Alcatel LucentDownload PDFPatent Trials and Appeals BoardAug 6, 202015018098 - (D) (P.T.A.B. Aug. 6, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/018,098 02/08/2016 Thyagarajan Nandagopal 884796-US- CNT[2] 127786C2 2196 46363 7590 08/06/2020 Tong, Rea, Bentley & Kim, LLC Nokia 12 Christopher Way Suite 105 Eatontown, NJ 07724 EXAMINER D AGOSTA, STEPHEN M ART UNIT PAPER NUMBER 2414 NOTIFICATION DATE DELIVERY MODE 08/06/2020 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing@trbklaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte THYAGARAJAN NANDAGOPAL _____________ Appeal 2020-000563 Application 15/018,098 Technology Center 2400 ____________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and JAMES W. DEJMEK, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1–3, 5–9, 11–15, and 17–20. Claims 4, 10, and 16 are canceled. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a) (2019). According to Appellant, “[t]he real party in interest is Alcatel Lucent, which is part of Nokia.” See Appeal Br. 3. Appeal 2020-000563 Application 15/018,098 2 STATEMENT OF THE CASE 2 Introduction Appellant’s claimed invention relates generally to the “fields of communication protocols and internetworking and, in particular, relates to security, authentication, e-commerce, wireless networks, buyers and sellers, and mobile computing.” Spec. 1, ll. 15–18. Illustrative Independent Claim 1 1. An apparatus, comprising: at least one processor; and at least one memory including computer program code; wherein said at least one memory and said computer program code are configured to, with said at least one processor, cause said apparatus to at least: receive, at a service provider, identification information associated with a user of a mobile device and an identifier associated with said mobile device, said identification information comprising a user name; determine, at said service provider, that said identification information is associated with a mobile device and a corresponding registered user of said service provider, said registered user being associated with a randomized key string adapted to enable a vendor to authenticate said user after receiving said randomized key string from said mobile device; generate and direct said randomized key string toward said mobile device; and 2 We herein refer to the Final Office Action, mailed May 6, 2019 (“Final Act.”); Appeal Brief, filed July 25, 2019 (“Appeal Br.”); the Examiner’s Answer, mailed August 29, 2019 (“Ans.”); and the Reply Brief, filed October 29, 2019 (“Reply Br.”). Appeal 2020-000563 Application 15/018,098 3 communicate said randomized key string to said vendor in response to receiving from said vendor said mobile device identifier and said identification information of said registered user of said service provider, said communicating of said randomized key string being adapted to enable authentication of a user transaction by the vendor based on the randomized key string. Appeal Br. 25, Claims App. (disputed “communicate” limitation emphasized). Evidence The prior art relied upon by the Examiner as evidence is: Name Reference Date Ueshima US 6,731,731 B1 May 4, 2004 Singhal US 2004/0203595 A1 Oct. 14, 2004 Linlor US 2008/0091544 A1 Apr. 17, 2008 Rejections Rej. Claims Rejected 35 U.S.C. § Reference(s)/Basis A 1–3, 5–9, 11–15, 17–20 Non- statutory Obviousness- Type Double Patenting (OTDP) Claims 1–16 of U.S. Patent No. 8,934,865. B 1–3, 5–9, 11–15, 17–20 112, second paragraph indefiniteness C 1–3, 5–9, 11–15, 17–20 103(a) Ueshima, Linlor, Singhal Appeal 2020-000563 Application 15/018,098 4 ANALYSIS Obviousness-Type Double Patenting Rejection A Claims 1–3, 5–9, 11–15, and 17–20 The Examiner rejects claims 1–3, 5–9, 11–15, and 17–20 on the ground of non-statutory OTDP, as being unpatentable over claims 1–16 of U.S. Patent application number 11/345,695, now U.S. Patent No. 8,934,865. Final Act. 7. The Examiner concludes: “Although the claims at issue are not identical, they are not patentably distinct from each other because they recite using a randomized key string for authenticating a transaction between a user, service provider and vendor/merchant.” Id. Appellant submits: since a double patenting rejection depends on the claims of the application, until Appellants have claims that are allowable except for the double patenting rejection, Appellants cannot evaluate the correctness of any suggested double patenting rejection and, therefore, cannot determine any arguments that might be put forth against the suggested double patenting rejection. Therefore, Appellants will address such a ground of rejection, if maintained, once all other grounds of rejection are overcome. Appeal Br. 10. Accordingly, we pro forma sustain non-statutory OTDP Rejection A of claims 1–3, 5–9, 11–15, and 17–20, because the Examiner has not withdrawn this rejection, and Appellant has not substantively traversed the rejection. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-000563 Application 15/018,098 5 Rejection B under Pre-AIA 35 U.S.C. § 112, second paragraph The Examiner rejects all claims 1–3, 5–9, 11–15, and 17–20 as being indefinite on the following basis: The claims do not particularly point out and distinctly claim WHAT the authentication process is or HOW it is performed, the claim merely states that this “enables a vendor to authenticate said user” and “being adapted to enable authentication of a user transaction” without specifics being provided (which also amounts to a missing step/gap). Is it a simple comparison, is a mathematical formula used, are number used, are characters used, are sounds used, are public/private key(s) used, etc.? Similarly the claim(s) do not teach what pieces of information must be used to enable the authentication, [i.e.,] is it just the randomized key, is it the identification information, is it a combination of both, etc.? Authentication can be provided in myriad ways and the applicant is required to particularly point out and distinctly claim that process/function in their claims. Final Act. 8, (emphasis in original omitted, bold added for emphasis). Appellant disagrees: Appellant’s claim 1 includes additional details that further define authentication of a user transaction, including “said registered user being associated with a randomized key string adapted to enable a vendor to authenticate said user after receiving said randomized key string from said mobile device” and “said communicating of said randomized key string being adapted to enable authentication of a user transaction by the vendor based on the randomized key string.” Appeal Br. 12 (emphasis added). We note Appellant’s claim 1 recites, in pertinent part, the word “enable” in the claim itself: “said communicating of said randomized key Appeal 2020-000563 Application 15/018,098 6 string being adapted to enable authentication of a user transaction by the vendor based on the randomized key string.” (Emphasis added). Remaining independent claim 15 recites identical language in the “communicate” function. At the outset, we note that “[i]ndefiniteness under 35 U.S.C. § 112 ¶ 2 is an issue of claim construction and a question of law.” Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1331 (Fed. Cir. 2009) (citing Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008)). We see no language that is indefinite in Appellant’s independent claims 1 and 15 regarding the claimed “authentication,” because “[b]readth is not indefiniteness.” SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed. Cir. 2005) (citing In re Gardner, 427 F.2d 786, 788 (CCPA 1970). Based upon our review of independent claims 1 and 15, we conclude the stated basis for Rejection B by the Examiner (Final Act. 8) conflates the enablement requirement under pre-AIA 35 U.S.C. § 112, first paragraph, with indefiniteness under pre-AIA 35 U.S.C. § 112, second paragraph. For example, the Examiner concludes: “the claim(s) do not teach what pieces of information must be used to enable the authentication, [i.e.,] is it just the randomized key, is it the identification information, is it a combination of both, etc.?” Final Act. 8 (emphasis added). However, the fact that a claim is broad does not mean that it is indefinite, that is, undue breadth is not indefiniteness. In re Johnson, 558 F.2d 1008, 1016 n.17 (CCPA 1977); In re Miller, 441 F.2d 689, 693 (CCPA 1971). See MPEP § 2173.04 (“Breadth Is Not Indefiniteness”). Appeal 2020-000563 Application 15/018,098 7 We recognize that during prosecution of an application before the USPTO, the threshold standard of ambiguity for indefiniteness is lower than it might be during litigation of an issued patent. See Ex parte Miyazaki, 89 USPQ2d 1207, 1212 (BPAI 2008) (precedential). Thus, “if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim . . . indefinite.” Miyazaki, 89 USPQ2d at 1211. Moreover, because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). Here, we note the Examiner has not relied upon Miyazaki as a basis to support the rejection for indefiniteness. As noted above, we find the basis for the Examiner’s rejection for indefiniteness is improperly grounded on a purported lack of enablement under §112, first paragraph. However, the Examiner did not give Appellant notice of any rejection under 35 U.S.C. § 112, first paragraph, for reasons pertaining to a purported lack of enablement. Moreover, given that several exemplary embodiments of the claimed “authentication” are described in the Specification (e.g., under the “SUMMARY” section at pages 2 and 3, and elsewhere in the Specification), we see no lack of enablement of the claimed invention. It is our view that an artisan having knowledge of Appellant’s Specification and Drawings would be able to make and use the claimed invention without undue experimentation. We note the Examiner has not considered the aforementioned portions of the Specification that provide context, as a matter of claim construction. Appeal 2020-000563 Application 15/018,098 8 Nor has the Examiner fully developed the record to apply a lower threshold of indefiniteness in accordance with the broadest reasonable interpretation consistent with the Specification, as applied during patent examination. See Miyazaki, 89 USPQ2d at 1212; Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential); see also In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014). See infra, n.3 (We give the contested claim limitations the broadest reasonable interpretation consistent with the Specification.). Accordingly, for essentially the same reasons argued by Appellant in the Briefs, as further discussed above, we are constrained on this record to reverse the Examiner’s Rejection B of claims 1–3, 5–9, 11–15, and 17–20, under pre-AIA 35 U.S.C. § 112, second paragraph. Rejection C under Pre-AIA 35 U.S.C. § 103(a) Issue: Under 35 U.S.C. § 103(a), we focus our analysis on the following argued limitation regarding Rejection C of independent claim 1. Did the Examiner err by finding that Ueshima, Linlor, and Singhal, collectively teach or suggest the disputed “communicate” limitation: communicate said randomized key string to said vendor in response to receiving from said vendor said mobile device identifier and said identification information of said registered user of said service provider, said communicating of said randomized key string being adapted to enable authentication of a user transaction by the vendor based on the randomized key string[,] Appeal 2020-000563 Application 15/018,098 9 within the meaning of independent claim 1? (emphasis added).3 Regarding Ueshima, the Examiner finds: Ueshima does not have the Vendor (e.g. Service Provider) send user information to an entity to validate/authenticate said user to begin the process to generate the randomized key/password. This is akin to a person buying merchandise using a credit card and the vendor/merchant contacts the credit card company to validate/authenticate the user and their credit card. Final Act. 13. The Examiner finds Linlor teaches: a user requests to buy merchandise which causes a back-end system to authorize the user (eg. credit card) and then eventually send an authorization code to the user who inputs it into a Point Of Sale (POS) device whereby a back-end system confirms that the correct authorization code was entered – hence both the user and vendor/service provider are sent the password. Id. Appellant disagrees with the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness. Appellant submits: the cited portions of Linlor, alone or in combination with the cited portions of Ueshima and Singhal, fail to teach or suggest the feature of “communicate said randomized key string to said vendor in response to receiving from said vendor said mobile device identifier and said identification information of said registered user of said service provider.” Appeal Br. 15 (emphasis omitted). 3 We give the contested claim limitations the broadest reasonable interpretation (BRI) consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appeal 2020-000563 Application 15/018,098 10 In support, Appellant focuses on Linlor and explains: Rather, the cited portions of Linlor merely disclose an arrangement in which an authorization code (asserted by the Examiner to correspond to the randomized key string of Appellants’ claim 1) is generated and provided by the payment resolution module 110 to the transaction database 140 and to the handheld device 120 in response to receiving from a payment authorization source 130 an indication that the transaction has been approved, not communicated to the vendor in response to receiving from the vendor a mobile device identifier and identification information of a registered user of a service provider. More specifically, the cited portions of Linlor disclose an arrangement in which a payment resolution module 110 is in communication with a hand-held device 120, a payment authorization source 130, and a transaction database 140 that is accessible to a confirmation device 150 at a Point-of-Sale (POS) of the vendor, where the payment resolution module 110 identifies the user, transmits info identifying the user and the transaction requested by the user to the payment authorization source 130, receives a response from the payment authorization source 130 as to whether the transaction has been approved, generates an authorization code in response to receiving an indication from the payment authorization source 130 that the transaction has been approved, and provides the authorization code to both the transaction database 140 that is accessible to the confirmation device 150 at a POS of the vendor and to the handheld device 120. This is described at least in Paragraphs [0021]-[0026] of Linlor cited by the Examiner. Appeal Br. 15–16 (emphasis omitted). In the Answer, the Examiner further explains the basis for the rejection. In particular, the Examiner asserts that Appellant is: (1) arguing the references separately, and (2) ignoring that Ueshima teaches the “use of a phone number ID and ID information (such as username).” See Ans. 9. Appeal 2020-000563 Application 15/018,098 11 The Examiner clarifies that the “Final rejection states that Ueshima is silent on a ‘response’ ([i.e.,] that is based on receiving ‘information’ from said vendor) -- NOT that the mobile device ID and ID information are not taught (since that was taught by Ueshima).” Ans. 9–10. The Examiner explains: The rejection [sets] forth that Ueshima did not communicate his password/randomized string in response to a trigger that was similar to the trigger used in the appellant’s design - meaning Ueshima sends out passwords based upon the USER calling and requesting the password whereas the appellant’s design sends out randomized keys in response to the VENDOR receiving user information and then requesting the password. Ans. 10 (emphasis added). The Examiner finds: “[t]his is a PIVOTAL POINT” and provides two drawings, created by the Examiner, to annotate the record. Id. The Examiner finds: “Ueshima has a user contact the CTI server (to authenticate[]/register[] the user) and then it sends out passwords for the Service Provider to match (for authentication).” Id. The Examiner finds: “[i]n contrast, the [A]ppellant’s design clearly shows an interim step (#3) that requires the vendor to ‘request’ authentication of the user and for a password to be sent.” Id. The Examiner states that Linlor was added to teach the use of a vendor POS, [Point of Sale, i.e.,] sending of user ID/Info to the credit card company, etc.” Ans. 11. The Examiner additionally finds: One skilled understands that the user’s name, credit card number, address, expiration date, etc. would be sent to the credit card company (which reads on Ueshima’s support for phone number and Username). Linlor clearly dovetails with Ueshima in that the process is slightly changed but the outcome (using Ueshima’s teachings) reads on the appellant’s design based upon the vendor Appeal 2020-000563 Application 15/018,098 12 triggering the process where passwords are sent out to User/Vendor (while Ueshima had the User trigger the process). Ans. 11. In the Reply Brief, Appellant disagrees with the Examiner’s findings. Appellant contends: In other words, the trigger for sending the authorization code to the transaction database 140 that is accessible to the confirmation device 150 at a POS of the vendor is receipt of an indication from the payment authorization source 130 that the transaction has been approved, not receipt of information from the vendor (much less receipt of “said mobile device identifier and said identification information of said registered user of said service provider” as recited in Appellants’ claim 1). Thus, the trigger for sending of the authentication code as described in Linlor is entirely different than the trigger for the communicating of the randomized key string as recited in Appellants’ claim 1. Reply Br. 8 (emphasis omitted). In trying to understand the Examiner’s reading of the disputed “communicate” claim 1 limitation on the corresponding features found in Ueshima, Linlor, and Singhal, we note at the outset that the Examiner cumulatively reads the claimed “randomized key string” (that is “adapted to enable authentication of the user transaction by the vendor” —claim 1) on different features found in each reference: (1) Ueshima’s password (as generated by the information processing device) that is transmitted to both the user and the service provider See Final Act. 10, paragraph 4 (“(Abstract teaches the CTI server generates a password (eg. randomized key string) . . . ”; see also Ueshima, Abstract, Fig. 4), Appeal 2020-000563 Application 15/018,098 13 (2) Singhal’s user-requested one-time password. See Final Act. 15 (citing Singhal at Figure 1A, and paragraphs 42–47), and (1) Linlor’s “authentication code (eg. randomized key/password).” Final Act. 13. See Linlor ¶ 24 as reproduced on page 14 of the Final Action: “In one embodiment, the payment resolution module 110 also generates an authorization code for any requested transaction that has been approved. This authorization code may be sent to, and stored at, the transaction database 140.” (emphasis omitted and added in bold). We note the “time-limited password” described in Singhal at paragraphs 44–48, and as depicted in step 2 of Figure 1A. The Examiner also finds the secondary Linlor reference teaches that “both the user and vendor/service provider are sent the password.” Final Act. 13. We are of the view that the Examiner blurs the mapping of the claimed “randomized key string” by also corresponding it to an authentication code in Linlor. For example, see Final Action 13: “an authentication code (eg. randomized key/password) which is eventually sent to both the handheld device and transaction database/POS for verification and reads on the claim):” 4 (emphasis added). 4 The claim, interpreted under BRI is to be read on the reference — the reference does not “read on the claim,” as incorrectly stated by the Examiner. See Final Act. 13. The Examiner has it backwards with respect to the misplaced focus on interpreting the teachings of the reference, instead of properly interpreting the claims under BRI, and then reading the properly construed claim language on the corresponding features found in the reference. If it is not clear what the reference teaches, and some degree of speculation is required, the Examiner should search for a better reference, because we cannot engage in speculation to affirm the Examiner. Cited Appeal 2020-000563 Application 15/018,098 14 As noted above, Appellant disagrees, and argues that “the trigger for sending of the authentication code as described in Linlor is entirely different than the trigger for the communicating of the randomized key string as recited in Appellants’ claim 1.” Reply Br. 8 (emphasis added). We additionally note the argued “in response to” language of the disputed “communicate” limitation: “communicate said randomized key string to said vendor in response to receiving from said vendor said mobile device identifier and said identification information of said registered user of said service provider.” Claim 1 (emphasis added). See Appeal Br. 15. prior art references do not “read on” claim limitations, rather, a particular claim limitation “reads on” the corresponding feature(s) found in the cited prior art reference(s) after the claim language is properly construed in accordance with the broadest reasonable interpretation consistent with the Specification. See, e.g., Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999)(“Anticipation of a patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference.”) (emphasis added). We note claim construction is an important step in a patentability determination. Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (“Both anticipation under § 102 and obviousness under § 103 are two- step inquiries. The first step in both analyses is a proper construction of the claims . . . The second step in the analyses requires a comparison of the properly construed claim to the prior art.” (internal citations omitted)) (emphasis added). See also the mapping rule: 37 C.F.R. § 1.104(c)(2) (“When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.” (emphasis added). Appeal 2020-000563 Application 15/018,098 15 We observe the Examiner splits the claimed chain of causation (i.e., do A “in response to” B) between the Ueshima and Linlor references in the rejection. See Final Act. 13. The Examiner finds Ueshima “is silent on in response to receiving from said vendor said mobile device identifier and said identification information of said registered user of said service provider AND by the vendor based on the randomized key string.” Final Act. 13 (emphasis added). The Examiner also relies upon a theory of “design choice:” “Clearly a Design Choice exists since there is one overall authentication process but with different designs for the intermediate steps of the process.” Id. To the extent the Examiner finds: “[i]n contrast, the [A]ppellant’s design clearly shows an interim step (#3) that requires the vendor to ‘request’ authentication of the user and for a password to be sent” (Ans. 10), we note Appellant’s claims are silent regarding any password. Moreover, the Examiner’s use of annotated drawings to explain the rejection cannot be considered as primary evidence. See Ans. 10. In reviewing the record, we find the Examiner’s mappings (e.g., of the “randomized key string”) to be duplicative and thus confusing. USPTO procedural rules require that “[w]hen a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.” 37 C.F.R. § 1.104(c)(2) (emphasis added). An agency is bound by its own regulations. See Service v. Dulles, 354 U.S. 363, 388 (1957). Appeal 2020-000563 Application 15/018,098 16 Although the Examiner attempts to explain the basis for the rejection with the addition of annotated drawings (Ans. 10), on this record, we find such extrinsic evidence is insufficient to show obviousness. Moreover, given the “in response to” claim 1 language that is cleanly split between two references (Ueshima and Linlor), it is our view that the rationale for combining the cited references appears to be grounded on impermissible hindsight. Therefore, we find a preponderance of the evidence supports at least Appellant’s contention: the cited portions of Linlor merely disclose an arrangement in which an authorization code (again, asserted by the Examiner to correspond to the randomized key string of Appellants' claim 1) is generated and provided by the payment resolution module 110 to the transaction database 140 and to the handheld device 120 in response to receiving from a payment authorization source 130 an indication that the transaction has been approved, not communicated to the vendor in response to receiving from the vendor a mobile device identifier and identification information of a registered user of a service provider. Appeal Br. 17 (emphasis omitted and added in bold). For essentially the same reasons argued by Appellant in the Briefs, as discussed above, we find disputed “communicate” limitation of claim 1 is not taught or suggested by the Examiner’s proffered combination of Ueshima, Linlor, and Singhal. Accordingly, we are constrained on this record to reverse the Examiner’s obviousness Rejection C of independent claim 1. Remaining independent claim 15, also rejected under Rejection C, recites the disputed limitation of claim 1 using similar language of commensurate scope. Appeal 2020-000563 Application 15/018,098 17 Therefore, for the same reasons, we also reverse the Examiner’s Rejection C of independent claim 15. Because we have reversed the Examiner’s Rejection C of independent claims 1 and 15 on appeal, we also reverse the Examiner’s Rejection C of each associated dependent claim. Accordingly, we are constrained on this record to reverse the Examiner’s obviousness Rejection C of all claims 1–3, 5–9, 11–15, and 17–20 on appeal. CONCLUSIONS The Examiner did not err in rejecting claims 1–3, 5–9, 11–15, and 17–20 as being obvious over claims 1–16 of U.S. Patent No. 8,934,865 on the ground of non-statutory OTDP.5 The Examiner erred in rejecting claims 1–3, 5–9, 11–15, and 17–20 as being indefinite under pre-AIA 35 U.S.C. § 112, second paragraph. The Examiner erred in rejecting claims 1–3, 5–9, 11–15, and 17–20 as being obvious under pre-AIA 35 U.S.C. § 103(a), over the cited combination of Ueshima, Linlor, and Singhal. 5 In Ex parte Moncla, (2010 WL 2543659 (BPAI 2010) (precedential)), the Board declined to reach a provisional non-statutory obviousness-type double patenting rejection, after reversing the Examiner’s rejections based upon prior art. However, we conclude Moncla is inapplicable here, because there is no provisional OTDP rejection before us. See Moncla, at * 2 (holding that when the only remaining rejection is a provisional non- statutory obviousness‐type double patenting rejection, it would be premature for the Board to address such provisional rejection). Appeal 2020-000563 Application 15/018,098 18 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 5–9, 11–15, 17–20 N/A Non-statutory Obviousness-Type Double Patenting (OTDP) 1–3, 5–9, 11–15, 17–20 1–3, 5–9, 11–15, 17–20 112, second paragraph Indefiniteness 1–3, 5–9, 11–15, 17–20 1–3, 5–9, 11–15, 17–20 103(a) Ueshima, Linlor, Singhal 1–3, 5–9, 11–15, 17–20 Overall Outcome 1–3, 5–9, 11–15, 17–20 FINALITY AND RESPONSE Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation