Ex Parte Iglesia et al

Patent Trial and Appeal BoardNov 27, 2012

11388734 (P.T.A.B. Nov. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ERIK DE LA IGLESIA, RATINDER PAUL SINGH AHUJA, WILLIAM DENINGER, and SAM KING ____________ Appeal 2010-004150 Application 11/388,734 Technology Center 2100 ____________ Before DENISE M. POTHIER, ANDREW CALDWELL, and JOHN A. EVANS, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-17. Claim 18 has been canceled. App. Br. 4.1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Throughout this opinion, we refer to (1) the corrected Appeal Brief filed May 12, 2009; (2) the Examiner’s Answer mailed July 24, 2009; and (3) the Reply Brief filed September 23, 2009. Appeal 2010-004150 Application 11/388,734 2 Invention Appellants’ invention relates to a process for registering documents in a computer network and analyzing data leaving the network for policy violations. See generally Spec. ¶¶ 0001, 0005. Claim 1 is reproduced below with the key disputed limitations emphasized: 1. A computer-implemented method comprising: intercepting packets being transmitted over a network at a distributed match agent of a document registration system; reassembling the packets into an intercepted document; generating a set of signatures associated with the intercepted document; comparing the set of signatures associated with the intercepted document with signatures associated with registered documents, wherein the signatures associated with the registered documents are stored in a local signature database of the distributed match agent; and determining whether to notify a manager agent of the registration system based on the result of the comparison. The Examiner relies on the following as evidence of unpatentability: Bowe US 2003/0093678 A1 May 15, 2003 The Rejection The Examiner rejected claims 1-17 under 35 U.S.C. § 102(b) as anticipated by Bowe. Ans. 3-8. THE CONTENTIONS Regarding claim 1, the Examiner maps the step of intercepting packets being transmitted over a network in claim 1 to the server in Bowe receiving the transmitted data object sent from the client over a communication channel. Ans. 3, 9. Among other things, Appellants argue that Bowe does not disclose intercepting packets being transmitted over a Appeal 2010-004150 Application 11/388,734 3 network. App. Br. 10. Specifically, Appellants contend that the packets transmitted in Bowe cannot be equated to or considered as intercepting packets. App. Br. 11. ISSUE Under § 102, has the Examiner erred in rejecting claim 1 by finding that Bowe discloses intercepting packets being transmitted over a network? ANALYSIS Claims 1-16 Based on the record before us, we find error in the Examiner’s rejection of independent claim 1, which calls for intercepting packets being transmitted over a network at a distributed match agent of a document registration system. We begin by construing the recited term, “intercepting.” “[T]he words of a claim ‘are generally given their ordinary and customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (citations omitted). Customary meanings of the word, “intercept,” include “to stop, seize, or interrupt in progress or course or before arrival” and “to receive (a communication or signal directed elsewhere) usually in secret.”2 Thus, the phrase, “intercepting packets being transmitted over a network” means interrupting the progress of transmitting the packets before the packets arrive at the directed destination. 2 Merriam-Webster Online Dictionary, available at http://www.merriam- webster.com/dictionary/intercept (definitions 2a and 2b) (last visited November 16, 2012). Appeal 2010-004150 Application 11/388,734 4 Based on this understanding, we find the Examiner’s position (Ans. 3, 9) that Bowe’s server is “intercepting” packets unreasonable. Bowe specifically states that client computer transmits the data object from the client to the server, and the server then creates a signature of the data object and associates the signature and the data object with a signed object. ¶¶ 0035, 0054; Fig. 2. That is, and as Appellants indicate (App. Br. 11), the server in Bowe is the intended recipient of the data object because the data object is directed to the server to create a signature. Because Bowe’s server is the intended recipient, Bowe does not disclose that the server interrupts the progress of the packets (e.g., the data object) before the packets arrive at its directed destination (i.e., the server). We therefore find that Bowe fails to disclose “intercepting packets being transmitted over a network” as required by claim 1. For the foregoing reasons, Appellants have persuaded us of error in the rejection of: (1) independent claim 1; (2) independent claims 8 and 12 which recite commensurate limitations; and (3) dependent claims 2-7, 9-11, and 13-16 for similar reasons. Claim 17 Claim 17 differs in scope from claim 1. Even so, we also find error in the Examiner’s rejection of claim 17 based on the evidence of record. Claim 17 recites a match agent that comprises “a signature database to store signatures of registered documents . . . .” The Examiner relies upon paragraphs 0002, 0005, 0035-40, and 0054 in Bowe to meet this limitation. Ans. 8. While not specifically discussing claim 17, Appellants assert that Appeal 2010-004150 Application 11/388,734 5 Bowe does not disclose a local signature database that resides in a match agent. See App. Br. 12. We agree with Appellants. Paragraphs 0002 and 0005 in Bowe do not describe a database – let alone one for storing signatures. At best, paragraph 0005 discusses storing documents and applying a digital signature to a stored document. Bowe ¶ 0005. However, Bowe does not disclose where these documents and their associated signatures are stored. See id. Paragraphs 0035-40 in Bowe discuss a server receiving a data object, creating a signature, associating a signature, and later authenticate the signed object. ¶¶ 0035-37, 0039-40. Yet, Bowe does not discuss where the signatures are stored. Paragraph 0054 similarly discusses the server but does not mention a database. See ¶ 0054. We therefore cannot find that Bowe’s documents are necessarily stored in a database. Also, given that the Examiner rejected this claim under § 102, whether storing such information on a database would have been obvious to an ordinary artisan is not a question before us. For the foregoing reasons, Appellants have persuaded us of error in the rejection of independent claim 17. CONCLUSION The Examiner erred in rejecting claims 1-17 under § 102. DECISION The Examiner’s decision rejecting claims 1-17 is reversed. REVERSED Appeal 2010-004150 Application 11/388,734 6 babc