 21, ll. 11-14). We are persuaded by this argument. The Examiner finds that Lui discloses storing a privileged communication in a key server as shown in “figure 1, figure 2B, 258 where a message is transmitted to a key server.” Ans. 21-22. We disagree. The specification recites that “a server object on a mail sever stores privileged emails in a segregated location on a server.” Spec. ¶ [0019] (emphasis added). The message sent to the key server is not an email. Step 258 of Figure 2b recites “Generate Send Message Request and Transmit to Key Server.” Lui, figure 2B, 258. At best, Lui discloses that the “send message request” includes “the E-mail address (or hash of the E-mail address) of the recipient, the E-mail address (or hash of the E-mail address) of the sender and the hash of the message to be sent.” Lui, col. 16, ll. 15-25 (emphasis added). However, the “send message request” does not include the email message itself. The Examiner finds that “the key server of Liu discloses storing secure emails on the server . . . ” (Ans. 21-22). In addition to the send message request, the key server also stores “public keys and status information” (Lui, col. 3, ll. 12-14). However, public keys and status information do not include the email message itself. Thus, for the reasons above, we find the Examiner has not cited to any teaching or suggestion in Appeal 2010-012454 Application 09/825,431 6 Lui of storing privileged emails on the key server. Thus, we do not sustain the Examiner’s rejection of claim 1. Claim 18 Claim 18 recites “a program executable by the processor to attach an executable module to a digital communication.” Appellants argue that “Appellants were not able to find a mention or a description of such a module in the Turnbull patent or the Liu patent.” App. Br. 13. We are persuaded by this argument. The Examiner argues that “column 3, lines 52- column 4, lines 1-5 [of Turnbull] . . . discuss[es] an executable module for performing the method steps of claim 1.” (Ans. 26). The section of Turnbull cited by the Examiner recites: An end-user that has administrative responsibilities for other end-users is referred to as an administrator. The programming instructions executed by the end-users will described below [sic] stored in memory 28-32 and may, for example, be based on encryption software such as Entrust/Client manufactured by Entrust Technologies, Limited. The memory 28-32 may be read-only memory, random access memory, hard drive memory, floppy disk memory, magnetic tape memory, or any other means for storing digital information. Turnbull, col. 3, l. 52 – col. 4, l. 5. We do not find any reference to, or teaching or suggestion of, attaching an executable module to an email in the above paragraph relied on by the Examiner or any other portion of Turnbull cited by the Examiner. Thus, we do not sustain the Examiner’s rejection of claim 18. Appeal 2010-012454 Application 09/825,431 7 Summary For the reasons stated above, we do not sustain the Examiner’s 35 U.S.C. § 103(a) rejection of independent claims 1 and 18, independent claims 49, 57, 71, and 72 which contain essentially the same limitations, and claims 2, 12, 17-18, 23, 25, 26, 49, 53, 56, 58, and 59 dependent thereon, as unpatentable over the combination of Turnbull and Lui. 35 U.S.C. § 103(a) – Turnbull, Liu and Dickinson Claims 3-11, 13-16, 19-22, 24, 27, 41-48, 50-52, 54-55, and 73 The Examiner’s rejection of independent claim 41 under 35 U.S.C. § 103(a) as unpatentable over Turnbull, Liu and Dickinson cites to the same sections of Lui and Turnbull to show essentially the same limitations as those discussed above. See Ans. 8-9. For the same reasons as discussed supra, we do not sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claims 41 and claims 3-11, 13-16, 19-22, 24, 27, 42-48, 50-52, 54-55, and 73 (which depend from claim 41 or certain of the independent claim discussed above) over Turnbull, Liu and Dickinson. DECISION The Examiner’s decision to reject claims 1- 27, 41-59 and 71-73 is reversed. REVERSED ke