Dilip Sarmah et al.Download PDFPatent Trials and Appeals BoardJun 1, 20202018007625 (P.T.A.B. Jun. 1, 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. 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. Appeal 2018-007625 Application 12/183,390 2 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.”). Appeal 2018-007625 Application 12/183,390 3 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 Appeal 2018-007625 Application 12/183,390 4 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, Appeal 2018-007625 Application 12/183,390 5 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 Appeal 2018-007625 Application 12/183,390 6 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 Appeal 2018-007625 Application 12/183,390 7 REVERSED Copy with citationCopy as parenthetical citation