Ex Parte Ishigaki et al

Board of Patent Appeals and Interferences

Aug 30, 2011

10568513 (B.P.A.I. Aug. 30, 2011)

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.
10/568,513 02/15/2006 Yoshinobu Ishigaki JP920030171US1 9590
30449 7590 08/30/2011
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
AVERY, JEREMIAH L
ART UNIT PAPER NUMBER
2431
MAIL DATE DELIVERY MODE
08/30/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte YOSHINOBU ISHIGAKI, MASAYUKI NUMAO,
MADOKA YURIYAMA, and YUJI WATANABE
____________________

Appeal 2009-010782
Application 10/568,513
Technology Center 2400
____________________

Before HOWARD B. BLANKENSHIP, THU A. DANG, and
DEBRA K. STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/568,513

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Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 23-32. We have jurisdiction under 35 U.S.C. § 6(b)
(2008).
We REVERSE.
Introduction
According to Appellants, the invention is a system and method related
to a personal information handling agent that has personal information. In
response to a request from a user, some of the personal information is
provided to a third party. (Abstract).

STATEMENT OF THE CASE
Exemplary Claim
Claim 23 is an exemplary claim and is reproduced below:
23. A method for providing attribute data, said method
comprising:
receiving a request from a user device via a network for a
virtual ID token relating to attribute information pertaining to a
subscriber associated with the user device;
responsive to the request for the virtual ID token, reading
a data record from a database, said data record comprising L
attributes of the subscriber, L being at least 2;
providing the data record to the user device via the
network;
receiving, from the user device via the network, a
selection of M attributes of the L attributes, M being less than
L;
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generating a virtual record including the M attributes
selected from the data record, said virtual record comprising a
virtual ID (VID) for identifying the virtual record;
storing the generated virtual record in the database; and
providing the virtual ID token to the user device via the
network, wherein the virtual ID token comprises the VID,
wherein an attribute information providing server performs said
receiving the request for the virtual ID token, said reading the
data record from the database, said providing the data record to
the user device, said receiving the selection of M attributes, said
generating the virtual record, said storing the generated virtual
record in the database, and said providing the virtual ID token
to the user device.

Prior Art References
Win 6,453,353 B1 Sep. 17, 2002
Naor 6,834,272 B1 Dec. 21, 2004

Rejections
Claims 23-25 and 27-32 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Win.
Claim 26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Win and Naor.

ISSUE 1
35 U.S.C. § 102(e): claims 23-25 and 27-32
Appellants argue their invention is not anticipated by Win because
Win does not disclose “receiving a request from a user device via a network
for a virtual ID token relating to attribute information pertaining to a
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subscriber associated with the user device” (App. Br. 5-6). Appellants
contend Win does not describe a “virtual ID token” or “receiving a request”
(id.).
In response, the Examiner finds that although a virtual ID token may
include a virtual ID, Appellants do not define “virtual ID token” (Ans. 10).
Accordingly, the Examiner concludes “a token is an encrypted identification
of one valid user or group on an external authentication system” (Ans. 11).
The Examiner then finds Win discloses a virtual ID token.

Issue 1: Has the Examiner erred in finding Win discloses “receiving a
request from a user device via a network for a virtual ID token relating to
attribute information pertaining to a subscriber associated with the user
device” as recited in claim 23?

ANALYSIS
The allocation of burdens requires that the USPTO produce the factual
basis for its rejection of an application under 35 U.S.C. §§ 102 and 103. In
re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (citing In re Warner, 379
F.2d 1011, 1016 (CCPA 1967)). The one who bears the initial burden of
presenting a prima facie case of unpatentability is the Examiner. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
For essentially the same reasons argued by Appellants in the Appeal
Brief (6-7) and Reply Brief (3 and 4), we agree that the Examiner did not
present a prima facie case of unpatentability in the rejection of independent
claim 23 under § 102. Specifically, although the Examiner cites multiple
portions of Win as disclosing a virtual ID token, it is unclear what portion
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the Examiner is relying upon to disclose receiving a user device request for a
virtual ID token. Absent a convincing explanation from the Examiner in
support of why the cited portions of Win are deemed to teach the disputed
features, we are left to speculate how and why the reference is being applied.
We will not engage in speculation.
The Examiner has thus not shown Win discloses “receiving a request
from a user device via a network for a virtual ID token relating to attribute
information pertaining to a subscriber associated with the user device” as
recited in claim 23. Accordingly, we reverse the rejection of claim 23, as
well as associated dependent claims 24, 25, and 27-32, which stand
therewith.

ISSUE 2
35 U.S.C. § 103(a): claim 26
Claim 26 depends indirectly from claim 23. As discussed above in
Issue 1, the Examiner has not shown Win discloses the invention as recited
in claim 23. The Examiner has not shown that Naor cures the deficiency of
Win. Accordingly, we reverse the rejection of claim 26.

CONCLUSION
Appellants have shown the Examiner erred in finding claims 23-25
and 27-32 are anticipated by Win. Accordingly, Appellants have shown the
Examiner erred in rejecting claims 23-25 and 27-32 under 35 U.S.C.
§ 102(e) for anticipation by Win.
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Appellants have shown the Examiner erred in finding claim 26
obvious over Win and Naor. Accordingly, Appellants have shown the
Examiner erred in rejecting claim 26 under 35 U.S.C. § 103(a) for
obviousness over Win and Naor.

DECISION
The Examiner’s rejection of claims 23-25 and 27-32 under 35 U.S.C.
§ 102(e) as being anticipated by Win is reversed.
The Examiner’s rejection of claim 26 under 35 U.S.C. § 103(a) as
being obvious over Win and Naor is reversed.

REVERSED

msc