Ex Parte Schultz et al

Patent Trial and Appeal Board

Sep 9, 2016

11948399 (P.T.A.B. Sep. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111948,399 11130/2007 Charles P. Schultz
124282 7590 09/09/2016
Johnson, Marcou & Isaacs, LLC
317 A East Liberty Street
Savannah, GA 31401
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.
MOT0-6025 2667
EXAMINER
ZELASKIEWICZ, CHRYSTINAE
ART UNIT PAPER NUMBER
3621
MAILDATE DELIVERY MODE
09/09/2016 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 PATENT TRIAL AND APPEAL BOARD
Exparte CHARLES P. SCHULTZ, JOSE C. LACAL, VON A. MOCK, and
ARNOLD W. PITTLER
Appeal2013-003443
Application 11/948,399 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1-3 and 5-20. We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM-IN-PART.
1 Appellants identify Motorola Mobility as the real party in interest. Appeal
Br. 4.
Appeal2013-003443
Application 11/948,399
THE INVENTION
Appellants' invention relates generally to payment transactions and,
more particularly, to payment transactions for virtual items. (Spec. if 1 ).
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A method of conducting transactions for acquisition of
virtual items, comprising:
via a processor, receiving from a user a request to acquire
a first virtual item;
responsive to an identity indicator that is exclusively
unique to an identity confirmation device being communicated
from the identity confirmation device to a client device, and
from the client device to a server, determining, via the
processor, whether the identity indicator corresponds to the
user; and
responsive to determining that the identity indicator
corresponds to the user, via the processor, providing the first
virtual item to the user.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Cooper
VanLuchene
US 2007 /0022469 Al Jan. 25, 2007
US 2007 /0111770 Al May 17, 2007
The following rejection is before us for review.
Claims 1-3 and 5-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Van Luchene and Cooper.
2
Appeal2013-003443
Application 11/948,399
FINDINGS OF FACT
1. We adopt the Examiner's findings as set forth in the Answer
concerning only claims 17, 19 and 20.
ANALYSIS
We begin by construing the scope of the claims. We find that
claims 1-3 and 5-16 are drawn to a method of conducting transactions for
acquisition of virtual items and claims 17-20 are device claims.
Accordingly, we address the independent claims drawn to the method
separately from the device claims.
Independent claims 1 and 9
Concerning independent claim 1, this claim requires, "responsive to
an identity indicator that is exclusively unique to an identity confirmation
device being communicated from the identity confirmation device to a client
device, and from the client device to a server," ... and similarly,
independent claim 9 requires "receiving from an identity confirmation
device an identity indicator exclusively unique to the identity confirmation
device; and via the processor, communicating the request and the identity
indicator from the client device to a server."
Concerning these limitations the Examiner found,
Cooper teaches that the CPE (i.e. client device) can
be any network processing equipment that can be
used to interface in home network equipment to a
connection or communication line to the outside
3
Appeal2013-003443
Application 11/948,399
(Answer 4).
world. See [0053]. Cooper also teaches that the
network edge equipment (i.e. confirmation device)
includes, but is not limited to physical connection
based on cable modems, DSL, wireless, and
optical technologies. See [0055].
Thus, Cooper teaches communicating an identity
indicator from the network edge equipment (e.g. at
the building, see [0022]) to the CPE (e.g.
connection port, see [0022]), and from the CPE to
a server (e.g. telecommunication company edge
site).
Appellants argue
Clearly, Cooper's i-f [0022] fails to disclose
"responsive to an identity indicator that is
exclusively unique to an identity confirmation
device being communicated from the identity
confirmation device to a client device, and from
the client device to a server, determining, via the
processor, whether the identity indicator
corresponds to the user." Indeed, i-f [0022] does not
disclose how an "identity indicator" is
communicated. Instead, i-f [0022] discloses a
manner in which a "unique digital certificate" is
associated with a "particular building." This
association, however, does not include "responsive
to an identity indicator that is exclusively unique to
an identity confirmation device being
communicated from the identity confirmation
device to a client device, and from the client
device to a server, determining, via the processor,
whether the identity indicator corresponds to the
user."
4
Appeal2013-003443
Application 11/948,399
(Reply Br. 8-9).
We agree with Appellants. Paragraph 22 of Cooper discloses that the
digital certificate, analogous to Appellants' unique ID, is "associated only
with that line to that particular building." Cooper discloses "[t]he digital
certificate may be attached to a dedicated broadband access line to a
building," but is silent as to how such attachment is accomplished. (Cooper
i-f 22). The Examiner does not explain and it is not apparent how the digital
certificate is attached to the line so as to be communicated from the identity
confirmation device to a client device as required by the claims.
Because claims 2, 3, 5-8, and 10-16 depend from claims 1 and 9,
respectively, and because we cannot sustain the rejection of claims 1 and 9,
the rejection of claims 2, 3, 5-8, and 10-16 likewise cannot be sustained.
Independent claim 1 7
Independent claim l 7, a device claim, uses functional language in the
description of the user interface, device interface and network adapter. As
functional language, we are required to give this language weight only to the
extent that the prior art is or is not capable of meeting the limitation. In re
Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). Appellants' arguments
to claim 17 merely reference those set forth for claim 9. (Appeal Br. 36).
But, claim 9 is a method claim, and claim 17 is a device claim.
(Appeal Br. 33). The steps of a method claim are positively recited claim
elements and differ in scope from the functional steps of the device claims
and Appellants do not adjust their arguments to distinguish between the two.
5
Appeal2013-003443
Application 11/948,399
Appellants' arguments against claim 1 7, referenced to the method of
claim 9, are thus not persuasive.2 3 Therefore, we affirm the rejection of
claim 17.
We also affirm the rejection of dependent claim 18 because
Appellants have not challenged such with any reasonable specificity (see In
re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)).
Independent claim 20
Independent claim 20 covers a device, whereas claims 1 and 9 each
covers a method of conducting transactions for acquisition of virtual items.
Appellants make specific arguments to the rejection of claim 20:
With respect to Van Luchene' s "exchange
seat owner account number" and "exchange seat
number," rather than "communicating the request
and the identity indicator from the client device to
a server," Van Luchene's i-f [0170] discloses "such
information may be stored in player character
database 80." Van Luchene does not disclose or
suggest that the "exchange seat owner account
number" or "exchange seat number" disclosed in
i-f [O 170] is communicated with Van Luchene's
"purchase request" disclosed in ,-r [0222].
2 Appellants similarly advance the argument made for claim 12 to refute the
rejection of claim 19 (Appeal Br. 50), which is also unpersuasive because of
the incongruity in scope of the claims.
3 Even considering Appellants' argument to the device of claim 17 directed
to the shortcomings of Van Luchese (Appeal Br. 35-36), this argument is
very similar to that made specific to claim 20 and fails for the same reason
set forth infra.
6
Appeal2013-003443
Application 11/948,399
(Appeal Br. 26).
We are not persuaded by Appellants' arguments because claim 20 is a
device claim and uses functional language to describe the characteristic of
each device component. As functional language, we are required to give this
language weight only to the extent that the prior art is or is not capable of
meeting the limitation. Schreiber, 128 F.3d at 1477-78. Here, the Examiner
found that Van Luchene discloses "a device interface (video game device,
see [0114])," and "the client device (video game device, see [0114])
communicates the identity indicator to a server (server, see [0113])." (Final
Act. 6). The Examiner also found that Cooper discloses "a data storage
(stored in hardware security device, see [0025]) upon which an identity
indicator (keys, see [0025]) exclusively unique to the identity confirmation
device is stored." (Final Act. 6). Thus, in terms of the required claim
elements, the Examiner's proposed combination does map to each device
component, namely, a client device, a data storage, a device interface, an
identity indicator, and a server in communication with a client device.
Concerning the recited function of how the identity indicator is
communicated between the various devices of the system, we adopt the
Examiner's finding (id.) from paragraph 113 of Van Luchene which
discloses that the device components are in communication with each other
thereby making each capable of performing the claimed function.
Appellants also argue that
Cooper discloses that the system includes "at least
one hardware security device associated with the
7
Appeal2013-003443
Application 11/948,399
gateway module and hardware security devices
associated with each user device in the building."
Accordingly, the same "digital certificate" will be
used by a plurality of "hardware security devices"
- the hardware security device associated with the
gateway module and the hardware security devices
associated with each user device. Thus, Coopers
"digital certificate" is not "an identity indicator
exclusively unique to the identity confirmation
device."
(Appeal Br. 35).
We disagree with Appellants. We find that the full reading of
paragraph 25 of Cooper states that, "[ t ]he hardware security device in the
gateway module in tum is cryptographically synchronized with the security
devices in each user device for authentication to be successful and network
communications to proceed." We find by inference that the synchronization
by the gateway module of the security device in each user device suggests
exclusive uniqueness with each identity confirmation device because the
word "each" connotes separate consideration.4
Notwithstanding, we find that because Cooper at paragraph 25
discloses a two-level authentication, and because the hardware security
device in the gateway module is cryptographically synchronized with the
security devices in each user device, it is capable of synchronizing an
identity indicator exclusively unique to the identity confirmation device. As
4 http://www.merriam-webster.com/dictionmy/each (last visited Sept. 1,
2016)
8
Appeal2013-003443
Application 11/948,399
functional language, we are required to give this language weight only to the
extent that the prior art is or is not capable of meeting the limitation.
Schreiber, 128 F.3d at 1477-78.
CONCLUSION OF LAW
We conclude the Examiner did err in rejecting claims 1-3 and 5-16
under 35 U.S.C. § 103(a).
We conclude the Examiner did not err in rejecting claims 17-20 under
35 U.S.C. § 103(a).
DECISION
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 )(iv).
AFFIRivIED-Il...J-P ART.
9