10135720 (B.P.A.I. May. 17, 2012)

Ex Parte Chan et al

Board of Patent Appeals and InterferencesMay 17, 2012

10135720 (B.P.A.I. May. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte WESLEY CHAN, RUTH ROSENBERG, VENKATESH GURURAJA RAO, GLENN CLIFFORD STEINER, JAMES E. PATTERSON, PHILIPPE DEBATY, SHANE KONSALLA, GRADY GORDON COOPER, MEGAN GREY TAYLOR, and STACI HARTMAN ____________________ Appeal 2010-002621 Application 10/135,720 Technology Center 3600 ____________________ Before: HUBERT C. LORIN, ANTON W. FETTING, and BIBHU R. MOHANTY, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-002621 Application 10/135,720 2 STATEMENT OF CASE Appellants seek our review under 35 U.S.C. § 134 (2002) from the Examiner’s final rejection of claims 1, 7, 10-32, and 36 which are all the claims pending. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF THE DECISION We REVERSE. THE CLAIMED INVENTION Appellants claim a service delivery systems and methods (Specification 1:7). Claim 1, with the numbering in brackets added below, is illustrative of the claimed subject matter: 1. A service delivery system, comprising: a set of portable physical tokens each comprising a respective token identifier; a network node comprising a database storing personal user profiles, wherein each of the user profiles is associated with a respective one of the token identifiers; [1] multiple terminals distributed about a selected locale, each terminal having a reader and an associated controller, wherein in response to each presentation of any of the tokens each of the readers is operable to read the respective token identifier from the presented token and the associated controller is operable to transmit over a respective network connection the read token identifier along with associated context data specifying one or more environmental circumstances attendant the presentation of the respective token to the reader; [2] and [2] a service manager operable to connect to each of the terminals and the database, wherein in response to receipt of a transmission of a respective one of the token identifiers along with the associated context data from a respective one of the terminals, the service manager invokes one or more services Appeal 2010-002621 Application 10/135,720 3 that retrieve from one or more remote sources data selected based at least in part upon the associated context data received with the transmission and stores the retrieved data in association with the personal user profile associated with the token identifier received with the transmission. THE REJECTIONS The prior art relied upon by the Examiner in rejecting the claims on appeal is: DiGiorgio US 6,385,729 B1 May 7, 2002 Matsubayashi US 2003/0093670 A1 May 15, 2003 Keeney US 6,748,471 Jun. 8, 2004 The following rejections are before us for review. 1. Claims 1, 7, and 10-32 are rejected under 35 U.S.C. 112, second paragraph, as indefinite. 2. Claims 1 and 36 are rejected under 35 U.S.C. 102(e) as anticipated by DiGiorgio. 3. Claim 7 is rejected under 35 U.S.C. 103(a) as unpatentable over DiGiorgio and Matsubayashi. 4. Claims 10-25 are rejected under 35 U.S.C. 103(a) as unpatentable over DiGiorgio and Keeney. 5. Claims 26-32 are rejected under 35 U.S.C. 103(a) as unpatentable over DiGiorgio, Keeney, and Matsubayashi. ISSUES With regard to the rejection made under 35 U.S.C. § 112, second paragraph, the issue turns on whether the phrases “operable to connect” and “operable to invoke” renders the claim indefinite. Appeal 2010-002621 Application 10/135,720 4 With regards to the rejection of claim 1 under 35 U.S.C. § 102(e) the issue turns on whether the cited portions of the DiGiorgio reference disclose claim limitation [1]. The remaining claims rejected under 35 U.S.C. § 102(e) and 35 U.S.C. § 103(a) turn on the same or a similar issue. FINDINGS OF FACT We find the following enumerated findings of fact (FF) are supported at least by a preponderance of the evidence1. Additional facts may appear in the Analysis section below. FF1. DiGiorgio discloses a method by which a user gains access to services provided by an ISP by employing a secure token device such as a smart card or an ibutton. (Col. 3:66-Col. 4:3). FF2. DiGiorgio at Figures 10 and 13, Col. 3:65-4:13, Col. 5:40-45, Col. 10:29-43, Col. 10:54-60, Col. 11:1-5, Col. 11:48-55, and Col. 12:1-20 does not disclose multiple terminals wherein in response to each presentation of tokens each of the terminal readers is operable to read a respective token identifier from the presented token and an associated controller is operable to transmit over a respective network connection the read token identifier along with associated context data specifying one or more environmental circumstances attendant the presentation of the respective token to the reader. 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2010-002621 Application 10/135,720 5 ANALYSIS Rejections under 35 U.S.C. 112, Second Paragraph The Examiner has determined that the phrase “operable to connect” is optional language in claim 1 and is indefinite. The Examiner has made a similar determination for the phrase “operable to invoke” in claim 7 as being indefinite. (Ans. 3, 11). The Appellants have argued that this rejection is improper (Br. 6-9). We agree with the Appellants. The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). One of ordinary skill in the art would understand what is being claimed by the cited phrases in light of the Specification by both the terms “operable to connect” and “operable to invoke” and the cited phrases do not render the claim indefinite. For these reasons this rejection of record is not sustained. Rejections under 35 U.S.C. 102(e) and 35 U.S.C. 103(a) Appellants argue DiGiorgio does not disclose elements of claim limitation [1] (Appeal Br. 12-15). In contrast, the Examiner argues DiGiorgio discloses the cited claim limitation at Figures 10 and 13, Col. 3:65-4:13, Col. 5:40-45, Col. 10:29-43, Col. 10:54-60, Col. 11:1-5, Col. 11:48-55, and Col. 12:1-20 (Ans. 4, 12-13). We agree with the Appellants. DiGiorgio at the portions cited by the Examiner does not disclose all the requirements of claim limitation [1] (FF2). DiGiorgio at Col. 5:40-45 does disclose the use of a card terminals, Appeal 2010-002621 Application 10/135,720 6 readers, and a secure token device. DiGiorgio at Col. 11:48-55 does show that the context of a session with an ISP may be restored for later restoration in a subsequent session and that user preferences regarding settings and various websites may be restored in the context. These citations to DiGiorgio do not however show that the claimed reader is “operable to transmit over a respective network connection the read token identifier along with associated context data specifying one or more environmental circumstances attendant the presentation of the respective token to the reader” as the claim requires. Support for this portion of claim limitation [1] is provided in the Specification at page 7:1-27. For this reason the rejection of claim 1 is not sustained. Claim 36 contains a similar limitation and the rejection of this claim is not sustained for the same above reasons. The Examiners rejection of record for the remaining dependent claims relies on the same cited portions of DiGiorgio discussed above for the cited claim limitation [1] and the rejection of these claims is not sustained for these same reasons. CONCLUSIONS OF LAW We conclude that the Appellant has shown the Examiner erred in rejecting the claims listed in the Rejection section above. DECISION For the above reasons, the Examiner’s rejection of claims 1, 7, 10-32, and 36 is REVERSED. Appeal 2010-002621 Application 10/135,720 7 REVERSED MP