Ex Parte Lee et al

Patent Trial and Appeal BoardOct 10, 2018

10074825 (P.T.A.B. Oct. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 10/074,825 02/12/2002 Chang-Ping Lee 26111 7590 10/12/2018 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK A VENUE, N.W. WASHINGTON, DC 20005 UNITED ST A TES OF AMERICA 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. 2222.5390006 7113 EXAMINER SHERR, MARIA CRISTI OWEN ART UNIT PAPER NUMBER 3685 NOTIFICATION DATE DELIVERY MODE 10/12/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): e-office@stemekessler.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHANG-PING LEE, DENIS JACQUES PAUL GARCIA, HAL HILDEBRAND, and KILMENTY V AINSTEIN Appeal2017-000561 Application 10/07 4,825 1 Technology Center 3600 Before HUBERT C. LORIN, PHILIP J. HOFFMANN, and TARA L. HUTCHINGS, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Chang-Ping Lee, et al. (Appellants) seek our review under 35 U.S.C. Â§ 134(a) of the Final Rejection of claims 1-12, 17-28, and 37--44. We have jurisdiction under 35 U.S.C. Â§ 6(b ). 1 The Appellants identify Intellectual Ventures I LLC, as the real party in interest. App. Br. 3. Appeal2017-000561 Application 10/074,825 We REVERSE. SUMMARY OF DECISION THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method for accessing secured data off-line, the method compnsmg: sending a request to a server from a client machine via a private link provided by an internal network using a secured communication protocol used to retrieve secured data, the request including at least: credential information associated with a user to access the secured data on the client machine; information identifying operations to perform with the secured data; information identifying a location where the secured data will be accessed; and a duration the secured data is to be accessible on the client machine when the client machine is off-line; receiving at the client machine, from the server, via the private link, a response to the request and the secured data which is accessed on the client machine without the client machine being coupled to the server; determining that the client machine is off-line and disconnected from the internal network; recording, by the client machine, activities involving the secured data on the client machine during an off-line period; determining, after the off-line period in response to the client machine coupling again to the server, that the client machine is on- line and coupled to the server; and 2 Appeal2017-000561 Application 10/074,825 reporting the recorded activities to the server from the client machine once the client machine is again on-line and coupled to the server. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Christiano Payne England us 5,671,412 us 5,715,314 US 6,775,779 Bl The following rejection is before us for review: Sept. 23, 1997 Feb.3, 1998 Aug. 10, 2004 Claims 1-12, 17-28, and 37--44 are rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over England, Payne, and Christiano. ISSUES Did the Examiner err in rejecting claims 1-12, 17-28, and 37--44 under 35 U.S.C. Â§ I03(a) as being unpatentable over England, Payne, and Christiano? ANALYSIS The rejection of claims 1-12, 17-28, and 37-44 under 35 USCÂ§ 103(a) as being unpatentable over England, Payne, and Christiano. Independent claim 1 includes the limitation "determining that the client machine is off-line and disconnected from the internal network." The Appellants argue that this limitation is not disclosed in the cited prior art. We agree. 3 Appeal2017-000561 Application 10/074,825 Notwithstanding that said "determining" does not require a device to perform it, the Examiner cites Christiano's license management system as "teach[ing] determining that the client machine is off-line and disconnected from the internal network and recording, at the client machine, activities involving the secured data on the client machine while the client machine is off-line; determining, after the off-line period, in response to the client machine coupling again to the server, that the client machine is on-line and coupled to the server, at, e.g. col 17 ln 17-29. Final Rej. 5. However, we do not see in said cited passage from Christiano any mention of "determining that the client machine is off-line and disconnected from the internal network" whether by a device or not. Instead, the cited passage provides the following: In next step 132, a fail safe indicator is entered in the license record if the license item includes a fail safe indicator. The fail safe indicator allows licenses to be checked out when no licenses are available during failures. This can be beneficial during license management system failures, when normally no licenses would be available. For example, whenever a failure occurs in a license management system, licenses are typically denied to new requesters. However, a software developer selling a product to a large, trusted company may wish to provide a more lenient policy which allows the customer to check out licenses when an error occurs in the license management system. This could be especially important for mission- critical applications. In some embodiments, a fail safe license can be checked out regardless of the type of error. In other embodiments, the fail safe license can be checked out only when the error is an actual failure of the license system, and not when the client is denied a license due to the license policy (i.e. "no licenses available"). Christiano, col. 17, lines 16-34. The Examiner responded that Given that Christiano indicates an error in which licenses are unavailable from the license management system regardless of the 4 Appeal2017-000561 Application 10/074,825 type of error, a predictable result is for one type of error to be having the license management system and/or the user to be offline in such way that there is no communication between them. KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (U.S. 2007). Further, Christiano lists types of system failures "a failure in the license management system, i.e., some nodes of the network are not operating, the license server has a failure in some subsystem, etc." (col 18 ln 30-35). Ans. 2-3. But even if licenses are unavailable from the license management system, it does not necessarily follow that, as a consequence, "the license management system and/or the user [is] offline in such way that there is no communication between them." The same is true even if "some nodes of the network are not operating [ and] the license server has a failure in some subsystem." Christiano, col. 18, lines 30-36. At best, these are indications of a failure in the license management system. Whether or not such failures amount to the client device being off-line and disconnected from an internal network is not something one of ordinary skill would get from reading Christiano. It is speculation. A "determining that the client machine is off- line and disconnected from the internal network" as claim 1 requires is not suggested. The other independent claims (claims 17, 37, 38, 39, and 42) contain the same or similar limitation, and the Examiner takes the same position with respect to them. Final Rej. 4. An initial prima facie case of obviousness has not been made. 5 Appeal2017-000561 Application 10/074,825 DECISION The decision of the Examiner to reject claims 1-12, 17-28, and 37--44 is reversed. REVERSED 6