Dilip Sarmah et al.

Patent Trials and Appeals Board

Jun 1, 2020

2018007625 (P.T.A.B. Jun. 1, 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.
12/183,390 07/31/2008 Dilip SARMAH 1933.0610000 5521
82515 7590 06/01/2020
Sterne, Kessler, Goldstein & Fox P.L.L.C.
1100 New York Avenue, N.W.
Washington, DC 20005
EXAMINER
DU, HUNG K
ART UNIT PAPER NUMBER
2647
NOTIFICATION DATE DELIVERY MODE
06/01/2020 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):
e-office@sternekessler.com
jasong@sternekessler.com
mlee@sternekessler.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DILIP SARMAH, HUGUES A. LEBEGUE,
PAUL J. HERMENS, and LIN MURONG
____________________

Appeal 2018-007625
Application 12/183,390
Technology Center 2600
____________________

Before JOHN A. JEFFERY, BRYAN F. MOORE, and
JOHN P. PINKERTON, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Non-Final Rejection of claims 1, 2, 5–12, 15–23, and 25–36, which are all of
the claims pending in the application. Claims 3, 4, 13, 14, and 24 are
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Sybase
Inc. Appeal Br. 3.
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STATEMENT OF THE CASE
Introduction
Appellant generally describes the disclosed and claimed invention as
“an interface for a transaction system and, more specifically, to mobile
banking over short message service [SMS].” Spec. ¶ 2.2 The Specification
states that SMS is a communications protocol available to many cell phone
users, allowing for transmission of text messages to other cell phone users,
but due to its limitations, “very limited uses exist for SMS which allow users
to perform transactions with a business, such as a financial institution.” Id.
at ¶ 6. According to the Specification, an interface is desired “for enabling
business operations, such as financial institutions, to integrate SMS
communications into their business systems.” Id. at ¶ 7.
Independent claim 1, which is reproduced below, is illustrative of the
subject matter on appeal:
1. A method comprising:
receiving a first instruction from an SMS gateway in a first
SMS message, a second instruction from the SMS gateway in a
second SMS message, and a third instruction from the SMS
gateway in a third SMS message, wherein the first, second, and
third SMS messages originate from a client device;
parsing the first instruction to obtain a first transaction and
a first security level corresponding to the first instruction, parsing
the second instruction to obtain a second transaction and a second
security level associated with the second instruction, and parsing

2 Our Decision refers to the Non-Final Rejection mailed Oct. 3, 2017
(“Non-Final Act.”), Appellant’s Appeal Brief filed Dec. 13, 2017 (“Appeal
Br.”), Response to Notice of Non-Compliant Appeal Brief filed Jan. 16,
2018 (“Response”), and Reply Brief filed July 20, 2018 (“Reply Br.”), the
Examiner’s Answer mailed June 1, 2018 (“Ans.”), and the Specification
filed July 31, 2008 (“Spec.”).
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the third instruction to obtain a third transaction and a third
security level associated with the third instruction, wherein the
first security level comprises device authentication, the second
security level comprises user authentication, and the third
security level comprises re-authentication that requires re-
authentication of the user prior to processing of the instruction
even if the user has previously been authenticated, wherein a user
id and password are the same for both the authentication and the
re-authentication;
performing authentication according to the security level
associated with each of the instructions and based on the
capabilities of the client device;
establishing a session with the client device using an
identifier that uniquely identifies the client device;
calling, in response to a successful performance of the
authentication, a function on a plug-in via an application
programming interface, wherein the plug-in is configured to
directly interface with a transaction system and to associate calls
made via the application programming interface with
corresponding functionality of the transaction system configured
to perform the transaction;
receiving a response from the transaction system; and
transmitting the response to the client device in a response
SMS message using the established session.
Response 2 (Claims App.).
Rejection on Appeal
Claims 1, 2, 5–12, 15–23, and 25–36 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. Non-Final Act. 3–4.
ANALYSIS
The Examiner rejects claim 1 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement because the
Specification does not specifically disclose that “a user id and password are
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the same for both the authentication and the re-authentication.” Non-Final
Act. 3–4. The Examiner notes that independent claims 11 and 22 recite
similar subject matter as claim 1 and, therefore, rejects claims 11 and 22,
and dependent claims 2, 5–10, 12, 15–21, 23, and 25–36, for the same
reason. Id.
In particular, the Examiner finds that although paragraph 64 of the
Specification discloses “a password for providing authentication,” there is
“no specific disclosure that the password must be the same for user
authentication and re-authentication.” Id. at 4; Ans. 3. The Examiner also
finds that although paragraph 72 states that “[r]e-authentication, in
accordance with ‘re-authentication’ instruction security level 1008, is
performed in a similar manner as the authentication associated with ‘user
authentication” instruction security level 1006,” the Specification does not
“explicitly describe the ‘performed in a similar manner’” includes the
password associated with “re-authentication” must be the same as the
password associated with “user authentication.” Ans. 4.
We are persuaded by Appellant’s arguments that the Examiner erred.
“[T]he description requirement does not demand any particular form of
disclosure, or that the specification recite the claimed invention in haec
verba.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed.
Cir. 2010) (en banc) (internal citations omitted). Rather, “the test for
sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad, 598
F.3d at 1351; see also Idenix Pharm. LLC v. Gilead Scis. Inc., 941 F.3d
1149, 1163 (Fed. Cir. 2019) (“To fulfill the written description requirement,
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a patent owner “must ‘convey with reasonable clarity to those skilled in the
art that, as of the filing date sought, he or she was in possession of the
invention,’ and demonstrate that by disclosure in the specification of the
patent.”).
Here, we agree with Appellant’s argument that the Examiner “is using
the wrong standard in reading the Specification.” Reply Br. 3; see also
Appeal Br. 12. Although the Examiner discusses paragraphs 64 and 72 of
the Specification, which are relied on by Appellant, the Examiner rejects
Appellant’s arguments because these paragraphs do not provide “specific
disclosure” or “explicitly describe” that the password used for re-
authentication “must be the same” as the password used for authentication.
Ans. 3–4, 6. We find the Examiner erred by requiring a “specific
disclosure” in the Specification that the passwords are the same because “to
satisfy the written description requirement, the disclosure as originally filed
does not have to provide in haec verba support for the claimed subject
matter at issue.” Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323
(Fed. Cir. 2000).
We also agree with Appellant that the original disclosure conveys
with reasonable clarity to ordinarily skilled artisans that Appellant possessed
the claimed invention, including the limitation that the user password is “the
same for both the authentication and the re-authentication.” As Appellant
argues, paragraph 64 of the Specification explains that an instruction to be
processed could include “a password for providing authentication.” Appeal
Br. 11. As Appellant also argues, paragraph 72 states that re-authentication
is performed “in a similar manner” as authentication. And, as Appellant
notes, the Examiner acknowledged that “[r]e-authentication is the process of
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authenticating a user again.” Reply Br. 3 (citing Ans. 6). Appellant further
argues, and we agree, that the Specification only “refers to a single
password, and nowhere states that multiple or different passwords are used
(or even contemplated) for authentication / re-authentication.” Id.
Moreover, Appellant argues “there is no reason why a user would be
required to have different passwords when authenticating a first time, and
authenticating a second time (re-authenticating).” Id.
We find that the Specification’s description of re-authenticating a user
“in a similar manner” as authentication, and of a single user password for
authentication, reasonably conveys to a person of ordinary skill in the art
that the same user password is used for both authentication and re-
authentication. Thus, we are persuaded by Appellant’s argument that the
Specification provides written description support for the disputed
limitation. See Ariad, 598 F.3d at 1351. Accordingly, we do not sustain
the Examiner’s rejection of claims 1, 2, 5–12, 15–23, and 25–36 under
35 U.S.C. § 112, first paragraph.
CONCLUSION
We reverse the Examiner’s rejection of claims 1, 2, 5–12, 15–23, and
25–36 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 5–12,
15–23, 25–36
112, first
paragraph
Written description 1, 2, 5–12,
15–23,
25–36

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REVERSED