Gemeto, Marc et al.

Patent Trials and Appeals BoardNov 4, 2019

14429795 - (D) (P.T.A.B. Nov. 4, 2019)

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. 14/429,795 03/20/2015 Marc Gemeto 1032326-000684 4087 21839 7590 11/04/2019 BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404 EXAMINER HSIEH, PING Y ART UNIT PAPER NUMBER 2664 NOTIFICATION DATE DELIVERY MODE 11/04/2019 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): ADIPDOC1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARC GEMETO and JEAN-YVES FINE Appeal 2019-001192 Application 14/429,795 Technology Center 2600 Before JEREMY J. CURCURI, ADAM J. PYONIN, and SCOTT RAEVSKY, Administrative Patent Judges. RAEVSKY, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–10. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as GEMALTO SA. Appeal Br. 2. Appeal 2019-001192 Application 14/429,795 2 CLAIMED SUBJECT MATTER The claims recite a method for virtually connecting two persons. See Spec., Abstract. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for virtually connecting two persons, with the first one of said persons having a first NFC device and the second one of said persons having a second NFC device, with one of said NFC devices being a telecommunications terminal comprising an application, with each said NFC device comprising the identity of the person to which it belongs, comprising: transmitting the identity of said first person from said first NFC device to said second NFC device; transmitting the identity of said second person from said second NFC device to said first NFC device; generating, using said application, a secret shared by said persons based on at least one of phone numbers of said persons, geographic locations of said persons, or time of transmitting the identities of said persons, with said shared secret providing access to an online storage space shared by said persons; and storing said shared secret in said NFC devices, with a reference relating to said virtual connection. REJECTIONS Claim 1, 4–6, 9, and 102 stand rejected under pre–AIA 35 U.S.C. § 103(a) as being unpatentable over Kamal (US 2013/0324169 A1, Dec. 5, 2013) and Taveau (US 2011/0076941 A1, Mar. 31, 2011). Final Act. 2. Claims 2, 3, 7, and 8 are rejected under pre–AIA 35 U.S.C. § 103(a) as being unpatentable over Kamal, Taveau, and Goldberg (US 8,863,258 B2, Oct. 14, 2014). Id. at 5. 2 Although the heading of the rejection as stated does not include claim 10, the body of the rejection addresses claim 10. Final Act. 2, 4. Appeal 2019-001192 Application 14/429,795 3 We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). ANALYSIS Appellant contends Taveau fails to teach or suggest “generating, using said application, a secret shared by said persons based on at least one of phone numbers of said persons, geographic locations of said persons, or time of transmitting the identities of said persons, with said shared secret providing access to an online storage space shared by said persons.” Appeal Br. 12–13. Specifically, Appellant contends that Taveau’s “mobile device generates a code and sends the generated code back to the service provider system 120” but that “this generated code in Taveau is not based on the phone numbers of the two persons, the geographic locations of the two persons, or the time of transmitting the identities.” Id. at 13. The Examiner finds, Taveau indeed discloses in paragraphs 28–29 that service provide system 120 sends packet information to mobile device 105, 110 . . . in response to receiving the user’s information (such as phone number, pin number, email address and/or password) and unique identifier. Therefore, it is considered to be based on specific information of two entities. Ans. 7 (emphasis added). We agree with Appellant that claim 1’s plural recitation in the “generating” limitation requires at least two phone numbers, two persons, or two geographic locations. See Appeal Br. 13. Taveau, in contrast, discloses a “user entering login information such as phone number . . . in mobile device” and “[i]n response to receiving the user’s information . . . service Appeal 2019-001192 Application 14/429,795 4 provider system 120 sends packet information to mobile device.” Taveau ¶¶ 28–29 (emphasis added). This packet information from the service provider system includes “data relating to country . . . as well as individual credentials.” Id. ¶ 29 (emphasis added). Further, Taveau discloses “[a] corresponding code generated by the application is then communicated back to payment provider system 120 from mobile device.” Id. In other words, Taveau’s mobile device sends a single phone number to a service provider system and, in response, receives individual credentials and data relating to a country, among other information. But Taveau does not teach or suggest generating the code or individual credentials based on two phone numbers, two countries (e.g., geographic locations), or the time of transmitting identities. Accordingly, we agree with Appellant that Taveau fails to teach or suggest “generating, using said application, a secret shared by said persons, based on at least one of phone numbers of said persons, geographic locations of said persons, or time of transmitting the identities of said persons.” We note the Examiner has not relied on any of the other cited references to teach this element. Accordingly, we do not sustain the Examiner’s rejection of claim 1 and its corresponding dependent claims. Similarly, each of independent claims 6 and 10 recites similar language to the above-quoted limitation of claim 1. Accordingly, we also do not sustain the Examiner’s rejections of claims 6 and 10 and their corresponding dependent claims. We do not reach Appellants’ further allegations of error because we find the issue discussed above to be dispositive of the rejection of all the pending claims. Appeal 2019-001192 Application 14/429,795 5 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4–6, 9, 10 103 Kamal, Taveau 1, 4–6, 9, 10 2, 3, 7, 8 103 Kamal, Taveau, Goldberg 2, 3, 7, 8 Overall Outcome 1–10 REVERSED