Ex Parte Campbell et al

Patent Trial and Appeal Board

Jun 10, 2016

12504163 (P.T.A.B. Jun. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/504, 163 07/16/2009
25537 7590 06/14/2016
VERIZON
PA TENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
FIRST NAMED INVENTOR
Bruce S. Campbell
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.
00-5018A CON2 9595
EXAMINER
HO,RUAYL
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
06/14/2016 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@verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE S. CAMPBELL, BURTON M. STRAUSS, III and
MYRON C. DOLECKI 1
Appeal2013-006433
Application 12/504, 163
Technology Center 2100
Before RICHARD M. LEBOVITZ, JEFFREY N. FRED MAN, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method,
system, and software for distributing information electronically through a
central gateway, which have been rejected for same invention double
patenting and anticipation. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the Real Party in Interest as Verizon Communications
Inc. and its subsidiary companies. (Appeal Br. 1.)
Appeal2013-006433
Application 12/504,163
STATEMENT OF THE CASE
Appellants' invention generally relates to electronic access to and
delivery of information and services to customers through a centralized
connection and distribution point. (Spec. 1-3, 5-8.)
Claims 17-34 are on appeal. Claims 17, 25, and 30 are illustrative and
reads as follows:
1 7. A system, comprising:
a gateway comprising a processor, a storage system, a first
interface to a local premises network, and a second interface to a wide
area network;
a provisioning bundle, communicatively coupled to the
gateway, configured to provide a provisioning service, wherein the
provisioning service comprises receiving one or more bundles from a
remote server over the wide area network and installing the received
one or more bundles, and receiving updates to the one or more
bundles and installing the received updates; and
an authentication bundle, communicatively coupled to the
gateway, configured to provide an authentication service, wherein the
authentication service comprises authenticating an identity of a user
and determining whether the user is authorized to access the one or
more bundles.
25. A method comprising:
communicating with a remote server over a wide area network
to determine a number of bundles to install;
installing the number of bundles based on the communication;
placing at least one of the number of bundles within a partition
when a digital identifier of each of the at least one number of bundles
is an authorized digital identifier;
and
registering each service of each of the bundles of the partition;
receiving an identifying element of a user via a user interface;
authenticating the user based on the identifying element.
30. A non-transitory computer readable medium comprising code to
perform a method comprising:
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Application 12/504,163
contacting a remote server over a wide area network to
determine a number of bundles to install, each bundle including a
digital identifier and software to perform a service;
receiving the number of bundles from the remote server;
installing the number of bundles;
placing at least one of the number of bundles within a partition
when the digital identifier of each of the at least one of the number of
bundles is an authorized digital identifier;
registering each service of each of the number of bundles;
displaying a user interface;
receiving an identifying element of a user; and
authenticating the user based on the identifying element.
(Appeal Br. 28, 30, 32.)
The following grounds of rejection by the Examiner are before us on
review:
1. Claims 17-22 and 25-34 under 35 U.S.C. § 101 for claiming the
same invention as claims 1-11 of U.S. Patent No 7,574,660.
2. Claims 17-34 under 35 U.S.C. § 102(e) as anticipated by Guheen. 2
DISCUSSION
Ground 1. Double Patenting
The Examiner contends that claims 1-11 of the '660 patent anticipate
claims 17-22 and 25-34 of the application and vice versa. (Ans. 2, 5-6.)
We disagree with the Examiner's findings. A rejection based on the same
invention type double patenting of 35 U.S.C. § 101 requires that the
inventions recited in the two sets of claims be exactly the same, i.e., identical
subject matter is being claimed. In re Vogel, 422 F.2d 438, 441 (CCPA
2 Guheen et al., U.S. Patent 6,519,571 Bl.
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Application 12/504,163
1970). Any differences in scope between the claims precludes rejecting the
application claims for statutory double patenting. In re Goodman, 11 F.3d
1046, 1052 (Fed. Cir. 1993).
We agree with Appellants that independent claim 1 of the '660 patent
directed to a system recites additional elements not recited in system claim
17 of the application. (Appeal Br. 12; '660 patent 18:18--45.) In particular,
unlike claim 1 of the '660 patent, claim 1 7 of the application does not
require "a partition" or bundles "including a digital identifier comprising a
digital signature." (Id.) Dependent claims 18-22 of the application also do
not require those limitations. (Appeal Br. 28-29.) Thus, claims 17-22 of
the application could be infringed without infringing claims 1---6 of the '660
patent, which denotes that application system claims 1 7-22 have a different
scope than the system claims 1---6 of the '660 patent. In re Vogel, 422 F.2d
at 441 ("A good test, and probably the only objective test, for 'same
invention,' is whether one of the claims could be literally infringed without
literally infringing the other."). Therefore claims 17-22 of the application
are not directed to the "same invention" as claims 1-6 of the '660 patent.
Likewise, method and medium claims 25-34 of the application are not
directed to the "same invention" as method claims 7-11 of the '660 patent.
As Appellants note, claim 7 of the '660 patent, unlike claim 25 of the
application, requires "displaying a user interface" as part of the method.
(Appeal Br. 14; '660 patent 19:23-20:4.) Dependent claims 26-29 of the
application also do not require the display of a user interface. (Appeal Br.
31.) Claims 30-34 of the application are directed to "a computer readable
medium" (Appeal Br. 14), which none of claims 1-11 of the '660 patent are
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Application 12/504,163
directed to ('660 patent 18:18-20:31). Moreover, claims 30-34 do not
require code for "displaying a user interface." Therefore, claims 25-34 have
a different scope than claims 7-11 of the '660 patent.
In light of the difference in scope of the claims, we are constrained to
reverse the Examiner's rejection of claims 17-22 and 25-34 on the ground
of same invention double patenting under 35 U.S.C. §101.
Ground 2. Anticipation
a. Claims 17-2 4
According to the Examiner, Guheen at 167:50-168:15 teaches the
recited "gateway" of claim 17. (Final Action 6-7; Ans. 2-3.) The Examiner
further asserts that Guheen's "Business2 Product," described at columns 21-
23, and Guheen's "1.3 Business 3" product, described at 25:11-14, together
teach the recited "provisioning bundle." (Final Action 6-7; Ans. 2-3, 9.)
The explanation the Examiner provides is that "[t]he 'Business2 Product'
allows real time communications through the Internet including emailing,
chatting, receiving, retrieving, and updating as defined in paragraph [0068]
of the present application." (Final Action 6-7; Ans. 2-3.) With regard to
the claimed authentication bundle, the Examiner asserts that Guheen' s
"Web-based access control" security management tool described at 73 :26-
67, teaches that limitation. (Final Action 7; Ans. 2-3.) The Examiner
explains that this tool
manages user access to web based applications with restricted access.
The Web based application certainly includes one or more software
layers/packages (bundles) as claimed.
(Final Action 7 .)
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Application 12/504,163
Appellants contest the Examiner's anticipation rejection for several
reasons. With respect to the "provisioning bundle" limitation, Appellants
argue that the cited portion of Guheen, namely cols. 21-25, does not disclose
a provisioning service that comprises "installing the received one or more
bundles, and receiving updates to the one or more bundles and installing the
received updates" required by claim 17. (Appeal Br. 16; Reply Br. 5---6.)
Appellants further argue that combining the description of Business 2 with
pieces of the Business 3 description to meet the "provisioning bundle"
limitation is improper because a "reference must clearly and unequivocally
disclose the claimed [invention] or direct those skilled in the art to the
[invention] without any need for picking, choosing, and combining various
disclosures not directly related to each other by the teachings of the cited
reference" to be anticipatory. (Appeal Br. 16-17; Reply Br. 4--5.)
With respect to the "authentication bundle," Appellants argue that the
cited portion of Guheen-referring to a listing of "Security Management
tools"---does not disclose an authentication bundle configured to provide an
authentication service that "determin[ es] whether the user is authorized to
access the one or more bundles." (Appeal Br. 16; Reply Br. 6.) Appellants
also contend that "there is no indication in the cited portion [of Guheen] that
the security tools are a part of either of the business software packages (i.e.,
Business2 or Business3)," and thus, Guheen does not disclose "all of the
limitations arranged or combined in the same way as recited in the claim."
(Appeal Br. 16-17; Reply Br. 4--5.)
We agree with Appellants that on the record before us, the Examiner
has not made out a prima facie case of anticipation. The Examiner's
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Application 12/504,163
rejection does not meaningfully explain how Guheen discloses the disputed
limitations noted above in the cited portions of the reference. We are
therefore left to speculate as to how Guheen's disclosure anticipates the
specified functions of the provisioning bundle and the authentication bundle
required by claim 1 7.
Moreover, in an anticipation rejection, "it is not enough that the prior
art ... includes multiple, distinct teachings that the artisan might somehow
combine to achieve the claimed invention." Net MoneyIN, Inc. v. VeriSign,
Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (citing In re Arkley, 455 F.2d at
5 87 ("[T]he [prior art] reference must clearly and unequivocally disclose the
claimed [invention] or direct those skilled in the art to the [invention]
without any need for picking, choosing, and combining various disclosures
not directly related to each other by the teachings of the cited reference.
Such picking and choosing may be entirely proper in the making of a 103,
obviousness rejection ... but it has no place in the making of a 102,
anticipation rejection"). The instant rejection is for anticipation, not
obviousness, and in the cited portions of Guheen relied upon by the
Examiner, there are a large number of potential combinations with respect to
Business 2 and Business 3 components; we agree with Appellants that the
Examiner's anticipation rejection improperly resorts to the picking and
choosing proscribed by Net Money IN, Inc. and Arkley.
On this record, we are constrained to reverse the Examiner's
anticipation rejection of claims 17-24 because the Examiner failed to
properly establish a prima facie case of anticipation against the cited claims.
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Application 12/504,163
b. Claims 25-34
The Examiner finds that Guheen' s "Business2 Product," described at
columns 21-23, and Guheen' s "1.3 Business 3" product, described at 25: 11-
14, together teach the communicating, installing and placing limitations of
claims 25 and 30. (Final Action 7-9; Ans. 2-3, 9.) The Examiner contends
that "both 'Business2 Product' and 'Busines3 (www.business3.com)'
demonstrate grouping/categorizing software tools based on their
functionalities." (Final Action 4--5.)
Appellants argue that the cited portion of Guheen, even if it were
interpreted to demonstrate grouping software tools according to their
functionalities, does not disclose the claimed placing limitation. (Appeal Br.
21, 24; Ans. 7.) In particular, Appellants note that Guheen does not disclose
an identifier "is used in 'placing a number of bundles within a partition."'
(Id.)
The method of claim 25 requires "placing at least one of the number
of bundles within a partition when a digital identifier of each of the at least
one number of bundles is an authorized digital identifier." (Appeal Br. 30.)
The computer readable medium of claim 30 also requires code that performs
this same placing step. (Appeal Br. 32.) On the record before us, the
Examiner has not meaningfully explained how Guheen discloses how a
digital identifier is used in "placing at least one of the number of bundles
within a partition." We are again left to speculate as to how the cited
disclosure in Guheen anticipates that limitation in claims 25 and 30.
Thus, on this record, we are constrained to reverse the Examiner's
anticipation rejection of claims 25-34.
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Application 12/504,163
SUMMARY
We reverse the rejection of claims 17-22 and 25-34 under 35 U.S.C.
§ 101 for claiming the same invention as claims 1-11 of the '660 patent.
We reverse the rejection of claims 17-34 under 35 U.S.C. § 102(e) as
anticipated by Guheen.
REVERSED
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