Ex Parte Camenisch et al

Patent Trial and Appeal Board

Dec 18, 2015

12206377 (P.T.A.B. Dec. 18, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/206,377 09/08/2008 Jan Leonhard Camenisch
48063 7590 12/22/2015
RYAN, MASON & LEWIS, LLP
48 South Service Road
Suite 100
Melville, NY 11747
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.
CH920080060US 8735
EXAMINER
SHERR, MARIA CRISTI OWEN
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
12/22/2015 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN LEONHARD CAMENISCH and THOMAS R. GROSS
Appeal2013-006282
Application 12/206,377 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
SHEILA F. McSHANE, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision to reject claims 1-3, 6, and 7. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is International
Business Machines Corporation. Appeal Brief filed September 24, 2012,
hereafter "App. Br.," 1.
Appeal2013-006282
Application 12/206,377
BACKGROTJND
The invention relates to forming and issuing inoperative credentials,
and then making the credentials operative at a subsequent point in time.
Abstract, Specification, hereafter "Spec.," 1 :22-24. A goal of the invention
is to issue the credentials, so that, for instance, electronic identity cards do
not need to be reissued at a later time to add, remove or change credentials.
Spec. 2:8-10.
Representative claims 1 and 6 are reproduced from page 11 of the
Appeal Brief (Claims App'x) as follows, with emphasis added to relevant
claim limitations:
1. A method of forming a credential, the method
comprising the step of:
forming, at a first point in time, an inoperative credential,
the inoperative credential becoming operative, at a second
point in time, to form a first operative credential, the second
point in time occurring after the first point in time, and the
second point in time corresponding to an occurrence of a
trigger entitling a holder of the inoperative credential to the
first operative credential, the forming step being performed by a
computer system, the computer system comprising a processor
device coupled to a memory, and the processor device being
configured to execute one or more program instructions, stored
in the memory, in order to perform the forming step.
6. The method of claim 1 further comprising the step of:
forming a plurality of credential classes, each one of the
plurality of credential classes is associated with one of a
plurality of triggers, and the first operative credential is
updated to form a second operative credential in response to
the occurrence of one of the plurality of triggers.
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Application 12/206,377
In a Final Rejection, the Examiner rejected claims 1-3, 6, and 7 over
35 U.S.C. § 103(a) as obvious over Ekers2 and Plost. 3 Final Action,
hereafter "Final Act.," 3-5, mailed February 15, 2012; see, also, Answer,
hereafter "Ans." 4--7, mailed February 6, 2013.
DISCUSSION
The Appellants addressed issues for claim 1, with its dependent
claims, claims 2, 3, and 7, standing or falling with it. App. Br. 3---6.
Additional arguments were presented for claim 6. Id. at 6-9. We will
address the claims in a similar manner.
Claim 1. The Examiner finds that claim 1 's recitation of "the second
point in time" constitutes nonfunctional descriptive material and therefore
does not distinguish the claim from the prior art. Final Act. 2; Ans. 4. The
Examiner determines that the claim term directed to the inoperative
credential becoming "operative to ... "constitutes intended use and, in other
words, the credential "is operative to (or could do) multiple things, but does
not actually do them in the claim as currently recited." Ans. 4--5. The
Examiner also states "[b ]ecause the 'point in time' conveys a meaning rather
than establishing a functional relationship, the recitation does not serve to
further distinguish from the prior art." Id. at 7. But, the Examiner also
finds, however, that for the obviousness purposes, Plost discloses this
limitation stating
Plost, however, does disclose the second
point in time corresponding to an occurrence of a
trigger entitling a holder of the inoperative
credential to the first operative credential, the
forming step being performed by a computer
2 US Patent 7,290,146 B2, issued October 30, 2007.
3 US Patent 7,375,640 Bl, issued May 20, 2008.
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Application 12/206,377
system, the computer system compnsmg a
processor device coupled to a memory, and the
processor device being configured to execute one
or more program instructions, stored in the
memory, in order to perform the forming step.
Final Act. 4 (citing Plost 7:18--40, 8:15-34, 9:45-10:15).
The Appellants argue that the Examiner erred in finding that that "the
second point in time" of claim 1 constitutes nonfunctional descriptive
material because the limitation is functional. App. Br. 3. In support, the
Appellants refer to the "functional interrelationship between the trigger and
the method of forming a credential, namely, that at the time of the trigger
(i.e., the second point in time) the inoperative credential becomes operative
as recited in claim 1." Id. at 4.
We agree with the Appellants regarding the issue of the interpretation
of the term "the second point in time" as it relates to nonfunctional
descriptive material. As this term is used in claim 1, the term has function,
i. . . 1" . . i. . +i. . +. t_L_Lat 1s, 1t serves as a _L1m1tat1on to t_L_Le time 0_1_ t_L_Le trigger _lor an occurrence.
Therefore, this term is afforded patentable weight, and we will further assess
the obviousness rejections in that light.
The Appellants further contend that the prior art fails to disclose that
there is activation for the holder of the inoperative credential to form a first
operative credential as recited in claim 1. Id. at 5. More specifically, the
Appellants argue that although Plost may disclose activation of an accessible
temporary credential, "[ t ]he worker as described in Plost is not a holder of
an inoperative credential" and instead, the worker is gaining access to a
temporary credential. Id. (citing Plost at 7:20-25). Additionally, the
Appellants contend that Plost's teachings are limited to releasing temporary
credentials that have already been activated. Id. at 7.
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Application 12/206,377
Upon consideration of the evidence on this record in light of the
arguments advanced by the Appellants, we find that the Appellants have not
identified reversible error in the Examiner's finding that claim 1 is
unpatentable. Accordingly, we sustain the Examiner's rejection of this
claim on this basis for the reasons set forth in the Final Action and the
Answer, excluding any reference to nonfunctional descriptive material. We
add the following primarily for emphasis.
The Examiner applies some of Plost's "second scenario" disclosures,
for instance, to claim 1 's recital of an "inoperative credential becoming
operative, at a second point in time" upon the "occurrence of a trigger
entitling a holder of the inoperative credential to the first operative
credential." The second scenario covers a situation where a worker has no
active credential but a temporary credential 120E is available outside of the
environment. Plost 7: 13-14, 8: 16: 17. The environment may, for instance,
be an area of a hospital with patient rooms located off a hallway. Id., Fig. 1.
Access doors, shown on the entrance to the hallway, leading into the
environment, are monitored and there is communication between the point
of entry to an environment and a location with security personnel monitoring
the access to the environment. Id., 7: 19-23, Fig. 1. Plost also discloses that
when the worker wants to gain access to the environment, there is
communication available to allow the worker to signal the desire to gain
access and for the security personnel to either activate an accessible
temporary credential or release a temporary credential which has already
been activated and/or to operate the access door. Id., 7:25-30.
The Appellants' arguments that the worker in Plost is not the holder of
the inoperable credential are unavailing. The Appellants argue that the
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Application 12/206,377
worker has "no active credential or possession"-but the Appellants view
this too narrowly. App. Br. 5 (citing Plost 8:15-34). There is nothing in
Plost, under the second scenario, for instance, that states that the worker
cannot possess an inactive temporary credential outside the environment,
and then to gain access to the environment the worker communicates with
security personnel to have the credential activated. In our view, the
Examiner's finding the credential is activated in response to being triggered
by a worker request to open a door is supported by the reference.
We therefore sustain the rejection of claim 1, and the claims that
depend from it, claims 2, 3, and 7.
Claim 6. The Examiner also relies on Plost for the disclosure that the
credential classes are associated with triggers, and the first operative
credential is updated to form a second operative credential in response to the
occurrence of one of the triggers. Ans. 6-7, 10 (citing Plost 7: 18--40 (where
credential is activated in response to being triggered by a request to open a
door), 8: 15-34 (where inactive temporary credential is activated in response
to being triggered by a request and authorization), 9:45-10: 15).
For claim 6, the Appellants repeat the same argument asserted for
claim 1. App. Br. 8. The Appellants also contend that even ifthe Examiner
is correct regarding Plost's teachings, Plost discloses two separate triggers
associated with a single credential class, but claim 6 recites that each one of
the credential classes is associated with only one trigger. Reply Brief,
hereafter "Reply Br.," 4, filed April 8, 2013.
We have already addressed the argument that the Appellants made for
claim 1. As to the second argument, the Appellants' misconstrue the
Examiner's findings. Our reading of the basis of the rejection is that the
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Application 12/206,377
Examiner is not contending that there are two triggers that apply to a single
credential class, but rather the reference to Plost's teachings is to
demonstrate that there is more than one trigger ("a plurality of triggers").
Under Plost, for instance, when a credential has been activated, it is then a
"first operative credential." The "first operative credential" is then updated
to the "second operative credential" by, for instance, a specific trigger of a
hand cleaning action, thereby teaching "the first operative credential is
updated to form a second operative credential in response to the occurrence
of one of the plurality of triggers." See Plost 9:45-10: 15.
We therefore sustain the rejection of claim 6.
SUMMARY
The rejections of claims 1-3, 6, and 7 under 35 U.S.C. § 103(a) are
affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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