DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,008,673. Although the claims at issue are not identical, they are not patentably distinct from each other because the notion of the claims does refer to the same invention and claim 1 of the current application corresponds with claim 1 of U.S. Patent No. 12,008,673. Claim 1 of U.S. Patent No. 12,008,673 anticipates claim 1 of the current application because it includes all of the limitations of the current application.
Below is a limitation mapping between claim 1 of the current application and Claim 1 of U.S. Patent No. 12,008,673,
Current Application
U.S. Patent No. 12,008,673
1. A method comprises:
providing a first code module on a computing device having a plurality of policies wherein the plurality of policies control access to a plurality of documents;
providing a second code module on the computing device having an ability to augment display content;
detecting by the first code module an attempt by an application program on a computing device to access a document;
selecting by the first code module a subset of policies from the plurality of policies relevant to the attempt access to the document;
evaluating by the first code module the subset of policies to determine if the attempted access to the document should be allowed;
if the attempted access to the document is allowed, transmitting by the first code module information related to the attempted access to the document to the second code module;
if the attempted access to the document is allowed, constructing a security marker based on the if the attempted access to the document is allowed; if the attempted access to the document is allowed, rendering the security marker by the second code module over content of the document; and if the attempted access to the document is not allowed, blocking the attempted access to the document.
1. A method comprises:
providing a first code module on a computing device having a plurality of policies wherein the plurality of policies control access to a plurality of documents;
providing a second code module on the computing device having an ability to augment display content, wherein the second code module is installed in a compositing window manager;
detecting by the first code module an attempt by an application program on a computing device to access a document;
selecting by the first code module a subset of policies from the plurality of policies relevant to the attempted access to the document;
evaluating by the first code module the subset of policies to determine if the attempted access to the document should be allowed;
if the attempted access to the document is allowed, transmitting by the first code module information related to the attempted access to the document to the second code module;
if the attempted access to the document is allowed, constructing a security marker based on the information related to the attempted access to the document; if the attempted access to the document is allowed, rendering the security marker by the second code module over content of the document; and if the attempted access to the document is not allowed, blocking the attempted access to the document.
Below is claim mapping between the current application and U.S. Patent No. 12,008,673.
Current Application
1
2
3
4
5
6
7
8
U.S. Patent No. 12,008,673
1
1
2
3
4
5
6
7
DUPLICATE CLAIMS, WARNING
Applicant is advised that should claim 5 be found allowable, claim 6 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof.
Claim Objections
Claim 1 is objected to because of the following informalities:
On line 9, change “the attempt access” to “the attempted access”;
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) are: “providing a first code module on a computing device having a plurality of policies wherein the plurality of policies control access to a plurality of documents”; and “providing a second code module on the computing device having an ability to augment display content” in claim 1 and dependent claims 2-8.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 and dependent claims 2-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 1, it is not clear what is meant by the limitation “if the attempted access to the document is allowed, constructing a security marker based on the if the attempted access to the document is allowed”. For purposes of examination, examiner is interpreting it to mean “if the attempted access to the document is allowed, constructing a security marker”.
Claim 3 contains the trademark/trade name Microsoft Desktop Window Manager. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a Desktop windowing system made by Microsoft and, accordingly, the identification/description is indefinite.
Claims 2, 4-8 are rejected because they depend on a rejected claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1 and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hadden et al. (US PGPUB 20070143603)(Hereinafter referred to as Hadden) in view of Flory (US PGPUB 20070150299)(Hereinafter referred to as Flory).
As per claim 1, Hadden discloses a method (Hadden, abstract) comprises:
providing a first code module on a computing device having a plurality of policies wherein the plurality of policies control access to a plurality of documents (Hadden, [0023], where the enterprise rights management server/policy server maps to the first code module which enforces a plurality of policies for document access);
providing a second code module on the computing device having an ability to augment printed content (Hadden, [0023], where the watermarking process maps to the second code module which augments contents with a policy-based watermark; and [0029]-[0029], where the wrapper code is used to determine and generate the watermark and pass it to the watermark rendering module, thus the wrapper code maps to the second code module);
detecting by the first code module an attempt by an application program on a computing device to access a document (Hadden, [0022], a policy server enables a system administrator or other content owners to change and securely enforce user permissions (view, copy, forward, print or edit)”; and [0023] “the rights management server provides a client application plug-in with a decryption key and policy to enable access to and use of a protected document”);
selecting by the first code module a subset of policies from the plurality of policies relevant to the attempt access to the document (Hadden, [0022], “the policy server provides a calling application plug-in with a decryption key and a policy that are then applied at the application to enable access to and use of a protected document”; the applied policy maps to a subset of the existing policies (a subset of one policy));
evaluating by the first code module the subset of policies to determine if the attempted access to the document should be allowed (Hadden, [0022], “a policy server enables a system administrator or other content owners to change and securely enforce user permissions (view, copy, forward, print or edit”, where the policy server maps to the first code module);
if the attempted access to the document is allowed, transmitting by the first code module information related to the attempted access to the document to the second code module (Hadden, Fig. 2, #206 and [0028], where a determination is made as to whether the user as authority to access a document and, if so, a watermark definition is fetched from the server which maps to information related to the access, which is transmitted to the wrapper code which maps to the second code module);
if the attempted access to the document is allowed, constructing a security marker based on the if the attempted access to the document is allowed (Hadden, Fig. 2 and [0028], “the wrapper code fetches a watermark definition from the server at step 204. As noted above, preferably this data is obtained over a secure connection and is not exposed to the calling application or the end user. The wrapper code then uses the watermark definition to create one or more watermarks, which are then passed to the watermark rendering code at step 206”) ;
if the attempted access to the document is allowed, rendering the security marker by the second code module over content of the document (Hadden, [0027] and [0030], where the watermark can be an “overlay” watermark which means it will be rendered over the document content); and
if the attempted access to the document is not allowed, blocking the attempted access to the document (Hadden, [0022], “a policy server enables a system administrator or other content owners to change and securely enforce user permissions (view, copy, forward, print or edit) and recall documents after they have been distributed. To access a protected document (which may be of any type) in such a system, the policy server provides a calling application plug-in with a decryption key and a policy that are then applied at the application to enable access to and use of a protected document” and [0023] and [0028], where the server component makes a determination as to whether the user has authority to perform a print operation; enforcement implies that document access will be blocked for an unauthorized user).
Hadden discloses choosing a policy to authorize users to print a given document and displaying overlaying watermarks on that document related to that policy, but doesn’t have a good disclosure of allowing a user to view a document. However Flory discloses the use of policies to authenticate users to view documents that can be augmented with watermarks (Flory, abstract, [0005]-[0007], [0015], and [0188]).
Hadden and Flory are analogous since both of them are dealing with the authentication of users to print or view documents and displaying watermarks on those documents. Hadden provides a way of choosing a policy for verifying that a user is authorized to print a document, and displaying watermarks on the printed document related to the policy. Flory provides a way of authenticating users to view a document. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to incorporate the viewing of documents of authorized users taught by Flory into the modified invention of Hadden such that the system will be able to ensure documents remain viewable for only authorized users and continue to provide “continuous and persistent” protection for documents once they’ve been opened (Flory, [0004]-[0006]).
As per claims 5 and 6, claim 1 is incorporated and Hadden in view of Flory discloses wherein the security marker comprises a text string (Hadden, [0029], where the watermark can be a text string rendered using the TextOut() function call).
As per claim 7, claim 1 is incorporated and Hadden in view of Flory discloses wherein the security marker describes current user of the computing device (Hadden, [0034] and [0036], where additional “dynamic” information such as user name can be included into the watermark).
As per claim 8, claim 1 is incorporated and Hadden in view of Flory discloses wherein the security marker comprises a date (Hadden, [0037], where the watermark can include the date and time).
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Hadden et al. (US PGPUB 20070143603)(Hereinafter referred to as Hadden) in view of Flory (US PGPUB 20070150299)(Hereinafter referred to as Flory) and in further view of Kristensen et al. (US PGPUB 20110239125)(Hereinafter referred to as Kristensen).
As per claim 2, claim 1 is incorporated and Hadden in view of Flory doesn’t disclose but Kristensen discloses wherein the second code module is installed in a compositing window manager (Kristensen, Figure 1 and [0018]-[0019], where the display server and secure display server use Windows Desktop Window Manager).
Hadden in view of Flory and Kristensen are analogous since both of them are dealing with ensuring the secure display of documents. Hadden in view of Flory provides a way of augmenting a securely-viewed document with a watermark related to the policy used to allow the user to view it. Kristensen provides a way of using Windows Desktop Manager to augment a display. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to incorporate the use of Windows Desktop Manager taught by Kristensen into the modified invention of Hadden in view of Flory such that the system will be able to enable the user to work with several applications concurrently giving each application its own application window (Kristensen, [0018]-[0019]).
As per claim 3, claim 1 is incorporated and Hadden in view of Flory doesn’t disclose but Kristensen discloses wherein the compositing window manager is Microsoft Desktop Window Manager (Kristensen, Figure 1 and [0018]-[0019], where the display server and secure display server use Windows Desktop Window Manager).
See claim 2 rejection for reason to combine.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Hadden et al. (US PGPUB 20070143603)(Hereinafter referred to as Hadden) in view of Flory (US PGPUB 20070150299)(Hereinafter referred to as Flory) and in further view of Lim (US PGPUB 20070162749)(Hereinafter referred to as Lim).
As per claim 4, claim 1 is incorporated and Hadden in view of Flory doesn’t disclose but Lim discloses wherein the information related to the attempted access to the document comprises a process identifier of the application program (Lim, [0291], where information sent to the policy enforcer includes the application’s process ID).
Hadden in view of Flory and Lim are analogous since both of them are dealing with ensuring the secure display of documents. Hadden in view of Flory provides a way of augmenting a securely-viewed document with a watermark related to the policy used to allow the user to view it. Lim provides a way of using an application’s process ID in the policy enforcer. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to incorporate the use of an application’s process ID taught by Lim into the modified invention of Hadden in view of Flory such that the system will be able to have increased flexibility in setting up security policies and add control over how a document is used once a documents leaves a document management system (Lim, [0007]-[0010]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS R WILSON whose telephone number is (571)272-0936. The examiner can normally be reached M-F 7:30-5:00PM.
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/NICHOLAS R WILSON/Primary Examiner, Art Unit 2611