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 . In communications filed on 08/07/2025. Claims 1-2 are pending in this examination.
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. This examination is in response to US Patent Application No. 19/293,337.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Claims 1-2 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1, 10-11, respectively, of U.S. Patent No. 10805311.
Although the conflicting claims are not identical, they are not patentably distinct from each other because:
The patent claims include all of the limitations of the instant application claims, respectively. The patent claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, "a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the patented invention" and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”).
Patented Application 10805311
Instant Application 19293337
A method for end-to-end encryption of electronic mail comprising: " receiving an email encrypted according to a first encryption protocol, the email sent by a sender at a first domain and designating a recipient address within a second domain; " accessing encryption protocols supported by a recipient mail client at the recipient address; " in response to a recipient exclusion list identifying the recipient address: o encrypting the email to a second encryption protocol less robust than the first encryption protocol and supported by the recipient mail client; and o transmitting the email encrypted according to the second encryption protocol to the recipient address; " in response to the recipient exclusion list excluding the recipient address and the recipient mail client supporting the first encryption protocol, transmitting the email encrypted according to the first encryption protocol to the recipient address; and " in response to the recipient exclusion list excluding the recipient address and encryption protocols supported by the recipient mail client excluding the first encryption protocol: o generating a notification email comprising a hyperlink to a secure webpage containing content of the email; [[and]] o transmitting the notification email to the recipient address; [[.]] o in response to selection of the hyperlink at the recipient mail client executing on a computing device, serving the secure webpage containing content of the email and an encryption opt-out option to a web browser executing on the computing device; o in response to selection of the encryption opt-out option, serving an electronic contract for disabling encryption of inbound emails from the first domain to the recipient address and for assuming liability by the recipient for data loss for inbound emails from the first domain to the recipient address; and o in response to execution of the electronic contract, appending the recipient exclusion list with the recipient address.
10. The method of Claim 1: " further comprising, in response to the recipient exclusion list identifying the recipient address: o scanning the email for sensitive information; o in response to detecting sensitive information in the email: - withholding transmission of the email to the recipient address; - returning a notification to the sender indicating presence of sensitive information in the email, indicating exclusion of encrypted email from the first domain to the recipient address, and a prompt to confirm transmission of the email to the recipient address; " wherein transmitting the email encrypted according to the second encryption protocol to the recipient address comprises transmitting the email encrypted according to the second encryption protocol to the recipient address in response to confirmation from the sender to transmit the email and the sensitive information to the recipient address; and * further comprising, in response to confirmation from the sender to withdraw the email, discarding the email prior to transmitting the email to the recipient address.
11. The method of Claim 1, wherein transmitting the email encrypted according to the second encryption protocol to the recipient address comprises: " scanning the email for sensitive information; " in response to detecting sensitive information in the email: o redacting the sensitive information from the email; and o inserting into the email a second hyperlink to a second secure webpage containing the sensitive information; and " transmitting the email encrypted according to the second encryption protocol to the recipient address
A method for end-to-end encryption of electronic mail comprising: sent by a sender and designating a first recipient; " in response to a recipient exclusion list including the first recipient address and in response to a first set of encryption protocols supported by a first recipient mail client at the first recipient address including the first encryption protocol: scanning the first email for sensitive information; and in response to detection of sensitive information in the first email:- redacting sensitive information in the first email; and- inserting a first link to a first electronic document, containing sensitive information from the first email, into the first email; and transmitting the first email-to the first recipient address.
The method of Claim 1, further comprising: " receiving a second email encrypted according to a second encryption protocol, the second email sent by the sender and designating a second recipient address; and " in response to the recipient exclusion list excluding the second recipient address: in response to a second set of encryption protocols supported by a second- generating a notification email comprising a second link to a second electronic document containing content of the second email; and - transmitting the notification email to the second recipient address
Claim Rejections - 35 USC § 103
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 of this title, 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 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over US application No. 2009/0157823 issued to Price and in view of US Patent No. 2013/0080775 issued to Liebmann et al. (“Liebmann) and in view of US Patent No. 2006/0075228 issued to Black et al. (“Black”) .
Regarding claim 1, Price discloses a method for end-to-end encryption of electronic mail comprising: [¶1, this invention relates to a technique for supporting secure email services using multiple protocols, including proprietary and open protocols], and [0002] FIG. 1 illustrates a prior art system 100 for facilitating secure email services (e.g., encryption and decryption) using an email server that utilizes a supported protocol]; and
receiving a first mail encrypted according to a first encryption protocol, the first email sent by a sender and designating a first recipient [¶2, FIG. 1 illustrates a prior art system 100 for facilitating secure email services (e.g., encryption and decryption) using an email server that utilizes a supported protocol. The system 100 includes a client machine 102 that communicates with an email server 106 through a secure email policy enforcement server 104. The secure email policy enforcement server 104 supports the protocol used by the email server 106 and therefore is referred to as a supported secure email machine. The secure email policy enforcement server 104 can be positioned between the email server 106 and the client 102 and can offer secure email policy enforcement services to the client transparently. The email server 106 receives and transmits encrypted messages via the Internet 108], and [¶21, The first processing operation shown in FIG. 3 is for the email server 202 to route an incoming email message (300). The client machine determines whether the supported secure email machine can apply a security policy to the email (302). If the security policy can be applied (302--YES), then the email is routed using a first protocol (304) that is common to the email server and the supported secure email machine 204.].
Examiner Note: Liebmann also discloses this limitation as:[see FIGS.1,2,3,4 and correspond text for more detail, ¶17, a first email server (e.g., 105) can be used to send an email from a first client (e.g., 120) to another email server (e.g., 115) over an encrypted or otherwise secure communication channel. The recipient email server (e.g., 115) can then be used to deliver the email to the email mailbox associated with one or more recipient clients (e.g., 140)]; and
in response to a recipient exclusion list including the first recipient address and in response to a first set of encryption protocols supported by a first recipient mail client at the first recipient address including the first encryption protocol[see FIGS.3 and 4 and corresponding text for more detail, block # 304, 408, route using first protocol, apply policy #302, 402], and [¶6, The invention also includes a computer readable storage medium with executable instructions to determine that a security policy cannot be applied by a supported secure email machine to a generated email message and thus the email message is routed to an auxiliary secure email machine. Secure email policies are applied to the email message at the auxiliary secure email machine. The email message is directed from the auxiliary secure email machine to the supported secure email machine for routing to a recipient], and [¶21, The first processing operation shown in FIG. 3 is for the email server 202 to route an incoming email message (300). The client machine determines whether the supported secure email machine can apply a security policy to the email (302). If the security policy can be applied (302--YES), then the email is routed using a first protocol (304) that is common to the email server and the supported secure email machine 204. The supported secure email machine 204 applies email policies (e.g., decryption) to the email (306). The email is then returned to the client using the first protocol (308). The client may then open the secure email (310). These operations are consistent with the prior art processing of FIG. 1]; and
Price does not explicitly disclose. However, Black discloses scanning the first email for sensitive information; and in response to detection of sensitive information in the first email: redacting sensitive information in the first email [¶10, Accordingly, a need has arisen for a method and apparatus to secure sensitive information in any type of document (such as a word processing document, list page, email, spreadsheet) created on a computer or received by a computer even from the person who enters it into a computer system or works with the documents. There is also a need for a system which can use a dictionary or rules list to automatically select sensitive text and redact documents or which can learn the types of information to be redacted by observation of an operator manually redacting information using the computer. The needed system will, in one class of embodiments, partially encrypt, redact or remove manually selected sensitive information from a document (which includes emails and their attachments) to protect just the sensitive information but otherwise leave the document in a readable state].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of Price with the teaching of Black in order for automatically selecting sensitive information in any form of document being displayed and/or generated on a computer to select sensitive information for protection by encryption, redaction or removal of only the sensitive text[Black, Abstract].
Price and Liebmann do not explicitly disclose, however, Liebmann discloses inserting a first link to a first electronic document containing sensitive information from the first email, into the first email [¶27, an encryption engine 365 can be used to encrypt emails processed using email server 305. Such encryption techniques can include mail session encryption, public-key encryption techniques, and other suitable encryption techniques. Emails can also be secured through other approaches, such as storing the email on a secure web server and sending the recipients a link to the stored email that prompts the recipients to authenticate themselves before being able to view the email in a web-based mail client] ; and
43 of 54PAU B-MO1-U S transmitting the notification email to the recipient address [¶27, prompts the recipients to authenticate themselves before being able to view the email in a web-based mail client].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of Price, and Black with the teaching of Liebmann in order to provide security of email communication[ Liebmann, ¶1, Abstract].
Regarding claim 2, Price discloses receiving a second email encrypted according to a second encryption protocol, the second email sent by the sender and designating a second recipient address, in response to the recipient exclusion list excluding the second recipient address [see FIG.4 and corresponding text for more detail, [0027] The message communication module 254 of the auxiliary secure email machine 208 receives the message and passes it to the policy application module 256. The policy application module 256 then applies secure email policies to the email (412). For example, the policy application module 256 includes executable instructions to request the public key for the message recipient. The policy application module 256 then encrypts the message to the recipient's public key. The policy application module 256 then sends the email using the second protocol (414). For example, the email is sent to the supported secure email machine, which then routes the email (416)]; and [¶22, If the secure policy cannot be applied (302--NO), then the email is sent to the auxiliary secure email machine 208 using a second protocol (312). This operation may be implemented with the message communication module 230. In one embodiment, the message communication module 230 includes executable instructions to encapsulate the message in an open communication protocol, such as a SOAP communication. The message communication module 254 of the auxiliary secure email machine 208 receives the open protocol communication and passes it to the policy application module 256, which applies secure email policies (314) to the message. For example, if the client machine 206 does not have a private key, the policy application module 256 requests the private key from a network resource. The policy application module 256 then decrypts the message using the key. If the message is also signed, the policy application module 256 requests the sender's public key to verify the signature. Upon receipt of the public key, the policy application module 256 verifies the signature]; and
in response to a second set of encryption protocols supported by a second recipient mail client at the second recipient address excluding the second encryption protocol
[see FIG.3 and corresponding text for more detail, block # 316, route email using second protocol]; and
Price , and Black do not explicitly disclose, however, Liebmann discloses Liebmann discloses generating a notification email comprising a second link to a second electronic document containing content of the second email
[¶27, an encryption engine 365 can be used to encrypt emails processed using email server 305. Such encryption techniques can include mail session encryption, public-key encryption techniques, and other suitable encryption techniques. Emails can also be secured through other approaches, such as storing the email on a secure web server and sending the recipients a link to the stored email that prompts the recipients to authenticate themselves before being able to view the email in a web-based mail client] ; and
transmitting the notification email to the second recipient address.
[¶27, prompts the recipients to authenticate themselves before being able to view the email in a web-based mail client].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of Price, and Black with the teaching of Liebmann in order to provide security of email communication[ Liebmann, ¶1, Abstract].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAHRIAR ZARRINEH whose telephone number is (571)272-1207. The examiner can normally be reached Monday-Friday, 8:30am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jorge Ortiz-Criado can be reached at 571-272-7624. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHAHRIAR ZARRINEH/Primary Examiner, Art Unit 2496
