Ex Parte Campbell et al

Patent Trial and Appeal BoardJun 10, 2016

12504163 (P.T.A.B. Jun. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/504, 163 07/16/2009 25537 7590 06/14/2016 VERIZON PA TENT MANAGEMENT GROUP 1320 North Court House Road 9th Floor ARLINGTON, VA 22201-2909 FIRST NAMED INVENTOR Bruce S. Campbell 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 00-5018A CON2 9595 EXAMINER HO,RUAYL ART UNIT PAPER NUMBER 2175 NOTIFICATION DATE DELIVERY MODE 06/14/2016 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): patents@verizon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRUCE S. CAMPBELL, BURTON M. STRAUSS, III and MYRON C. DOLECKI 1 Appeal2013-006433 Application 12/504, 163 Technology Center 2100 Before RICHARD M. LEBOVITZ, JEFFREY N. FRED MAN, and RACHEL H. TOWNSEND, Administrative Patent Judges. TOWNSEND, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134 involving claims to a method, system, and software for distributing information electronically through a central gateway, which have been rejected for same invention double patenting and anticipation. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 Appellants identify the Real Party in Interest as Verizon Communications Inc. and its subsidiary companies. (Appeal Br. 1.) Appeal2013-006433 Application 12/504,163 STATEMENT OF THE CASE Appellants' invention generally relates to electronic access to and delivery of information and services to customers through a centralized connection and distribution point. (Spec. 1-3, 5-8.) Claims 17-34 are on appeal. Claims 17, 25, and 30 are illustrative and reads as follows: 1 7. A system, comprising: a gateway comprising a processor, a storage system, a first interface to a local premises network, and a second interface to a wide area network; a provisioning bundle, communicatively coupled to the gateway, configured to provide a provisioning service, wherein the provisioning service comprises receiving one or more bundles from a remote server over the wide area network and installing the received one or more bundles, and receiving updates to the one or more bundles and installing the received updates; and an authentication bundle, communicatively coupled to the gateway, configured to provide an authentication service, wherein the authentication service comprises authenticating an identity of a user and determining whether the user is authorized to access the one or more bundles. 25. A method comprising: communicating with a remote server over a wide area network to determine a number of bundles to install; installing the number of bundles based on the communication; placing at least one of the number of bundles within a partition when a digital identifier of each of the at least one number of bundles is an authorized digital identifier; and registering each service of each of the bundles of the partition; receiving an identifying element of a user via a user interface; authenticating the user based on the identifying element. 30. A non-transitory computer readable medium comprising code to perform a method comprising: 2 Appeal2013-006433 Application 12/504,163 contacting a remote server over a wide area network to determine a number of bundles to install, each bundle including a digital identifier and software to perform a service; receiving the number of bundles from the remote server; installing the number of bundles; placing at least one of the number of bundles within a partition when the digital identifier of each of the at least one of the number of bundles is an authorized digital identifier; registering each service of each of the number of bundles; displaying a user interface; receiving an identifying element of a user; and authenticating the user based on the identifying element. (Appeal Br. 28, 30, 32.) The following grounds of rejection by the Examiner are before us on review: 1. Claims 17-22 and 25-34 under 35 U.S.C. Â§ 101 for claiming the same invention as claims 1-11 of U.S. Patent No 7,574,660. 2. Claims 17-34 under 35 U.S.C. Â§ 102(e) as anticipated by Guheen. 2 DISCUSSION Ground 1. Double Patenting The Examiner contends that claims 1-11 of the '660 patent anticipate claims 17-22 and 25-34 of the application and vice versa. (Ans. 2, 5-6.) We disagree with the Examiner's findings. A rejection based on the same invention type double patenting of 35 U.S.C. Â§ 101 requires that the inventions recited in the two sets of claims be exactly the same, i.e., identical subject matter is being claimed. In re Vogel, 422 F.2d 438, 441 (CCPA 2 Guheen et al., U.S. Patent 6,519,571 Bl. 3 Appeal2013-006433 Application 12/504,163 1970). Any differences in scope between the claims precludes rejecting the application claims for statutory double patenting. In re Goodman, 11 F.3d 1046, 1052 (Fed. Cir. 1993). We agree with Appellants that independent claim 1 of the '660 patent directed to a system recites additional elements not recited in system claim 17 of the application. (Appeal Br. 12; '660 patent 18:18--45.) In particular, unlike claim 1 of the '660 patent, claim 1 7 of the application does not require "a partition" or bundles "including a digital identifier comprising a digital signature." (Id.) Dependent claims 18-22 of the application also do not require those limitations. (Appeal Br. 28-29.) Thus, claims 17-22 of the application could be infringed without infringing claims 1---6 of the '660 patent, which denotes that application system claims 1 7-22 have a different scope than the system claims 1---6 of the '660 patent. In re Vogel, 422 F.2d at 441 ("A good test, and probably the only objective test, for 'same invention,' is whether one of the claims could be literally infringed without literally infringing the other."). Therefore claims 17-22 of the application are not directed to the "same invention" as claims 1-6 of the '660 patent. Likewise, method and medium claims 25-34 of the application are not directed to the "same invention" as method claims 7-11 of the '660 patent. As Appellants note, claim 7 of the '660 patent, unlike claim 25 of the application, requires "displaying a user interface" as part of the method. (Appeal Br. 14; '660 patent 19:23-20:4.) Dependent claims 26-29 of the application also do not require the display of a user interface. (Appeal Br. 31.) Claims 30-34 of the application are directed to "a computer readable medium" (Appeal Br. 14), which none of claims 1-11 of the '660 patent are 4 Appeal2013-006433 Application 12/504,163 directed to ('660 patent 18:18-20:31). Moreover, claims 30-34 do not require code for "displaying a user interface." Therefore, claims 25-34 have a different scope than claims 7-11 of the '660 patent. In light of the difference in scope of the claims, we are constrained to reverse the Examiner's rejection of claims 17-22 and 25-34 on the ground of same invention double patenting under 35 U.S.C. Â§101. Ground 2. Anticipation a. Claims 17-2 4 According to the Examiner, Guheen at 167:50-168:15 teaches the recited "gateway" of claim 17. (Final Action 6-7; Ans. 2-3.) The Examiner further asserts that Guheen's "Business2 Product," described at columns 21- 23, and Guheen's "1.3 Business 3" product, described at 25:11-14, together teach the recited "provisioning bundle." (Final Action 6-7; Ans. 2-3, 9.) The explanation the Examiner provides is that "[t]he 'Business2 Product' allows real time communications through the Internet including emailing, chatting, receiving, retrieving, and updating as defined in paragraph [0068] of the present application." (Final Action 6-7; Ans. 2-3.) With regard to the claimed authentication bundle, the Examiner asserts that Guheen' s "Web-based access control" security management tool described at 73 :26- 67, teaches that limitation. (Final Action 7; Ans. 2-3.) The Examiner explains that this tool manages user access to web based applications with restricted access. The Web based application certainly includes one or more software layers/packages (bundles) as claimed. (Final Action 7 .) 5 Appeal2013-006433 Application 12/504,163 Appellants contest the Examiner's anticipation rejection for several reasons. With respect to the "provisioning bundle" limitation, Appellants argue that the cited portion of Guheen, namely cols. 21-25, does not disclose a provisioning service that comprises "installing the received one or more bundles, and receiving updates to the one or more bundles and installing the received updates" required by claim 17. (Appeal Br. 16; Reply Br. 5---6.) Appellants further argue that combining the description of Business 2 with pieces of the Business 3 description to meet the "provisioning bundle" limitation is improper because a "reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference" to be anticipatory. (Appeal Br. 16-17; Reply Br. 4--5.) With respect to the "authentication bundle," Appellants argue that the cited portion of Guheen-referring to a listing of "Security Management tools"---does not disclose an authentication bundle configured to provide an authentication service that "determin[ es] whether the user is authorized to access the one or more bundles." (Appeal Br. 16; Reply Br. 6.) Appellants also contend that "there is no indication in the cited portion [of Guheen] that the security tools are a part of either of the business software packages (i.e., Business2 or Business3)," and thus, Guheen does not disclose "all of the limitations arranged or combined in the same way as recited in the claim." (Appeal Br. 16-17; Reply Br. 4--5.) We agree with Appellants that on the record before us, the Examiner has not made out a prima facie case of anticipation. The Examiner's 6 Appeal2013-006433 Application 12/504,163 rejection does not meaningfully explain how Guheen discloses the disputed limitations noted above in the cited portions of the reference. We are therefore left to speculate as to how Guheen's disclosure anticipates the specified functions of the provisioning bundle and the authentication bundle required by claim 1 7. Moreover, in an anticipation rejection, "it is not enough that the prior art ... includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention." Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (citing In re Arkley, 455 F.2d at 5 87 ("[T]he [prior art] reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference. Such picking and choosing may be entirely proper in the making of a 103, obviousness rejection ... but it has no place in the making of a 102, anticipation rejection"). The instant rejection is for anticipation, not obviousness, and in the cited portions of Guheen relied upon by the Examiner, there are a large number of potential combinations with respect to Business 2 and Business 3 components; we agree with Appellants that the Examiner's anticipation rejection improperly resorts to the picking and choosing proscribed by Net Money IN, Inc. and Arkley. On this record, we are constrained to reverse the Examiner's anticipation rejection of claims 17-24 because the Examiner failed to properly establish a prima facie case of anticipation against the cited claims. 7 Appeal2013-006433 Application 12/504,163 b. Claims 25-34 The Examiner finds that Guheen' s "Business2 Product," described at columns 21-23, and Guheen' s "1.3 Business 3" product, described at 25: 11- 14, together teach the communicating, installing and placing limitations of claims 25 and 30. (Final Action 7-9; Ans. 2-3, 9.) The Examiner contends that "both 'Business2 Product' and 'Busines3 (www.business3.com)' demonstrate grouping/categorizing software tools based on their functionalities." (Final Action 4--5.) Appellants argue that the cited portion of Guheen, even if it were interpreted to demonstrate grouping software tools according to their functionalities, does not disclose the claimed placing limitation. (Appeal Br. 21, 24; Ans. 7.) In particular, Appellants note that Guheen does not disclose an identifier "is used in 'placing a number of bundles within a partition."' (Id.) The method of claim 25 requires "placing at least one of the number of bundles within a partition when a digital identifier of each of the at least one number of bundles is an authorized digital identifier." (Appeal Br. 30.) The computer readable medium of claim 30 also requires code that performs this same placing step. (Appeal Br. 32.) On the record before us, the Examiner has not meaningfully explained how Guheen discloses how a digital identifier is used in "placing at least one of the number of bundles within a partition." We are again left to speculate as to how the cited disclosure in Guheen anticipates that limitation in claims 25 and 30. Thus, on this record, we are constrained to reverse the Examiner's anticipation rejection of claims 25-34. 8 Appeal2013-006433 Application 12/504,163 SUMMARY We reverse the rejection of claims 17-22 and 25-34 under 35 U.S.C. Â§ 101 for claiming the same invention as claims 1-11 of the '660 patent. We reverse the rejection of claims 17-34 under 35 U.S.C. Â§ 102(e) as anticipated by Guheen. REVERSED 9