Ex Parte Mitreuter et alDownload PDFPatent Trial and Appeal BoardOct 30, 201410221519 (P.T.A.B. Oct. 30, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ULRICH MITREUTER and RENATE ZYGAN-MAUS ____________ Appeal 2012-003712 Application 10/221,519 Technology Center 2400 ____________ Before CARL W. WHITEHEAD JR., BRUCE R. WINSOR, and JOHN P. PINKERTON, Administrative Patent Judges. PINKERTON, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 18–26. Claims 9–26 are pending in the application. Claims 9–17 have been withdrawn from consideration, and claims 1–8 and 27 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on October 14, 2014. A transcript of the hearing will be placed in the record in due course. 1 The real party in interest identified by Appellants is SIEMENS AKTIENGESELLSCHAFT. Appeal Br. 1. Appeal 2012–003712 Application 10/221,519 2 We affirm. STATEMENT OF THE CASE Introduction Appellants describe the present invention as follows: The invention relates to a method for improving the security of an Internet supplementary service. When access to the IP server network of a network operator is sought for an ISS message from the Internet, a service-independent authorization procedure is carried out by a purpose-built server, a service- independent identification being used to obtain said authorization. A service-related authorization procedure is subsequently carried out by a service access server, by means of a user password. Abstract. Rejections on Appeal 1. Claims 18–26 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2. Claims 18–26 are rejected under 35 U.S.C. § 102(e) as anticipated by Salo (U.S. 6,563,800 B1; issued May 13, 2003; filed Nov. 10, 1999). Illustrative Claim Independent claims 18 and 24 are argued separately, but on the same bases. See Appeal Br. 5–9; Reply Br. 4–5. Claim 18 is illustrative and reads as follows: 18. A method for controlling access to a service of one network, the service being accessed via Internet, comprising: Appeal 2012–003712 Application 10/221,519 3 performing, by an access system using a firewall server of the one network upon receipt of a message relating to the service, a service-independent authorization based on a service-independent secret; and providing access to the service by the access system using a service access server of the one network to perform a service-related authorization based on a service-related secret after the service-independent authorization has yielded a positive result. Issues on Appeal Appellants’ arguments in the Appeal Brief and Reply Brief, as well as the arguments presented at the oral hearing in this case, present us with the following issues:2 1. Did the Examiner err in finding that the claim limitation “one network” lacks an adequate written description? 2. Did the Examiner err in finding Salo discloses that a service- independent authorization is performed in the “one network?” 3. Did the Examiner err in finding that Salo discloses “a service- related authorization based on a service-related secret,” as recited in claim 18? 2 Our Decision refers to Appellants’ Appeal Brief, filed on Aug. 8, 2011 (“Appeal Br.”), the Examiner’s Answer, mailed on Nov. 4, 2011 (“Ans.”), Appellants’ Reply Brief, filed on Jan. 4, 2012 (“Reply Br.”), and the original Specification, filed on Sept. 13, 2002 (“Spec.”). Appeal 2012–003712 Application 10/221,519 4 ANALYSIS Written Description 35 U.S.C. § 112, first paragraph3 provides, in part, that “[t]he specification shall contain a written description of the invention . . . .” To satisfy this requirement, “the description must ‘clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.’” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “In other words, the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. “[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art . . . .” Id. Compliance with the written description requirement “will necessarily vary depending on the context.” Id. “Specifically, the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. In regard to the term “one network” as used, for example, in the preamble of claim 18—“A method for controlling access to a service of one network”—the Examiner finds “no description or teaching” for the term. Ans. 7. Instead, the Examiner, finds support for only plural “networks” based primarily on the last paragraph of the Specification (page 4, third 3 In the Leahy–Smith America Invents Act, Pub. L. No. 112–29, Sept. 16, 2011, Congress amended the language and structure of 35 U.S.C. § 112, but those amendments made no changes of relevance to this appeal. Appeal 2012–003712 Application 10/221,519 5 paragraph), which states “[i]n synopsis, it can be said that the invention describes a simple two step security method, that combines existing data . . . and security methods for telecommunications nets . . . with existing Internet security methods (HMAC).” Id. Appellants argue that there is written description support for “controlling access to a service of one network” because the Specification “repeatedly uses the singular ‘net’” and “one of ordinary skill in the art would understand that ‘net’ is a shortened term for ‘network.’” See Appeal. Br. 4. We agree with Appellants. As asserted by Appellants, the singular term “net” is used several times in the description of the preferred embodiment. See Appeal Br. Exhibit A, pages 3–4. We agree with Appellants that a person of ordinary skill in the art would understand that the term “net” as used in the Specification means a “network” or “one network.” Although the Specification does not use the exact term “one network,” the written description requirement “does not demand any particular form of disclosure . . . or that the specification recite the claimed invention in haec verba . . . .” Ariad Pharms., Inc., 598 F.3d at 1352. We also agree with Appellants that the use of plural terms in the Specification, such as “telecommunications nets,” “indicate[s] that the invention may be implanted [sic; implemented] for many kinds of networks, not that the invention only applies to a situation where multiple networks are involved.” See Reply Br. 2. Thus, considering the entirety of the Specification, we conclude it reasonably discloses to those of ordinary skill in the art that Appellants had possession of the method for controlling access to a service of “one network” as recited in claim 18 as of the filing date. Accordingly, Appeal 2012–003712 Application 10/221,519 6 we do not sustain the rejection of claim 18 or claims 19–26 for failing to comply with the written description requirement of 35 U.S.C. § 112, first paragraph. Salo The remaining issues raised by Appellants relate to the disclosure of Salo and will be considered together. In particular, we consider whether the first or service-independent authorization of Salo is performed in “one network” and whether Salo discloses “a service-related authorization based on a service-related secret.” One network The Examiner and Appellants agree that Salo discloses two authorizations or authentications. Ans. 5; Appeal Br. 7–8. As found by the Examiner, “subscribers are authenticated first time by using subscriber- name and password” and “second time by using personal identification number (PIN) to access services.” See Ans. 5; Salo 9:1–17. Appellants contend, however, that “at least one authentication takes place outside of the network where services are provided.” See Appeal Br. 5–6; Reply Br. 4. In particular, Appellants assert that the first authentication performed by the data center 17 takes place outside of the Enterprise Network 22 because it is “separated from the Enterprise Network 22 by ‘a dedicated connection 20 . . . through data transmission media 21, which may be the Internet, a Wide Area Network (WAN), or any other media used for server communication . . . . ” Appeal Br. 6. To resolve this issue, we must construe the term “one network” and determine whether Salo discloses “one network” that includes data center 17. Appeal 2012–003712 Application 10/221,519 7 During patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” MPEP § 2111; see also, In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007); In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. MPEP § 2111.01. The Examiner states, and we agree, that the term “one network” is very broad and not defined in the Specification or claims. See Ans. 7. The Specification describes, and Figure 1 illustrates, an internet user accessing Internet supplementary services by first obtaining authorization through firewall server 12 and then obtaining authorization through an interconnected service access server, gateway server 14, which is connected to the PSTN 16. See Appeal Br. Exhibit A, pages 2–3, and Exhibit D. The Examiner finds that “[b]y definition ‘[a] computer network is a collection of hardware components and computers interconnected by communication channels that allow sharing of resources and information.”4 Ans. 7. Citing Salo, column 5, lines 30–40 and Figure 1, the Examiner further finds that 4 Although the Examiner does not cite any authority for this definition, we note it is consistent with the following pertinent definition from a technical dictionary: network n. A group of computers and devices that are connected by communications facilities.” MICROSOFT COMPUTER DICTIONARY 362 (5th ed. 2002). Appeal 2012–003712 Application 10/221,519 8 “[t]he system taught by Salo is one network where different components (10, 17, and 22) are interconnected by communication channels (16, 21).” Id. The Examiner also finds that the Internet could be interpreted to be “one network” “because the Internet is a network of networks.” Id. Appellants assert that, even though the Internet can be referred to in the singular as “the Internet” for convenience, it is clear “that the Internet includes a plurality of networks.” Reply Br. 3. Appellants set forth their view of how the definition of a singular noun in the computer art having multiple components should be construed and then state that the Examiner’s definition of “a computer network” is one example and “[a]nother example is a single network that is part of the Internet and does not have any component that is referred to as a network.” Reply Br. 4. Appellants further argue, at least impliedly, that Salo discloses multiple networks and that the initial authentication takes place outside of the network where services are provided. Id. Considering the entirety of the Specification, the Examiner’s findings, and Appellants’ arguments, we conclude that the ordinary and customary meaning to a person of ordinary skill in the art, and therefore the broadest reasonable interpretation, of the term “one network” is the definition provided by the Examiner: “a collection of hardware components and computers interconnected by communication channels that allow sharing of resources and information.” See Ans. 7. Based on this construction of “one network,” we further conclude, as does the Examiner, that Salo discloses “one network” that includes data center 17. See id. Although the data center is separated from the Enterprise Network 22, it is part of the “one network” of Salo because, as the Examiner finds, it is Appeal 2012–003712 Application 10/221,519 9 interconnected by communication channel 21 to the Enterprise Network 22, as well as interconnected to input devices 10 over communication channel 16. See id.; Salo 5:41–49 and 60–66. Thus, Salo discloses that the service- independent or first authentication performed by the data center 17 takes place in the “one network” where services are provided. A service-related authorization based on a service-related secret In regard to the issue of whether Salo discloses “a service-related authorization based on a service-related secret,” we must construe the terms “service-related authorization” and “service-related secret” and then compare the construed terms to Salo. Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998). The Examiner finds that “service-related authorization is open to broad interpretation because it is not defined.” Ans. 8. With respect to the term “service-related secret,” the Examiner finds that the Specification “defined service-related secret to be a user password/a PIN (see Specification page 2, lines 11–13).”5 Id. The Examiner also finds that “[t]he enterprise network [of Salo] provides verities [sic; varieties] of service (i.e. e-mail, calendar and phone book) (see Column 12, lines 6– 10),” and that “[t]he enterprise network authenticates the subscribers to access the services provided by the enterprise network” using “a personal identification number (PIN) for second level authentication (see Column 9, lines 11–17),” which the Examiner finds to be the “service-related authentication.” Id. Implicit in the Examiner’s findings is that an 5 We note that, in describing the service-related secret, the portion of the Specification cited by the Examiner actually states “(for example a user password, a PIN) is used.” See Spec. page 2, line 12. Appeal 2012–003712 Application 10/221,519 10 authentication that permits subscribers to access the enterprise network and, therefore, access the services provided by the enterprise network constitutes a “service-related authorization.” Appellants contend that the Examiner “has used an unreasonably broad interpretation of the claim limitations ‘a service-related authorization based on a service-related secret.’” Reply Br. 4. Appellants also contend that “service-related authorization” must be limited to a subset of services of the enterprise or to a particular or specific service of the enterprise. See Appeal Br. 7–8; Reply Br. 4–5. Appellants further contend that the term “service-related” cannot be ignored and that the “authorization” and the “secret” must be “‘service-related’ in some manner, not merely at a ‘second level or second time.’” Reply Br. 4–5. In regard to the construction of a “service-related authorization” and a “service-related secret,” we agree with the Examiner. Initially, we agree that the claimed term “service-related authentication” is broad and not defined by the Specification. Appellants’ argument that “service-related authentication” must be limited to a subset of services or a particular service of the network is unpersuasive because the language of claim 18 is not limited in that manner. Furthermore, because claim 18 recites a method for controlling access to “a service” of one network, it is broadly directed to controlling access to one or more services of the network, rather than to a specific service or subset of services. See Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008) (“[t]his court has repeatedly emphasized that an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’” (Citation omitted)). Thus, Appeal 2012–003712 Application 10/221,519 11 we conclude that the ordinary and customary meaning to a person of ordinary skill in the art based on the claim language and the Specification, and therefore the broadest reasonable interpretation, of the term “service- related authorization” incudes an authorization providing subscribers access to an enterprise network that performs one or more Internet supplementary services. In regard to the term “service-related secret,” we also agree with the Examiner and conclude that the broadest reasonable interpretation of “service-related secret” includes a personal identification number (PIN), which was specifically described as an example of a “service-related secret” in the Specification at page 2, lines 11–13. Appellants suggest in their argument distinguishing Salo (see Appeal Br. 8) that to be a “service- related secret” a password must be related to a particular service, rather than being related to the enterprise as a whole. We again conclude, however, that this argument is unpersuasive because claim 18 does not provide for “a service-related authorization based on a service-related secret” to a particular service or subset of services of the network. Having construed “service-related authorization” and “service-related secret,” we conclude, as does the Examiner, that Salo discloses “a service- related authorization based on a service-related secret.” See Ans. 8. Specifically, we agree with the Examiner that “Salo’s teaching of subscriber’s authentication to access enterprise network by using PIN meets the claim limitation.” Id. We also agree with the Examiner that the second level of authentication of Salo (see id. and Salo, column 9, lines 11–17) constitutes the “service-related authorization” and the PIN constitutes the “service-related secret” because, as stated by the Examiner, “[t]he Appeal 2012–003712 Application 10/221,519 12 enterprise network authenticates the subscribers to access the services provided by the enterprise network.” Id. Furthermore, we conclude that the Examiner has not ignored the term “service-related” and that the “authentication” and “secret” of Salo are “service-related” because the authentication by the enterprise network through the use of a secret PIN provides subscribers access to the services provided by the network. See id. Accordingly, we sustain the rejection of claim 18 and, for the same reasons, sustain the rejection of claim 24. Thus, we also sustain the rejection of claims 19–23, which depend from claim 18, and claims 25–26, which depend from claim 24. DECISION The Examiner’s decision rejecting claims 18–26 under 35 U.S.C. § 102(e) as anticipated by Salo is sustained. The Examiner’s decision rejecting claims 18–26 for failing to comply with the written description requirement of 35 U.S.C. § 112, first paragraph, is not sustained. As the rejection of each of the appealed claims is sustained on at least one of the grounds specified in the rejection appealed from, the decision of the Examiner to reject claims 18–26 is affirmed. See 37 C.F.R. § 41.50(a)(1). 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)(iv). AFFIRMED tj Copy with citationCopy as parenthetical citation