Ex Parte Schindler et al

Patent Trial and Appeal Board

Jul 12, 2016

12515731 (P.T.A.B. Jul. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/515,731 0512012009
20230 7590 07114/2016
V orys, Sater, Seymour and Pease LLP
1909 K St., NW
9th Floor
WASHINGTON, DC 20006-1152
FIRST NAMED INVENTOR
Sigram Schindler
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.
070204.000005 2187
EXAMINER
MACILWINEN, JOHN MOORE JAIN
ART UNIT PAPER NUMBER
2442
NOTIFICATION DATE DELIVERY MODE
07/14/2016 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):
patlaw@vorys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SI GRAM SCHINDLER and JUERGEN SCHULZE 1
Appeal2014-007006
Application 12/515,731
Technology Center 2400
Before JEFFREY S. SMITH, AMBER L. HAGY, and
BARRY, MICHAEL M., Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 35--42, 47, 48, 51, 53, 54, 58---65, 70, 71, 74, 76,
77, and 81-84, which are all of the pending claims. We have jurisdiction
over these claims under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Sigram Schindler Beteiligungsgesellschaft mbH as the
real party in interest. (App. Br. 1.)
Appeal2014-007006
Application 12/515,731
According to Appellants:
Introduction
The invention relates to a method for delivering primary
information that exists in at least one electronic form as well as
a telecommunication arrangement and a telecommunication
device that are adapted for conducting the method or for use with
the method. Particularly, the invention relates to a method of
delivering a primary information that allows for, beyond the fact
of reading the transmitted primary information, detecting and
saving the acknowledgement of the primary information by the
addressee.
(Spec. 1:8-14.)
Exemplary Claim
Claims 35 and 58, reproduced below with the disputed limitations
italicized, are exemplary of the claimed subject matter:
35. A method for verifying delivery to a recipient of primary
information in a telephone call, comprising:
transmitting the primary information via said telephone
call to at least one communication system accessible by said
recipient of the primary information,
creating verification information relating to the receipt of
the primary information by the recipient, wherein the creation of
said verification information
is based on an interaction with said recipient as to
said primary information in said telephone call,
occurs during or after receipt of said primary
information at the communication system, and
comprises determining voice recognition
information that indicates with a predetermined level of
trustworthiness the identity of the recipient of said primary
information, and
causing said verification information to be stored via at
least one telecommunication network.
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58. Apparatus for verifying delivery to a recipient of primary
information in a telephone call, comprising:
at least one communication network;
a transmitter configured to transmit the primary
information via said telephone call over said communication
network to at least one communication system accessible by said
recipient of the primary information,
a verifier configured to create verification information relating
to the receipt of the primary information by the recipient, wherein the
creation of said verification information
is based on an interaction with said recipient as to said
primary information in said telephone call,
occurs during or after receipt of said primary information
at the communication system, and
comprises determining voice recognition information that
indicates with a predetermined level of trustworthiness the identity of
the recipient of said primary information, and
a processor that causes said verification information to be stored
via at least one telecommunication network.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Schwartz et al. ("Schwartz")
Tomkow
Ginter et al. ("Ginter")
US 6,661,879 Bl
US 2005/0021963 Al
US 2005/0246541 A 1
3
Dec. 9, 2003
Jan.27,2005
Nov. 3, 2005
Appeal2014-007006
Application 12/515,731
REJECTIONS
Claims 58---65, 70, 71, 74, 76, 77, 82, and 84 stand rejected under 35
U.S.C. § 112, second paragraph as being indefinite. (Final Act. 6-8.)
Claims 35--42, 47, 48, 53, 54, 58-65, 70, 71, 76, 77, and 81-84 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Ginter and
Schwartz. (Final Act. 8-13.)
Claims 51 and 74 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ginter, Schwartz, and Tomkow. (Final Act. 13-14.)
ISSUES
(1) Whether the Examiner erred in rejecting independent claim 58
under 35 U.S.C. § 112, second paragraph, as being indefinite, based on the
Examiner's construction of "a transmitter configured to transmit the primary
information ... "and "a verifier configured to create verification information
... "as means-plus-function limitations lacking corresponding recitation of
structure in the Specification.
(2) Whether the Examiner erred in finding the combination of
Ginter and Schwartz teaches or suggests:
[C]reating verification information relating to the receipt
of the primary information by the recipient, wherein the creation
of said verification information
is based on an interaction with said recipient as to
said primary information in said telephone call,
occurs during or after receipt of said primary
information at the communication system, and
comprises determining voice recognition
information that indicates with a predetermined level of
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Application 12/515,731
trustworthiness the identity of the recipient of said pnmary
information[,]
as recited in claim 3 5.
(3) Whether the Examiner erred in finding the combination of
Ginter, Schwartz, and Tomkow teaches or suggests "wherein said
verification information further comprises an evaluation of protocol
information relating to the transmission of the primary information," as
recited in dependent claim 51 and commensurately recited in dependent
claim 74.
ANALYSIS2
A. Claims 58-65, 70, 71, 74, 76, 77, 82, and 84: 35 U.S.C. § 112(2)
Claim 58 recites two limitations that the Examiner has construed as
means-plus-function clauses subject to 35 U.S.C. § 112, sixth paragraph: "a
transmitter configured to transmit the primary information ... "and "a
verifier configured to create verification information .... " (App. Br. 17
(Claims App'x).) We are persuaded by Appellants that the "transmitter"
limitation recites sufficient structure to fall outside the provisions of§ 112,
sixth paragraph (see App. Br. 7-8), but, as discussed further herein, we agree
with the Examiner's findings and conclusion as to the "verifier" limitation.
(Final Act. 6-7; Ans. 3-7.)
Under 35 U.S.C. § 112, sixth paragraph,
[a Jn element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and such
2 Only those arguments made by Appellants have been considered in this
decision. Arguments Appellants did not make in the briefs have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
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claim shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents
thereof.
When a claim term does not use the term "means," the claim term is
presumed not to invoke§ 112, sixth paragraph. See Williamson v. Citrix
Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015). The presumption can
be overcome and§ 112, sixth paragraph, applies, however, if "the claim
term fails to recite sufficiently definite structure or else recites 'function
without reciting sufficient structure for performing that function.'" Id.
(quoting Watts v. XI Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000) (internal
quotation marks omitted)).
Here, the Examiner finds, and we agree, the claim term "verifier" is a
non-structural term, coupled with functional language "configured to create
verification information ... "that does not recite sufficient structure to
achieve the function. (Final Act. 6.) Appellants do not expressly argue
against the characterization of this term as a "means-plus-function"
limitation. (App. Br. 8; Reply Br. 2.) Appellants argue:
[T]he limitation "a verifier configured to create" finds
correspondence in the specification as the interaction automaton
4 disclosed in Fig. 1. The functions performed by the interaction
automaton 4 are disclosed in Figs. 2 - 4 and are further explained
at page 8, line 15 to page 11, line 30 of the specification. The
specification further explains that these functions may be
implemented by software (see page 11, lines 2 - 6).
Consequently, one having skill in the art would understand that
the interaction automaton 4 would be implemented as a
processing device capable of executing software instructions.
(App. Br. 8 (emphases added); see also Reply Br. 5.) In their Reply,
however, Appellants discuss case law setting standards for sufficient
disclosure of structure for "means-plus-function" limitations, which suggests
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Appellants concede the Examiner is correct in his findings and construction
of the "verifier" term as a means-plus-function limitation. (Reply Br. 4--5.)
In any event, by Appellants' own admission, the claimed "verifier" is
disclosed in the Specification as, at most, "a processing device capable of
executing software instructions." (App. Br. 8; see also Reply Br. 2 ("a
'verifier' connotes a processing device such as a server, PC or laptop").)
Appellants point to nothing else as allegedly constituting "structure" for the
"verifier." Appellants' "verifier" limitation, therefore, is tantamount to a
recitation of "a processor configured to" perform various functions in
software, which we have held is a means-plus-function limitation. See
Ex parte Lakkala, Appeal 2011-001526, 2013 WL 1341108, *2 (PTAB
2013) (informative). As our reviewing court has held, "the fact that one of
skill in the art could program a computer to perform the recited functions
cannot create structure where none otherwise is disclosed." Function Media,
L.L.C. v. Google, Inc., 708 F.3d 1310, 1319 (Fed. Cir. 2013).
For the foregoing reasons, we conclude the limitation "verifier
configured to create verification information ... " fails to recite sufficiently
definite structure and that the presumption against means-plus-function
claiming is rebutted. We, therefore, agree with the Examiner that this
limitation is subject to the provisions of 35 U.S.C. § 112, sixth paragraph.
When means-plus-function language is employed in a claim, the
Specification must provide an adequate disclosure showing what is meant by
that language. If an adequate disclosure is not set forth, an applicant has in
effect failed to particularly point out and distinctly claim the invention as
required by the second paragraph of 35 U.S.C. § 112. In re Donaldson Co.,
Inc., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en bane). Moreover, for a
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computer-implemented claim limitation interpreted under § 112, sixth
paragraph, the corresponding structure must include the algorithm needed to
transform the general purpose computer or processor disclosed in the
specification into the special purpose computer programmed to perform the
disclosed algorithm. Aristocrat Techs. Australia Pty Ltd. v. Int 'l Game
Tech., 521F.3d1328, 1333 (Fed. Cir. 2008); see also Function Media, 708
F.3d at 1318. Thus, the Specification must sufficiently disclose an algorithm
to transform the general purpose computer or processor to a special purpose
processor programmed to perform the disclosed algorithm. Aristocrat, 521
F.3d at 1338. An algorithm may be expressed in any understandable terms
including as a mathematical formula, in prose, in a flow chart, or "in any
other manner that provides sufficient structure." Finisar Corp. v. DirecTV
Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008).
An indefiniteness rejection under§ 112, second paragraph, is
appropriate if the Specification discloses no corresponding algorithm
associated with a computer or processor. Aristocrat, 521 F.3d at 1337-38.
Mere reference to a general purpose computer or processor with appropriate
programming, without providing an explanation of the appropriate
programming, or reference to "software," without providing detail about the
means to accomplish the software function, is not an adequate disclosure.
Id. at 1334; Finisar, 523 F.3d at 1340-41. In addition, simply reciting the
claimed function in the Specification, while saying nothing about how the
computer or processor ensures that those functions are performed, does not
constitute an adequate disclosure for an algorithm which, by definition, must
contain a sequence of steps. Blackboard, Inc. v. Desire2Learn, Inc., 574
F.3d 1371, 1384 (Fed. Cir. 2009).
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According to Appellants, the description of the "create verification
information" function recited in claim 58 is found at page 8, line 15 through
page 11, line 30 of the Specification. (App. Br. 8; Reply Br. 5.) As the
Examiner finds, however, and we agree, this description does not define the
algorithm used to perform the recited function: "How the verification
information is created and how the claimed "verifier configured to create"
actually functions is never described in Appellant[s'] figures or in
Appellant[ s '] specification. Appellant[ s '] disclosure essentially repeats the
functionality recited in the claims, and fails to provide a corresponding
algorithm." Because the Specification does not provide an algorithm for
performing the functions recited in apparatus claim 58, that claim is
indefinite under 35 U.S.C. § 112, second paragraph. (Ans. 4; see also Ans.
4--7.)
For the foregoing reasons, we are not persuaded the Examiner erred in
concluding the claimed "verifier configured to create verification
information ... "is subject to § 112, sixth paragraph, or in finding
Appellant's Specification lacks a sufficient description of the corresponding
structure for the "verifier" limitation (such as disclosure of a software
algorithm). E.g., Aristocrat, 521 F.3d at 1337-38. Accordingly, we sustain
the Examiner's rejection of independent claim 58, and dependent claims 59-
65, 70, 71, 74, 76, 77, 82, and 84, as indefinite under 35 U.S.C. § 112,
second paragraph.
B. Claims 35--42, 47, 48, 53, 54, 58-65, 70, 71, 76, 77, and 81--84:
35 U.S.C. § 103(a)
We have reviewed the Examiner's 35 U.S.C. § 103(a) rejections in
light of Appellants' arguments the Examiner has erred. As to those
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rejections, we disagree with Appellants' conclusions and we adopt as our
own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken (Final Act. 8-14) and (2) the reasons set
forth by the Examiner in the Examiner's Answer in response to Appellants'
Appeal Brief. (Ans. 8-20.) We concur with the conclusions reached by the
Examiner, and we highlight the following for emphasis.
The Examiner finds Ginter teaches or suggests all of the limitations of
independent claim 35 (Final Act. 8-9), except the Examiner finds "Ginter
does not show: [verification] is based on an interaction with said recipient in
said telephone call." (Id. at 9.) The Examiner then finds "Schwartz shows
[verification] is based on an interaction with said recipient in said telephone
call." (Id. (citing Schwartz 10:44--11:18, 12:64--66).)
Appellants argue the Examiner's findings are in error because,
"[ c ]ontrary to the assertion in the stated ground of rejection, Ginter does not
disclose creating verification information relating to the receipt by the
recipient of primary information in a telephone call as claimed." (App. Br.
9.) In particular, Appellants argue "Ginter discloses only that a third party
go-between might archive a voice transmission. Archiving of a voice
transmission does not correspond to 'verification information relating to the
receipt of the primary information by the recipient,' as set forth in the
claims." (App. Br. 10.) Appellants' argument is unpersuasive of Examiner
error as it addresses only a portion of Ginter' s disclosure cited by the
Examiner, and ignores other portions the Examiner has cited, which we
agree support the Examiner's findings. In particular, the Examiner cites
paragraphs 69-80 and 83 of Ginter (Ans. 11 ), which teach providing "non-
repudiation of use" of information, and also teach the invention "may record
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specific forms of use such as viewing, editing, extracting, copying,
redistributing .... " (Ginter i-f 70.) The Examiner also cites paragraphs 522-
524 (Final Act. 9), which teach creating and storing "audit information," to
provide information about "who has handled a particular version of the
document." (Ginter i-fi-1522-24; see also i-fi-1296, 301 (teaching
"electronically storing an 'audit' trail" to provide the sender of the
information a receipt that specifies, e.g., "who actually opened and read or
used an item .... ").) As the Examiner finds, and we agree, Ginter's audit
trail is "verification information relating to the receipt of the primary
information by the recipient" that is "based on an interaction with said
recipient as to primary information in said telephone call." (Ans. 11.) The
Examiner also cites, e.g., paragraph 293 of Ginter, which teaches
verification of recipient identity through "stronger forms of personal
authentication such as, for example, a voice print .... " (Final Act. 9)
(emphasis added).)
Appellants additionally argue "Ginter describes in paragraphs [0431] -
[0434] merely delivery receipt options of the fact of delivery, which does not
involve any verification information corresponding to acknowledgment by
the addressee but instead is analogous to the known confirmation of
transmission that is discussed at page 1 of the present application." (App.
Br. 11 (emphasis added).) This argument is not persuasive of Examiner
error because it is not commensurate with the scope of the claims. See In re
Self, 671F.2d1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail from
the outset because ... they are not based on limitations appearing in the
claims."). Claim 35 does not require, as Appellants contend, "verification
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information corresponding to acknowledgement by the addressee." (App.
Br. 11 (emphasis added).)
Appellants also argue:
Schwartz similarly does not disclose verification
information relating to the receipt of primary information by a
recipient, created by interaction with the recipient as to the
primary information. A recorded telephone call itself, does not
correspond to created verification information of delivery of
primary information in the telephone call from interaction with
the recipient, and does not require voice recognition.
(App. Br. 11.) This argument is also unavailing as not commensurate with
the scope of the claims. See Self, 671 F.2d at 1348. Claim 35 does not, as
Appellants contend, require verification information be "created by
interaction with the recipient as to the primary information." (App. Br. 11
(emphasis added).) Rather, claim 35 requires "the creation of said
verification information is based on an interaction with said recipient as to
said primary information in said telephone call .... " (App. Br. 15 (Claims
App'x)(emphasis added).) As the Examiner finds, and we agree:
In [38] Ginter notes that in prior art, "while delivery may
be reported, actual use [cannot] be demonstrated." In [39] Ginter
notes that his disclosure solves this problem. [69-70] and [83]
further discuss that Ginter provides "proof that a particular
communications transaction occurred" including "use" such as
"viewing, editing, extracting, copying, redistributing . . . and/ or
saving" and that an item was "received". Verifying that a
recipient has viewed, edited, copied, etc., an item is a verification
"based on an interaction with said recipient" as the broadest
reasonable interpretation of "based on an interaction with" an
item includes the "viewing, editing, extracting, copying,
redistributing ... and/or saving" of said item; i.e., viewing,
editing, copying, etc. are types of interaction.
(Ans. 11 (emphasis revised).)
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For the foregoing reasons, we are unpersuaded of error in the
Examiner's 35 U.S.C. § 103(a) rejection of independent claim 35 as
unpatentable over Ginter and Schwartz. We, therefore, sustain that
rejection, along with the rejection of claims 36-42, 47, 48, 53, 54, 58---65,
70, 71, 76, 77, and 81-84, which are not argued separately.
C. Claims 51 and 74: § 103(a) over Ginter, Schwartz, and Tomkow
Claim 51 depends from claim 3 5, and adds the limitation "wherein
said verification information further comprises an evaluation of protocol
information relating to the transmission of the primary information." (App.
Br. 16 (Claims App'x).) The Examiner relies on Tomkow as teaching this
limitation. (Final Act. 14 (citing Tomkow i-fi-198-102).) In particular,
Tomkow teaches, e.g., "Reading Notifications" that are sent "when certain
events occur: e.g., the message is opened for reading, or deleted from the
system without being read." (Tomkow i-f 102.) We agree the Examiner's
findings are supported by the teachings of the cited reference. We further
note the Examiner's findings are consistent with the teachings of Appellants'
Specification, which states that "the creation of verification information by
an intelligent evaluation of protocol information" encompasses transmission
of "authentication information" by the addressee to the addresser, such as an
"electronic signature ... added to a read confirmation." (Spec. 5:6-10.)
Appellants argue the Examiner's findings are in error because
"Tomkow does not cure the basic deficiency of Ginter/Schwartz with respect
to the requirements of the independent claims as discussed above." (App.
Br. 13; Reply Br. 9-10.) We do not find this argument persuasive because,
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as we discuss supra, we do not agree the Examiner's combination of Ginter
and Schwartz is "deficient."
Appellants' additional contentions are no more persuasive of
Examiner error. Appellants argue "there exists no purpose to have modified
Ginter in view of Tomkow," because "Ginter already describes a read
receipt" and thus the teachings of Tomkow "add[] nothing to the proposed
Ginter/Schwartz combination that would result in the claimed invention."
(App. Br. 13.) Such unsupported attorney argument is entitled to little
probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re
De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellants further contend
Tomkow's teaching "does not relate to the claimed evaluation of protocol
information relating to the transmission of the primary information in a
telephone call, as set forth in claims 51 and 74." (App. Br. 13; Reply Br. 9-
10.) This contention amounts to no more than a terse statement that the cited
reference does not disclose the claimed limitation, which also has little or no
value in identifying the Examiner's alleged error, and, consequently, has
little persuasive value. See 37 C.F.R. § 41.37(c)(iv) ("A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim."); see also In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011).
For the foregoing reasons, we are not persuaded of error in the
Examiner's 35 U.S.C. § 103(a) rejection of claim 51 as unpatentable over
Ginter, Schwartz, and Tomkow, and we, therefore, affirm that rejection,
along with the rejection of claim 74, which is not argued separately.
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D. Objection Based On New Matter
The Examiner objects to the Amendment filed December 26, 2012,
under 35 U.S.C. § 132(a) on the grounds "it introduces new matter into the
disclosure." (Final Act. 5.) Appellants have not challenged this objection
on appeal. Nor would it be properly before us. New matter issues are
appealable when both the claims and Specification contain new matter, and
the Examiner enters an associated rejection and objection. MPEP
§ 2163.06(II). But that is not the case here. Instead, the Examiner's
objection to the amendment to the Specification differs materially from the
grounds articulated in the§ 112, second paragraph, rejection. (Compare
Final Act. 5 (new matter objection based on added reference to "log-in
monitoring") with Final Act. 6-7 (rejection for indefiniteness based on
insufficient disclosure of structure for "verifier" limitation).)
Because the Examiner's objection is a petitionable matter-not an
appealable matter-it is not before us. See MPEP § 2163 .06(II); see also
MPEP § 706.01 ("[T]he Board will not hear or decide issues pertaining to
objections and formal matters which are not properly before the Board.").
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DECISION
The Examiner's rejection of claims 58---65, 70, 71, 74, 76, 77, 82, and
84 under 35 U.S.C. § 112(2) as indefinite is affirmed.
The Examiner's rejection of claims 35--42, 47, 48, 51, 53, 54, 58-65,
70, 71, 74, 76, 77, and 81-84 as unpatentable under 35 U.S.C. § 103(a) 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)(l )(iv).
AFFIRMED
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