Ex Parte Klassen et alDownload PDFPatent Trial and Appeal BoardJan 28, 201611960969 (P.T.A.B. Jan. 28, 2016) Copy Citation 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"). 2 Appeal2014-002796 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. 3 Appeal2014-002796 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 4 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 5 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. 6 Appeal2014-002796 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. 7 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 8 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 9 Copy with citationCopy as parenthetical citation