Ex Parte Van Volkenburgh

Patent Trial and Appeal Board

Sep 17, 2012

10397042 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE PATENT TRIAL AND APPEAL BOARD
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Ex parte RONALD G. VAN VOLKENBURGH
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Appeal 2010-005430
Application 10/397,042
Technology Center 2400
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Before JOHN A. JEFFERY, JOHN A. EVANS, and JENNIFER L.
MCKEOWN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-14 and 16-22. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

STATEMENT OF THE CASE
Appellant’s invention conceals sensitive customer information from
an operator during a telephone conversation. See generally Abstract; ¶
0019; Fig. 1. Claim 1 is illustrative with key disputed limitations
emphasized:
1. A data masking device, comprising:
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a first input for receiving first electronic signals representing customer
information;

a first output for sending second electronic signals to a computing
device;

a second output for transmitting masked signals intended to indicate
to an operator that a customer is entering customer information; and

circuitry for converting the first electronic signals into the second
electronic signals and the masked signals.

THE REJECTIONS
1. The Examiner rejected claim 22 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement.
Ans. 3-4.1
2. The Examiner rejected claims 1-5, 7-13, and 16-22 under
35 U.S.C. § 103(a) as unpatentable over Funck (US 2003/0097339 A1; May
22, 2003 (filed Nov. 16, 2001)) and Bernard (US 5,918,213; June 29, 1999).
Ans. 4-10.
3. The Examiner rejected claims 6 and 14 under 35 U.S.C. § 103(a)
as unpatentable over Funck, Bernard, and Saltwick (US 5,181,243; Jan. 19,
1993). Ans. 10-11.

THE WRITTEN DESCRIPTION REJECTION
The Examiner finds that the three recited ports and circuitry being
integral with one another within the data masking device is not supported by
the originally-filed disclosure. Ans. 3-4, 11-13. Appellant, however, argues

1 Throughout this opinion, we refer to the Appeal Brief filed April 13, 2009
and the Examiner’s Answer mailed July 23, 2009.
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that since Figures 1A and 1B show that the three recited ports and circuitry
are part of the device, skilled artisans would therefore understand how to
make and use the claimed invention from reading the Specification. Br. 5-6.

ISSUE
Has the Examiner erred in rejecting claim 22 as failing to comply with
the written description requirement under § 112, first paragraph? This issue
turns on whether Appellant’s originally-filed disclosure conveys with
reasonable clarity that Appellant possessed the three recited ports and
circuitry being integral with one another within the data masking device as
claimed.

PRINCIPLES OF LAW
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellant possessed the claimed
invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Although the description
requirement under § 112 does not demand (1) any particular form of
disclosure, or (2) the Specification recite the claimed invention verbatim, a
description that merely renders the invention obvious does not satisfy the
requirement. Id. at 1352 (citations omitted).

ANALYSIS
We will sustain the Examiner’s written description rejection of claim
22 for the reasons indicated by the Examiner. Ans. 3-4, 11-13. At best,
Appellant’s Figures 1A and 1B show that the three recited ports and
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circuitry are part of data masking device 100—a fact that the Examiner not
only acknowledges, but indicates would overcome the written description
rejection if so amended. Ans. 12. But the fact that the recited components
are merely part of the data masking device does not mean that they are
integral with one another within that device as claimed, let alone convey
with reasonable clarity that Appellant possessed this feature when the
application was filed. The Examiner’s point in this regard (Ans. 11-13) is
well taken.
Appellant’s arguments are unavailing. First, Appellant’s contention
that skilled artisans would understand how to make and use the claimed
invention from Appellant’s disclosure pertains to enablement—a separate
and distinct requirement from the written description requirement under
§ 112. See Ariad, 598 F.3d at 1344-49.
Leaving this inconsistency aside, Appellant’s disclosure is simply
silent regarding whether the three recited ports and circuitry are integral with
one another within the data masking device. As the Examiner indicates
(Ans. 11), this limitation was not in the originally-filed claims, but rather
was added to claim 22 via an amendment filed August 1, 2007. Notably,
Appellant referred to Paragraph 0019 in connection with that amendment—a
paragraph that lacks any discussion regarding the recited integral
port/circuitry relationship, but rather generally discusses Figure 1a which
shows the data masking device 100 and the associated devices and network.
See Remarks Accompanying Amd’t filed Aug. 1, 2007. But see Br. 5
(referring to ¶¶ 0013-18 in connection with the disputed limitation of claim
22 in the Brief’s Summary of the Claimed Subject Matter section); Br. 6
(citing only Figures 1a and 1b as support for the disputed limitation).
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Despite these inconsistencies, the cited paragraphs and figures do not
disclose the recited integral relationship between the ports and circuitry.
Appellant’s Paragraphs 0013 through 0018 merely describe the invention
generally, and Paragraph 0019 describes Figure 1a which shows the data
masking device 100 and the associated devices and network. And despite
Figure 1b’s showing ports 116 in the data masking device 100, the figure
and its corresponding description falls well short of conveying with
reasonable clarity that Appellant possessed the recited integral relationship
among the recited ports and circuitry when the application was filed. See
¶ 0024; Figs. 1a-b.
To the extent that Appellant’s position is based on the notion that it
would have been obvious to form these ports and circuitry integral with one
another based on Appellant’s disclosure is unavailing, for it is well settled
that while the Specification need not recite the claimed invention verbatim, a
description that merely renders the invention obvious does not satisfy the
written description requirement under § 112. Ariad, 598 F.3d at 1352.
We are therefore not persuaded that the Examiner erred in rejecting
claim 22 under § 112, first paragraph.

THE OBVIOUSNESS REJECTION OVER FUNCK AND BERNARD
Regarding representative claim 1, the Examiner finds that Funck’s
data masking device has every recited feature except for masking user data
characters on an agent’s display, but cites Bernard as teaching this feature in
concluding that the claim would have been obvious. Ans. 4-7, 13-14.
Appellant argues that while Bernard masks data in a record, no data is
entered, and therefore the cited prior art does not teach or suggest masked
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signals intended to indicate to an operator that a customer is entering
customer information as claimed. Br. 6-7.

ISSUES
Under § 103, has the Examiner erred by finding that Funck and
Bernard collectively would have taught or suggested:
(1) a second output for transmitting masked signals intended to
indicate to an operator that a customer is entering customer information as
recited in claim 1?
(2) circuitry operable to generate a confirmation request message and
receive a confirmation from the customer as recited in claim 2?
(3) generating a request asking the customer to confirm customer
information as recited in claim 8?
(4) the limitations recited in claims 11, 12, and 16-20? This issue
turns on whether Appellant has persuasively rebutted the Examiner’s finding
that these features are known in the art.

ANALYSIS
Claims 1, 3-5, 7, 21, and 22
On this record, we find no error in the Examiner’s obviousness
rejection of representative claim 1 which recites, in pertinent part, a second
output for transmitting masked signals intended to indicate to an operator
that a customer is entering customer information. We emphasize the term
“entering” here, for its present tense requires that the information is
currently being entered—not previously entered.
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The Examiner finds that Funck’s decrypting and displaying received
customer data teaches this data entry indication. Ans. 5, 14 (citing Funck, ¶
0034). We see no error in this finding. Not only did Appellant fail to
address the Examiner’s reliance on Funck (see Br. 6-7), nothing in the claim
precludes Funck’s customer’s entering information in the system pertaining
to a transaction via customer data acquisition and transmission—processes
that involve customer interaction. See, e.g., Funck, ¶¶ 0029-32. For
example, nothing in the claim precludes the customer’s entering information
in the system by causing customer information to be transmitted to the ACD
responsive to the customer’s depressing a key sequence on the keyboard or
clicking a dialog box. See Funck, ¶ 0029. Notably, the scope and breadth of
the recited customer information entry is not limited to manually entering
data into the customer’s computer via a keyboard or other input device, but
rather could be realized on a system level via customer-assisted data
acquisition and transmission for particular transactions as in Funck.
Therefore, we find that Funck teaches the recited customer
information entry indication even assuming, without deciding, that the
customer data 12 sent to agent 14 in Funck is not manually entered by the
customer with a keyboard or other input device when the encrypted data is
transmitted, decrypted, and displayed at the agent’s system. See Funck, ¶¶
0025-30, 34; Figs. 1-3. Even if this is the case, the transmitted signals
nonetheless indicate that the customer is entering information in the system
via this customer data acquisition and transmission to facilitate the
transaction—a transaction that ends when the consumer (1) purchases the
product, and (2) pays with a credit card number. Funck, ¶ 0028.
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And even assuming that Bernard masks previously-entered data as
Appellant seems to suggest (see Br. 7 (citing Bernard, col. 13, ll. 2-15)), the
Examiner cites Bernard for a limited purpose—namely to show that it is well
known to mask clients’ sensitive information (e.g., credit card information)
so that agents cannot view this information on their displays to prevent theft.
See Ans. 14. Given the security advantages provided by this masking, we
see no reason why this teaching could not be applied to the displayed
customer data in Funck as the Examiner proposes. Appellant’s arguments
regarding Bernard alone do not persuasively rebut the Examiner’s position
which is based on the collective teachings of Funck and Bernard as the
Examiner indicates. Id.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 1, and claims 3-5, 7, 21, and 22 not separately argued
with particularity.

Claims 2, 8-10, and 13
We will also sustain the Examiner’s rejection of claim 8 reciting, in
pertinent part, generating a request asking the customer to confirm customer
information. Appellant argues that Bernard’s automated response system
that provides options to a consumer does not teach this feature. Br. 7 (citing
Bernard, col. 49, l. 50). This argument, however, does not address—let
alone persuasively rebut—the Examiner’s reliance on Funck for the disputed
feature. Ans. 7-8, 15 (citing Funck, ¶¶ 0030-31). We find this position
reasonable, particularly since Funck only sends customer data to the
automatic call distributor (ACD) 16 if the customer computer verifies a code
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or signal sent by the ACD. Funck, ¶ 0030. This verification at least
suggests an associated request to confirm received information.
Nor are we persuaded of error in the Examiner’s alternative reliance
on Bernard for teaching generating the recited confirmation request message
since the played script asks the customer to confirm information associated
with various options in connection with items on hold as the Examiner
indicates. Ans. 7-8, 15 (citing Bernard, col. 49, ll. 38-67).
We are therefore not persuaded that the Examiner erred in rejecting
claim 8, and claims 9, 10, and 13 not separately argued with particularity.
Our reasoning above also applies to claim 2 which, while argued
separately (Br. 8), recites circuitry operable to (1) generate a confirmation
request message, and (2) receive a customer confirmation—limitations that
are likewise at least suggested by Funck and Bernard for the reasons noted
above.

Claims 11, 12, and 16-20
We also sustain the Examiner’s rejection of claims 11, 12, and 16-20
reciting various features which the Examiner finds to be well known. Ans.
8-9, 16-17. Appellant contends that these findings failed to shift the burden
to Appellant since no reference was cited to support these contentions. Br.
8.
Leaving aside Appellant’s failure to cite legal authority to support this
assertion, we disagree with Appellant that the Examiner’s findings regarding
what is said to be well known allegedly did not shift the burden to Appellant
to rebut those findings. It is well settled that:
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[The USPTO] satisfies its initial burden of production by
adequately explain[ing] the shortcomings it perceives so that
the applicant is properly notified and able to respond. In other
words, the PTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies 35 U.S.C. § 132, in
notify[ing] the applicant ... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.
That section is violated when a rejection is so uninformative
that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.

In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (internal citations and
quotation marks omitted).
In the rejection, by (1) officially noticing certain facts that are said to
be well known, and (2) considering these facts in light of the cited
references’ collective teachings, the Examiner established a case of
obviousness that shifted the burden to Appellant to rebut. But that rebuttal
has not been persuasively demonstrated on this record. That is, Appellant
does not specifically identify error in the Examiner’s position, let alone
explain why the noticed facts are not well known in the art as the Examiner
indicates. Ans. 16-17 (citing MPEP § 2144.03(C)). This is not a case where
the rejection is so uninformative that it prevents Appellant from recognizing
and countering the grounds of rejection. Rather, it is based on what, in the
Examiner’s view, is well known in the art—findings that are clearly
articulated in the rejection and therefore subject to rebuttal.
To be sure, an Examiner’s officially noticing facts unsupported by
documentary evidence should only be taken when the facts so noticed are
“capable of such instant and unquestionable demonstration as to defy
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dispute.” See In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970) (citations
omitted). But where, as here, Appellant does not particularly show error in
these findings, let alone explain why the noticed facts are not well known,
the Examiner’s position is not persuasively rebutted.
We are therefore not persuaded that the Examiner erred in rejecting
claims 11, 12, and 16-20.

THE OTHER OBVIOUSNESS REJECTION
We also sustain the Examiner’s obviousness rejection of claims 6 and
14. Ans. 10-11. Since Appellant reiterates similar arguments made
previously (Br. 7-8), we are not persuaded by these arguments for the
reasons previously discussed.

CONCLUSION
The Examiner did not err in rejecting (1) claim 22 under § 112, and
(2) claims 1-14 and 16-22 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-14 and 16-22 is affirmed.
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)(iv).

AFFIRMED

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