- 22 -
`Reply to Office Action of December 12, 2012
`
`Nalini J. PRAKASH
`Appl. No. 11/889,685
`
`Reconsideration of this Application is respectfully requested.
`
`Remarks
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`Uponentry of the foregoing amendment, claims 1-6, 8-12, 14-30, 32-41, 43-47,
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`49-65, and 67-70 are pending in the application’, with claims 1, 14, 18, 22, 32, 36, 49,
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`53, 57, and 67 being the independent claims. Claims 7, 13, 31, 42, 48, and 66 have been
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`previously cancelled. Claims 1, 14, 18, 22-30, 32-36, 49, 53, 57-65, and 67-70 are
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`sought to be amended by this Reply. Applicant reserves the right to prosecute similar or
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`broader claims, with respect to any amended or cancelled claims, in the future. These
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`changes are believed to introduce no new matter, and their entry is respectfully
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`requested.
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`Based on the above amendment and the following remarks, Applicant
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`respectfully requests that the Examiner reconsider all outstanding rejections and that they
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`be withdrawn. Throughout the arguments, Applicant reminds the Examiner that the
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`claims are given their broadest reasonable meaning in view of the specification, and any
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`paraphrasing of the claim features is not to be interpreted as reading any features into, or
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`characterizing of, the claims.
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`Supplemental Oath/Declaration
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`The Examinerhasrejected claims 1-6, 8-12, 14-30, 32-41, 43-47, 49-65, and 67-
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`70 under 35 U.S.C § 251 as allegedly being based upon a defective reissue declaration.”
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`Applicant respectfully requests that this rejection be held in abeyance until allowable
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`' In the Office Action, the Examinerstates that “(cllaims 1-6, 12, 14-30 ...” are
`pending. (Office Action, p. 2). Claims 8-11, omitted from the Examiner’s statement, are
`also pending.
`* The Examiner’s rejection includes claims 7 and 42, which were cancelled by the
`prior Reply. (Office Action, p. 2). The rejection is moot as to these cancelled claims.
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`- 23 -
`Reply to Office Action of December 12, 2012
`
`Nalini J. PRAKASH
`Appl. No. 11/889,685
`
`subject matter is indicated, at which time a supplemental declaration under 37 C.F.R. §
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`1.175(b)(1) will be submitted covering all errors corrected in reissue prosecution.
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`Rejections under 35 U.S.C. § 101
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`The Examiner has rejected claims 18-30, 32-35, 53-65, and 67-70 under 35
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`U.S.C. § 101 as allegedly being directed to non-statutory subject matter. Applicant
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`respectfully traverses this rejection.
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`The independent claims subject to this rejection are claims 18, 22, 32, 53, 57, and
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`67. Without acquiescing to the propriety of the rejection, independent claims 22, 32, 57,
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`and 67 have been amended to instead recite a “non-transitory computer readable
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`medium,” thereby accommodating the rejection as to those claims and their dependents.
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`Applicant notes that “[a] non-transitory computer-readable storage medium,” as recited
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`comprises all computer-readable media, with the sole exception being a transitory,
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`propagating signal. Regarding independent claims 18 and 53, Applicant submits that the
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`existing language reciting “an article of manufacture” provides the statutory support,
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`absent any statutory support for a “computer-readable medium.”
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`Accordingly, Applicant respectfully requests the reconsideration and withdrawal
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`of the rejection of claims 18-30, 32-35, 53-65, and 67-70 under 35 U.S.C. § 101.
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`Rejections under 35 U.S.C. § 103
`
`Claims 1, 14, 18, 22, 32, 36, 49, 53, 57, and 67
`
`The &xaminer has rejected claims 1-6, 8, 14, 15, 18, 19, 22-26, 32, 33, 36-41, 43,
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`49, 50, 53, 54, 57-61, 67, and 68 under 35 U.S.C. § 103(a) as allegedly being obvious
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`over U.S. Patent No. 6,424,429 to Takahashi et al. (“Takahashi”) in view of U.S. Patent
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`No. 6,031,532 to Gourdol et al. C‘Gourdol’), further in view of U.S. Patent No.
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`Atty. Dkt. No. 2222,540REIO
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`- 24 -
`Reply to Office Action of December 12, 2012
`
`Nalini J. PRAKASH
`Appl. No. 11/889,685
`
`5,898,434 to Small et al. (“Small”).’ Applicant respectfully traverses this rejection and
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`does not acquiesce to the propriety of the rejection.
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`Claim 1 as amended by this reply recites, in part, “wherein the security icon is
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`superimposed on the same portion of the default icon regardless of the corresponding
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`security level and uniquely represents that security level.” Neither Takahashi, Gourdol,
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`or Small, taken alone or in combination, teach or suggest at least this feature of claim 1.
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`Pursuant
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`to 37 C.F.R. §1.173(c), Applicant asserts that support
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`for this
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`amendmentis found,e.g., in U.S. Patent No. 6,931,597 (the 597 patent) at least at FIGs.
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`4D and 4E (showing “SECRET”and “Top Secret” disposed over a same portion of the
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`underlying default icon, where each uniquely represents the security level corresponding
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`to the secured item) and, e.g., at "597 patent, col. 9, line 7 — col. 10,line 12.
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`In arguing the rejection of claim 1, the Examiner acknowledges that “Takahashi
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`and Gourdol do not explicitly disclose a security level selected from a set of a plurality
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`of security levels.”
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`(Office Action, p. 5).
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`Instead, the Examiner relies on Small as
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`allegedly teaching this feature.
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`In particular, the Examiner alleges that the various
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`markings shown in FIG. 3 of Small could be used to indicate different security levels
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`from a set of a plurality of security levels. (Office Action, p. 6.)
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`Without acquiescing to the propriety of this characterization, Applicant seeks to
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`amend claim 1 to recite, as noted above, “wherein the security icon is superimposed on
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`the same portion of the default icon regardless of the corresponding security level and
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`uniquely represents that security level.” Small fails to teach or suggest these features of
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`claim 1.
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`In fact, as explicitly acknowledged by the Examiner, “Rush element 44 could
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`be singularly used to mark a computer generated document as a rush document, or it
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`could be combined with another element, such as To Do element 40, to indicate that
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`- 25 -
`Reply to Office Action of December 12, 2012
`
`Nalini J. PRAKASH
`Appl. No. 11/889,685
`
`something that is to be done, is to be done immediately.” (Office Action, p. 6). To this
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`end, Small not only fails to teach or suggest the foregoing elements of claim 1, but
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`actually teaches against their usage.
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`This understanding is consistent with the further description of Small, which
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`clarifies that there are “cases where several different types of elements are applied to an
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`object,” in which case “the appearance of one or more of the indicators which are
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`displayed, or the appearance of the icon, may be altered to indicate the presence of
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`additional elements.” (Small, col. 19, I. 50-57.)
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`The Small approach is in sharp contrast to the claimed approach whereby the
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`security icon “uniquely represents that security level.” Based on this amendedlanguage,
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`it is clear that the indicators of Small do not correspond to the claimed “‘security level,”
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`as they do not uniquely represent any particular security level. Consistent with the ’597
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`patent, a secured item would never be at both a “SECRET” (FIG. 4D) and a “Top
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`Secret” (FIG. 4E) security level. As a result, in the 597 patent, the security icons
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`uniquely represent a security level.
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`In Small, the ability to combine indicators (alleged
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`by the Examinerto be representative of a security level) meansthat no indicator can truly
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`uniquely represent a particular security level (e.g., it is not clear whether a “security
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`level” is the same or different for a document marked “Confidential” (Small, FIG. 3,
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`element 48) versus a document marked “Confidential” and “RUSH!” (Small, FIG. 3,
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`element 44)).
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`Moreover, Small’s indicators also fail to teach or suggest superimposing the
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`security icon “on the same portion of the default icon regardless of the corresponding
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`security level,” as further recited in claim 1. Small describes separate ways of marking
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`documents, none of which teaches the features of claim 1. For example, a document
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`- 26-
`Reply to Office Action of December 12, 2012
`
`Nalini J. PRAKASH
`Appl. No. 11/889,685
`
`may be marked with two separate indicators (assuming sufficient space, see Small 18:50-
`
`53) or by taking an existing indicator and modifying it to indicate the presence of
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`additional elements (e.g., by altering the border ofthe indicator, see Small 18:53-57).
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`As a result, a document that is “Confidential” and “RUSH!” in Small may be
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`represented by, for example, marking the document “Confidential” with a red border.
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`This does not uniquely represent a particular security level (assuming it represents a
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`security level at all, to which Applicant does not acquiesce), since Small provides for the
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`same combination to be represented by separately identifying the document as both
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`“Confidential” and “RUSH!”if space is available.
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`Takahashi and Gourdol do not supply the missing teaching or suggestion, nor
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`does the Examiner rely on Takahashi and Gourdol for this purpose. As discussed in the
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`Preliminary Amendment dated August 30, 2012 at pp. 25-26, Takahashi provides
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`separate buttons for a single document (e.g., “Code” and “Security”), which are not
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`security levels, but simply implement separate instructions.
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`(See, e.g., Takahashi, FIG.
`
`38). Likewise, Gourdol’s presence or absence ofsecurity (e.g., the presence and absence
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`of the “lock”) does not provide the claimed security levels, as claim 1 separately recites
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`“wherein the default icon represents a corresponding non-secured item of a samefile
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`type as the respective secured item.”
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`(see Preliminary Amendment dated August 30,
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`2012 at p. 26).
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`For at least the aforementioned reasons, claim 1
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`is not rendered obvious by the
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`combination of Takahashi, Gourdol, and Small. Claims 14, 18, 22, 32, 36, 49, 53, 57,
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`and 67 each recite similar distinguishing features, and are likewise not rendered obvious
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`by the combination of Takahashi, Gourdol, and Small for at least the same reasons as
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`

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`-27-
`Reply to Office Action of December 12, 2012
`
`Nalini J. PRAKASH
`Appl. No. 11/889,685
`
`claim 1, and further in view of their own respective features. The rejection of the various
`
`dependentclaimsis likewise in error.
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`Accordingly, Applicant respectfully requests the reconsideration and withdrawal
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`of the rejection of claims 1-6, 8, 14, 15, 18, 19, 22-26, 32, 33, 36-41, 43, 49, 50, 53, 54,
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`57-61, 67, and 68 under 35 U.S.C. § 103(a).
`
`Pependent Claims
`
`The Examiner has rejected claims 9-12, 16, 17, 20, 21, 27-30, 34, 35, 44-47, 51,
`
`52, 55, 56, 62-65, 69, and 70 under 35 U.S.C. § 103(a) as allegedly being obvious over
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`Takahashi in view of Gourdol, in further view of Small, further in view of U.S. Patent
`
`No. 5,638,501 to Gough et al. (“Gough”). Applicant respectfully traverses this rejection.
`
`As discussed above, the combination of Takahashi, Gourdol, and Small fails to
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`teach or suggest at least “wherein the security icon is superimposed on the same portion
`
`of the default icon regardless of the corresponding security level and uniquely represents
`
`that security level” as recited in claim 1, and similar distinguishing features in
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`independent claims 14, 18, 22, 32, 36, 49, 53, 57, and 67. Gough is not used by the
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`Examiner to supply, nor does Gough supply, the missing teaching or suggestion, and
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`therefore the foregoing claims are not
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`rendered obvious by the combination of
`
`Takahashi, Gourdol, Small, and Gough. Claims 9-12, 16, 17, 20, 21, 27-30, 34, 35, 44-
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`47, 51, 52, 55, 56, 62-65, 69, and 70 each depend from one ofthe foregoing independent
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`claims, and are likewise not rendered obvious by the combination of Takahashi, Gourdol,
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`Small, and Gough for at least the same reasons, and further in view of their own
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`respective features.
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`Atty. Dkt. No. 2222.540REI0
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`- 28 -
`Reply to Office Action of December 12, 2012
`
`Nalini J. PRAKASH
`Appl. No. 11/889,685
`
`Accordingly, Applicant respectfully requests the reconsideration and withdrawal
`
`of the rejection of claims 9-12, 16, 17, 20, 21, 27-30, 34, 35, 44-47, 51, 52, 55, 56, 62-
`
`65, 69, and 70 under 35 U.S.C. § 103(a).
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`Atty. Dkt. No. 2222.540REIO
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`~ 29 -
`Reply to Office Action of December 12, 2012
`
`Nalini J. PRAKASH
`Appl. No. 11/889,685
`
`Conclusion
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`All of
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`the
`
`stated grounds of
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`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 rejections and that they be withdrawn.
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`Applicant believes that a full and complete reply has been made to the outstanding
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`Office Action and, as such, the present application is in condition for allowance. If the
`
`Examiner believes,
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`for any reason,
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`that personal communication will expedite
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`prosecution of this application, the Examiner is invited to telephone the undersigned at
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`the numberprovided.
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`Promptand favorable consideration of this Amendment and Reply is respectfully
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`requested.
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`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`al
`
`ae
`aoeee
`‘
`oe
`
`SalvadorYM. Bezos
`Attorney for Applicant
`Registration No. 60,889
`Date: “2«fasparSets3
`
`pe
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`1621704_1.DOCX
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`Atty. Dkt. No. 2222.540REIO
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`