Ex Parte Donahue et al

Patent Trial and Appeal BoardDec 4, 2013

10699541 (P.T.A.B. Dec. 4, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/699,541 10/31/2003 James Donahue AD01.P569 3044 111003 7590 12/04/2013 Adobe / Finch & Maloney PLLC 50 Phillippe Cote Street Manchester, NH 03101 EXAMINER GOODARZI, NASSER MOAZZAMI ART UNIT PAPER NUMBER 2426 MAIL DATE DELIVERY MODE 12/04/2013 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 JAMES DONAHUE, JONATHAN D. HERBACH, and WILLIAM M. SHAPIRO ____________________ Appeal 2011-003209 Application 10/699,541 Technology Center 2400 ____________________ Before ALLEN R. MacDONALD, MIRIAM L. QUINN, and PATRICK M. BOUCHER, Administrative Patent Judges. BOUCHER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-003209 Application 10/699,541 2 STATEMENT OF THE CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1–48. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Illustrative Claim The claimed subject matter relates to securing and controlling access to documents (Spec. ¶1). Claim 1 is illustrative and is reproduced below with disputed limitations emphasized: 1. A method comprising: receiving, at a permissions-broker server, a request from a client to take an action with respect to an electronic document; identifying, at the permissions-broker server and in response to the request, first document-permissions information associated with the electronic document, the first document- permissions information being in a first permissions- definition format and defining types of actions authorized for the electronic document; translating, at the permissions-broker server, the identified first document-permissions information into second document-permissions information in a second permissions- definition format; and sending the second document-permissions information to the client to govern the action with respect to the electronic document at the client. Appeal 2011-003209 Application 10/699,541 3 References The prior art relied upon by the Examiner in rejecting the claims on appeal is: McGee US 6,694,434 B1 Feb. 17, 2004 Ouye Bluhm US 2003/0120601 A1 US 2004/0093323 A1 Jun. 26, 2003 May 13, 2004 Rejections The Examiner made the following rejections: Claims 1–45, 47, and 48 stand rejected under 35 U.S.C. § 103(a) as unpatentable over McGee and Bluhm (Ans. 3–11). Claim 46 stands rejected under 35 U.S.C. § 103(a) as unpatentable over McGee, Bluhm, and Ouye (Ans. 11–12). ANALYSIS Appellants contend that the Examiner has erred because Bluhm fails to teach or suggest “translating, at the permissions-broker server, the identified first document-permissions information into second document- permissions information in a second permissions-definition format,” as recited in independent claim 1, and as similarly recited in independent claims 16, 30, and 47 (App. Br. 7–9). We disagree that the Examiner has erred. The Examiner finds that McGee teaches each of the receiving, identifying, and sending steps recited in claim 1 (Ans. 4), and combines these teachings with Bluhm’s disclosure of translating one type of information into another type of information to find the claim unpatentable under 35 U.S.C. § 103(a) (Ans. 4). Appellants’ argument is not persuasive Appeal 2011-003209 Application 10/699,541 4 because it attacks Bluhm individually where the Examiner has relied on the combined teachings of McGee and Bluhm. The test for obviousness is what the combined teachings of the prior art would have suggested to the hypothetical person of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). While Appellants assert that “[t]he metadata described in Bluhm . . . cannot be considered to be ‘document-permissions information’” (App. Br. 7, emphasis omitted), Bluhm’s teaching value is found in its disclosure of translating between different types of information. Appellants also contend that Bluhm does not disclose “translating” metadata from a first format to a second format because “[t]ranslating from one format to another format is clearly a more specific process than the concept of modifying or changing metadata generally” (App. Br. 9, emphasis by Appellants). We are not persuaded by this contention because it does not afford “translating” the broadest reasonable construction consistent with the Specification. See In re Amer. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). As the Examiner notes, the enriched metadata taught by Bluhm results from translation into a new format that is used by the modified document format to control access (Ans. 14–15, citing Bluhm ¶¶ 35, 42, 67–68, and 266–267). Appellants offer no reasoning to support the bald assertion that “translating” is a more specific process than what is taught by Bluhm. We additionally observe that Appellants’ specific arguments distinguishing the teaching of Bluhm from the claim recitation are directed at the informational content of the first and second “document-permissions information”. But the specific informational character of the “document- permissions information” does not functionally affect the steps in the Appeal 2011-003209 Application 10/699,541 5 claimed methods. Rather, claim 1 recites an intended use of the information as “to govern the action with respect to the electronic document at the client” instead of a required step of “governing the action with respect to the electronic document at the client based on the second document-permissions information.” As such, Appellants’ contention relies on nonfunctional descriptive material to identify a distinction with the prior art. Such a distinction is not entitled to weight in the patentability analysis. See Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative), aff’d, No. 06-1003 (Fed. Cir. June 12, 2006) (Rule 36) (“wellness-related” data in databases and communicated on distributed network did not functionally change either the data storage system or the communication system used in the claimed method). “[N]onfunctional descriptive material cannot lend patentability to an invention that would have otherwise been [invalidated] by the prior art.” Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006) (citing In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)). See also Ex parte Nehls, 88 USPQ2d 1883, 1887–90 (BPAI 2008) (precedential) (discussing nonfunctional descriptive material). Appellants present separate arguments for claims 2, 17, 31, and 46 (App. Br. 10–11), but those arguments also rely on identifying similar distinctions from the prior art based on nonfunctional descriptive material. We accordingly sustain the rejections of claims 1–48. DECISION The Examiner’s decision rejecting claims 1–48 is affirmed. Appeal 2011-003209 Application 10/699,541 6 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED gvw