Ex Parte DARE et al

Patent Trial and Appeal Board

Mar 27, 2017

12823877 (P.T.A.B. Mar. 27, 2017)

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
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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.
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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)
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(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.
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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
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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.
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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
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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).
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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.
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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.
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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
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