Ex Parte DARE et alDownload PDFPatent Trial and Appeal BoardMar 27, 201712823877 (P.T.A.B. Mar. 27, 2017) 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. 12/823,877 06/25/2010 Peter Roy DARE GB920010065US5 8763 46583 7590 03/29/2017 Roberts Mlntknwski Safran Pole Rr PalHernn P P EXAMINER Intellectual Property Department P.O. Box 10064 COPPOLA, JACOB C MCLEAN, VA 22102-8064 ART UNIT PAPER NUMBER 3621 NOTIFICATION DATE DELIVERY MODE 03/29/2017 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@rmsc2.com lgallaugher@rmsc2.com dbeltran @ rmsc2. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER ROY DARE, JOHN OWLETT, and IMRAN FAIZ TYABJI Appeal 2014-0023731 Application 12/823,8772 Technology Center 3600 Before NINA L. MEDLOCK, KENNETH G. SCHOPFER, and BRADLEY B. BAYAT, Administrative Patent Judges. BAYAT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) the Examiner’s decision to reject claims 13—15, 17—25, and 27—32. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed July 22, 2013), Reply Brief (“Reply Br.,” filed Dec. 2, 2013), the Examiner’s Answer (“Ans.,” mailed Oct. 3, 2013), and the Final Rejection (“Final Act.,” mailed Mar. 22, 2013). 2 Appellants identify “International Business Machines Corporation of Armonk, New York” as the real party in interest. App. Br. 2. Appeal 2014-002373 Application 12/823,877 INVENTION “The invention relates to a method and system for supply of data, a method for providing a digital signature and digital certificates, a method and system for transfer of ownership of electronic property.” Spec. 11 .b. Independent claim 13 below is illustrative of the subject matter on appeal: 13. A method for transfer of ownership of electronic property from a first entity to a second entity, comprising: the first entity signing an electronic property with an electronic signature; and generating a first certificate signed with an electronic signature by the first entity and including: an indication of the second entity, and an indication of data which is to be supplied to the second entity from a source, or the data itself, wherein the electronic property and the first certificate include a link connecting the electronic property with the first certificate. App. Br. 46 (Claims Appendix). REJECTIONS3 I. Claims 13—15, 17—25, and 27—32 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 3. II. Claims 13—15, 17—25, and 27—32 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Applicants regard as the invention. Id. at 6. 3 The grounds of rejections under 35 U.S.C. §§ 102 and 103 are withdrawn. See Ans. 4. 2 Appeal 2014-002373 Application 12/823,877 PRINCIPLES OF LAW The first paragraph of35U.S.C. § 112 contains a written description requirement that is separate and distinct from the enablement requirement. AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010) (en banc). To satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562—63 (Fed. Cir. 1991). Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id. at 1562— 63; Ariad, 598 F.3d at 1351. The written description requirement of 35 U.S.C. § 112, first paragraph applies to all claims including original claims that are part of the disclosure as filed. Id. at 1349. As stated by the Federal Circuit, “[although many original claims will satisfy the written description requirement, certain claims may not.” Id.; see also Lizard Tech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1343—46 (Fed. Cir. 2005); Regents of the University of California v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997). For instance, generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed. Ariad, 598 F.3d at 1350; Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968 (Fed. Cir. 2002) (holding that generic claim language appearing in ipsis verbis in the original specification did not satisfy the written description requirement because it failed to support the scope of the genus claimed); Fiers v. Revel, 984 F.2d 1164, 1170 (Fed. Cir. 1993) 3 Appeal 2014-002373 Application 12/823,877 (rejecting the argument that “only similar language in the specification or original claims is necessary to satisfy the written description requirement”). In addition, original claims may fail to satisfy the written description requirement when the invention is claimed and described in functional language but the specification does not sufficiently identify how the invention achieves the claimed function. Ariad, 598 F.3d at 1349 (“[A]n adequate written description of a claimed genus requires more than a generic statement of an invention’s boundaries.”) (citing Eli Lilly, 119 F.3d at 1568). Written Description Independent claim 13 and dependent claims 14, 15, 17—25, 27, and 28 We have considered Appellants’ arguments (App. Br. 3—19; Reply Br. 2—20) against the Examiner’s findings and rationale, but we are not persuaded the Examiner erred in asserting that independent claim 13 recites aspects that fail to comply with the written description requirement. Specifically, we conclude that because the claim language “generating a first certificate” is a genus,4 and the claim uses functional language to define the boundaries of the claimed genus (“wherein the electronic property and the first certificate include a link connecting the electronic property with the first certificate.”), and the Specification does not disclose sufficient species to support the boundaries of the claimed genus, the recited functional claim 4 We note that in response to the Restriction Requirement for subspecies election mailed on September 21, 2012, Appellants “elect[ed] claims 13-15 and 17-25, which read on the alleged Subspecies A1 and B2 shown in Applicant’s FIG. 11.” Response to Election/Restriction filed Oct. 22, 2012. 4 Appeal 2014-002373 Application 12/823,877 language does not have sufficient written description support to satisfy 35 U.S.C. § 112, first paragraph. Appellants assert that the aforementioned functional claim language has support in the Specification at paragraphs 324—348 and Figures 8A— 8C, 9. App. Br. 2. We have reviewed Appellants’ disclosure but the fact that the Specification literally repeats the functional claim language in ipsis verbis is not dispositive. Ariad, 598 F.3d at 1350; Enzo Biochem, 323 F.3d at 968. In light of the identified support in the written description, we next determine whether the scope of the functional claim language is a genus that covers all species for performing the claimed function. Ariad, 598 F.3d at 1349. Factors to consider include (a) whether the claim itself recites limitations as to how the function is performed; and (b) whether the Specification identifies a way of performing the claimed function, such as a specific type of microcomputer or an algorithm, that defines the scope of the functional claim language, without importing limitations from the Specification into the claim. Lizard Tech, 424 F.3d at 1346; In re Hayes Microcomputer Prods., Inc. Patent Litigation, 982 F.2d 1527, 1534 (Fed. Cir. 1992). Independent claim 13 fails to recite any limitations as to how the claimed functions are performed. Although the claim discloses the content of a certificate, it does not disclose how the certificate is itself generated, including a link connecting the certificate with the electronic property. The Specification only identifies a generic computer and no algorithm for performing this claimed function. We find that the scope of “a link connecting the electronic property with the first certificate” covers all species for performing the claimed function. The Specification describes the 5 Appeal 2014-002373 Application 12/823,877 same limitation as “the digital certificate include a link means connecting the electronic property with the digital certificate.” Spec. 1103 (emphasis added). The Specification indicates that the “link means may be a bit-stream generated from a serial number of the digital certificate and an identifier . . . [or alternatively, the link means is a digital watermark with a watermark key.” Id. 1104. But providing general examples fails to specify how the invention achieves the claimed function. We also note that the originally filed claim recites this feature as “a link means.” See originally filed claim 13. We agree with the Examiner that the Specification does not sufficiently specify how the invention achieves the claimed function of connecting the electronic property with the certificate. And as the Specification does not disclose species sufficient to support a claim to the functionally defined genus, independent claim 13 fails to meet the written description requirement of 35 U.S.C. § 112, first paragraph. Lizard Tech, 424 F.3d at 1346 (“[T]he description of one method for creating a seamless DWT does not entitle the inventor ... to claim any and all means for achieving that objective”); Ariad, 598 F.3d at 1349 (“the specification must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the fimctionally-defmed genus”). Considering the nature and scope of the claim and the complexity of the relevant technology, we find the knowledge and level of skill in the pertinent art would not permit an artisan to understand that the inventor possessed the invention based on the disclosure in the Specification. 6 Appeal 2014-002373 Application 12/823,877 Accordingly, we sustain the rejection of independent claim 13, and claims 14, 15, 17—25, 27, and 28, which depend therefrom. Independent claim 29 and dependent claims 30—32 We are persuaded by Appellants’ arguments that independent claim 29 has sufficient written description support for the recited functional limitation. App. Br. 18—20; Reply Br. 20. The Examiner finds “[t]he limitation ‘generating by the first computing device an identification link from an identifier of an empowerment certificate and an identifier of the transfer of the electronic property’ functionally defines the boundaries of a genus.” Final Act. 5. To arrive at this finding, the Examiner relies on Appellants’ disclosure that “[t]he serial number 803 and the random number 804 may be combined in a variety of ways to generate the link, for example, using one-way functions, etc.” Id. Appellants argue that “there are a limited number of ways to combine two numbers. . . . [and] one of ordinary skill in the art would know that two numbers can be combined by concatenation, addition, multiplication, exponentiation, and randomization. There is no requirement that Appellant disclose such well known methods of combining two numbers.” App. Br. 19. “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Ariad at 1351. Although the claimed “generating” step at issue here is described in purely functional terms, Appellants acknowledge that the functions performed here 7 Appeal 2014-002373 Application 12/823,877 are conventional. See supra. The Examiner has provided no evidence that the claimed “generating” step yields anything unexpected, or that one skilled in the art would not reasonably conclude that the inventor had possession of such conventional functionality. Accordingly, we do not sustain the rejection of independent claim 29, and claims 30—32 which are dependent thereon, for failing to comply with the written description requirement. Indefiniteness Independent claim 13 and dependent claims 14, 15, 17—25, 27, and 28 We are not persuaded the Examiner erred in asserting that the limitation “a link connecting the electronic property with the first certificate” as recited in independent claim 13 invokes Section 112, sixth paragraph, and is indefinite “because the structure of the ‘link’ included in the generated certificate is not clear.” Final Act. 8. Appellants argue that “[w]hen a claim does not use the term ‘means for,’ there is a strong presumption that § 112, sixth paragraph does not apply.” App. Br. 21. “In other words, claim 13 does not use the form ‘----- for’ that might be considered a substitute for ‘means for.’ As such, ‘a link connecting’ is distinguished from ‘means for’ or any of the other exemplary non-structural terms above that may invoke § 112, sixth paragraph.” Id. at 22. This argument is not persuasive because the presumption is overcome when “the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” See Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc). 8 Appeal 2014-002373 Application 12/823,877 The term “link” acts as a generic placeholder for the term ‘means’ and would not be recognized by one of ordinary skill in the art as being sufficiently definite structure for performing the claimed function. As discussed above with respect to claim 13, the Specification refers to this limitation as a “link means.” Spec. 103; see also 1104(“The link means may be a bit-stream. . . Alternatively, the link means may be a digital watermark with a watermark key). The Specification indicates that “links are data structures (or data files) called certificates.” Id. 110. There is nothing about the term “link” that dictates any structural feature for the claimed limitation. Therefore, we agree with the Examiner that the term “link” does not limit the scope of the claim to any specific manner/structure for performing the claimed function, in light of the Specification and the relevant technology. Accordingly, the corresponding structure for a computer-implemented function must include the algorithm as well as a general purpose computer or microprocessor. See WMS Gaming, Inc. v. International Game Technology, 184 F.3d 1339 (Fed. Cir. 1999); see also Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005) (“[T]he corresponding structure for a § 112^6 claim for a computer-implemented function is the algorithm disclosed in the specification.”). Appellants rely on the flowchart of Figure 9 for support, but the steps performed essentially recite the functional language at issue. Simply reciting the claimed function in the specification, while saying nothing about how the computer or processor ensures that those functions are performed, is not a sufficient disclosure for an algorithm which, by definition, must contain a sequence of steps. Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. 9 Appeal 2014-002373 Application 12/823,877 Cir. 2009). And, one cannot merely rely on the premise that a person having ordinary skill in the art would have the capability to program the computer to perform the claimed functions once the claimed functions are described to that person. See Aristocrat Technology, Inc. v. International Game Technology andIGT, 521 F.3d 1328, 1337(Fed. Cir 2008) (“It is not enough for the patentee simply to state or later argue that persons of ordinary skill in the art would know what structures to use to accomplish the claimed function”). Accordingly, we sustain the rejection of independent claim 13, and claims 14, 15, 17—25, 27, and 28 dependent thereon, as being indefinite. Independent claim 29 and dependent claims 30—32 We reverse the rejection of independent claim 29 as indefinite because the Examiner erroneously imports limitations from the Specification and concludes the meaning and scope of the limitation cannot be determined because “[t]he serial number 803 and the random number 804 may be combined in a variety of ways to generate the link, for example, using a one-way has functions, etc.” Final Act. 12. The questions of scope and the hypothetical possibilities the claims could cover reflects a concern over the breadth of the claims. But “[bjreadth is not indefmiteness.” In re Gardner, All F.2d 786, 788 (CCPA 1970). Accordingly, we do not sustain the rejection of claim 29, and claims 30—32 dependent therefrom, as being indefinite. 10 Appeal 2014-002373 Application 12/823,877 DECISION The Examiner’s decision to reject claims 13—15, 17—25, 27, and 28 is AFFIRMED. The Examiner decision to reject claims 29—32 is REVERSED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART 11 Copy with citationCopy as parenthetical citation