Ex Parte Leitheiser

Patent Trial and Appeal Board

Sep 13, 2016

12403398 (P.T.A.B. Sep. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/403,398 03/13/2009 Gregory Leitheiser
79230 7590 09/15/2016
Law Office of Jim Boice
3839 Bee Cave Road
Suite 201
West Lake Hills, TX 78746
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.
RSW920105040US1 9603
EXAMINER
TANK,ANDREWL
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
09/15/2016 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):
J ennifer@BoiceIP.com
Emily@BoiceIP.com
Jim@BoiceIP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY LEITHEISER
Appeal2015-002530
Application 12/403,398
Technology Center 2100
Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
KRISTEN DROESCH, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1--4, 6-10, and 13-19. Claims 5, 11, and 12 are
canceled. We have jurisdiction under 35 U.S.C. § 6(b ).
We Affirm.
Invention
The disclosed and claimed invention on appeal "relates generally to
communications networks, and, more particularly, to web applications
available over communications networks." (Spec. i-f 1 ).
Appeal2015-002530
Application 12/403,398
Representative Claim 1
1. A method of providing user information to web
applications, the method comprising:
serving a web page including an embedded widget to a
client associated with a user from a web application server,
wherein the widget is operable when executed to retrieve user
information from a user information web server wherein the user
information comprises personal identifying information;
[L] responsive to receiving the user information from
the user information web server, providing the user information
to the web application to authenticate the user to the web
application.
(Emphasis and bracketed lettering added to highlight contested limitation L.)
Rejection
Claims 1--4, 6-10, and 13-19 are rejected under 35 U.S.C. § 102(e) as
anticipated by Chen et al. (US 2009/0287559Al; pub. Nov. 19, 2009).
Grouping of Claims
Based on Appellant's arguments, we decide the appeal of claims 1, 4,
6-10, and 13-19 on the basis of representative independent claim 1. We
address dependent claims 2 and 3, infra. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellant's arguments and any evidence
presented. We disagree with Appellant's arguments, and we adopt as our
own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken; and (2) the reasons and rebuttals set forth in
the Answer in response to Appellant's arguments. (Ans. 2---6). However, we
highlight and address specific findings and arguments for emphasis in our
analysis below.
2
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Application 12/403,398
Rejection ofindependent Claim 1under35 U.S.C. § 102(e)
Issue: Under 35 U.S.C. § 102(e), did the Examiner err in finding
Chen expressly or inherently discloses contested limitation L:
[L] responsive to receiving the user information from the user
information web server, providing the user information to the
web application to authenticate the user to the web application[,]
within the meaning of claim 1? 1 (Emphasis added).
At the outset, we broadly but reasonably construe the claim language
''providing the user information to the web application to authenticate the
user to the web application" as a statement of intended purpose. 2 Because
claim 1 does not positively recite the "user information" is actually used by
"the web application" to authenticate the user, we conclude the contested
language is directed to an intended future step or act of authentication that is
1 \Ve give the contested claim limitations the broadest reasonable
interpretation consistent with the specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997). See e.g., Spec. (i-f 41) ("Many variations and
modifications can be made to the preferred embodiments without
substantially departing from the principles of the present invention. All
such variations and modifications are intended to be included herein within
the scope of the present invention, as set forth in the following claims.").
(Emphasis added).
2 "An intended use or purpose usually will not limit the scope of the claim
because such statements usually do no more than define a context in which
the invention operates." Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although "[s]uch
statements often ... appear in the claim's preamble," In re Stencel, 828 F.2d
751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear
elsewhere in a claim. Id.
3
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Application 12/403,398
not required to be performed, within the scope of claim 1. 3
Regarding the claim construction of the contested portion of limitation
L ("to authenticate the user to the web application"), Appellant relies on two
extrinsic dictionary definitions,4 and contends, inter alia: "[b]oth [dictionary]
entries emphasize the verification of a user's identity. Chen cannot anticipate
providing information to authenticate a user because authentication entails
the verification of the user's identity and Chen expressly embraces the
conceptually opposing concept of maintaining a user's individual privacy." 5
(App. Br. 6, emphasis added).
However, the Examiner disagrees (Ans. 3--4):
... Appellant's interpretation of the word "authentication" above
and use in claim 1 requires only that the provided user
information is sufficient to authenticate the user to the web
application. As such, Appellant's interpretation of"authenticate"
is aligned with the Examiner's interpretation presented in the
Response to Arguments in the Final Rejection of April 12, 2012
(i-123-24), wherein the Examiner [found] that Chen's provision of
personally identifying information to the widget is required for
the widget to provide advertising specific to the user, i.e. the
user's identity is determined, i.e. verified, from their profile and
3 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
4 See 37 C.F.R. § 41.30 regarding dictionaries, "which may be cited before
the Board."
5 Our reviewing court guides: "[a] reference is no less anticipatory if, after
disclosing the invention, the reference then disparages it . . . . [T]he question
whether a reference 'teaches away' from the invention is inapplicable to an
anticipation analysis." Celeritas Techs., Ltd. v. Rockwell Int'! Corp., 150
F.3d 1354, 1361 (Fed. Cir. 1998).
4
Appeal2015-002530
Application 12/403,398
that information 1s used to serve the user with relevant
advertising.
Specifically, Chen discloses gathering a user's identifYing
information and storing this data as the user's user profile (i-f 62:
a user's usage data is stored at a server as a user profile and the
user profile is sufficient enough to determine a first user from a
second user, ex. a user who's usage is related to electronics is
not a user who collects sports memorabilia). This user's
identifYing information, i.e. the user's profile, is then requested
by a widget at the user's client in order for the widget to serve
correct relevant information to the specific user (i-f 64: widget
server retrieves the user's profile [and] uses it to provide relevant
data to the widget, i.e. the user is determined by the widget
through the user's specific information).
Therefore, Chen clearly anticipates authenticating a user to a
widget by providing user information to the widget by providing
user identifying information to the web application in order for
the web application to use said data to provide correct data to the
user ....
(Paragraph breaks added, emphasis added).
This appeal turns upon claim construction. We note claim 1 is silent
regarding the argued "verification of the user's identity." (App. Br. 6,
emphasis added). Turning to the Specification for context, we find non-
limiting descriptions of exemplary embodiments of the widget that performs
the claimed authentication. For example, see paragraph 30 of the
Specification (with emphasis added):
The user information widget 16 is also configured to
perform various verification and authentication functions. For
example, the user information widget 16 is configured to request
user permission to retrieve user information from the repository
14 in response to a request by a web application 42 for user
information. The user information widget 16 also is configured
to request user verification of retrieved information prior to
5
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Application 12/403,398
providing the retrieved information to the requesting web
application 42. For example, if the widget 16 retrieves a credit
card number from the repository 14, the widget 16 requests the
user to verify the accuracy of the credit card number before
providing the credit card number. In addition, the user
information widget 16 is configured to authenticate a user prior
to retrieving user information from the repository 14. The user
information widget 16 authenticates a user by requesting
credentials (e.g., user identification and/or password) from the
user and verifYing that the received credentials are valid for the
user.
Although Appellant's Specification discloses exemplary embodiments
of the claimed invention, absent a definition or express disclaimer, the scope
of the claims is not limited to those particular embodiments. 6 We decline
Appellant's invitation to read limitations from the Specification into claim 1.
Although we have fully considered the extrinsic dictionary definitions
proffered by Appellant, which require verification of a user's identity for
authentication (App. Br. 6); we particularly note dependent claim 3 :farther
limits the scope of independent claim 1 (via claim 2 which depends directly
6 See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346-47 (Fed. Cir.
2015) ("This court has repeatedly 'cautioned against limiting the claimed
invention to preferred embodiments or specific examples in the
specification."') (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d
1313, 1328 (Fed. Cir. 2002)). See also SuperGuide Corp. v. DirecTV Enter.,
Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (a particular embodiment appearing
in the written description may not be read into a claim when the claim
language is broader than the embodiment.); Liebel-Flarsheim Co. v. Medrad,
Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (discussing cases wherein the court
expressly rejected the contention that even if a patent describes only a single
embodiment, the claims of the patent are not construed as being limited to
that embodiment).
6
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from claim 1):
3. The method of claim 2, wherein authenticating the user to the
widget comprises receiving a user identification and password
from the user and verifYing that the user identification and
password received are valid for the user.
(Claim 3, emphasis added).
Our reviewing court guides: "[ w ]hen different words or phrases are
used in separate claims, a difference in meaning is presumed." Nystrom v.
TREX Co., Inc., 424 F.3d 1136, 1143 (Fed. Cir. 2005). Under the doctrine
of claim differentiation, "the presence of a dependent claim that adds a
particular limitation gives rise to a presumption that the limitation in
question is not present in the independent claim." Phillips v. AWH Corp.,
415 F.3d 1303, 1315 (Fed. Cir. 2005). This "presumption is especially
strong when the limitation in dispute is the only meaningful difference
between an independent and dependent claim, and one party is urging that
the limitation in the dependent claim should be read into the independent
claim." SunRace Roots Enterprise Co., Ltd. v. SRAM Corp., 336 F.3d 1298,
1303 (Fed. Cir. 2003).
This reasoning is applicable here. Because the language of dependent
claim 3 (verifYing that the user identification . .. [is] valid for the user)
further limits the contested limitation of "providing the user information to
the web application to authenticate the user to the web application" (claim
1 ), there is a strong presumption under the doctrine of claim differentiation
that the authentication recited in claim 1 is not limited to verifying that the
user identification is valid for the user, as required by the language of
dependent claim 3.
7
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Application 12/403,398
Thus, we find Appellant is impermissibly reading the narrowing
limitations recited in dependent claim 3 into broader independent claim 1.
(App. Br. 6). See Nystrom, 424 F.3d at 1143 ("[w]hen different words or
phrases are used in separate claims, a difference in meaning is presumed.").
Therefore, on this record, we are not persuaded the Examiner's
interpretation of claim 1 is overly broad, unreasonable, or inconsistent with
the Specification. See n.3, supra.
For these reasons, and on this record, we find a preponderance of the
evidence supports the Examiner's finding of anticipation regarding the
contested language of independent claim 1. Because Appellant has not
persuaded us the Examiner erred, we sustain the rejection of representative
claim 1, and the rejection of the associated grouped claims, which fall with
claim 1. See Grouping of Claims, supra.
Rejection of Dependent Claim 2
Appellant advances no separate, substantive arguments for dependent
claim 2. Instead, Appellant recites the language of the claim, points to the
evidence relied on by the Examiner, and merely asserts: "[n]owhere does
Chen expressly or inherently disclose authenticating a user to its
widget." (App. Br. 7). 7 Arguments not made are considered waived. 8
7 See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.").
8 See 37 C.F.R. § 41.37(c)(l)(iv)("Under each heading identifying the
ground of rejection being contested, any claim(s) argued separately or as a
8
Appeal2015-002530
Application 12/403,398
Therefore, we sustain the rejection the dependent claim 2.
Rejection of Dependent Claim 3
Claim 3 recites:
The method of claim 2, wherein authenticating the user to the
widget comprises receiving a user identification and password
from the user and verifying that the user identification and
password received are valid for the user.
Appellant points to Chen (i-f 105) and urges: "Nowhere does Chen
expressly or inherently disclose receiving a user identification and password
from the user and verifying that the user identification and password are
valid." (App. Br. 7).
The Examiner disagrees, and finds:
Chen clearly discloses authenticating the user to the
customizable widget by using a user account to sign into the
widget server using a password (i-f[i-f] 105-106: the user signs into
an account to retrieve the customizable widgets, i-f62 the toolbar
collects the user data and profiles to provide to the ser\rer \'l1hich
are later used by the widgets to verify the user and retrieve the
correct relevant information, Fig. 9 user can protect his
customized widgets from the toolbar by password protecting
them). As such, Chen discloses the use of a usemame, i.e. user
account, and password to authenticate the user to the widget by
providing the widget with the user's profile information after the
user is authenticated to the toolbar.
(Ans. 5, emphasis added).
Because Chen (i-f l 05) expressly describes "no customizable button is
subgroup shall be argued under a separate subheading that identifies the
claim( s) by number. A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.").
9
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Application 12/403,398
displayed until the user signs into an account," we find a preponderance of
the evidence supports the Examiner's rejection of claim 3.
Reply Brief
To the extent Appellant advances new arguments in the Reply Brief
not in response to a shift in the Examiner's position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner's Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
Conclusion
For at least the aforementioned reasons, on this record, we are not
persuaded the Examiner erred. We find a preponderance of the evidence
supports the Examiner's finding of anticipation for all contested claims on
appeal. 9
9 Regarding independent claim 15, Appellant appears to have replaced
the term "means for " with the "nonce" word "user information widget"
thereby connoting a single generic "black box" for performing all of the
intended functions recited in independent claim 15. We conclude "widget"
may be interpreted as a nonce word substituting for the term "means." See
Williamson, 792 F.3d at 1349 (Fed. Cir. 2015) (en bane) ("we should
abandon characterizing as 'strong' the presumption that a limitation lacking
the word 'means' is not subject to§ 112, para. 6."). Cf with id. at 1350
("' [ m] odule' is a well-known nonce word that can operate as a substitute for
'means' in the context of§ 112, para. 6").
In the event of further prosecution, and to the extent that "widget" is a
nonce word that fails to have a sufficiently definite meaning as the name for
a particular structure capable of performing the recited functions, we leave
it to the Examiner to consider whether claim 15 should be rejected under
pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite (if the
"widget" is construed as a "means" under pre-AIA § 112, sixth paragraph,
10
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Application 12/403,398
DECISION 10
We affirm the Examiner's rejection of claims 1--4, 6-10, and 13-19
under 35 U.S.C. § 102(e). No time for taking any action connected with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
and if no corresponding structure is found in the Specification), and/or under
pre-AIA 35 U.S.C. § 112, first paragraph, as a single means which is non-
enablingfor the scope of the claim. See MPEP § 2164.08(a). See also In re
Hyatt, 708 F.2d 712, 714--15 (Fed. Cir. 1983) (A single means claim which
covered every conceivable means for achieving the stated purpose was held
non-enabling for the scope of the claim because the specification disclosed
at most only those means known to the inventor.). Although the Board is
authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should
be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) § 1213.02.
10 In the event of further prosecution, we leave it to the Examiner to
consider an additional rejection under 35 U.S.C. § 101 regarding claim 15.
The "user information widget" recited in claim 15 appears to be directed to
software per se, i.e., a purely software "widget." Disembodied software in
itself, with no structural tie to an article of manufacture, machine, process, or
composition of matter, is not patentable subject matter. "Abstract software
code is an idea without physical embodiment." Microsoft Corp. v. AT&T
Corp., 550 U.S. 437, 449 (2007). Software per se, or a computer program
per se, does not fall within a statutory class (not a process, machine,
manufacture, or composition of matter). "The four categories [of§ 101]
together describe the exclusive reach of patentable subject matter. If a claim
covers material not found in any of the four statutory categories, that claim
falls outside the plainly expressed scope of§ 101 even if the subject matter
is otherwise new and useful." In re Nuijten, 500 F.3d 1346, 1356-57 (Fed.
Cir. 2007). See also MPEP § 2106(I)(iv) (listing examples of claims that are
not directed to one of the statutory categories: "a computer program per se")
(citing Gottschalkv. Benson, 409 U.S. 63, 72 (1972)). Although the Board
is authorized to reject claims under 3 7 C. F. R. § 41. 5 0 (b), no inference
should be drawn when the Board elects not to do so. See MPEP § 1213.02.
11