Ex Parte Blom

Patent Trial and Appeal Board

Feb 10, 2017

13495156 (P.T.A.B. Feb. 10, 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.
13/495,156 06/13/2012 Jan Otto Blom P6326US00 8828
11764 7590
Ditthavong & Steiner, P.C.
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
EXAMINER
SU, SARAH
ART UNIT PAPER NUMBER
2431
NOTIFICATION DATE DELIVERY MODE
02/14/2017 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
following e-mail address(es):
docket@dcpatent.com
Nokia. IPR @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN OTTO BLOM1
Appeal 2015-007890
Application 13/495,156
Technology Center 2400
Before MICHAEL J. STRAUSS, KEVIN C. TROCK, and
DAVID J. CUTITTAII, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—20, all pending claims of the application.2 We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Nokia Corporation.
Appeal Br. 1.
2 Claims 21—48 are cancelled. See Appeal Br. 24 (Claims App’x).
Appeal 2015-007890
Application 13/495,156
STATEMENT OF THE CASE
According to Appellant, the application relates to providing privacy
protection for data associated with a user or a user device, or both.
Spec. 1 51.3 Claims 1 and 11 are independent. Claim 1 is illustrative and is
reproduced below with disputed limitations italicized:
1. A method comprising facilitating a processing of
and/or processing (1) data and/or (2) information and/or (3) at
least one signal, the (1) data and/or (2) information and/or (3) at
least one signal based, at least in part, on the following:
an aggregation of data associated with one or more
modalities of a user device;
at least one determination of one or more categories of
richness for the data associated with each one of the one or
more modalities, wherein the richness is indicative of one or
more parameters associated with the data, user information, or
a combination thereof and
at least one determination of a user privacy vulnerability
level based, at least in part, on the one or more categories of
richness.
Appeal Br. 19 (Claims App’x).
REFERENCE
The art relied upon by the Examiner in rejecting the claims:
Nicodemus et al. US 2007/0143851 A1 June 21,2007
(“Nicodemus”)
3 Throughout this Decision, we refer to: (1) Appellant’s Specification filed
June 13, 2012 (“Spec.”); (2) the Final Office Action (“Final Act.”) mailed
Sept. 12, 2014; (3) the Appeal Brief (“Appeal Br.”) filed Feb. 27, 2015; (4)
the Examiner’s Answer (“Ans.”) mailed June 26, 2015; and (5) the Reply
Brief (“Reply Br.”) filed Aug. 26, 2015.
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Application 13/495,156
REJECTIONS
Claims 1—20 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Nicodemus. Final Act. 4—9.
Claims 1—20 stand rejected under 35 U.S.C. § 112, second paragraph,
as indefinite. Final Act. 3^4.
Our review in this appeal is limited only to the above rejections and
issues raised by Appellant. We have not considered other possible issues
that have not been raised by Appellant and which are, therefore, not before
us. See 37 C.F.R. § 41.37(c)(l)(iv) (2014).
ISSUES
1. Does the Examiner err in finding Nicodemus discloses “at least
one determination of one or more categories of richness for the data
associated with each one of the one or more modalities, wherein the richness
is indicative of one or more parameters associated with the data, user
information, or a combination thereof,” as recited in claim 1 ?
2. Does the Examiner err in finding Nicodemus discloses “at least
one determination of a user privacy vulnerability level based, at least in part,
on the one or more categories of richness,” as recited in claim 1?
3. Does the Examiner err in rejecting claims 1—20 under 35 U.S.C.
§ 112, second paragraph, as being indefinite?
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Application 13/495,156
ANALYSIS
35U.S.C.§ 102: Claims 1-20
We have reviewed the Examiner’s rejection of claim 1 under
35 U.S.C. § 102(b) in light of Appellant’s arguments that the Examiner has
erred. We disagree with Appellant’s contentions and we adopt as our own:
(1) the findings and reasons set forth by the Examiner in the Office Action
from which this appeal is taken (Final Act. 2—9) and (2) the reasons set forth
by the Examiner in the Examiner’s Answer in response to Appellant’s
Appeal Brief (Ans. 8—9). We concur with the conclusions reached by the
Examiner, and we highlight the following for emphasis.
Issue 1
In rejecting claim 1 as anticipated by Nicodemus, the Examiner
interprets the claim terms “categories of richness” and “parameters” as any
“information that can be descriptive of data, where the parameters are
interpreted as any information related to the data.” Final Act. 3. Based on
this interpretation, the Examiner finds “Nicodemus discloses that various
conditions are identified (i.e. categories determined) and monitors are
configured to monitor those various conditions by looking at data.” Id.
(citing Nicodemus 1358 (11. 1—5)).
Appellant argues the Examiner errs because the Examiner’s
interpretation of the claim term “categories of richness” is an “overly broad”
interpretation and is “not consistent with the description as set forth in the
[Specification and as interpreted by one of ordinary skill in the art.” Reply
Br. 3^4.
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Application 13/495,156
We find this argument unpersuasive because Appellant fails to
establish the Examiner’s interpretation is not the broadest reasonable
interpretation consistent with Appellant’s Specification. See In re Am. Acad.
ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under a broadest
reasonable interpretation, the words of the claim must be given their plain
meaning unless the plain meaning is inconsistent with the Specification.
Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir.
2004). The plain meaning of a term is the ordinary and customary meaning
given to the term by those of ordinary skill in the art at the time of the
invention. In re Suitco Surface, Inc., 603 F.3d 1255, 1259-60 (Fed. Cir.
2010). The presumption that a term is given its ordinary and customary
meaning may be rebutted by Appellant clearly setting forth a different
definition of the term in the Specification. In re Morris, 111 F.3d 1048,
1054 (Fed. Cir. 1997).
Here, in support of the argument that the Examiner’s proposed
interpretation of the terms “categories of richness” and “parameters” is
overly broad, Appellant cites the following portion of the Specification:
In one embodiment, the system 100 determines a user privacy
vulnerability level based, at least in part, on the one or more
categories of richness. In various embodiments, users
associated with relatively rich data within any given data
modality may be determined and/or associated with higher risk
of privacy vulnerability level, wherein the data may be utilized
to infer privacy sensitive information pertaining to the user. For
example, a rich category related to a user’s location data (e.g.,
GPS, cell-ID, etc.) can indicate that the user location
information may enable other parties to determine and/or infer
various information associated with the user, for instance, user
location, a demographic profile of the user, travel routes,
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possible establishments visited, place of residence, place of
employment, and the like.
Reply Br. 4 (citing Spec. 132) (emphasis omitted).
As an initial matter we note Appellant fails to propose different
definitions for the terms “categories of richness” and “parameters,” based on
the Specification, but instead argue the Examiner’s interpretation is overly
broad.
Likewise, Appellant fails to establish the Specification clearly sets
forth a different definition of the terms. Morris, 111 F.3d at 1054. For
example, the portion of the Specification cited by Appellant states that “[i]n
various embodiments, users associated with relatively rich data within any
given data modality may be determined and/or associated with higher risk of
privacy.” Spec. 132. We do not agree this clearly sets forth a definition of
the term “categories of richness” because the example is described only as
applying to “various embodiments.” Even if this were to suggest a
definition, we disagree the definition would suggest a narrower
interpretation than that of the Examiner. In another example cited by
Appellant, “a rich category related to a user’s location data (e.g., GPS, cell-
ID, etc.) can . . .” be used by “other parties to determine and/or infer various
information associated with the user.” Id. (emphasis added). We do not
agree that this example clearly sets forth a limiting definition of the term
“categories of richness.”
The Examiner interprets the term “parameters “as information related
to the data.” Final Act. 3. We note the portion of the Specification cited by
Appellant fails to even mention the term “parameters” and so we do not
agree the Specification clearly sets forth a different definition of the term.
Morris, 111 F.3d at 1054.
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Also, we find nothing in the portion of the Specification cited by
Appellant that is inconsistent with the Examiner’s interpretation of the terms
“categories of richness” and “parameters.”
Accordingly, because Appellant provides no express definition from
the Specification and also fails to establish the Examiner’s interpretation of
either term is inconsistent with the Specification {Chef America, Inc., 358
F.3d at 1372) we find unpersuasive Appellant’s argument that the
Examiner’s interpretation is unreasonably broad.
In view of the Examiner’s interpretation of the terms “categories of
richness” and “parameters,” we agree with the Examiner’s finding that
“Nicodemus discloses that various conditions are identified (i.e. categories
determined) and monitors are configured to monitor those various conditions
by looking at data” and that this disclosure anticipates “at least one
determination of one or more categories of richness,” as recited in
independent claim 1. Final Act. 2—3, 5; Ans. 8—9 (citing Nicodemus 18,
114—357, 358).
Issue 2
In rejecting claim 1 as anticipated by Nicodemus, the Examiner
interprets the claim term “user privacy vulnerability level” as “a state of a
system, which is based on a condition.” Final Act. 3; Ans. 9. Based on this
interpretation, the Examiner finds “Nicodemus’ state of an endpoint system,
which is based on a condition (i.e. category)” discloses a user privacy
vulnerability level “because it is used to control access to a resource based
on a policy and vulnerability.” Id.', Ans. 9 (citing Nicodemus 118 (11. 5—
20)).
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Appellant argues the Examiner errs because the Examiner’s
interpretation of the term “user privacy vulnerability level” is “overly broad
and are [sic] not consistent with the description as set forth in the
[Specification and as interpreted by one of ordinary skill in the art.” Reply
Br. 5.
We find this argument unpersuasive because Appellant fails to
establish the Examiner’s interpretation is not the broadest reasonable
interpretation consistent with Appellant’s Specification. Am. Acad. ofSci.
Tech Ctr., 367 F.3d at 1364. As an initial matter, we note Appellant fails to
propose an alternative interpretation for the term based on the Specification,
but instead simply asserts the Examiner’s interpretation is overly broad.
Reply Br. 4—5 (citing Spec. 132). Appellant also fails to establish the
Specification clearly sets forth a different definition of the term {Morris, 111
F.3d at 1054) and fails to provide sufficient evidence that the Specification is
inconsistent with the Examiner’s interpretation {Chef America, Inc., 358
F.3d at 1372). Appeal Br. 16—17; Reply Br. 4—5.
Accordingly, because Appellant provides no express definition from
the Specification and fails to establish the Examiner’s interpretation of the
term “user privacy vulnerability level” is inconsistent with the Specification,
we find unpersuasive Appellant’s argument that the Examiner’s
interpretation is unreasonably broad.
Appellant argues the cited paragraph of Nicodemus “at best. . .
discloses collecting the status of a known security vulnerability for a
software program operating on a computer system” but “does not disclose or
suggest determining a user privacy vulnerability level based, at least in part,
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on one or more categories of richness in the manner claimed.” Appeal
Br. 16 (citing Nicodemus 1 18).
In view of the Examiner’s interpretation of the term “user privacy
vulnerability level,” we agree with the Examiner’s finding that Nicodemus’
disclosure of “a state of a system, which is based on a condition” discloses
“at least one determination of a user privacy vulnerability level based, at
least in part, on the one or more categories of richness,” as recited in
independent claim 1. Final Act. 2—3, 5; Ans. 8—9 (citing Nicodemus 18,
114—357, 358).
Appellant further argues the cited paragraph of Nicodemus “does not
disclose or suggest ‘that a state of these conditions is determined (i.e.
privacy vulnerability level) and is used to establish rules and policies for
controlling access to resources’ as suggested by the Action.” Appeal Br. 18.
We find this argument unpersuasive. Independent claim 1 recites no
limitation concerning “establish rules and policies for controlling access to
resources.” Accordingly, Appellant argues for patentability on the basis of a
limitation that is not recited in the claim. Limitations not appearing in the
claims cannot be relied upon for patentability. See In re Self, 671 F.2d 1344,
1348 (CCPA 1982).
Accordingly, we sustain the Examiner’s 35 U.S.C. § 102(b) rejection
of claim l.4 We also sustain the Examiner’s § 102(b) rejection of
independent claim 11, which is argued with independent claim 1, for similar
4 Should there be further prosecution of this application, the Examiner may
wish to review claim 1 for compliance under 35 U.S.C. § 101 in light of the
Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank Inter.,
134 S. Ct. 2347 (2014) and subsequent agency guidance.
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reasons. Appeal Br. 13. Dependent claims 2—10 and 12—20, are not argued
separately and fall with their respective independent claims. Id.
35U.S.C.§ 112: Claims 1-20
Issue 3
In rejecting claim 1 under 35U.S.C. § 112, second paragraph, the
Examiner finds that because “the claims recite ‘facilitating a processing of. .
. data and/or . . . information and/or ... at least one signal,’ it is unclear
what is included and excluded because it appears that data and information
describe the same thing and a signal would also have information.” Final
Act. 2. “[T]hus, the combination of data and information and at least one
signal appear to describe the same thing.” Ans. 8. “Further, the collective
use of the phrase ‘and/or’ makes it unclear what is included and excluded in
the processing.” Id.
Appellant contends the Examiner errs because “in view of the
decision of the Patent Trial and Appeal Board in Ex Parte Gross (Appeal
No. 2011-004811), the phrase ‘and/or’ covers embodiments having element
A alone, element B alone, or elements A and B taken together and[,]
therefore, this phrase meets the requirements for definiteness.” Appeal
Br. 12. “In addition, assuming arguendo, that data and information describe
the same thing, and that a signal would also include information as asserted
by the final Office Action, this would not render the claims indefinite or
unclear.” Id. at 13.
We find Appellant’s argument persuasive. 35 U.S.C. § 112, second
paragraph, “require[s] that a patent’s claims, viewed in light of the
specification and prosecution history, inform those skilled in the art about
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the scope of the invention with reasonable certainty.” Nautilus, Inc. v.
BiosigInstruments, Inc., 134 S. Ct. 2120, 2129 (2014). A claim will be
found indefinite only if “no narrowing construction can properly be adopted
. . . Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371, 1375
(Fed. Cir. 2001). On the other hand, “[i]f the meaning of the claim is
discernible, even though the task may be formidable and the conclusion may
be one over which reasonable persons will disagree, [our reviewing court
has] held the claim sufficiently clear to avoid invalidity on indefmiteness
grounds.” Id.
We find that by using the narrowing construction proposed by the
Examiner, in which “the combination of data and information and at least
one signal appear to describe the same thing” (Ans. 8), the claim would be
rendered definite by removing any ambiguity about the difference between
the terms. Exxon Research, 265 F.3d at 1375; See also Athletic Alternatives,
Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1581 (Fed. Cir. 1996) (court chose
the narrower of two equally plausible claim constructions in order to avoid
invalidating the claim). We further conclude that in view of the holding of
the Board in Ex Parte Gross, the meaning of the term “and/or” is
discernible. Ex Parte Gross, Appeal No. 2011-004811, 2013 WL 6907805
(PTABDec. 31,2013).
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112,
second paragraph rejection of claims 1—20.
DECISION
We affirm the Examiner’s decision rejecting claims 1—20 under
35 U.S.C. § 102(b).
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We reverse the Examiner’s decision rejecting claims 1—20 under
35 U.S.C. § 112.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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