Reply to Office Action of May 26, 2011
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`-21-
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`Nalini J. PRAKASH
`Appl. No. 11/889,685
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`Remarks
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`Reconsideration of this Application is respectfully requested.
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`Upon entry of the foregoing amendment, claims 1-12, 14-30, 32-47, 49-65, and
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`67-70 are pendingin the application, with claims 1, 14, 18, 22, 32, 36, 49, 53, 57, and 67
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`being the independent claims. These changes are believed to introduce no new matter,
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`and their entry is respectfully requested.
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`Based on the above amendment and the following remarks, Applicant
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`respectfully requests that
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`the Examiner
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`reconsider all outstanding objections and
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`rejections and that they be withdrawn.
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`Objection to the Oath/Declaration
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`The Examinerhasrejected claims 1-12, 14-30, 32-47, 49-65 and 67-70 under 35
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`U.S.C § 251 as allegedly being based upon a defective reissue declaration. Applicant
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`respectfully requests that this rejection be held in abeyance until allowable subject matter
`is indicated, at which time a supplemental declaration under 37 C.F.R. § 1.175(b)(1) will
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`be submitted covering all errors corrected in reissue prosecution.
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`Objection to the Specification
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`The Examiner has objected to the Specification as allegedly failing to provide
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`proper antecedent basis for subject matter in claims 1, 50, and 57.
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`In particular, the
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`Examiner argues that the Specification does not provide proper antecedent basis for the
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`term “derived.” Applicant respectfully traverses this rejection.
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`Claim 1 as amendedrecites, inter alia, “wherein the default icon represents a
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`corresponding non-secured item of a same file type as the respective secured item.”
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`Support for this amendment is found at, inter alia, ‘597 patent, 2:24-33, 9:13-17, and
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`Reply to Office Action of May 26, 2011
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`- 22 -
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`Nalini J. PRAKASH
`Appl. No. 11/889,685
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`9:50-52 (same file extension (denoting file type, e.g., Word doc) for both secured and
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`non-secured items). Claims 50 and 57 (new relative to the ‘597 patent) have been
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`similarly amended/revised to addressthis rejection.
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`Accordingly, Applicant respectfully requests the reconsideration and withdrawal
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`of the objection to the Specification for at least the aforementioned reasons.
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`Rejections under 35 U.S.C, § 251
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`The Examinerhasrejected claims 1-12, 14-30, 32-47, 49-65 and 67-70 under 35
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`U.S.C. § 251 as allegedly being an “improper recapture of broadened claimed subject
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`matter surrendered in the application for the patent on which the present reissue is
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`based.” (Office Action,p. 3). Applicant respectfully traverses this rejection.
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`The Examiner arguesthat the language “a program on a computer” was agreed to
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`by Applicant in the original application and presented to obviate a rejection.
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`(Office
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`Action, p. 4). This is not a correct characterization of the agreement. As noted in both
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`the Examiner’s Interview Summary and the Examiner’s Amendment and Reasons for
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`Allowance on p. 2 (both mailed March 24, 2005) in the original prosecution,
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`the
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`language added to overcome the rejection was simply “on a computer”. Although this
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`language appears to have been omitted from the issued claim as published, Applicant
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`seeks to reintroducethis claim limitation herein, thereby accommodating the rejection.
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`The Examiner additionally argues that the language “without losing an original
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`indication of the default icon” has been improperly removed and raises the issue of
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`recapture. Applicantfirst notes that this language is not present in claim 14 (which the
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`Examiner has nevertheless rejected on this basis), and yet was allowed in original
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`prosecution. Additionally, Applicant never acquiesced to this language as the basis for
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`Reply to Office Action of May 26, 2011
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`- 23 -
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`Nalini J. PRAKASH
`Appl. No. 11/889,685
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`allowance.
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`Instead, the Examiner relies on the Examiner’s Reasons for Allowance
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`(Office Action, p. 4) as the basis for surrender. This is improper, as “[t]he examiner’s
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`statement of reasons for allowance in the original application cannot, by itself, provide
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`the basis for establishing surrender and recapture.”
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`(M.P.E.P. § 1412.02(1)(B)(2)(C)
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`(citing Ex parte Yamaguchi, 61 USPQ2d 1043 (Bd. Pat. App. & Inter. 2001)(reported but
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`unpublished, precedential))). Applicant did not file any statements on the reasons for
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`allowance under 37 C.F.R. § 1.104(e), and therefore the rejectionis in error.
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`For at
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`least
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`the aforementioned reasons, Applicant respectfully requests the
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`reconsideration and withdrawal of the rejection of claims 1-12, 14-30, 32-47, 49-65 and
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`67-70 under 35 U.S.C. § 251.
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`Rejections under 35 U.S.C. § 101
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`The Examinerhas rejected claims 1-12, 14-17, 36-47 and 49-52 under 35 U.S.C.
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`§ 101 as allegedly being directed to non-statutory subject matter. Applicant respectfully
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`traverses this rejection.
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`Claim 1 (likewise for new/amended claim 36) has been amended to reintroduce
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`the language “on a computer” that appears to have been inadvertently omitted from the
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`published ‘597 patent. Claim 14 is sought to be amended to recite a “computer-
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`implemented method”(likewise for new/amended claim 49), addressing the rejection on
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`similar grounds. It is noted that claim 14 (and broadened claim 49) were never intended
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`to be amended with the language “on a computer”, and were allowed in original
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`prosecution despite lacking this language. Accordingly,it is not impermissible recapture
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`to use different, potentially broadening languagein this regard in claims 14 and 49.
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`Reply to Office Action of May 26, 2011
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`- 24-
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`Nalini J. PRAKASH
`Appl. No. 11/889,685
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`Accordingly, Applicant respectfully requests the reconsideration and withdrawal
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`of the rejection of claims 1-12, 14-17, 36-47 and 49-52 under 35 U.S.C.§ 101.
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`Rejections under 35 U.S.C. § 103
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`Claims 1-814, 15, 18, 19, 22-26, 32. 33, 36-43, 49, 50,53, 54, 57-61, 67 and 68
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`The Examiner has rejected claims 1-8, 14, 15, 18, 19, 22-26, 32, 33, 36-43, 49,
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`50, 53, 54, 57-61, 67 and 68 under 35 U.S.C. § 103(a) as allegedly being obvious over
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`U.S. Patent No. 7,340,599 to Naccache (“Naccache”) in view of U.S. Patent No.
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`5,577,125 to Salahshour et al. (“Salahshour”). Applicant respectfully traverses this
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`rejection.
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`Claim 1
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`recites,
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`inter alia, “for graphically displaying the secured items,
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`superimposing for each secured item a security icon correspondingto the security level
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`of that item over a default icon, wherein the default icon represents a corresponding
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`non-secured item of a samefile type as the respective secured item.”
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`In arguing the rejection of claim 1, the Examiner relies on Naccacheto allegedly
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`teach “displaying selected icon and assigning a characteristic for indicating that the
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`operation in progress is or is not secure.”
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`(Office Action, p. 5). This icon, such as
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`padlock 28 of FiG. 2, is superimposed on a web browserto indicate a secure transaction.
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`However, this icon is never intended to be superimposed “over a default icon,”as recited
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`in claim 1, and in fact does not operate on a mechanism that would allow this
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`functionality.
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`Instead,
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`the Examiner relies on Salahshour as allegedly teaching “key icon
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`image(s) overlay/superimpose default folder icon”.
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`(Office Action, p. 6). Contrary to
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`the Examiner’s assertion, it would not have been obviousto one of ordinary skill in the
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`Reply to Office Action of May 26, 2011
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`Nalini J. PRAKASH
`Appl. No. 11/889,685
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`art
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`to superimpose a dynamic security icon (i.e, one that changes based on
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`correspondence to the security level of the item) over the default icon. Missing from
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`either reference is any teaching or suggestion of how one ofordinary skill in the art
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`would be able to apply a corresponding security icon over a default icon, rather than just
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`the one icon (key) of Salahshour, as shown in Salahshour, FIG.2.
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`In effect, the ability to show a particular icon correspondingto a security level (as
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`alleged in Naccache) does not mean that one of ordinary skill in the art would beable to
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`superimpose such an icon over another icon representing an item (e.g., a file). The
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`mechanisms used to display an icon in Naccache and to overlay an icon in Salahshour
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`are not the same,are not interchangeable, and are not interoperable.
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`In the ‘597 patent, Applicant discusses the exemplary use of Windows DLLfiles
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`containing a plurality of customized icons.
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`(‘597 patent, 9:17-38). This is an exemplary
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`mechanism by which an icon can be superimposed over another, as in the Salahshour
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`example. However, Salahshouronly everuses a single icon (e.g., the key icon), and does
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`not providefacilities for superimposing oneofa plurality of icons.
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`In contrast, Naccache simply allegedly displays particular icons for a security
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`level, without superimposing them, and would therefore not use a display mechanism
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`that allows superimposing icons.
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`The result
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`is that application of Naccache to
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`Salahshour changes the principle ofoperation ofeither one of the references. Naccache
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`uses simple image rendering capabilities that do not operate on icons in the sense of the
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`claim, particularly icons for graphically displaying the secured items (Naccache’s icons
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`do not behave in this manner, they are just images - see Naccache, 4:4-6).
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`In contrast,
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`Salahshour does operate on this kind of icon, but lacks the ability to display the relevant
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`icon from a set of icons. The two referencesare therefore not physically combinable.
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`Reply to Office Action of May 26, 2011
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`- 26 -
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`Nalini J. PRAKASH
`Appl. No. 11/889,685
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`For at least the aforementioned reasons, claim 1 is not rendered obvious by the
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`combination of Naccache and Salahshour. {[ndependent claims 14, 18, 22, 32, 36, 49, 53,
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`57, and 67 recite similar features, using respective language, and are likewise not
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`rendered obvious by the combination of Naccache and Salahshour for at least the same
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`reasons as claim 1, and further in view of their own respective features. Various
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`dependent claims each depend from one of the aforementioned independent claims, and
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`are likewise not rendered obvious by the combination of Naccache and Salahshour forat
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`least the same reasons as the independent claims from which they depend, and furtherin
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`view of their own respective features.
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`Accordingly, Applicant respectfully requests the reconsideration and withdrawal
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`of the rejection of claims 1-8, 14, 15, 18, 19, 22-26, 32, 33, 36-43, 49, 50, 53, 54, 57-61,
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`67 and 68 under 35 U.S.C. § 103(a).
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`Claims 9-12, 16, 17, 20, 21, 27-30, 34, 35; 44-47, 51,52,.55,56, 62-655
`69, and 70
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`The Examiner has rejected claims 9-12, 16, 17, 20, 21, 27-30, 34, 35, 44-47, 51,
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`52, 55, 56, 62-65, 69, and 70 under 35 U.S.C. § 103(a) as allegedly being obvious over
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`Naccache in view of Salahshour, further in view of U.S. Patent No. 5,638,501 to Gough
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`et al. (“Gough”). Applicant respectfully traverses this rejection.
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`For the reasons noted above, Naccache and Salahshourfail to teach or suggest
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`each and every feature of the several independent claims (1, 14, 18, 22, 32, 36, 49, 53,
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`57, and 67), and therefore do not render those claims obvious. Goughfails to supply the
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`missing teachings or suggestions, and therefore the several independent claims are also
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`not rendered obvious by the combination of Naccache, Salahshour, and Gough. Claims
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`9-12, 16, 17, 20, 21, 27-30, 34, 35, 44-47, 51, 52, 55, 56, 62-65, 69, and 70 each depend
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`Reply to Office Action of May 26, 2011
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`-27-
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`Nalini J. PRAKASH
`Appl. No. 11/889,685
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`from one of the several independentclaims, and are likewise not rendered obvious by the
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`combination of Naccache, Salahshour, and Gough for at least the same reasons as the
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`several independentclaims, and further in view of their own respective features.
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`Accordingly, Applicant respectfully requests the reconsideration and withdrawal
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`of the rejection of claims 9-12, 16, 17, 20, 21, 27-30, 34, 35, 44-47, 51, 52, 55, 56, 62-
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`65, 69, and 70 under 35 U.S.C. § 103(a).
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`Conclusion
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`All of the stated grounds of objection and rejection have been properly traversed,
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`accommodated, or rendered moot. Applicant therefore respectfully requests that the
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`Examiner reconsider all presently outstanding objections and rejections and that they be
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`withdrawn. Applicant believes that a full and complete reply has been made to the
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`outstanding Office Action and, as such,
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`the present application is in condition for
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`allowance.
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`If the Examiner believes, for any reason, that personal communication will
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`expedite prosecution of this application,
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`the Examiner is invited to telephone the
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`undersigned at the number provided.
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`Reply to Office Action of May 26, 2011
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`- 28 -
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`Nalini J. PRAKASH
`Appl. No. 11/889,685
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`Prompt and favorable considerationof this Amendment and Replyis respectfully
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`requested.
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`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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` Salvador M, Bezos
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`Attorney for Applicant
`Registration No. 60,889
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` Date: .
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`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
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