`Art Unit: 2174
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`Page 2
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`DETAILED ACTION
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`1.
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`2.
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`This communication is responsive to an amendmentfiled 8/31/10.
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`Claims 1-12, 14-30, 32-47, 49-65 and 67-70 are pending in this application; and,
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`claims 1, 14, 18, 22, 32, 36, 49, 53, 57 and 67 are independentclaims. Claims 1-12,
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`14-30 and 32-35 have been amended; claims 13, 31, 48 and 66 have been cancelled;
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`and, claims 36-47, 49-65 and 67-70 have been newly added. This action is made non-
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`Final.
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`Oath/Declaration
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`3.
`
`In accordance with 37 CFR 1.175(b)(1), a supplemental reissue oath/declaration
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`under 37 CFR 1.175(b)(1) must be received before this reissue application can be
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`allowed.
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`Claims 1-12, 14-30, 32-47, 49-65 and 67-70 are rejected as being based upon a
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`defective reissue declaration under 35 USC 251. See 37 CFR 1.175. The nature of the
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`defect is set forth above. Receipt of an appropriate supplemental oath/declaration
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`under 37 CFR 1.175(b)(1) will overcome this rejection under 35 USC 251. An example
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`of acceptable language to be usedin the supplemental oath/declaration is as follows:
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`“Every error in the patent which was corrected in the present reissue application, and is
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`not covered by a prior oath/declaration submitted in this application, arose without any
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`deceptive intention on the part of the applicant.”
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`
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`Application/Control Number: 11/889,685
`Art Unit: 2174
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`Page 3
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`Specification
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`4.
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`Claims 1, 50 and 57 recite the term "derived". The specification is objected to as
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`failing to provide proper antecedentbasis for the claimed subject matter. See 37
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`CFR 1.75(d)(1) and MPEP § 608.01(0). Correction of the following is required:
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`antecedentbasis for the term "infer" in the specification.
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`Rejections - 35 USC § 251, Recapture
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`5.
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`Claims 1-12, 14-30, 32-47, 49-65 and 67-70 are rejected under 35 U.S.C. 251 as
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`being an improper recapture of broadened claimed subject matter surrenderedin the
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`application for the patent upon which the present reissue is based. See Pannu v. Storz
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`Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries,
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`Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131
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`F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d
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`1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspectis presentin
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`the reissue which was notpresentin the application for patent. The record of the
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`application for the patent showsthat the broadening aspect(in the reissue) relates to
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`claim subject matter that applicant previously surrendered during the prosecution of the
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`application. Accordingly, the narrow scope ofthe claims in the patent was not an error
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`within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter
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`surrendered in the application for the patent cannot be recaptured bythe filing of the
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`present reissue application.
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`
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`Application/Control Number: 11/889,685
`Art Unit: 2174
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`Page 4
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`The omitted/broadenedclaim limitations lacking in the reissue which provide the
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`"broadening aspect" to the claim(s) are as follows: the narrowed claim scope “a
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`program on a computer” as was agreedbythe attorneyin the original application and
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`presented/argued to obviate a rejection/objection in the Examiner's Amendment of
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`3/24/05.
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`Moreover, by removing the limitation “without losing an original indication of the
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`default icon” from the patented claims, and notincluding this limitation in the new
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`reissue claims raises the issue of recapture.
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`In the Notice of Allowance mailed on
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`March 24, 2005 in patent application file no. 10/124,179, on page 3 thereof, the reasons
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`for allowance makeit clear that the limitation “superimposing an appropriate icon
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`corresponding to the security level over the default icon without losing original
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`indications of the default icon’ is what distinguished the claims from the priorart of
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`record. By removing this limitation, the applicant is improperly attempting to broaden
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`the claims by recapturing surrendered subject matter, prohibited by 35 U.S.C. 251
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`under reissue practice.
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`Claim Rejections - 35 USC § 101
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`6.
`
`35 U.S.C. 101 reads as follows:
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`Whoever invents or discovers any new and useful process, machine, manufacture, or composition of
`matter, or any new and useful improvementthereof, may obtain a patent therefor, subject to the
`conditions and requirements ofthistitle.
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`7.
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`Claims 1-12, 14-17, 36-47 and 49-52 are rejected under 35 U.S.C. 101 due toa
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`35 U.S.C. 101 lack of means deficiency. the claimed invention is directed to non-
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`statutory subject matter. The application should be further amendedto include that a
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`
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`Application/Control Number: 11/889,685
`Art Unit: 2174
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`Page 5
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`program is on a computer as was agreed bythe attorneyin the original application and
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`included in an Examiner’s Amendment.
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`Claim Rejections - 35 USC § 103
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`8.
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`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
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`obviousnessrejections setforth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of thistitle, if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have been obviousat the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
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`9.
`
`Claims 1-8, 14, 15, 18, 19, 22-26, 32, 33, 36-43, 49, 50, 53, 54, 57-61, 67 and 68
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`are rejected under 35 U.S.C. 103(a) as being unpatentable over Naccache (US
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`7,340,599 B2) in view of Salahshour et al. (“Salahshour”, US 5,577,125).
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`As per claim 1, Naccache teaches a methodfor graphically representing secured
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`items comprising determining a security level of each of the secured items and for
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`graphically displaying the secured items, placing for each secured item a security icon
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`corresponding to the security level of that item in place of a default icon wherein the
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`default icon represents a corresponding non-secured item from which the respective
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`secured item wasderived (col. 2, line 44 —col. 3, line 8; displaying selected icon and
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`assigning a characteristic for indicating that the operation in progressis or is not secure,
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`i.e., in place of a red default icon, a different color security icon representing secured
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`transaction/item indicates the security state of the operation, e.g., green). Naccache
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`doesnotexplicitly disclose placing or superimposing a security icon over a default icon.
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`
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`Application/Control Number: 11/889,685
`Art Unit: 2174
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`Page 6
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`Salahshour teaches superimposing for each secured item a security icon corresponding
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`to the security level of that item over a default icon (fig. 2; col. 3, lines 21-29; key icon
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`image(s) overlay/superimpose default folder icon). In view of KSR, 127 S. Ct. 1727 at 1742,
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`82 USPG2d at 1397 (2007), it would have been obvious to an artisan at the time of the
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`invention to incorporate Salahshour’s teaching with the teaching of Naccache giventhat
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`such techniquesof placing an image over something else are often used so that both
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`things appear simultaneously.
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`As perclaim 2, the modified Naccache teaches the method of claim 1 and further
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`teachesintercepting items whenthe items are retrieved from a storage device and
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`determining whetheranyof the intercepted items are secured (Naccache: col. 2, line 44
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`— col. 3, line 8; col. 3, lines 36-61; e.g., browser window contains security information for
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`the transaction in progress upon userrequest to pay for a purchase in a monetary
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`transaction; Salahshour: fig. 2; col. 3, lines 21-29).
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`As perclaim 3, the modified Naccache teaches the method of claim 2 and further
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`teaches said determining a security level comprises activating a client module in
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`response to a determination that at least one of the items is secured (Naccache: col. 2,
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`line 44 — col. 3, line 8; col. 3, lines 36-61; e.g., a browser program such as Internet
`
`Explorer in a Microsoft Windows environment maybeinstalled and activated by a user
`
`to display contents/items).
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`As perclaim 4, the modified Naccache teaches the method of claim 3 and further
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`teaches the client module is configured to operate in an operating system supporting
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`the program (Naccache: col. 2, line 44 — col. 3, line 8; col. 3, lines 36-61; Naccache’s
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`
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`Application/Control Number: 11/889,685
`Art Unit: 2174
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`Page 7
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`invention teaches a client module/component executed in conjunction with a browser
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`program, for example, Internet Explorer in a Microsoft Windows environmentthat is
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`installed and activated by a userto display contents/items; Salahshour: col. 2, lines 13-
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`41).
`
`As perclaim 5, the modified Naccache teaches the method of claim 4 and further
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`teachesthat the operating system comprises a graphic windowsoperating system and
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`the program comprisesa utility configured to display contents of the storage device
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`(Naccache: figs. 1-3; col. 2, line 44 — col. 3; col. 3, lines 36-61; Salahshour: figs. 2-3;
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`col. 2, lines 13-41).
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`As per claim 6, the modified Naccache teaches the method of claim 3 and further
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`teaches determining security information associated with the at least one secured item
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`wherein the security information includes information regarding the security level of the
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`at least one secured item (Naccache: col. 2, line 44 —col. 3, line 8; col. 3, lines 36-61;
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`Salahshour: figs. 2-3; col. 2, lines 13-41).
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`As per claim 7, the modified Naccache teaches the method of claim 6 and further
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`teaches the security level includes at least one level of security (Naccache: col. 2, line
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`44 —col. 3; Salahshour: fig. 2; col. 3, lines 21-29; secured versus non-secured).
`
`As perclaim 8, the modified Naccache teaches the method of claim 1 and further
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`teaches that the default icon is associated with an executable program (Naccache: col.
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`2, line 44 — col. 3, line 8; col. 3, lines 36-61; e.g., a browser program such as Internet
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`Explorer in a Microsoft Windows environment maybeinstalled and activated by a user
`
`to display contents/items; Salahshour: figs. 2 and 4; col. 5, lines 23-34 and 52-62;
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`
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`Application/Control Number: 11/889,685
`Art Unit: 2174
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`Page 8
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`following a request to open an encrypted object such as selectable icon 274 and user
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`supplies the encryption key, the step proceeds to step 385 to open and decrypt the
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`object; moreover, the definition of a selectable icon is an interface element graphically
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`representing a function or system resourcethat is accessed whenthe graphical
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`representation is selected by user interaction).
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`Claims 14, 32 and 67 are individually similar in scope to claim 3 and are
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`therefore rejected under similar rationale.
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`As per claim 15, the modified Salahshour teaches a method for graphically
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`indicating secured items in a program for displaying contents in a selected place
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`wherein there is an appropriate icon for the at least one of the secured items when the
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`at least one of the secured items is not secured and wherein said generating a
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`superimposed icon comprises choosing an appropriate icon for the at least one of the
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`secured items and superimposing the appropriate icon over the default icon associated
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`with without losing original indications of the default icon (Salahshour: fig. 2; col. 3, lines
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`21-29).
`
`Claims 18 and 19 in combination is similar in scope to claim 1 and are therefore
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`rejected under similar rationale.
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`Claims 22, 36 and 57 areindividually similar in scope to claim 1 and are
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`therefore rejected under similar rationale.
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`Claims 23, 37 and 58 are individually similar in scope to claim 2 and are
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`therefore rejected undersimilar rationale.
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`
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`Application/Control Number: 11/889,685
`Art Unit: 2174
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`Page 9
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`Claims 24, 38 and 59 areindividually similar in scope to claim 3 and are
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`therefore rejected under similar rationale.
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`Claims 25, 41 and 60 areindividually similar in scope to claim 6 and are
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`therefore rejected under similar rationale.
`
`Claims 26, 43 and 61 are individually similar in scope to claim 8 and are
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`therefore rejected under similar rationale.
`
`Claims 33 and 68 are similar in scope to claim 15 and are therefore rejected
`
`under similar rationale.
`
`Claim 39 is similar in scope to claim 4 and is therefore rejected undersimilar
`
`rationale.
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`Claim 40 is similar in scope to claim 5 andis therefore rejected under similar
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`rationale.
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`Claim 42 is similar in scope to claim 7 and is therefore rejected under similar
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`rationale.
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`Claims 49 and 50, in combination, are similar in scope to claim 3 and are
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`therefore rejected under similar rationale.
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`Claims 53 and 54 in combination is similar in scope to claim 1 and are therefore
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`rejected under similar rationale.
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`10.
`
`Claims 9-12, 20, 21, 27-30, 44-47, 55, 56 and 62-65 are rejected under 35
`
`U.S.C. 103(a) as being unpatentable over Naccache (US 7,340,599 B2) in view of
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`Salahshour et al. (“Salahshour’, US 5,577,125), and further in view of Gough etal.
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`("Gough”, US 5,638,501).
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`
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`Application/Control Number: 11/889,685
`Art Unit: 2174
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`Page 10
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`As per claim 9, although the modified Naccache teaches a methodfor graphically
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`indicating secured items in a program for displaying contents in a selected place
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`wherein the security icon includes a visual object (Salahshour: fig. 2; col. 3, lines 21-29;
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`key overlay and transparent background; in other words, each of the icons 212 and 214
`
`are encrypted and is visually indicated to the user by the encryption key overlay and,
`
`thereby, indicates the nature of a securedfile), the modified Naccache does not
`
`explicitly disclose an icon that includes a visual object and a transparent background.
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`Gough teachesan iconthat includes a visual object and a clear/transparent background
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`(fig. 4; col. 6, lines 50-56; claims 1, 9 and 14). In view of KSR, 127 S. Ct. 1727 at 1742, 82
`
`USPG2d at 1397 (2007), it would have been obvious to an artisan at the time of the
`
`invention to incorporate Gough's teaching with the teaching of the modified Naccache
`
`so that users can see more of a visual object and portions of a base image directly
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`beneath the visual object given that one may obscure the other.
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`As per claim 10, the modified Naccache teaches the method of claim 9 and
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`further teaches said superimposing an appropriate icon corresponding to the security
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`level over the default icon comprises overlaying the visual object onto the default icon of
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`the default icon such that at least a portion of the default icon is visible (Salahshour: fig.
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`2; col. 3, lines 21-29; superimposing comprising key overlaid on a default icon without
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`obscuring the rest of the default icon, e.g., 212, 214; Gough: col. 6, lines 50-56; claims
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`1, 9 and 14; translucent image allows icons 52, 54 and 56 to be seen through the
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`translucent image).
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`
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`Application/Control Number: 11/889,685
`Art Unit: 2174
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`Page 11
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`As per claim 11, the modified Naccache teaches the method of claim 9 and
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`further teaches said superimposing comprises generating a superimposedicon
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`including the default icon with the visual object superimposed thereon such that at least
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`a portion of the default iconis visible (Salahshour: col. 3, lines 21-29; superimposing
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`comprising key overlaid on a default icon without obscuring the rest of the default icon
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`as displayed by 212 and 214 in fig. 2; Gough: col. 6, lines 50-56; claims 1, 9 and 14;
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`translucent image allows icons 52, 54 and 56 to be seen through the translucent
`
`image).
`
`As per claim 12, the modified Naccache teaches the method of claim 10 and
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`further teaches the default icon is associated with an executable program (Naccache:
`
`col. 2, line 44 —col. 3, line 8; col. 3, lines 36-61; e.g., a browser program such as
`
`Internet Explorer in a Microsoft Windows environment maybeinstalled and activated by
`
`a user to display contents/items; Salahshour: figs. 2 and 4; col. 5, lines 23-34 and 52-
`
`62; upon selection of the secured items or the superimposed icon or upon a requestto
`
`open the secured items or the superimposedicon such as 214, the associated program
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`is opened/accesseq).
`
`As per claims 20 and 55, although the modified Naccache teaches a computer
`
`for graphically indicating secured item(s) in a program for displaying contents in a
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`selected place wherein the appropriate icon includes a visual object (Salahshour: fig. 2;
`
`col. 3, lines 21-29; key overlay and transparent background; in other words, each of the
`
`icons 212 and 214 are encrypted and is visually indicated to the user by the encryption
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`key overlay and, thereby, indicates the nature of a securedfile), the modified Naccache
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`
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`Application/Control Number: 11/889,685
`Art Unit: 2174
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`Page 12
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`does notexplicitly disclose an icon that includes a visual object and a transparent
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`background. Gough teachesanicon that includes a visual object and a
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`clear/transparent background(fig. 4; col. 6, lines 50-56; claims 1, 9 and 14). In view of
`
`KSR, 127 S. Ct. 1727 at 1742, 82 USPG2d at 1397 (2007), it would have been obvious to an
`
`artisan at the time of the invention to incorporate Gough’s teaching with the teaching of
`
`the modified Naccache so that users can see moreof a visual object and portions of a
`
`base image directly beneath the visual object given that one may obscure the other.
`
`As per claims 21 and 56, the modified Naccache teaches a computerfor
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`graphically indicating secured item(s) in a program for displaying contents in a selected
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`place wherein said superimposing an appropriate icon corresponding to the security
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`level over the default icon comprises overlaying the visual object onto the default icon
`
`without obscuring the rest of the default icon (Salahshour: fig. 2; col. 3, lines 21-29;
`
`superimposing comprising key overlaid on a default icon without obscuring the rest of
`
`the default icon, e.g., 212, 214).
`
`Claims 27, 44 and 62 are individually similar in scope to claim 9 and are
`
`therefore rejected under similar rationale.
`
`Claims 28, 45 and 63 are individually similar in scope to claim 10 and are
`
`therefore rejected under similar rationale.
`
`Claims 29, 46 and 64 areindividually similar in scope to claim 11 and are
`
`therefore rejected under similar rationale.
`
`Claims 30, 47 and 65 areindividually similar in scope to claim 12 and are
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`therefore rejected under similar rationale.
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`
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`Application/Control Number: 11/889,685
`Art Unit: 2174
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`Page 13
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`11.
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`Claims 16, 17, 34, 35, 51, 52, 69 and 70 are rejected under 35 U.S.C. 103(a) as
`
`being unpatentable over Naccache (US 7,340,599 B2) in view of Salahshour etal.
`
`(“Salahshour’, US 5,577,125), and further in view of Gough etal. ("Gough”, US
`
`5,638,501).
`
`As per claim 16, although the modified Naccache teaches a methodfor
`
`graphically indicating secured items in a program for displaying contents in a selected
`
`place wherein the appropriate icon includes a visual object (Salahshour: fig. 2; col. 3,
`
`lines 21-29; key overlay and transparent background; in other words, eachof the icons
`
`212 and 214 are encrypted and is visually indicated to the user by the encryption key
`
`overlay and, thereby, indicates the nature of a securedfile), the modified Naccache
`
`does notexplicitly disclose an icon that includes a visual object and a transparent
`
`background. Gough teachesaniconthat includes a visual object and a
`
`clear/transparent background(fig. 4; col. 6, lines 50-56; claims 1, 9 and 14). In view of
`
`KSR, 127 S. Ct. 1727 at 1742, 82 USPG2d at 1397 (2007), it would have been obvious to an
`
`artisan at the time of the invention to incorporate Gough’s teaching with the teaching of
`
`the modified Naccache so that users can see moreof a visual object and portions of a
`
`base image directly beneath the visual object given that one may obscurethe other.
`
`As per claim 17, the modified Naccache teaches a method for graphically
`
`indicating secured items in a program for displaying contents in a selected place
`
`wherein said superimposing the appropriate icon over the default icon comprises
`
`overlaying the visual object onto the default icon without obscuring the rest of the
`
`
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`Application/Control Number: 11/889,685
`Art Unit: 2174
`
`Page 14
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`default icon (Salahshour: fig. 2; col. 3, lines 21-29; superimposing comprising key
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`overlaid on a default icon without obscuring the rest of the default icon, e.g., 212, 214).
`
`Claim 34 is similar in scope to claim 16 andis therefore rejected undersimilar
`
`rationale.
`
`Claim 35 is similar in scope to claim 17 andis therefore rejected undersimilar
`
`rationale.
`
`As perclaims 51 and 69, although the modified Naccache teaches a method and
`
`a computer readable medium containing program code executable by a computing
`
`device for graphically indicating a secured item in a program for displaying contents in a
`
`selected place wherein the appropriate icon includes a visual object (Salahshour: fig. 2;
`
`col. 3, lines 21-29; key overlay and transparent background; in other words, each of the
`
`icons 212 and 214 are encrypted and is visually indicated to the user by the encryption
`
`key overlay and, thereby, indicates the nature of a securedfile), the modified Naccache
`
`does notexplicitly disclose an icon that includes a visual object and a transparent
`
`background. Gough teachesaniconthat includes a visual object and a
`
`clear/transparent background(fig. 4; col. 6, lines 50-56; claims 1, 9 and 14). In view of
`
`KSR, 127 S. Ct. 1727 at 1742, 82 USPG2d at 1397 (2007), it would have been obvious to an
`
`artisan at the time of the invention to incorporate Gough's teaching with the teaching of
`
`the modified Naccache so that users can see more ofa visual object and portions of a
`
`base image directly beneath the visual object given that one may obscure the other.
`
`As per claims 52 and 70, the modified Naccache teaches a method and a
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`computer readable medium containing program code executable by a computing device
`
`
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`Application/Control Number: 11/889,685
`Art Unit: 2174
`
`Page 15
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`for graphically indicating a secured item in a program for displaying contents in a
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`selected place wherein said superimposing the appropriate icon over the default icon
`
`comprises overlaying the visual object onto the default icon without obscuring the rest of
`
`the default icon (Salahshour: fig. 2; col. 3, lines 21-29; superimposing comprising key
`
`overlaid on a default icon without obscuring the rest of the default icon, e.g., 212, 214).
`
`Response to Arguments
`
`12.
`
`Applicant's arguments with respect to claims 1, 14, 18, 22, 32, 36, 49, 53, 57 and
`
`67 have been considered but are mootin view of the new ground(s)of rejection.
`
`13.|The prior art made of record and notrelied upon is considered pertinent to
`
`Conclusion
`
`applicant's disclosure.
`
`Rose (US 7,028,050 B1) teachesthatit is known that meta data can be provided
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`for the data. Such meta data can include text e.g. a description of the content of the
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`data file to which the meta data is associated. Such meta data is thus searchable using
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`conventional key word searches or natural language searches, e.g. where the database
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`contains text data to be searched, the query can be matchedto the dataitself, e.g. the
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`title, the abstract or the whole text, or to meta data such as a document title, file name,
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`abstract or caption whichis extraneous to the dataitself (col. 15, lines 53-61).
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`
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`Application/Control Number: 11/889,685
`Art Unit: 2174
`
`Page 16
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`Inquires
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`14.—Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Examiner L6é Nguyen whose telephone numberis (571)
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`272-4068. The examiner can normally be reached on Monday- Friday from 7:00 am to
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`3:30 pm (EST).
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Dennis Chow,can be reached at (571) 272-7767.
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see htip://pair-direct.uspto.gov. Should
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`you have questions on accessto the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197(toll-free).
`
`Ivn
`Patent Examiner
`May 20, 2011
`
`/DENNIS-DOON CHOW/
`Supervisory Patent Examiner, Art Unit 2174
`
`