Ex Parte Golle

Patent Trial and Appeal Board

Nov 23, 2012

11347887 (P.T.A.B. Nov. 23, 2012)

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.
11/347,887 02/06/2006 Philippe Jean-Paul Golle 20050661-US-NP 5288
35700 7590 11/23/2012
CASCADIA INTELLECTUAL PROPERTY
12360 Lake City Way NE, Ste 501
SEATTLE, WA 98125
EXAMINER
COPPOLA, JACOB C
ART UNIT PAPER NUMBER
3621
MAIL DATE DELIVERY MODE
11/23/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PHILIPPE JEAN-PAUL GOLLE
____________________

Appeal 2011-005718
Application 11/347,887
Technology Center 3600
____________________

Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/347,887

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM-IN-PART.1

BACKGROUND
Appellant’s invention relates in general to stable matching protocols
and, in particular, to a system and method for providing private stable
matchings (Spec., 1, ll. 12-13).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A computer-implemented system providing private stable
matchings, comprising:
a digital data storage, comprising:
at least one set of active participant preferences for
an active participant; and
at least one set of passive participant preferences
for a passive participant; and
a processor comprising computer-executable instructions
stored in memory, comprising:
a bid creation module pairing together and
encrypting identities of each of the active participants
and each of the passive participants as private stable
matched bids from the at least one active participant
preferences set and the at least one passive participant
preferences set; and

1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed June 1, 2010) and Supplemental Appeal Brief (“Supp. Br.,” filed
July 9, 2010) the Examiner’s Answer (“Ans.,” mailed October 7, 2010).
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a decryption module decrypting at least one of the
private matched bids as a stable matching, which is
presented to one of the passive participant and the active
participant identified in the decrypted stable matching.

THE REJECTIONS
The following rejections are before us for review:2
Claims 1-22 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 1-11 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 1-22 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 Applicant regards as the invention.
Claims 1, 4-12, and 15-22 stand rejected 35 U.S.C. § 103(a) as being
unpatentable over Silaghi, “Solving a distributed CSP with cryptographic
multi-party computations, without revealing constraints and without
revealing trusted servers, May 23, 2003 (hereinafter referred to as
“Silaghi I”), and Silaghi, “Incentive Auctions and Stable Marriages Solved
with n/2 - Privacy of Human Preferences,” July 8, 2004 (hereinafter referred
to as “Silaghi II”), in view of Mairson, “The Stable Marriage Problem,” The

2 Appellant argues that the Examiner erred in objecting to the drawings for
failing to show every feature specified in the claims (Br. 5-6 and Supp. Br.
4-5). Because this is a petitionable, not appealable, matter under 37 C.F.R.
§ 1.181, we will not address this objection. See MPEP § 706.01 (“[T]he
Board will not hear or decide issues pertaining to objections and formal
matters which are not properly before the Board.”); see also MPEP § 1201
(“The Board will not ordinarily hear a question that should be decided by the
Director on petition . . . .”).
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Brandeis Review, Vol. 12, No. 1, Summer 1992 (hereinafter referred to as
“Mairson”).
Claims 2 and 13 stand rejected 35 U.S.C. § 103(a) as being
unpatentable over Silaghi I, Silaghi II, and Mairson, and further in view of
Gent et al., “A Constraint Programming Approach To The Stable Marriage
Problem” (hereinafter referred to as “Gent”).
Claims 3 and 14 stand rejected 35 U.S.C. § 103(a) as being
unpatentable over Silaghi I, Silaghi II, and Mairson, and further in view of
Brito, “Distributed Stable Marriage Problem” (hereinafter referred to as
“Brito”).

ANALYSIS
Non-Statutory Subject Matter
Independent claim 1 and dependent claims 2-11
We are persuaded that the Examiner erred in concluding that
claims 1-11 “embrace or overlap two different statutory classes of invention
as set forth in 35 U.S.C. § 101,” and that the claims are, therefore, directed
to non-statutory subject matter (Ans. 4 and 21-22). Claim 1 is directed to a
computer-implemented system providing private stable matchings, and
recites that the system comprises a digital data storage and a processor
comprising computer-executable instructions stored in memory. Claim 1
recites that the computer-executable instructions comprise a bid creation
module and a decryption module, and the claim further recites the functions
performed by these two modules, i.e., “pairing together and encrypting
identities . . . .” and “decrypting at least one of the private matched bids . . .
.”
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The inclusion of functional language occurs at the choice of
Appellant, but we are required to give such language weight only to the
extent that the prior art is or is not capable of meeting the limitation. In re
Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). The inclusion of
functional language does not in and of itself convert claim 1, which is an
apparatus claim, into a method of use or hybrid claim. Therefore, we will
not sustain the Examiner’s rejection of claims 1-11 under 35 U.S.C. § 101.

Claims 12-22
Appellant contends that the Examiner erred in rejecting claims 12-22
under 35 U.S.C. § 101 because the claims satisfy the machine prong of the
Bilski machine-or-transformation test and, therefore, recite patent-eligible
subject matter under § 101. In particular, Appellant argues that the claimed
method is tied to a “matching authority system,” i.e., a programmed
computer (Br. 7-8 and Supp. Br. 6). In contrast, the Examiner maintains that
the machine-or-transformation test is not satisfied because “the claimed
‘matching authority system’ is not inherently a general purpose computer
and, in fact, could be embodied as other non-computer embodiments (e.g., a
human with pen and paper)” (Ans. 23, emphasis in original).
The Supreme Court clarified in Bilski that the machine-or-
transformation test “is not the sole test for deciding whether an invention is a
patent-eligible ‘process’ under § 101.” Yet the Court explained that this test
remains a “useful and important clue or investigative tool.” See Bilski v.
Kappos, 130 S. Ct. 3218, 3221 (2010).
We are persuaded of error on the part of the Examiner by Appellant’s
argument that claim 1 explicitly requires the use of a “matching authority
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system,” and, therefore, ties the claim to a particular machine (Br. 7-8 and
Supp. Br. 6). A matching authority is described in Appellant’s Specification
as a general purpose computing system:
Preferably, the matching authorities 12a-c are general-purpose
computing systems, which execute software programs and
include components conventionally found in a computing
device, such as, for example, a central processing unit, memory,
network interface, persistent storage, and various interfaces for
interconnecting these components. Other components are
possible.

See Spec., 7, ll. 5-9.
The Specification also describes that a plurality of matching authorities are
interconnected over a network infrastructure, such as the Internet (Spec., 6,
ll. 16-18).
Although a general purpose computer, by itself, would be insufficient
to meet the “particular machine” prong of the machine-or-transformation
test, See Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972), the Specification
details how the otherwise general purpose computer would pair together and
encrypt private stable matched bids, and also provides a detailed description
of the process implemented to decrypt the private matched bids as a stable
matching (see, e.g., Spec., 13-16 and 20-25). “[B]ecause a general purpose
computer in effect becomes a special purpose computer once it is
programmed to perform particular functions pursuant to instructions from
program software,” we find that the recited “matching authority system” is a
special purpose computer or “particular machine” sufficient to satisfy § 101.
See In re Alappat, 33 F.3d, 1526, 1545 (Fed. Cir. 1994). In other words, the
recited use of a computer here goes beyond mere data gathering steps, and
hence confers patent eligibility on the claims. See, CyberSource Corp. v.
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Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. Aug. 16, 2011).
Therefore, we will not sustain the Examiner’s rejection of claims 12-22
under 35 U.S.C. § 101.

Written Description
Claims 1-11
We are persuaded that the Examiner erred in rejecting claims 1-11
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement (Br. 9 and Supp. Br. 8). Bid creation is detailed in
the specification at page 16, line 7 through page 17, line 12, and further
described at page 20, lines 11-18 with reference to the flowchart shown in
Figure 7. In our view, the Specification thus conveys with reasonable clarity
to those skilled in the art that Appellant was in possession of the invention,
specifically a “bid creation module,” as now claimed at the time Appellant’s
application was filed. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563-64 (Fed. Cir. 1991).
The Examiner maintains that the rejection under 35 U.S.C. § 112, first
paragraph, is proper because a “single ‘bid creation module’” is not
expressly or inherently disclosed in Appellant’s original disclosure (Ans. 6
and 24-25). However, claim 1 does not recite “a single bid creation
module.” There also is nothing in the claim language that would otherwise
limit the claimed “bid creation module” to one module, rather than two or
more modules, as the Examiner maintains. Therefore, we will not sustain
the Examiner’s rejection of claims 1-11 under 35 U.S.C. § 112, first
paragraph.

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Indefiniteness
Claims 1 and 12
The Examiner’s rejection of claims 1 and 12 under 35 U.S.C. § 112,
second paragraph as indefinite concerns the recitations in the claims of
(1) “active participant” and “passive participant” and (2) “private stable
unmatched bids” and “private stable matched bids.” In particular, the
Examiner maintains that these phrases are indefinite such that one of
ordinary skill in the art would not be able to reasonably determine the metes
and bounds of the claims (Ans. 8-10 and 26-28).
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). Claims must “particularly point[] out and distinctly claim[] the
subject matter which the applicant regards as his invention.” 35 U.S.C.
§ 112, ¶ 2. Only claims “not amenable to construction or insolubly
ambiguous are indefinite.” Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 537
F.3d 1357, 1371 (Fed. Cir. 2008) (citations and quotation marks omitted).
Here, we agree with Appellant that one of ordinary skill in the art
would understand what is claimed when claims 1 and 12 are read in light of
the Specification, including in particular page 10, lines 8-15 and Figure 6,
which is a flow diagram showing private stable matching (Br. 10-11 and
Supp. Br. 8-9).
“Active” participants are the participants that are actively
matched to other “passive” participants based on the
preferences of the active participants. The matchmaking third
parties privately generate stable sets of private matched bids
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(operation 42), each of which can be decrypted by a quorum of
all the matchmaking third parties as a stable match (operation
43). In a further embodiment, the matchmaking third parties
can also privately generate stable sets of private unmatched bids
for non-existent, place holding “participants,” which are
considered to be pseudo participants.

Therefore, we will not sustain the Examiner’s rejection of claims 1
and 12 under 35 U.S.C. § 112, second paragraph.3

Claims 2-4 and 13-15
Appellant has not presented any substantive argument in response to
the Examiner’s rejection of claims 2-4 and 13-15 under 35 U.S.C. § 112,
second paragraph, as being indefinite (Ans. 10-12). Instead, Appellant
merely states that “[a] similar analysis [to that set forth with respect to
claims 1 and 12] can be applied to the remaining claim terms” (Br. 10-11
and Supp. Br. 8-9).
Accordingly, we will summarily sustain the Examiner’s rejection of
claims 2-4 and 13-15 under 35 U.S.C. § 112, second paragraph.

Obviousness
Independent claims 1 and 12 and dependent claims 5-11 and 16-22
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that “neither Silaghi I, Silaghi II, nor Mairson, taken

3 The Examiner also rejected claim 1 as indefinite because the Examiner
concluded that claim 1 is a hybrid claim (Ans. 7-8). For the reasons set forth
above, we find that claim 1 is not a hybrid claim; therefore, we also will not
sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 112, second
paragraph, on that basis.
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in combination or isolation, teach or suggest active and passive participants,
wherein the roles of ‘active’ or ‘passive’ are for notational convenience, per
Claims 1 and 12” (Br. 11-13 and Supp. Br. 9-11). Instead, we agree with the
Examiner that Mairson discloses the stable marriage problem of matching
men and women, and describes that the participants share the same active
and passive roles “as those inferred by Appellant’s notational convenience”
(Ans. 29). In this regard, Mairson describes at page 2 that the man is the one
who proposes marriage, and, therefore, the active participant, while the
woman is a passive participant because she waits to receive a proposal from
a man.
It also is particularly significant here that Appellant states that “the
roles of ‘active’ or ‘passive’ are for notational convenience, per Claims 1
and 12” (Br. 12 and Supp. Br. 11, emphasis added). We understand this to
mean that the terms “active” and “passive” are merely used as labels or
names given to each group of participant for convenient identification and,
therefore, no different from the use of “first participants” and “second
participants,” for example. Thus, we infer from Appellant’s remarks here,
that there needs to be a starting point from which match criteria gets paired,
and a person of ordinary skill in the art would understand that the model set
forth in Mairson is as good a starting point as any.
There is no question but that both Mairson and Silaghi II describe the
stable marriage problem; both references also plainly disclose both male and
female participants. And, consistent with Appellant’s statement here, either
the male group or the female group of participants in Mairson and Silaghi II
may be designated “active participants” and the other group designated
“passive participants” for “notational convenience.”
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In view of the foregoing, we will sustain the Examiner’s rejection of
claims 1 and 12 under 35 U.S.C. § 103(a). We also will sustain the
Examiner’s rejection of dependent claims 5-11 and 16-22, which were not
separately argued.

Dependent claims 2-4 and 13-15
The rejection of claims 2-4 and 13-15 under 35 U.S.C. § 103(a) must
fall pro forma because it is necessarily based on a speculative assumption as
to the scope of these claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA
1962).

DECISION
The Examiner’s rejection of claims 1-22 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter is reversed.
The Examiner’s rejection of claims 1-11 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
reversed.
The Examiner’s rejection of claims 1, 5-12, and 16-22 under
35 U.S.C. § 112, second paragraph, is reversed.
The Examiner’s rejection of claims 2-4 and 13-15 under 35 U.S.C.
§ 112, second paragraph, is affirmed.
The Examiner’s rejection of claims 1, 5-12, and 16-22 under
35 U.S.C. § 103(a) is affirmed.
The Examiner’s rejection of claims 2-4 and 13-15 under 35 U.S.C.
§ 103(a) is reversed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1) (2011).

AFFIRMED-IN-PART

MP