Ex Parte Prigent et al

Patent Trial and Appeal BoardApr 29, 2016

10552138 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 10/552,138 07/10/2006 24336 7590 05/03/2016 TUTUNJIAN & BITETTO, P,C 425 Broadhollow Road, Suite 302 Melville, NY 11747 FIRST NAMED INVENTOR Nicolas Prigent 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. PF030060 7177 EXAMINER RUBIN, BLAKE J ART UNIT PAPER NUMBER 2457 NOTIFICATION DATE DELIVERY MODE 05/03/2016 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@tb-iplaw.com sandy@tb-iplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NICOLAS PRIGENT, OLIVIER REEN JEAN-PIERRE ANDREAUX, and CHRISTOPHE BIDAN Appeal2014-005894 Application 10/552,138 Technology Center 2400 Before ERIC S. FRAHM, JOHN P. PINKERTON, and JEFFREY A. STEPHENS, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Introduction Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1 and 3-9, which constitute all the claims pending in this application. Claim 2 has been canceled. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse and enter a new ground of rejection. Appeal2014-005894 Application 10/552,138 Exemplary Claim Exemplary independent claim 1 under appeal, with emphases added, reads as follows (emphases added to contested limitations): 1. A device configured to belong to a community of networked devices, the device comprising: a provable identity and/or means for generating and/or obtaining a provable identity; means configured to store trust information about other devices of the community having trust relationships with said device; means configured to store distrust information about other devices of the community having had trust relationships with said device in the past but now are not trusted by said device; means for automatically synchronizing trust relationships with any of the other devices belonging to said community based on the stored trust and distrust information, and in a distributed manner vvith said an}' other de-vice belonging to said commitnit}'. The Examiner's Rejection The Examiner rejected claims 1 and 3-9 under 35 U.S.C. Â§ 102(e) as being anticipated by Yeager et al. (US 2003/0028585 Al; published Feb. 6, 2003) ("Yeager"). Final Act. 2-5; Ans. 2-5. Issue on Appeal1 Based on Appellants' arguments in the Appeal Brief (Br. 7-15) and the Reply Brief (Reply Br. 6-17), the following principal issue is presented on appeal: 1 Appellants present detailed arguments on the merits only with respect to independent claim 1 (App. Br. 7-15; Reply Br. 6-17). Accordingly, we 2 Appeal2014-005894 Application 10/552,138 Did the Examiner err in rejecting claims 1 and 3-9 as being anticipated by Yeager because Yeager fails to disclose (i) "a provable identity and/or means for generating and/or obtaining a provable identity," (ii) "means for automatically synchronizing trust relationships with any of the other devices belonging to said community based on the stored trust and distrust information, and in a distributed manner with said any other device belonging to said community," and (iii) "means configured to store distrust information about other devices of the community having had trust relationships with said device in the past but now are not trusted by said device," as recited in independent claim 1? ANALYSIS Means-Plus-Function Claim Interpretations Before determining whether Yeager anticipates the claims, we must first interpret the means-plus-function claim limitations contained therein. "[T]he PTO may not disregard the structure disclosed in the specification corresponding to such language when rendering a patentability determination." In re Donaldson Co., Inc., 16 F.3d 1189, 1195 (Fed. Cir. 1994). The Federal Circuit has held that applicants before the USPTO have the opportunity and the obligation to define their inventions precisely during proceedings before the USPTO. See In re Morris, 127 F.3d 1048, 1056-57 (Fed. Cir. 1997) (35 U.S.C. Â§ 112, second paragraph, places the burden of precise claim drafting on the applicant); In re Zietz, 893 F.2d 319, 322 (Fed. Cir. 1989) (manner of claim interpretation that is used by courts in litigation select claim 1 as representative of the group of claims 1 and 3-9, rejected as being anticipated by Yeager. 3 Appeal2014-005894 Application 10/552,138 is not the manner of claim interpretation that is applicable during prosecution of a pending application before the USPTO); Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1425 (Fed. Cir. 1997) (patentee who had a clear opportunity to negotiate broader claims during prosecution but did not do so, may not seek to expand the claims through the doctrine of equivalents, for it is the patentee, not the public, who must bear the cost of failure to seek protection for this foreseeable alteration of its claimed structure). "[W]hen the disclosed structure is a computer programmed to carry out an algorithm, 'the disclosed structure is not the general purpose computer, but rather that special purpose computer programmed to perform the disclosed algorithm."' In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011) (quoting WMS Gaming, Inc. v. Int'! Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999)); see also In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994) (en bane). In cases involving a special purpose computer- implemented means-plus-function limitation, the Federal Circuit has consistently required that the structure be more than simply a general purpose computer or microprocessor and that the specification must disclose an algorithm for performing the claimed function. See, e.g., Noah Systems Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012); Aristocrat Techs. Aust!. Pty Ltd. v. Int'! Game Tech., 521F.3d1328, 1333 (Fed. Cir. 2008). The disclosure must be reviewed from the point of view of one skilled in the relevant art to determine whether that person would understand the written description to disclose the corresponding structure, material, or acts. Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338 (Fed. Cir. 2008); 4 Appeal2014-005894 Application 10/552,138 Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211-12 (Fed. Cir. 2003). In light of Appellants' Specification, we interpret the means-plus- function limitations present in independent claim 1 as follows: 2 means for generating and/or obtaining a provable identity: an algorithm performed between at least two user devices, each user device comprising a CPU, a user interface, and a memory for storing, wherein the first user device sends a request to the second user device, wherein the second user device responds to the first user device assigning the first user device an identity (Spec. 7, 11. 11-14; Spec. 9, 11. 20-32); means configured to store trust information about other devices of the community having trust relationships with said device: a CPU and memory for storing (Spec. 7, 11. 11-14 ); means configured to store distrust information about other devices of the community having had trust relationships with said device in the past but now are not trusted by said device: a CPU and memory for storing (Spec. 7, 11. 11-14); and means for automatically synchronizing trust relationships with any of the other devices belonging to said community based on the stored trust and distrust information, and in a distributed manner with said any other device belonging to said community: an algorithm performed between at least two user devices, each user device comprising a CPU, a user interface, and a memory for storing, wherein the second user device provides the first user 2 Because there is no rejection under 35 U.S.C. Â§ 112, second paragraph, before us, we do not consider whether there is sufficient structure disclosed in the Specification to render the means-plus-function limitations definite. 5 Appeal2014-005894 Application 10/552,138 device with all the trust relationship information it possesses (Spec. 7, 11. 11- 14; Spec. 11, 11. 27-38). In light of Appellants' Specification, we interpret the means-plus- function limitations of dependent claim 5 as follows: means to exchange information with the other devices of the community about devices trusted and/or distrusted by the other devices of the community: a network interface (Spec. 7, 11. 14--15). The Examiner's Anticipation Rejection We have reviewed the Examiner's rejection (Final Act. 2-5; Ans. 2- 5) in light of Appellants' arguments in the Appeal Brief (App. Br. 7-15) and the Reply Brief (Reply Br. 6-17) that the Examiner has erred, and the Examiner's response to Appellants' arguments in the Appeal Brief (Ans. 5- 8). We agree with the Examiner (Ans. 2, 5-6) that Yeager teaches or suggests a device comprising "a provable identity and/or means for generating and/or obtaining a provable identity" because Yeager (i-f 112) describes a private-public key pair utilizing signed certificates. It should further be noted that Appellants have not responded to or refuted the Examiner's new citation to paragraph 112 (Ans. 5--6) in the Reply Brief (Reply Br. 9-10). We also agree with the Examiner (Ans. 6-7) that Yeager teaches or suggests "means for automatically synchronizing trust relationships with any of the other devices belonging to said community based on the stored trust and distrust information, and in a distributed manner with said any other device belonging to said community" because Yeager's trust relationships are decentralized as indicated in Yeager's title, "DISTRIBUTED TRUST 6 Appeal2014-005894 Application 10/552,138 MECHANISM ~FOR DEC'ENT1L4LIZED NETWORKS" (emphasis added). Yeager further describes (i-f 287) completely decentralized trust relationships. Again, it should be noted that Appellants have not responded to or refuted the Examiner's new citation to paragraph 287 in the Reply Brief (Reply Br. 8). However, we do not agree that the passages of Yeager (i-fi-f 103, 292, 365) relied upon by the Examiner (Ans. 7-8; Final Act. 3) teach or suggest "means configured to store distrust information about other devices of the community having had trust relationships with said device in the past but now are not trusted by said device." Although it might be the case that Yeager could store distrust information about other devices in the community, we find no such disclosure in the passages cited the Examiner to support the Examiner's position. We will not resort to speculation or assumptions to cure the deficiencies in the Examiner's fact finding. See In re Warner, 379F.2d1011, 1017(CCPA1967); see also In re Coley, 40 F.2d 982, 986 (CCPA 1930) ("Where there is such doubt, the scales should be inclined toward the applicant."). Therefore, we do not sustain the Examiner's rejection of independent claim 1, as well as claims 3-9, which depend from claim 1 and are grouped therewith, as being anticipated by Yeager. CONCLUSION The Examiner erred in rejecting claims 1 and 3-9 as being anticipated under 35 U.S.C. Â§ 102(e) by Yeager. 7 Appeal2014-005894 Application 10/552,138 DECISION (1) We reverse the Examiner's anticipation rejection of claims 1 and 3-9. (2) We also enter new a new ground of rejection under 37 C.F.R. Â§ 41.50(b) and 35 U.S.C. Â§ 103(a) for claims 1and3-9 as follows: NEW GROUND OF REJECTION UNDER 37 C.F.R. Â§ 41.50(b) Under 37 C.F.R. Â§ 41.50(b), we enter a new ground of rejection under 35 U.S.C. Â§ 103(a) for claims 1 and 3-9 as being obvious over Yeager. With regard to claim 1, Yeager discloses a device configured to belong to a community of networked devices (i1i1 48--49), the device comprising: a provable identity and/or means for generating and/or obtaining a provable identity (see means-plus-function interpretation supra; i1i149, 112); means configured to store trust information about other devices of the community having trust relationships with said device (see means-plus- function interpretation supra; i1i149, 57-58 (disclosing a CPU and memory for storing)); means for automatically synchronizing trust relationships with any of the other devices belonging to said community based on the stored trust and distrust information, and in a distributed manner with said any other device belonging to said community (see means-plus-function interpretation supra; i1i1200, 287, 292). In a similar embodiment, Yeager further discloses means configured to store distrust information about other devices of the community having had trust relationships with said device in the past but now are not trusted by said device (see means-plus-function interpretation supra; i1i157-58 (disclosing a CPU and memory for storing), i-f 122 (disclosing certificate 8 Appeal2014-005894 Application 10/552,138 revocation lists)). It would have been obvious to one of ordinary skill in the art to combine the primary embodiment of Yeager with the certificate revocation lists because such a combination would have had the added benefit of preventing untrusted devices from gaining access to the network. With regard to claim 3, Yeager as previously modified further discloses the information about devices comprises the provable identity of said devices (i-f 118). With regard to claim 4, Yeager as previously modified further discloses said device is furthermore configured to store information comprising proofs received from the other devices of the community that said device is trusted by the other devices (i-f 119). With regard to claim 5, Yeager as previously modified further discloses said synchronizing means comprises means to exchange information with the other devices of the community about devices trusted and/or distrusted by the other devices of the community (see means-plus- function interpretation supra; i1200). With regard to claim 6, Yeager as previously modified further discloses said device comprises: a first object capable of containing identities of devices trusted by said device and trusting said device (i-f 65); a second object capable of containing identities of devices trusted by said device (i-f 68); and a third object capable of containing identities of devices distrusted by said device (i1i171, 122). With regard to claim 7, Yeager as previously modified further discloses said device is capable of modifying the content of said first object and/or said second object and/or said third object as a function of information exchanged with other devices of the community (i-f 7 5). 9 Appeal2014-005894 Application 10/552,138 With regard to claim 8, Yeager as previously modified further discloses said first object and/or said second object and/or said third object are further configured to contain cryptographic material (i-f l 05). With regard to claim 9, Yeager as previously modified further discloses said first device is capable of banishing another device of said community if the identity of said device to be banished is contained in the first or the second object of said first device (i-f 365), said banish operation comprising removing the identity of said device to be banished from said first or second object and inserting said identity in said third object of said first device (i-fi-f 122, 365). Because Yeager discloses the disputed limitations under 35 U.S.C. Â§ 103 (a), and not just in the passages cited in the Examiner's Final Office Action, we designate our findings supra to be a new ground of rejection. This decision contains a new ground of rejection pursuant to 37 C.F.R. Â§ 41.50(b). 37 C.F.R. Â§ 41.50(b) provides that, "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. Â§ 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of proceedings (37 C.F.R. Â§ 1.197 (b)) as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter 10 Appeal2014-005894 Application 10/552,138 reconsidered by the examiner, in which event the prosecution will be remanded to the examiner .... (2) Request rehearing. Request that the proceeding be reheard under 37 C.F.R. Â§ 41.52 by the Board upon the same Record .... No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). REVERSED; 37 C.F.R. Â§ 41.50(b) 11