Ex Parte Bumiller

Patent Trial and Appeal Board

Dec 13, 2017

14214243 (P.T.A.B. Dec. 13, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/214,243 03/14/2014 George Baldwin Bumiller JLl 110.002 3306
14207 7590 12/15/2017
The Juhasz Law Firm, P.C.
10777 Westheimer, Suite 1100
Houston, TX 77042
EXAMINER
NILFOROUSH, MOHAMMAD A
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
12/15/2017 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):
pj uhasz @ paten thorizon. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE BALDWIN BUMILLER
Appeal 2018-0000911
Application 14/214,2432
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 6, 9, 13, 14, 35, and 36. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
June 12, 2017) and Reply Brief (“Reply Br.,” filed October 4, 2017), and the
Examiner’s Answer (“Ans.,” mailed August 7, 2017) and Final Office
Action (“Final Act.,” mailed July 11, 2016).
2 Appellant identifies the inventor, George Baldwin Bumiller, as the real
party in interest. App. Br. 4.
Appeal 2018-000091
Application 14/214,243
CLAIMED INVENTION
Appellant’s claimed invention “is directed to mobile devices, systems,
and methods for providing secure messaging” and, more specifically, to “a
messaging control device, system, and method for facilitating
communication of a message involving SE embedded data between a mobile
device and a trusted service manager (TSM) or payment company (PC) over
a network” (Spec. 12).
Claim 1, reproduced below, is the sole independent claim, and
representative of the claimed subject matter:
1. A method for communicating a plurality of
messages over a network using a secure messaging protocol
between a trusted service manager and a mobile device having a
security element, the method comprising the steps of:
receiving at a network node the plurality of messages, each
message in the plurality of messages having a header field and a
message field, wherein the message field includes message
content, and wherein the plurality of messages includes at least
one PIN message that includes a number in the header field that
is unique to the mobile device;
distinguishing at the network node between the PIN
message and other messages in the plurality of messages, based
on a presence of the unique mobile device number in the header
field of the PIN message, and an absence of the unique mobile
device number in the header field of other messages in the
plurality of messages;
routing only the PIN message from the network node to a
trusted relay that operates as a gateway to a single-entity
controlled PIN network, and that processes the PIN message
between the trusted service manager and the mobile device over
the single-entity controlled PIN network according to the secure
messaging protocol[;]
2
Appeal 2018-000091
Application 14/214,243
referencing on the trusted relay a registry of information
on one or more trusted service managers to validate an identity
and location of the trusted service manager involved in
communicating the PEST message; and
routing the PEST message from the trusted relay based on
validation of the identity and location of the trusted service
manager and on the unique mobile device number in the header
field of the PIN message.
REJECTIONS3
Claims 1, 2, 6, 9, 13, 35, and 36 are rejected under 35 U.S.C. § 103(a)
as unpatentable overNiemi et al. (US 2005/0193133 Al, pub. Sept. 1, 2005)
(hereinafter “Niemi”), Tysowski (US 2009/0215476 Al, pub. Aug. 27,
2009), Gyllensvaan (US 2010/0267359 Al, pub. Oct. 21, 2010), and
Makhotin et al. (US 2013/0151400 Al, pub. June 13, 2013) (hereinafter
“Makhotin”).
Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Niemi, Tysowski, Gyllensvaan, Makhotin, and Williams et al. (US
2012/0255028 Al, pub. Oct. 4, 2012) (hereinafter “Williams”).
ANALYSIS
Independent Claim 1 and Dependent Claims 2, 6, 9, 13, 35, and 36
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because the
combination of Niemi and Tysowski, on which the Examiner relies, does not
disclose or suggest that the same field that determines (by the presence or
3 The rejection of claims 1, 2, 6, 9, 13, 14, 35, and 36 under 35 U.S.C.
§112, second paragraph, has been withdrawn. Ans. 13.
3
Appeal 2018-000091
Application 14/214,243
absence of a value in the field) whether to route a message to a trusted relay
also specifies the destination of the message, i.e., “distinguishing . . .
between the PIN message and other messages in the plurality of messages,
based on a presence of the unique mobile device number in the header field
of the PIN message”; routing only the PIN message from the network node
to a trusted relay”; and “routing the PIN message from the trusted relay
based on . . . the unique mobile device number in the header field of the PIN
message,” as recited in claim 1 (App. Br. 11—15).
Niemi is directed to a mobile communication system that supports at
least a first type and a second type of message service (Niemi, Abstract),
e.g., an instant messaging service (“IMS”) and a multimedia messaging
service (“MMS”) (see, e.g., id. 1 67, Fig. 3). Niemi discloses that the
presence or absence of particular information in the header of a message,
i.e., a “P” header entry, is used to indicate the type of message service, e.g.,
IMS or MMS, and depending on the identified message service, the message
is routed to the appropriate one of the IMS application or the MMS
application (see, e.g., id. 57, 60).
Tysowski is generally directed to automatically adding contact
information and mobile device access information to a contacts list of an
instant messaging application (see, e.g., Tysowski, Abstract), and discloses
that in a PIN-to-PIN based messaging system, contact information may be
obtained through a global address list (GAL) lookup (id.). Tysowski
discloses, with reference to Figure 10, that a PIN-to-PIN message 324
includes a body 75, which contains the content of the message, and a
header 69, which contains various fields for transmitting and processing the
message (id. 197). As shown in Figure 10, the header includes, inter alia, a
4
Appeal 2018-000091
Application 14/214,243
message type field 70 to specify the type of transmission, e.g., PEST, SMS,
etc.; a source field 71 to specify the sender’s device address; and a
destination field 72 to specify the device address of the intended recipient
(id.). Tysowski discloses that in a PIN-based messaging protocol, each
message has an associated PIN (i.e., a unique number) that identifies the
source of the message, i.e., the sender, and a destination PIN that identifies
the intended recipient (id.).
Responding to Appellant’s argument, the Examiner acknowledges
that, in claim 1, the unique mobile device number in the header field is used
to both distinguish a PIN message from other messages and route the PIN
message from the trusted relay (Ans. 16). But, the Examiner maintains that
the claim “does not describe how the unique mobile device number in the
header field is used to route the PIN message from the trusted relay” or that
“the unique mobile device number in the header field is necessarily used to
identify the destination of the message or route the message to a destination
identified by the unique mobile device number” (id.). Instead, according to
the Examiner, “the claim only requires that the unique mobile device
number in the header field be used in some way to route the PIN message
from the trusted relay” (id.).
The Examiner finds that, in Niemi (where a first mobile user terminal,
associated with a first user A, is connected to a first mobile network and a
second mobile terminal, associated with a second user B, is connected to a
second mobile network), the header value is used to distinguish between
message types in the first mobile network, and also plays a role in routing
the message to the destination because it governs the server, e.g., the IMS
application server or the MMS application server, to which the message is
5
Appeal 2018-000091
Application 14/214,243
sent in the second mobile network and ultimately the application that
handles the message at the receiving terminal (Ans. 16—17 (citing Niemi
11 13, 18-21, 38—40, 4AA6, 49, 53, 57, 60, 64, 67, and 68)). The Examiner
acknowledges that Niemi does not specifically disclose that the value in the
header is a number unique to the mobile device, but the Examiner notes that
“Tysowski discloses the use of a PIN value in a header field of a message,
where the PIN value is a number that is unique to the mobile device” {id.
at 17 (citing Tysowski H 95—97; claim 4)). And the Examiner concludes
that because Niemi allows any type of value to be used in the header {id.
at 17—18 (citing Niemi H 57—60)), using data that represent a number
unique to the mobile device in the header would only involve the simple
substitution of one known type of number or value in place of another to
yield a predictable result {id.).
As an initial matter, we do not agree with the Examiner that claim 1
does not describe that the unique mobile device number in the header field is
used to identify the destination of the message. Instead, we agree with
Appellant that it is clear from a fair reading of the claim language, including
the preamble, that the unique mobile device number is used to identify the
“mobile device having a security element,” which is the source or
destination of the messages (Reply Br. 4).
It also is significant here, as Appellant observes, that Niemi only
discloses the use of an SIP message format; a person of ordinary skill in the
art would, thus, reasonably understand from Niemi that the message includes
standard “to” and “from” fields that identify the source and destination of
the message, with the disclosed P-XXXX header entry being used to identify
the particular messaging service (App. Br. 11; see also Reply Br. 6—7).
6
Appeal 2018-000091
Application 14/214,243
Tysowski similarly explicitly discloses separate “source,” “destination,” and
“type” fields (see Tysowski 197; Fig. 10).
The Examiner ostensibly proposes to modify Niemi such that the
header field, i.e., the P-XXXX field, the presence or absence of which is
used in Niemi to determine the message type, includes a unique mobile
device number, such as the PIN of Tysowski. But we fail to see why, and
the Examiner does not explain why, a person of ordinary skill in the art
would have had an apparent reason to modify Niemi in this way. We find
nothing in Niemi or Tysowski, nor does the Examiner point to anything in
Niemi or Tysowski, that discloses or suggests that a single header field be
used to specify both the type and the destination of a message. In fact, as
described above, Niemi and Tysowski disclose just the opposite, i.e., that the
header includes separate source, destination, and type fields.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the rejection of dependent claims 2, 6, 9, 13, 35, and 36.
Cf. In reFritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims
are nonobvious if the independent claims from which they depend are
nonob vious”).
Dependent Claim 14
The Examiner’s rejection of dependent claim 14 does not cure the
deficiency in the rejection of independent claim 1, from which claim 14
depends. Therefore, we do not sustain the Examiner’s rejection of claim 14
for the same reasons set forth above with respect to claim 1.
7
Appeal 2018-000091
Application 14/214,243
DECISION
The Examiner’s rejections of claims 1, 2, 6, 9, 13, 14, 35, and 36
under 35 U.S.C. § 103(a) are reversed.
REVERSED
8