Ex Parte Fambon et al

Patent Trial and Appeal Board

Feb 25, 2013

10505931 (P.T.A.B. Feb. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte OLIVIER FAMBON, ANDRE FREYSSINET, and
PHILIPPE LAUMAY
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Appeal 2010-010503
Application 10/505,931
Technology Center 2400
____________

Before KARL D. EASTHOM, THOMAS L. GIANNETTI,
and DAVID C. McKONE, Administrative Patent Judges.

McKONE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-33, which constitute all the claims pending in this application. See
Br. 1-2. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and institute a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b).

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STATEMENT OF THE CASE
Appellants’ invention relates to using software agents in asynchronous
communications between smart cards and nodes on a computer network.
See, e.g., Spec. 1:3-7. Claim 1, which is illustrative of the invention, reads
as follows:
1. A computer communication method by
asynchronous messages between firstly at least any one
software agent, known as card agent stored in a portable
data processing station, known as removable platform
which can be connected or disconnected by
communication means with at least one data processing
station, known as terminal at any time and independently
of the operating status of this terminal or of the
removable platform, and secondly at least any one
software agent, known as standard agent this standard
agent being either stored in storage means of a computer
network connected to this terminal and including one or
more data processing stations storing one or more
software agents communicating together via a distributed
software infrastructure for computer communication by
asynchronous messages, either stored in this removable
platform or in another similar platform, wherein the
method comprises a step to:
store a message sent by the card agent to at least
one standard agent or sent by a standard
agent to the card agent in storage means of
the network by at least one intermediate
agent managing the communications of this
card agent with the network.

THE REJECTIONS
The Examiner relies on the following prior art in rejecting the claims:
Ohashi US 5,761,309 June 2, 1998
Jacobson US 6,192,436 B1 Feb. 20, 2001
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Bender US 6,195,700 B1 Feb. 27, 2001
Montgomery US 2001/0000814 A1 May 3, 2001
Langton US 2002/0035651 A1 Mar. 21, 2002
Janson US 6,535,997 B1 Mar. 18, 2003
(filed May 19, 1999)
Chang US 6,715,082 B1 Mar. 30, 2004
(filed Aug. 24, 1999)
Claims 1-5, 14, 16, 20, 22-26, and 33 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Montgomery. See Ans. 3-7.
Claims 6, 8-11, 13, 15, 17, 18, and 27-29 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Montgomery and Jacobson.
See Ans. 8-12.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Montgomery and Langton. See Ans. 12-13.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Montgomery, Jacobson, and Janson. See Ans. 13-14.
Claims 19 and 30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Montgomery and Ohashi. See Ans. 14.
Claims 21 and 32 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Montgomery and Chang. See Ans. 14-15.
Claim 31 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Montgomery and Bender. See Ans. 15.

ISSUE
Appellants argue independent claims 1 and 23 together. See Br. 6-10.
The Examiner finds that Montgomery discloses each limitation of claim 1.
See Ans. 3-4. Appellants argue that Montgomery does not disclose the use
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of software agents, see Br. 7, and specifically that it does not disclose the
card agent and intermediate agent recited in claim 1, see Br. 9-10. The issue
is whether Montgomery discloses “stor[ing] a message sent by the card
agent to at least one standard agent or sent by a standard agent to the card
agent in storage means of the network by at least one intermediate agent
managing the communications of this card agent with the network,” as
recited in claim 1. See Br. 8.

ANALYSIS
REJECTION OF CLAIMS 1-5, 14, 16, 20, 22-26,
AND 33 UNDER 35 U.S.C. § 102(b)
The Examiner finds that Montgomery anticipates claim 1. See Ans. 3-
4. In order to show anticipation, the Examiner must show that Montgomery
discloses, expressly or inherently, within its four corners, each limitation of
claim 1, arranged or combined in the same way as in the claim. See Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369-71 (Fed. Cir. 2008).
Montgomery is directed to a system in which a smart card is able to
control the resources of a terminal and a network. See Montgomery,
Abstract. The Examiner finds that the software stored in the storage unit 84
of Montgomery’s smart card 81 is a “card agent” as recited in claim 1. See
Ans. 3. The Examiner further identifies software stored on Montgomery’s
host computer 34 as corresponding to claim 1’s “standard agent.” See Ans.
4. According to the Examiner, the “intermediate agent” that “store[s] a
message sent by the card agent to at least one standard agent or sent by a
standard agent to the card agent” and that “manag[es] the communications of
this card agent with the network” is disclosed in Paragraph 0038 of
Montgomery. See Ans. 4; see also id. (further finding that “stor[ing] a
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message sent by the card agent to at least one standard agent or sent by a
standard agent to the card agent” is disclosed in Paragraph 0029 of
Montgomery).
Appellants first contend that Montgomery does not disclose the use of
software agents at all; thus it cannot disclose storing a message from a card
agent to a standard agent by an intermediate agent. See Br. 7-8. As
Appellants point out, the Specification provides a definition of “software
agent.” See Br. 7. Specifically, “[a]n agent can be defined as a unitary
reactive software component, which reacts according to specific events.”
Spec. 3:17-18; accord id. at 15:16-21:
[A]n agent, or software agent, is defined as a reactive
component of a computer program with an identity, for
example through the use of a code identifying it locally or
globally with respect to other software components. An agent
is stored in storage means and may exist as a process, executed
or waiting to be executed, by a processor.
The Specification also explains that “an agent is ‘persistent,’” Spec. 3:27,
and that “[r]eactive means the ability to perform an action, internal or
interacting with other elements, when certain events occur,” Spec. 15:21-23.
As the Examiner concludes, Appellants have defined “software agent”
broadly. See Ans. 16. As shown in Montgomery’s Figure 4, the smart card
executes software that operates in an idle state and that waits for commands
from the terminal. See Ans. 3. This software is persistent (sits idle, waits
for a response from the terminal) and reactive (changes state when it
receives a response from the terminal). See Montgomery, Fig. 4, ¶ 0025,
0029. Thus, there is adequate support for the Examiner’s finding that
Montgomery discloses a card agent.
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However, the Examiner has not shown adequately that Montgomery
discloses an “intermediate agent” that “store[s] a message sent by the card
agent to at least one standard agent or sent by a standard agent to the card
agent in storage means of the network” and that “manag[es] the
communications of this card agent with the network.” The Examiner cites
Paragraph 0038 of Montgomery generally as disclosing the recited
intermediate agent. See Ans. 4. The Examiner does not identify with
specificity which component of Montgomery corresponds to the
intermediate agent. See id. Instead, the Examiner finds that “the
Montgomery reference clearly discloses that the smartcard and the card
terminal both consist of software or programs that are stored in the storage
units which are used to interface with each other and transmit packets when
communicating with each other.” Ans. 16.
Appellants admit that Paragraph 0038 discloses storing a
communication received from the terminal, but contend that Montgomery
does not indicate that the stored communication is directed to a particular
software agent on the card or that the storing is performed by an agent that
serves the card agent. See Br. 10. Paragraph 0038 describes the smart card
accessing and controlling the terminal and terminal resources as well as
storing, on the smart card, data received from the terminal. While we
disagree with Appellants that the claim language “manag[es] the
communications of this card agent with the network” requires an agent that
“serv[es] that card agent,” Br. 10, we nevertheless agree that the Examiner
has not shown an intermediate agent in Montgomery. In particular, the
Examiner does not explain where Paragraph 0038 describes a persistent,
reactive, software component that manages the communications of the smart
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card software with the network. Nor has the Examiner shown where, in
Paragraphs 0029 and 0038, Montgomery describes such software storing, on
the host computer,1 communications between the card agent and the
software the Examiner finds to be the standard agent (i.e., software stored on
the host computer, see Ans. 4).
In the Response to Argument, the Examiner points out that Paragraph
0031 of Montgomery discloses asynchronous communication of packets
between the smartcard and the terminal. See Ans. 16. However, the
Examiner does not explain why a disclosure of such asynchronous
communications constitutes a disclosure of an intermediate agent storing a
message between the card agent and software stored on the host computer.
Accordingly, we do not sustain the Examiner’s rejection of: (1) claim
1; (2) claim 23, which includes a recitation of an “intermediate agent”
substantially the same as that which we find not to be disclosed by the cited
prior art; (3) claims 2-5, 14, 16, 20, and 22, which depend on claim 1; and
(4) claims 24-26 and 33, which depend on claim 23.

REJECTION OF CLAIMS 6, 8-11, 13, 15, 17, 18,
AND 27-29 UNDER 35 U.S.C. § 103(a)
Claims 6, 8-11, 13, 15, 17, and 18 depend on claim 1. Claims 27-29
depend on claim 23. Thus, each includes a recitation of an “intermediate
agent” that we find has not been taught or suggested by the cited prior art.
The Examiner does not rely on Jacobson to cure the above-noted deficiency.

1 We construe “storage means of the network,” recited in the sole step of
claim 1, to be the same “storage means of a computer network,” recited in
the claim preamble, in which the standard agent is stored.
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See Ans. 8-12. Accordingly, we do not sustain the rejection of claims 6, 8-
11, 13, 15, 17, 18, and 27-29.

REJECTION OF CLAIM 7 UNDER 35 U.S.C. § 103(a)
Claim 7 depends on claim 1, and thus includes a recitation of an
“intermediate agent” that we find has not been taught or suggested by the
cited prior art. The Examiner does not rely on Langton to cure the above-
noted deficiency. See Ans. 12-13. Accordingly, we do not sustain the
rejection of claim 7.

REJECTION OF CLAIM 12 UNDER 35 U.S.C. § 103(a)
Claim 12 depends on claim 1, and thus includes a recitation of an
“intermediate agent” that we find has not been taught or suggested by the
cited prior art. The Examiner does not rely on Janson to cure the above-
noted deficiency. See Ans. 13-14. Accordingly, we do not sustain the
rejection of claim 12.

REJECTION OF CLAIMS 19 AND 30 UNDER 35 U.S.C. § 103(a)
Claim 19 depends on claim 1. Claim 30 depends on claim 23. Thus,
each includes a recitation of an “intermediate agent” that we find has not
been taught or suggested by the cited prior art. The Examiner does not rely
on Ohashi to cure the above-noted deficiency. See Ans. 14. Accordingly,
we do not sustain the rejection of claims 19 and 30.

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REJECTION OF CLAIMS 21 AND 32 UNDER 35 U.S.C. § 103(a)
Claim 21 depends on claim 1. Claim 32 depends on claim 23. Thus,
each includes a recitation of an “intermediate agent” that we find has not
been taught or suggested by the cited prior art. The Examiner does not rely
on Chang to cure the above-noted deficiency. See Ans. 14-15. Accordingly,
we do not sustain the rejection of claims 21 and 32.

REJECTION OF CLAIM 31 UNDER 35 U.S.C. § 103(a)
Claim 31 depends on claim 23, and thus includes a recitation of an
“intermediate agent” that we find has not been taught or suggested by the
cited prior art. The Examiner does not rely on Bender to cure the above-
noted deficiency. See Ans. 15. Accordingly, we do not sustain the rejection
of claim 31.

NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b)
Claims 1-22 are rejected on a new ground of rejection under 35
U.S.C. § 112, second paragraph. “[I]f a claim is amenable to two or more
plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C. §112, second
paragraph, as indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI
2008) (precedential).
Claim 1 recites
this standard agent being either stored in storage means of a
computer network connected to this terminal and including one
or more data processing stations storing one or more software
agents communicating together via a distributed software
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infrastructure for computer communication by asynchronous
messages, either stored in this removable platform or in another
similar platform
(emphases added). It is ambiguous whether “either stored in this removable
platform or in another similar platform” modifies “this standard agent,” “one
or more software agents,” or “asynchronous messages.” Thus, claim 1 is
amenable to more than one plausible claim construction. Moreover, it is
unclear which “either” the recited “or” corresponds to. And since the “or”
cannot correspond to both, claim 1 appears to be missing an “or”
corresponding to one of the “eithers.” Thus, claim 1 is insolubly ambiguous,
and therefore indefinite.
Claims 2-22 depend on claim 1 and do not resolve the ambiguities.

ORDER
The decision of the Examiner to reject claims 1-33 is reversed.
We enter a new ground of rejection for claims 1-22 under 35 U.S.C. §
112, second paragraph.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
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reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.
37 C.F.R. § 41.50(b).
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

REVERSED
37 C.F.R. § 41.50(b)

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