Ex Parte Brandt

Board of Patent Appeals and Interferences

Aug 13, 2012

10729398 (B.P.A.I. Aug. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte WILLIAM M. BRANDT
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Appeal 2010-004521
Application 10/729,398
Technology Center 2400
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Before JOSEPH L. DIXON, CARL W. WHITEHEAD, JR. and
JAMES R. HUGHES, Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-004521
Application 10/729,398

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-20 are appealed. Appeal Brief 1. We have jurisdiction under 35
U.S.C. § 6(b) (2002).
We reverse.

Introduction
The invention is directed to “a method for preventing identity theft in
electronic communications.” Appeal Brief 3.

Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:
1. A method for preventing identity theft in electronic
communications, comprising the steps of:

sequencing an encryption key transaction from a trusted
service for generating for an individual a consumer identifier by
performing the steps of:

issuing from said trusted service a primary key to
the individual;

issuing to the individual a unique identifier from
said trusted service; and

permitting the individual to generate and maintain
a consumer-defined sequence through said trusted
service;

allowing the individual to control access to commercially
related use of said consumer identifier by third parties;
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generating a report for presentation to the individual
when at least one of the third parties requests access to
information related to the consumer identifier; and

allowing the individual to control which of the third
parties that requested access can access information related to
the individual.

Rejection on Appeal
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Engberg (U.S. Patent Application Publication Number
2003/0158960 A1; published August 21, 2003) and Nordman (U.S. Patent
Number 7,340,438 B2; issued March 4, 2008). Answer 3-9.

Issue on Appeal
Does Engberg or Nordman, either alone or in combination, disclose or
suggest,
allowing the individual to control access to commercially
related use of said consumer identifier by third parties;

generating a report for presentation to the individual
when at least one of the third parties requests access to
information related to the consumer identifier; and

allowing the individual to control which of the third
parties that requested access can access information related to
the individual

as recited in claim 1 (emphasis added)?

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ANALYSIS
Claims 1-20
Appellant argues that Nordman fails to disclose allowing the
individual to control access of a third party as well as failing to disclose
generating a report about third parties requests. Appeal Brief 6-7. Appellant
further argues that the passage of Nordman that the Examiner cites only
discloses a “request that is received is from the user to identify the same
user’s own information maintained at a receiving site.” Id. at 7 (emphasis
omitted). This is, in contrast, different from the claim limitations wherein
“at least one of the third parties requests access to information related to the
consumer identifier.” Id. (emphasis omitted). “In order words, the request
from the user for the user’s own information, as taught by Nordman, does
not constitute a request from a third party.” Id.
The Examiner concedes that “the request to [sic] information related
to the consumer identifier made by third parties is completely different from
the request to the generated report made by the consumer individual.”
Answer 12 (emphasis omitted).
Conversely, the Examiner finds:
However, the A]ppellant’s arguments and analysis
are failed [sic] to disclose which entity is generating the
report, and when does the generated report is [sic]
presented to the consumer individual. More importantly,
the A]ppellant generally allege in the repeated argument
and failed to distinguish the difference between the request
to information related to the consumer identifier made by
third parties and the request to the generated report made
by the consumer individual. The claim define and specify
that at least one of the third parties requests access to
information related to the consumer identifier. However,
the claim does not specify at least one of the third parties
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requests to generate the report nor request to present the
generated report to the consumer individual. In view of
the above points, the A]ppellant made repeated error
thought the argument s as recited above.
Answer 12-13.
Appellant argues that, “Claim 1 is specific in reciting that a report is
generated for presentation to the individual when at least one of the third
parties requests access to information related to the consumer identifier. The
entity generating the report, the condition of the report, or when the report is
generated is of little consequence to the claimed subject matter.” Reply
Brief 2 (emphasis omitted). Appellant further argues that the Examiner’s
“‘broad reasonable interpretation’ of the] claim language does not mean
that the Examiner is allowed to adopt any unreasonable interpretation.” Id.
at 3.
Such rewriting of the claim language is clearly erroneous.
Claim 1 unambiguously recites generating a report for
presentation to the individual when at least one of the third
parties requests access to information related to the consumer
identifier. Claim 1 does not recite generating a report for
presentation to the individual when the individual requests
access to information related to the consumer identifier.
Id. (emphasis omitted).
We find Appellant’s argument to be persuasive. While the Examiner
is allowed to reasonably interpret the claim broadly, the Examiner’s
interpretation is not reasonable in light of the express language recited in
claim 1 in relation to a “third party.” While disclosing user interaction, it is
also clear that Nordman does not generate reports from third parties such as
the ones recited in claim 1. Therefore, we do not sustain the Examiner’s
rejection of claim 1, nor do we sustain the Examiner’s rejection of
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independent claims 10 and 19 which contain limitations commensurate in
scope to claim 1, as well as, the dependent claims that depend therefrom.

DECISION
The rejections of claims 1-20 are reversed.

REVERSED

llw