Ex Parte Klassen et al

Patent Trial and Appeal Board

Jan 28, 2016

11960969 (P.T.A.B. Jan. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111960,969 12/20/2007
112594 7590 02/01/2016
BlackBerry Limited (CRGO Cases)
2200 University A venue East
Waterloo, ON N2K OA 7
CANADA
FIRST NAMED INVENTOR
GERHARD DIETRICH KLASSEN
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.
1400-00SU 5393
EXAMINER
TOLENTINO, RODERICK
ART UNIT PAPER NUMBER
2439
NOTIFICATION DATE DELIVERY MODE
02/01/2016 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):
docketing@dimock.com
portfolioprosecution@blackberry.com
ptoboca@fggbb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERHARD DIETRICH KLASSEN, MICHAEL HUNG,
MICHAEL STEPHEN BROWN, and HERB LITTLE
Appeal2014-002796
Application 11/960,969
Technology Center 2400
Before JOSEPH L. DIXON, ROBERT E. NAPPI, and
STACY B. MARGOLIES, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1 through 5 and 7 through 21.
We affirm.
INVENTION
Appellants' invention relates to an apparatus for use with a mobile
station which utilizes encrypted log-in information prior to processing a
push message such as an instant message. See Abstract. Claim 1 is
illustrative of the invention and reproduced below:
Appeal2014-002796
Application 11/960,969
1. An apparatus operable to communicate a push
message pursuant to a push message service, said apparatus
compnsmg:
a radio communication device including:
a receiver;
a transmitter;
a data storage element;
an encryptor adapted to receive from the data storage
element log-in information comprising a usemame and a
password used by the radio communication device pursuant to
log-in of the radio communication device, said encryptor
configured to encrypt the usemame and password of the log-in
information prior to communication thereof;
a log-in acceptance detector coupled to the receiver and
adapted to receive indication of log-in acceptance of the radio
communication device; and
a message operator coupled to the log-in acceptance
detector and the transmitter and configured to operate upon the
push message subsequent to the reception by said log-in
acceptance detector of the log-in acceptance of the usemame and
password communicated in encrypted form, the push message
communicated in unencrypted form by the transmitter.
REJECTIONS AT ISSUE
The Examiner has rejected claims 1 through 11 and 21 under 35
U.S.C. § 112, second paragraph, for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.
Final Act. 5-6. 1
1 Throughout this Opinion we refer to the Appeal Brief (filed Aug. 09,
2013) ("Appeal Br."), Reply Brief (filed Dec. 17, 2013) ("Reply Br."),
Specification (filed Dec. 20, 2007) ("Spec."), Final Office Action (mailed
Apr. 17, 2013) ("Final Act."), and the Examiner's Answer (mailed Oct. 30,
2013) ("Answer").
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Application 11/960,969
The Examiner has rejected claims 1, 4 through 12, 15 through 18, 20,
and 21under35 U.S.C. § 103(a) as unpatentable over McKenzie (US
2006/0271485 Al, pub. Nov. 30, 2006) and Supramaniam (US
2005/0138371 Al, pub. June 23, 2005). Final Act. 6-11.
The Examiner has rejected claims 2, 13, and 19 under 35 U.S.C. §
103(a) as unpatentable over McKenzie, Supramaniam, and Yamamoto (US
2003/0140226 Al, pub. July 24, 2003). Final Act. 12.
The Examiner has rejected claims 3 and 14 under 35 U.S.C. § 103(a)
as unpatentable over McKenzie, Supramaniam, and Cooper (US
2001/0051996 Al, pub. Dec. 13, 2001). Final Act. 12-13.
Rejection under 35 U.S.C. § 112
The Examiner has rejected the claims as being indefinite, as the
Examiner has determined that 35 U.S.C. § 112, sixth paragraph, is invoked
and Appellants' Specification lacks sufficient disclosure to describe the
structure to perform the claimed invention. Answer 2-3. Appellants assert
the Examiner's determination that the terms "adapted to" and "configured
to" invoke 35 U.S.C. § 112, sixth paragraph, is a rationale expressed for the
first time in the Answer and as such is a new basis for rejection. Reply Br.
3. Further, Appellants respond to the Examiner's rejection by stating the
language following the terms "adapted to" and "configured to" define the
required structure of the claimed encryptor, detector, and operator and that
the Examiner has not rebutted the presumption that the claims do not invoke
35 U.S.C. § 112, sixth paragraph. Reply Br. 3---6.
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Application 11/960,969
We are not persuaded of error in the Examiner's rejection by
Appellants' arguments.
Initially, we note the issue of whether an Examiner raises a new
ground of rejection for the first time in an Answer is a petitionable matter
and not an appealable matter. See 37 C.F.R. §41.40(a). Appellants failed to
timely file such a petition and therefore have waived the argument that the
rejection must be designated as a new ground of rejection. See 37 C.F.R.
§41.40(a) ..
Further, we disagree with Appellants that the encryptor, detector, and
operator limitations of claim 1 and processor limitation of claim 21 recite
sufficiently definite structure and concur with the Examiner that 35 U.S.C. §
112, sixth paragraph, applies.
The failure to use the word "means" in a claim limitation creates a
rebuttable presumption that 35 U.S.C. § 112, sixth paragraph, does not
apply. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed.
Cir. 2015). The presumption can be overcome if "the claim term fails to
recite sufficiently definite structure or else recites function without reciting
sufficient structure for performing that function." Williamson, 792 F.2d at
1349 (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000))
(internal quotations omitted). In this case, the terms "encryptor," "detector,"
"operator," and "processor"-which are "adapted to" or "configured to"
perform certain functions-are each used in a generic, functional sense and
fail to recite sufficiently definite structure. See Mass. Inst. of Tech. v.
Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006) (stating that generic
terms such as "mechanism," "means," "element," and "device" typically do
not connote sufficiently definite structure); see also Manual of Patent
Examining Procedure (MPEP) § 2181(I)(A) (9th Ed., Mar. 2014) (stating that
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Appeal2014-002796
Application 11/960,969
"apparatus for" is a non-structural term that may invoke § 112, sixth
paragraph). Moreover, the language following "adapted to" or "configured
to" is merely functional and does not recite any structure for performing the
recited functions. Appellants' Specification also is devoid of structure
associated with the claimed encryptor, log-in acceptance detector, message
operator, and processor. See Spec. paras. 31-33, Figs. 1-3. Both Appellants
and the Examiner refer to Specification paragraphs 32 and 33 as describing
these elements. Appeal Br. 2--4, Answer 3. We concur with the Examiner
that these paragraphs use the terms in a purely functional sense and do no
connote structure. See also Spec. para. 31 (characterizing the components of
apparatus 36---including the encryptor, detector, and message operator-as
"functional entities"). Thus, we concur that the encryptor, detector,
operator, and processor limitations are properly construed as invoking 35
U.S.C. § 112, sixth paragraph.
Further, the Examiner has found and we concur that the Specification
fails to provide sufficient corresponding structure and thus claims l and 21
are indefinite. As the Federal Circuit has explained:
[I]f one employs means-plus-function language in a claim, one
must set forth in the specification an adequate disclosure
showing what is meant by that language. If an applicant fails to
set forth an adequate disclosure, the applicant has in effect failed
to particularly point out and distinctly claim the invention as
required by the second paragraph of section 112.
In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en bane); see
also Aristocrat Techs. Australia Pty Ltd. v. Int'! Game Tech., 521F.3d1328,
1333 (Fed. Cir. 2008).
Appellants' Specification states:
The apparatus [36] is formed of functional entities,
implementable in any desired manner, including by algorithms
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Appeal2014-002796
Application 11/960,969
executable by processing circuitry. While the apparatus is shown
to be connected to transceiver circuitry, represented by a transmit
part 3 8 and a receive part 42 of the mobile station, functional
entities of the apparatus, in various implementations, are
implemented as part of the transceiver circuitry of the mobile
station. Other parts, for instance, are implemented at a control
element of the mobile station mobile station.
Spec. para. 31. Thus, the Specification describes the components of the
apparatus---e.g., the encryptor, the detector, and the operator-asfunctional
units. And the Specification states that the units are implemented as generic
"processing circuitry" executing unspecified "algorithms." Spec. para. 31.
The Federal Circuit has held that simply disclosing a general purpose
computer as the structure to perform the claimed function does not meet the
corresponding structure requirement of 35 U.S.C. § 112, sixth paragraph.
Aristocrat, 521 F.3d at 1333. Rather, because the limitations are computer-
implemented and cannot be performed by a general purpose computer
without any special programming, the Specification must discloses an
algorithm that transforms a general purpose processor into a special purpose
processor that performs the claimed function. See Aristocrat, 521 F.3d at
1333. Here, Appellants have not identified disclosure in their Specification
of the algorithm( s) for the claimed encrypting log-in information, detecting
log-in acceptance, or operating on push messages (or the similar functions
recited as being performed by the processor of claim 21 ). The Specification
describes each of the functions at a high level and fails to provide any
algorithm specifying how each of the functions are performed.
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Application 11/960,969
Thus, we sustain the Examiner's rejection of claims 1 and 21 under 3 5
U.S.C. § 112 second paragraph, and dependent claims 2 through 11 grouped
with claim 1. 2
Rejection under 35 U.S.C. § 103
Appellants have not separately addressed claims 1, 4 through 12, 15
through 18, 20, and 21. Therefore, we select independent claim 12 as the
representative claim for the group. Appeal Br. 8.
Appellants' arguments directed to the Examiner's rejection of
independent claims 1, 12, 18, and 21 assert that the Examiner has not shown
the combination of McKenzie and Supramaniam teaches operation on an
unencrypted push message subsequent to the detection of log-in acceptance
as recited in claim 12. Appeal Br. 8-13, Reply Br. 6-11. Specifically,
Appellants argue that Supramaniam's paragraph 66 discussion of
establishing a notification type of Push and Poll after login does not teach
the claimed operation on an unencrypted push message subsequent to
detection of log-in acceptance. Appeal Br. 8-9, Reply Br. 7-10.
In response to Appellants' arguments, the Examiner finds that
paragraph 66 of Supramaniam shows that the "push & poll" type notification
is set after detection of log-in acceptance and thus a push message is
operated upon after acceptance of log-in information. Answer 4--5. We
concur. Setting of the "push & poll" type of notification means, by its terms,
that the device is set to operate on push-type notifications; and as is seen in
2 Appellants have not argued for the separate patentability of claims 2
through 12, and thus the claims are grouped together with independent claim
1.
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Appeal2014-002796
Application 11/960,969
Supramaniam, Figure 5A, this notification type is set after acceptance of log-
in, and not before. Thus, Supramaniam teaches that at some point in time
after log-in, and not before, a push message will be operated on. Further, the
Examiner has interpreted the term "unencrypted push message" to be a
standard push message as was known in the art. Answer 5. We concur.
We note that Appellants have not identified any evidence, nor do we
find any evidence, that contradicts the Examiner's finding by showing
standard push notifications are encrypted. Further, Appellants' inherency
arguments on pages 9 through 11 of the Reply Brief are not persuasive.
Moreover, the Examiner has not relied upon inherency (see Final Act. 3--4, 7
and Answer 5), and inasmuch as the Appellants are asserting that
Supramaniam does not teach sending a push message, we disagree.
Supramaniam's teaching of having an operation to push a notification
suggests that the push operation will be used for notification. See
Supramaniam [See para 66]. Accordingly, Appellants' arguments have not
persuaded us of error in the Examiner's rejection of claim 12. Appellants
have not separately addressed claims 1, 4 through 12, 15 through 18, 20, and
21, and thus Appellants have grouped these claims together with
representative claim 1. Accordingly, we sustain the Examiner's rejection of
claims 1, 4 through 12, 15 through 18, 20, and 21under35 U.S.C. § 103(a)
as unpatentable over McKenzie and Supramaniam.
Appellants argue the rejections of claims 2, 3, 14, and 19 are in error
for the same reasons as the independent claims. As we find no error in the
rejection of the representative independent claim 1, we similarly sustain the
Examiner's rejection of claims 2, 3, 14, and 19.
DECISION
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Appeal2014-002796
Application 11/960,969
The decision of the Examiner to reject claims 1 through 5 and 7
through 21 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
hh
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