Ex Parte Jakobsson et al

Patent Trial and Appeal Board

May 30, 2018

10996997 (P.T.A.B. May. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/996,997 11124/2004 Bjorn Markus Jakobsson
80167 7590 06/01/2018
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.
4414-39 8907
EXAMINER
COPPOLA, JACOB C
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
06/01/2018 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):
nyoffice@rml-law.com
jbr@rml-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BJORN MARKUS JAKOBSSON, JEAN-PIERRE HUBAUX,
and LEVENTE BUTTY AN
Appeal2016-008101
Application 10/996,997
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 1--4, 8-10, 12-14, 16, 20, and 21. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
1 According to Appellants, the real party in interest is EMC Corporation.
App. Br. 1.
Appeal 2016-008101
Application 10/996,997
BACKGROUND
Appellants' invention is directed to "a micro-payment scheme for
multi-hop cellular networks ... [which] encourages collaboration in packet
forwarding by letting users benefit from relaying the packets of other users."
Spec.6,11.16-19.
Claim 1 is illustrative:
1. A sending user device comprising:
a processor; and
a memory coupled to the processor;
the sending user device being configured:
to generate a communication for forwarding to a
receiving user device via one or more intermediary user devices
of a system having a plurality of user devices configured to
communicate with one or more base stations, wherein the
plurality of user devices includes the sending user device, the
receiving user device and the one or more intermediary user
devices; and
to associate a payment token with the
communication;
wherein the payment token is independent of identities of
the one or more intermediary user devices of the system, in that
the payment token does not identify or otherwise make reference
to any of the one or more intermediary user devices;
wherein the payment token comprises information
identifying a payment that is obtainable by a given one of the
intermediary user devices as its compensation for forwarding the
communication to another user device; and
wherein the payment token is generated using a message
authentication code function which takes as one of its inputs at
least a portion of the communication and as another of its inputs
information indicative of a payment level that would be available
if a forwarding intermediary user device is entitled to a payment
claim.
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Application 10/996,997
Appellants appeal the following rejections:
Claims 1--4, 8-10, 12-14, 16, 20, and 21 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter, which Appellants regard as the
invention.
Claims 1--4, 8-10, 12-14, 16, 20, and 21 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Bouthors et al. (US 2002/0040342 Al;
publ. Apr. 4, 2002) ("Bouthors").
ANALYSIS
Rejection under 3 5 US. C. § 112. second paragraph
Claims 1-4. 12-14. and 21
The Examiner finds that claim 1 is indefinite because it is unclear to
one of ordinary skill in the art whether the Appellants are claiming the
subcombination of a "sending user device" or the combination of a "sending
user device," a "receiving user device," and "one or more intermediary user
devices." We agree.
It is true, as argued by the Appellants, that the preamble of the claim
recites "a sending user device." However, the body of the claim recites a
receiving user device, intermediary user devices and a payment token, and
defines the various interactions between the sending device, the intermediary
device, a system of a plurality of sending user devices, and the payment
token. Appellants argue that the claim is directed to only a sending device
and the other recitations relate to the environment in which the sending
device operates.
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Appeal 2016-008101
Application 10/996,997
We agree with the Examiner that there are at least two plausible
interpretations of claim 1. The first interpretation is the one advanced by the
Appellants that claim 1 is directed to a sending user device only. A second
plausible interpretation is the one that the Appellants appear to support in
their argument in response to the prior art rejections on page 11 of the Brief,
i.e., that claim 1 is directed to a sending user device and a payment token. A
third plausible interpretation is that claim 1 is directed to a system that
includes a sending user device, intermediary user devices, receiving using
devices, and payment tokens. The Appellants have not persuaded us that the
Examiner's holding that there is more than one claim constructions is in
error. Where "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." Ex parte
Miyazaki, 89 USPQ2d 1207, 1211-13 (BPAI 2008) (precedential).
In view of the foregoing, we will sustain the Examiner's rejection of
claim 1. We will also sustain the Examiner's rejection as it is directed to
claims 2--4, 12-14, and 21, which depend from claim 1, because the
Appellants have not argued the separate patentability of these claims.
Claims 8. 9. 10. and 20
We agree with the Examiner that claim 20 is indefinite as well, as it is
not clear whether the claim is directed to a receiving user device, a receiving
device, and a payment token, or a combination of a receiving user device,
intermediary devices, a sending user device, and a payment token. We
sustain the rejection of claim 20. We will also sustain the Examiner's
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Appeal 2016-008101
Application 10/996,997
rejection as it is directed to claims 8, 9, and 10, which depend from claim 20
for the same reasons.
Rejection under 35 USC § 102(b)
Appellants argue that Bouthors does not disclose a payment token as
claimed. As we discussed above, it is unclear whether claim 1 is directed to
a sending user device, a sending user device and a payment token, or a
sending user device, several intermediary devices, and a receiving user
device and is, therefore, indefinite. Claim 20, as discussed above, is also
indefinite. Because the claims are indefinite, we cannot adjudicate the
anticipation rejection of the claims. In re Wilson, 424 F.2d 1382, 1385
(CCPA 1970) ("Ifno reasonably definite rneaning can be ascribed to certain
tenns in the claim, the subject matter does not become obvious-the claim
becomes indefinite"); see also Jn re Steele, 305 F.2d 859, 862---63
( CCP A 1962) (determinations of obviousness cannot be made for claims
where a determination of claim scope requires considerable speculation and
assumptions). As a result of the indefiniteness of the claims, we reverse,
proforma, the Examiner's rejection of those claims under 35 U.S.C.
§ 102(b). Our decision is based solely on the indefiniteness of the claimed
subject matter, and does not reflect on the adequacy of the prior art evidence
applied in support of the anticipation rejection.
DECISION
We AFFIRM the Examiner's§ 112, second paragraph, rejection of
claims 1--4, 8-10, 12-14, 16, 20, and 21.
We REVERSE the Examiner's§ 102(b) rejection of claims 1--4, 8-10,
12-14, 16, 20, and 21 as anticipated by Bouthors.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l).
AFFIRMED
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