Alcatel Lucent

Patent Trials and Appeals Board

Aug 6, 2020

15018098 - (D) (P.T.A.B. Aug. 6, 2020)

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.
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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.”).
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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
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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).

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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
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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”).
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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.
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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[,]
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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).
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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.
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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
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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),
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(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
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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).

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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).
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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.

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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).

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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