Ex Parte Guthrie et al

Patent Trial and Appeal Board

Apr 29, 2016

10943495 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
10/943,495
7590
Scott Haire
H.E.B., LLC
777 Main Street
Suite 3100
FILING DATE
09/17/2004
04/29/2016
Fort Worth, TX 76102
FIRST NAMED INVENTOR
Paul D. Guthrie
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
101217.00040 2284
EXAMINER
HOLDER, BRADLEY W
ART UNIT PAPER NUMBER
2439
MAILDATE DELIVERY MODE
04/29/2016 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 PAUL D. GUTHRIE, ANDREW L. DALE,
MICHAEL TOLSON, and CRISTOPHER L. BUCHANAN
Appeal2013-000137
Application 10/943,495
Technology Center 2400
Before LINZY T. McCARTNEY, KIMBERLY McGRAW, and
KEVIN C. TROCK, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection
of claims 9-14, 20, and 22-34. Claims 1-8, 15-19, and 21 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 We refer to Appellants' Specification filed September 17, 2004 ("Spec.");
Appeal Brief filed May 18, 2012 ("App. Br."); and Reply Brief filed
September 17, 2012 ("Reply Br."). We also refer to the Examiner's Non-
Final Action mailed October 18, 2011 ("Non-Final Act.") and Answer
mailed July 16, 2012 ("Ans.").
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STATEMENT OF THE CASE
The present application "relates ... to the secure management of
network-based communications using a distributed repository." Spec. i-f 2.
Claims 9, 11, 20, and 22 are independent. Claim 11 illustrates the claimed
subject matter:
11. A computer-based method for managing communication
notifications received by a recipient, the method comprising:
maintaining a repository of listings that comprise
information about communications that one or more senders are
securely storing and are providing permission to access; and
using at least a portion of one listing associated with one
accessible communication to communicate with a computer
server associated with the sender of the communication,
requesting to perform a permitted action with regard to the
communication, wherein the sender determines if the action is
permitted to the recipient.
REJECTIONS
Claims 11-14 and 22-34 stand rejected under 35 U.S.C.§ 112 i-f 2 as
indefinite for failing to particularly point out and distinctly claim the subject
matter that Appellants regard as the invention.
Claims 9, 10, 20, 22, 23, 26-30, and 32-34 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Rice (US 2002/0174010 Al; published
Nov. 21, 2002) and Gupta (US 2002/0099777 Al; published July 25, 2002).
Claims 11, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Rice and Horvitz (US 2005/0232423 Al; published Oct.
20, 2005).2
2 As noted by Appellants, a header in the Answer's "Response to
Argument" section indicates claims 11, 13, and 14 stand rejected under 3 5
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Application 10/943,495
Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Rice, Horvitz, and Bhat (US 2006/0095779 A9; published May 4,
2006).
Claims 24, 25, and 31 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Rice, Gupta, and Herrmann (US 2004/0167984 Al;
published Aug. 26, 2004).
ANALYSIS
We have considered the Examiner's rejections and the evidence
presented in light of Appellants' arguments. We find Appellants' arguments
unpersuasive. We adopt the findings, reasoning, and conclusions set forth in
the appealed action and the Examiner's Answer to the extent consistent with
the analysis below. We address Appellants' arguments in the order
presented.
§ 112 Rejections
Claims 11-14
The Examiner rejected independent claim 11under35 U.S.C. § 112
i-f 2 as indefinite because the claim lacks sufficient antecedent basis for "the
action." See Non-Final Act. 12. The Examiner also rejected claims 12-14
under 35 U.S.C. § 112 i-f 2 as dependent on claim 11. Id. Appellants
U.S.C. §103(a) over Rice and Bhat, not Rice and Horvitz as stated in the
Non-Final Action. See Reply Br. 4; Compare Ans. 6, with Non-Final Act.
23. We deem this harmless error. The substance of both the Answer and the
Non-Final Action make clear that claims 11, 13, and 14 stand rejected 35
U.S.C. §103(a) over Rice and Horvitz. See Non-Final Act. 23-25; Ans. 6-
10. Moreover, this error originates with Appellants: the relevant header in
Appellants' Appeal Brief states that claims 11, 13, and 14 stand rejected 3 5
U.S.C. § 103(a) over Rice and Bhat. App. Br. 10. The Examiner apparently
used this header in the Answer to facilitate finding the Examiner's response
to Appellants' arguments concerning these claims.
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contend the words "a permitted action" provides antecedent basis for "the
action." App. Br. 10.
We find Appellants' argument unpersuasive. As found by the
Examiner, "the action" may refer to either a permitted or a non-permitted
action. Ans. 3--4. Therefore, it is unclear whether "the action" refers to "the
permitted action." Moreover, on its face a "permitted action" is an action
that has already been permitted. One of skill in the art would not have
understood the words "if the action is permitted" to refer to an action that
has already been permitted. We therefore agree with the Examiner "the
action" lacks antecedent basis. Accordingly, we sustain this rejection.
Claims 22-34
The Examiner rejected independent claim 22 under 35 U.S.C. § 112
i-f 2 as indefinite because the claim lacks sufficient antecedent basis for "the
recipient server." See Non-Final Act. 12. The Examiner also rejected
claims 23-34 under 35 U.S.C. § 112 i-f 2 as dependent on claim 22. Id.
Appellants contend claim 22 provides sufficient antecedent basis for this
limitation because the claim recites "a computer server in a second network
associated with a recipient." App. Br. 10.
We find Appellants' arguments unpersuasive. A server "associated
with a recipient" is not necessarily a "recipient server." Accordingly, as
found by the Examiner, it is unclear which server "the recipient server"
refers to. See Non-Final Act. 12. We therefore sustain this rejection.
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§ 103 Rejections
Claim 11
Independent claim 11 recites "maintaining a repository of listings that
comprise information about communications that one or more senders are
securely storing and providing permission to access." Claim 11 also recites
"using at least a portion of one listing associated with one accessible
communication to communicate with a computer server associated with the
sender of the communication, requesting to perform a permitted action with
regard to the communication, wherein the sender determines if the action is
permitted to the recipient."
Appellants contend the Examiner's combination of Rice and Horvitz
does not teach or suggest claim 11 's "maintaining" and "using" steps. App.
Br. 11-13; Reply Br. 4--5. With respect to the "maintaining" step,
Appellants argue Rice's files are not "communications" and Rice's file
metadata is not "information about communications" because Rice's files
are not "communicated." See Reply Br. 4--5. Appellants also contend
Rice's file metadata is not "information about communications" because the
metadata does not change or provide information about the communications.
See id. at 5. Finally, Appellants argue Rice's file metadata cannot be the
claimed "repository of listings." Id. at 5.
We find these arguments unpersuasive. First, although
"communications" may ordinarily refer to data that has been transmitted,
Appellants' Specification makes clear the term includes data that may be
transmitted or data a user intends or wishes to share. Appellants'
Specification states that "[a ]s used herein, the term 'communication' is a
broad term" that includes "types of data that may be transmitted between
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users across computer-assisted networks," "documents and files intended as
communications from one use to another," and "data that a user wishes to
share, and possibly even modify together, with one or more other users."
Spec. i-f 25 (emphases added). And contrary to Appellants' arguments,
nothing in claim 11 's "maintaining" step explicitly requires the
"communications" be communicated. See Reply Br. 5. The term "senders"
recited in the "maintaining" step simply refers to entities "securely storing
and ... providing permission to access" the communications; the term does
not require communicating or transmitting the recited "communications."
Given this, the broadest reasonable interpretation of
"communications" in light of Appellants' Specification encompasses data
that has not been transmitted but may be, as well as data a user intends or
wishes to share. The Examiner found Rice teaches that users and clients
may download and save copies of files stored on a server. See Ans. 6-10,
16. Rice provides ample support for this finding. See, e.g., Rice i-fi-1 17, 110,
223, 242. Therefore, the Examiner has provided sufficient evidence to
establish that Rice's files are "communications" under both the broadest
reasonable construction of "communications" and Appellants' narrower
interpretation of the term.
Second, the Examiner found both Rice's file metadata and Rice's
"AppLinks" (a hyperlink) teach the claimed "information about
communications." See Ans. 6-8. Rice discloses that file metadata includes
"the location of the file, data about the file system ... storing the file, and
any necessary access information such as passwords," as well as "any other
standard or user-specified file-specific metadata such as file access
permissions, author/owner, last modified date, etc." Rice i-f 222. Similarly,
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Rice indicates Rice's App Links include a variety of security information
about their associated files. See, e.g., id. i-fi-1109-110; Fig. 3b. These
disclosures teach that Rice's file metadata and App Links include
information "about" their respective securely stored "communications," that
is, files.
Third, the Examiner found Rice discloses storing file metadata in a
database that serves as the claimed "repository." See, e.g., Ans. 6-7, 13-14.
Rice clearly supports this finding. See Rice i-f 117 (stating that file metadata
"could be stored with the file itself or separately in a file metadata
database"). Appellants' conclusory assertion does not explain why Rice's
file metadata database does not teach or suggest the claimed "repository of
listings." Moreover, the Examiner found Rice's AppLinks also teach the
claimed "information about communications." See Ans. 6-8. Rice discloses
storing a collection of AppLinks either locally or in a central database. See
Rice i1218. Appellants have not presented persuasive evidence or argument
that this collection of AppLinks fails to teach or suggest the claimed
"repository."
As for claim 11 's "using" step, Appellants contend Horvitz does not
disclose the claimed "communications" and again argue Rice does not teach
"information about communications." See App. Br. 12-13; Reply Br. 5.
Appellants also contend that "according to Rice, a sender of the
communication does not have any association with the file server on which
the file to which the recipient can access." App. Br. 12. Finally, Appellants
argue "the Examiner merely recites the claim language as being the teaching
or motivation to combine Rice with Horvitz, which is impermissible
hindsight." Id. at 13.
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We find Appellants' arguments unpersuasive. We find Appellants'
arguments that Rice does not teach or suggest "information about
communications" unpersuasive for the reasons discussed above. With
respect to Horvitz, the Examiner found a combination of Rice's and
Horvitz's teachings suggest claim 11 's "using" limitation. See Non-Final
Act. 23-25. Yet Appellants argue against Horvitz individually. "[O]ne
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on combinations of references." In re Keller,
642 F.2d 413, 426 (CCPA 1981).
Regarding the claimed "association," Appellants have provided no
persuasive evidence or argument that the word "associated" in "computer
server associated with the sender" requires a particular relationship between
the server and the sender. The server and sender in Rice's system are
"associated" with one another in that they are part of the same
communication system, which satisfies this limitation. See Rice i-fi-f 142--45;
Fig. 6; Ans. 16.
Finally, Appellants' assertion that the Examiner "merely recites the
claim language as being the teaching or motivation to combine Rice with
Horvitz" is incorrect. The Examiner found one of ordinary skill in the art
would have been motivated to combine Rice's and Horvitz's teachings in the
claimed manner because doing so would "provide users with an interactive
access process that allows a content owner to interact with a content
requestor and assign an appropriate access level to the content requestor."
Non-Final Act. 24--25 (citing Horvitz i-fi-f 19, 67). Appellants' arguments do
not address this finding, and we find it sufficient reason to combine the cited
references.
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For the above reasons, we sustain the Examiner's rejection of claim
11.
Claim 13
Dependent claim 13 recites "wherein requesting to perform a
permitted action comprises requesting to view a copy of the communication
on a secure viewer." Appellants contend that "[w]hile Rice does disclose
viewers ... no request is made by the recipient of Rice to view a copy of the
communication on a secure server." App. Br. 13. According to Appellants,
"[t]he Examiner improperly construes this limitation as 'allowing
unauthorized viewers to view a copy of a file on an unsecure viewer'" and
therefore the rejection must be reversed. Id.
We find Appellants' arguments unpersuasive. To the extent
Appellants contend Rice fails to teach a "communication," we find this
contention unavailing for the reasons discussed above. Moreover, the
Examiner did not construe claim 13 as "'allowing unauthorized viewers to
view a copy of a file on an unsecure viewer"' as argued by Appellants.
Instead, the Examiner found Rice discloses that authorized viewers can
securely view files and recipients can decrypt encrypted files for viewing.
See Non-Final Act. 25 (citing Rice i-fi-f 140, 156, 219; Fig. 3 lA). The
Examiner concluded these teachings, combined with Rice's and Horvitz's
teachings as applied to claim 11, suggest the limitations recited in claim 13.
See id. Appellants' unsupported assertions have not persuaded us the
Examiner erred. We therefore sustain this rejection.
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Claim 14
Dependent claim 14 recites "wherein requesting to perform a
permitted action comprises requesting to perform at least one action
including: storing an encrypted copy of the communication, listening to the
communication, forwarding the communication, copying the
communication, editing the communication, printing the communication,
and replying to the communication." Appellants contend "Rice discloses
certain functionality regarding access to files, but fails to disclose permitted
actions for communications, which claim 14 explicitly provides." App. Br.
13.
We find Appellants' arguments unpersuasive. To the extent
Appellants contend Rice does not teach the claimed subject matter because
Rice's files are not "communications," we disagree for the reasons discussed
above. The Examiner found-and we agree-Rice teaches that a user can
ask to perform several of the recited actions (e.g., printing, copying, and
editing) on files. See Non-Final Act. 25 (citing Rice i-fi-f 140, 156, 219); Ans.
11-12 (citing Rice i-fi-195, 97, 133, 140). We therefore sustain the
Examiner's rejection of claim 14.
Claim 9
Appellants contend Rice does not teach or suggest "a
communication," "storing an encrypted version of the communication," or
"sender metadata associated with the communication" as recited in
independent claim 9. App. Br. 14; Reply Br. 5. Appellants also argue
neither Rice nor Gupta teaches or suggests "a first repository maintained by
a sender for securely storing an encrypted version of a communication" or
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"a second repository maintained by the sender for storing sender metadata
associated with the communication" as recited this claim. App. Br. 14--16.
We find Appellants' arguments unpersuasive. For the reasons
discussed above, we agree with the Examiner that Rice's files and file
metadata are "communications" and "metadata associated with the
communications," respectively. As found by the Examiner, Rice teaches
storing encrypted files in a "central server" and file metadata "with the file
itself or separately in a file metadata database." See, e.g., Ans. 13-14
(quoting Rice i-fi-f 117, 129). Rice teaches that files may be "administered
and stored at the central server," Rice i-f 120, and that remote clients can
download and save copies of files stored at the central server, see, e.g.,
id. i-fi-f 17, 110, 114, 116, 117, 120, 129, 133, 139, 223, 242. Given this, we
agree with the Examiner that "it is reasonable to consider ... the repository
storing the shared files [is] maintained by the sender." See Ans. 15. The
Examiner also found-and we again agree-that because file metadata
contains information necessary to access stored files, Rice suggests the
sender also maintains the file metadata database. See id. at 14. Accordingly,
we agree with the Examiner that Rice teaches "a first repository maintained
by a sender for securely storing an encrypted version of a communication"
and "a second repository maintained by the sender for storing sender
metadata associated with the communication."
Claim 9 also recites "a communications system accessible to the
sender for sending recipient metadata associated with the communication to
a computer server associated with the recipient, wherein the recipient
metadata provides an indication the recipient server of how to access the
communication." Appellants contend Rice does not disclose the claimed
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"computer server associated with the recipient" and "recipient server"
because, in some embodiments, Rice's files never leave the corporate
network or the central server. App. Br. 14--15. Appellants also contend
Rice's metadata cannot be both the claimed "sender metadata" and
"recipient metadata." Reply Br. 6. With respect to Gupta, Appellants argue
Gupta does not teach "a communications system accessible to the sender for
sending recipient metadata associated with the communication" because
Gupta's URL is not "recipient metadata" and Gupta's recipient e-mail
system is not accessible Gupta's sender. App. Br. 15. Finally, Appellants
contend "Rice and Gupta cannot be combined in manner suggested by the
Examiner." Id. at 16.
We find Appellants' arguments unpersuasive. Regarding the claimed
"recipient server," even assuming Rice's files never leave a corporate
network, this does not establish that Rice does not teach or suggest a
"recipient server." Appellants have not identified anything in claim 9 or
Appellants' Specification that precludes the claimed system from being part
of, or wholly contained within, a corporate network. As found by the
Examiner, Rice teaches transferring files from one computer system to
another, and the receiving system suggests the claimed "computer server
associated with the recipient" and "recipient server." See, e.g., Ans. 16.
As for Appellants' argument that Rice's file metadata cannot be both
the "sender metadata" and "recipient metadata," Appellants waived this
argument by failing to present the argument in the Appeal Brief and failing
to show good cause for Appellants' untimely presentation of the argument.
See Ex parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010)
(informative). In any event, as discussed above, Rice teaches that file
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metadata may be stored with their associated files and copies of files may be
downloaded and saved by remote users. See, e.g., Rice i-fi-f 17, 107, 110, 116,
117, 120, 129, 133, 139, 223, 242. This suggests that two copies of the
metadata may exist: the original metadata associated with stored files and
the metadata associated with a copy of the file downloaded by a remote user.
These copies teach or suggest recited "sender metadata" and "recipient
metadata."
With respect to the claimed "communications system accessible to the
sender for sending recipient metadata associated with the communication,"
the Examiner found Rice teaches this portion of the claimed
"communications system," not Gupta. See Non-Final Act. 14. The
Examiner concluded a combination of Rice's and Gupta' teachings suggest
the claimed "communication system" as a whole, see id. at 14--15, and
Appellants' arguments against Gupta alone have not persuaded us the
Examiner erred. Keller, 642 F.2d at 426.
Finally, Appellants' argument Rice's and Gupta's teachings cannot be
combined in the claimed manner because, in Appellants' view, "Gupta does
not contemplate access to a secure file server that does not permit files to
leave a corporate network." App. Br. 16. According to Appellants, "the
collaborative electronic mail messages of Gupta are integrated into
traditional electronic mail on the client end, and cannot be used in
conjunction with the secure AppLink server of Rice." App. Br. 16. But
Appellants have not provided any persuasive evidence to support these
assertions. Accordingly, we find Appellants' argument unpersuasive.
For the above reasons, we sustain the Examiner's rejection of claim 9.
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Claim 10
Dependent claim 10 recites "the communication system is further
configured to receive a request from the recipient to receive a copy of the
communication, and upon authenticating the recipient, to transmit a copy of
the communication to the recipient." Appellants contend Rice does not
disclose a "communication" and the cited portions of Rice concern "direct
communication with a remote computer, and not a recipient server." App.
Br. 16.
We find Appellants' arguments unpersuasive. For the reasons
discussed above, we agree with the Examiner that Rice discloses a
"communication" and a "recipient server." And as found by the Examiner,
Rice discloses communicating with a recipient server. See Non-Final Act.
15 (citing Rice i-fi-fl l, 12, 107, 110, 111, 113, 219, 229; Figs. 30-33); Ans.
18. Accordingly, we sustain the Examiner's rejection of claim 10.
Claim 20
Appellants contend the Examiner's combination of Rice and Gupta
fails to teach or suggest the limitations recited in independent claim 20. App.
Br. 17; Reply Br. 6. In particular, Appellants argue Gupta discloses only a
single network and a single network service provider and therefore does not
teach or suggest the recited "first network service provider," "second network
service provider," "an associated first network" and "an associated second
network." See App. Br. 17; Reply Br. 6. Appellants also contend Gupta fails
to teach or suggest "transmit[ ting] at least a portion of the metadata to the
second network service provider" because Gupta's URL is part of the
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transmitted message and there is no second network service provider. See
App. Br. 17.
We find Appellants' arguments unpersuasive. Appellants apparently
contend Gupta cannot teach the recited networks and network providers
because claim 20 recites two networks and two network providers and
Appellants believe Gupta teaches, at best, one of each. See App. Br. 17; Reply
Br. 6. But the Examiner concluded the combination of Rice's and Gupta's
teachings suggest the claimed subject matter. See Non-Final Act. 16-18.
Therefore, even if Appellants were correct that Gupta teaches a single network
and a single network service provider, Appellants' arguments would not
persuade us the Examiner erred. Keller, 642 F.2d at 426.
Moreover, the Examiner found Gupta teaches an embodiment that
includes a plurality of networks and network service providers. See Ans. 18-
19 (citing Gupta i-fi-f 128-130; Figs. 11, 13). Appellants' argument that another
portion of Gupta indicates that some embodiments include a single network
service provider have not persuaded us this finding is erroneous. See Reply
Br. 6 (citing Gupta i1 96).
Finally, the Examiner found Rice teaches the claimed metadata and
concluded a combination of Rice's and Gupta's teachings suggest
"transmit[ ting] at least a portion of the metadata to the second network service
provider." See Non-Final Act. 16-17. Appellants' argument that Gupta alone
fails to teach this limitation have not persuaded us the Examiner erred. Keller,
642 F .2d at 426.
For the above reasons, we sustain the Examiner's rejection of claim 20.
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Claim 22
Independent claim 22 recites "a first repository," "a second repository,"
and "wherein the recipient metadata provides an indication to the recipient
server of how to access the communication." Appellants contend Gupta's
URL does not teach or suggest the recited "recipient metadata." App. Br. 18.
Appellants also assert the Examiner relies on a single Gupta e-mail server for
the claimed "first repository" and "second repository" and argue this server
cannot be both of the claimed repositories. Reply Br. 6. Finally, Appellants
contend "the Examiner failed to argue that Rice and Gupta could be modified
in any manner to provide [these] missing limitations," and in any event, Rice
and Gupta cannot be modified in the proposed manner "without destroying
their functionality." App. Br. 18.
We find Appellant's arguments unpersuasive. Contrary to Appellants'
arguments, the Examiner found a combination of Rice's and Gupta's
teachings disclose the claimed subject matter. See Non-Final Act. 18-20;
Ans. 19-20. Specifically, the Examiner found Rice discloses the recited "first
repository," "second repository," and "sending the recipient metadata ... to a
computer server in a second network." See Non-Final Act. 18-20; Ans. 19-
20. The Examiner found Gupta discloses the "recipient metadata provides an
indication to the recipient server of how to access the communication and
concluded a combination of Rice's and Gupta's teachings suggest the claimed
subject matter. See Non-Final Act. 18-19; Ans. 19-20. Appellants'
arguments against Gupta individually have not persuaded us the Examiner
erred. Keller, 642 F .2d at 426. And Appellants have not provided persuasive
evidence or reasoning to support their assertion that combining Rice and
Gupta would destroy their respective functionality. See App. Br. 18.
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Accordingly, Appellants arguments have not persuaded us the Examiner erred
and we sustain the Examiner's rejection of claim 22.
Claims 12, 23, 26, and 32
With respect to dependent claims 12, 23, 26, and 32, Appellants
essentially repeat arguments made in the context of claims 9, 11, 20, and 22,
among others. See App. Br. 18-19. We find these arguments unpersuasive
for the reasons discussed above.
Claim 27
Dependent claim 27 recites "a system for allowing the sender to revise
the communication and to transmit updated recipient metadata to notify the
recipient that the communication has been revised." Appellants contend Rice
fails to teach or suggestion limitation because Rice does not teach "a
communication, and there is no disclosure whatsoever of transmit updated
recipient metadata to notify the recipient that the communication has been
revised." App. Br. 19. Appellants also argue Gupta's URL "is not updated
recipient metadata that notifies a recipient that communication has been
revised." Id.
We find Appellants' arguments unpersuasive. For the reasons
discussed above, we find Appellants' arguments regarding the claimed
"communication" unpersuasive. With regard to Appellants' remaining
arguments, as found by the Examiner, Rice discloses that files "can be
changed at will by the sender, even after sending the AppLink, and the
recipient will always see the latest version." Ans. 22 (quoting Rice i-f 144)
(emphasis added). The Examiner concluded this teaching, combined with
Gupta's teachings concerning a collaborative messaging system, would have
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suggested the claimed limitations to one of ordinary skill in the art. Non-Final
Act 20-21; Ans. 21-22. Appellants arguments against Rice and Gupta
individually have not persuaded us the Examiner erred. Keller, 642 F .2d at
426. We therefore sustain the Examiner's rejection of claim 27.
Claims 28-30
Appellants contend dependent claims 28-30 each recite "means-plus-
function" limitations and assert the Examiner has not shown Rice or Gupta
teaches or suggests "the identical function and the same or an equivalent
structure as disclosed in the pending application" for each claim. App. Br.
19-20. But these conclusory assertions do not explain why the cited portions
of Rice and Gupta fail to teach or suggest the limitations recited in these
claims. Simply asserting the cited art fails to teach or suggest the claimed
limitations is generally insufficient to establish the Examiner erred. Cf 37
C.F.R. § 41.37 ("A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.");
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art."). We have reviewed the Examiner's rejections of claims 28-30,
see Non-Final Act. 21; Ans. 22-24, and Appellants conclusory assertions
have not persuaded us the Examiner erred. We therefore sustain the
Examiner's rejections of these claims.
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Claims 33 and 34
Appellants argue Gupta does not teach or suggest the limitations
recited in dependent claims 33 and 34. App. Br. 20-21. But the Examiner
found a combination of Rice's and Gupta's teachings suggest the limitations
recited in these claims. See Non-Final Act. 22-23; Ans. 24. Appellants'
arguments against Gupta alone have not persuaded us the Examiner erred.
Keller, 642 F.2d at 426. We therefore sustain the Examiner's rejections of
claim 33 and 34.
Claims 24, 25, and 31
Claims 24 and 31 both recite "[t]he system of claim 23 further
comprising a system for limiting access to the communication to
predetermined physical locations."3 Claim 25 recites "[t ]he system of claim
of claim 23 further comprising a system for limiting access to the
communication to predetermined devices." Appellants contend Herrmann
fails to teach or suggest these limitations because "Herrmann only relates to
limiting access to services, resources, and/or remote applications by
preventing them from being accessed at a location" and this "is not limiting
access to a communication, because it limits/prevents access to all
communications." App. Br. 22.
We find Appellants' arguments unpersuasive. Claims 24, 25, and 31
do not preclude limiting access to other communications. All these claims
require is "limiting access to the communication" in the recited manner, and
as acknowledged by Appellants, Herrmann teaches limiting access to all
3 Claim 31 also stands objected to under 3 7 C.F .R. § 1. 7 5 as being a
substantial duplicate of claim 24. Non-Final Act. 11.
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Appeal2013-000137
Application 10/943,495
communications, which includes the communication of interest.
Accordingly, we sustain the Examiner's rejections of claims 24, 25, and 31.
DECISION
For the above reasons, we affirm the rejections under 35 U.S.C. § 103
of claims 9-14, 20, and 22-34. We also affirm the rejections under 35
U.S.C. § 112 i-f 2 of claims 11-14 and 22-34.
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).
AFFIRMED
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