Ex Parte MUNJULURI et al

Patent Trials and Appeals Board

Apr 18, 2019

14563131 - (D) (P.T.A.B. Apr. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/563,131 12/08/2014
38881 7590
Infineon Technologies AG
c/o Schiff Hardin LLP
666 Fifth A venue
Suite 1700
NEW YORK, NY 10103
04/22/2019
FIRST NAMED INVENTOR
Bala Nagendra Raja MUNJULURI
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.
45407-0008 9384
EXAMINER
KIM,AHSHIK
ART UNIT PAPER NUMBER
2876
NOTIFICATION DATE DELIVERY MODE
04/22/2019 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):
lbrutman@schiffhardin.com
patents-NY@schiffhardin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BALA NAGENDRA RAJA MUNJULURI,
FRANZ-JOSEF BRUECKLMA YR, NARASIMHA KUMAR VEDALA,
and PRAKASH NAY AK
Appeal2018-005682
Application 14/563, 131
Technology Center 2800
Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and
JENNIFER R. GUPTA, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from
the Primary Examiner's final decision to reject claims 1-18. 2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellant is the Applicant, Infineon Technologies AG (Application
Data Sheet filed December 8, 2014, 5)), which is also listed as the real party
in interest (Appeal Brief filed November 30, 2014 ("Appeal Br."), 1).
2 See Appeal Br. 4--5; Reply Brief filed May 9, 2018 ("Reply Br."), 2; Final
Office Action entered March 21, 2017 ("Final Act."), 2--4; Examiner's
Answer entered March 9, 2018 ("Ans."), 2-5.
Appeal2018-005682
Application 14/563,131
I. BACKGROUND
The subject matter on appeal relates to a method for processing data
on a smartcard and to a smartcard (Specification filed December 8, 2014
("Spec."), ,r 1 ). Representative claim 1 is reproduced from the Claims
Appendix to the Appeal Brief, as follows:
1. A method for processing data an on smartcard comprising:
obtaining a message;
searching for a rule in at least one file of the smartcard
based on the message, wherein the rule is a smartcard data
protection rule that is downloaded onto the smartcard; and
in case the rule was found, executing the rule.
(Appeal Br. 7 (emphasis added)).
II. REJECTION ON APPEAL
Claims 1-18 stand rejected under AIA 35 U.S.C. § I02(a)(l) as
anticipated by de Jong (US 2005/0184163 Al; pub. Aug. 25, 2005). 3
III. DISCUSSION
The Appellant does not argue any claim separately within the meaning
of 37 C.F.R. § 4I.37(c)(l)(iv). Therefore, pursuant to the rule, we confine
our discussion to claim 1, with claims 2-18 standing or falling with claim 1.
The Examiner finds de Jong describes every limitation recited in
claim 1 (Ans. 2-3; Final Act. 2-3). Regarding the "smartcard data
protection rule" limitations highlighted above, the Examiner finds that de
Jong teaches an application identifier (AID) or registered application
3 In the event of further examination, the Appellant and the Examiner should
reevaluate the patent eligibility of the claims, particularly claim 18, which
appears to be directed to software per se-a "computer program product
directly loadable into a memory" (Appeal Br. 9; emphasis added), under the
2019 Revised Patent Subject Matter Eligibility Guidance.
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Appeal2018-005682
Application 14/563,131
provider identifier (RID), which would meet the disputed claim limitations
(Ans. 2, 4 (citing de Jong ,r,r 15, 308)).
The Appellant disagrees that de Jong describes "a smartcard data
protection rule that is downloaded onto the smartcard," as recited in claim 1
(Appeal Br. 4). Specifically, the Appellant argues that unlike the
"protection" directed towards the smartcard, as required by claim 1, the
protected attribute described in de Jong is specific to a class in object-
oriented programming, which "refers to a method or variable, but not to a
physical entity like a smartcard in its entirety" (id. at 5). According to the
Appellant, claim 1 requires downloading onto the smartcard at runtime, i.e.,
when the message is received, whereas de Jong's attributes are used at
compile time and cannot be altered at runtime (id.).
The Appellant's arguments in the Appeal Brief fail to identify any
reversible error in the Examiner's rejection. In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011).
As the Examiner finds (Ans. 4), de Jong describes a smartcard with
downloaded data in the form of an applet with attributes including a set of
data protection rules. Specifically, de Jong teaches a method in which a
smartcard is inserted into or placed nearby a terminal to allow the exchange
of messages between the terminal and the smartcard in order to authorize
and, if appropriate, perform a debit operation for a purchase of goods
(de Jong ,r 14). De Jong teaches that an AID is stored (i.e., necessarily
downloaded from a source) on the smartcard itself, wherein the first 5 bytes
of the AID represent an RID, which generally indicates a merchant or other
entity involved with operating the applet (id. ,r,r 15, 16). De Jong further
teaches that an applet selector program, which runs on the smartcard, is
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Appeal2018-005682
Application 14/563,131
responsible for locating (i.e., finding by searching) the application that
matches the AID request from the terminal and, when a match is found,
launching the application (id. ,r,r 18, 89).
These disclosures fully support the Examiner's anticipation finding
and, concomitantly, undercut the Appellant's conclusory and skeletal
arguments. Although the Appellant appears to be arguing that claim 1
requires downloading onto the smartcard at runtime, i.e., when the message
is received, such a requirement is not reflected in the actual claim language.
In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (explaining that the
"name of the game is the claim" and that unclaimed features cannot impart
patentability to a claim).
IV. SUMMARY
The Examiner's rejection under 35 U.S.C. § 102(a)(l) of claims 1-18
is sustained. Therefore, the Examiner's final decision to reject claims 1-18
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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