Ex Parte Chandrashekhar et al

Patent Trial and Appeal Board

Aug 8, 2016

10155768 (P.T.A.B. Aug. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/155,768 0512412002
46363 7590 08/10/2016
Tong, Rea, Bentley & Kim, LLC
ALCATEL-LUCENT USA INC.
12 Christopher Way
Suite 105
Eatontown, NJ 07724
FIRST NAMED INVENTOR
U ma Chandrashekhar
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.
Chandrashekhar 3-3-3-2 (L 2928
EXAMINER
BAIRD, EDWARD J
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
08/10/2016 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@trbklaw.com
ipsnarocp@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte UMA CHANDRASHEKHAR, STEVEN H. RICHMAN, S. RAO
V ASIREDDY, and CHEN XIE
Appeal2013-002304
Application 10/155,7681
Technology Center 3600
Before, MURRIEL, E. CRAWFORD, ANTON W. PETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 21 and 23-39. We have jurisdiction under 35 U.S.C.
§ 6(b ).
SUMMARY OF DECISION
We AFFIRM.
1 Appellants identify Alcatel-Lucentas the real party in interest. Br. 1.
Appeal2013-002304
Application 10/155,768
Claim 21 reproduced below, is representative of the subject matter on
appeal.
21. (Previously Presented) A method for controlling acquisition of services
and for customizing the acquired services, comprising: receiving, by a
processor, an application request (AR) for at least one service selected from
a plurality of available services, the AR comprising customization features
associated with respective end user's profile, said customization features
being provided in a two tier object oriented format, and determined by one
or more selected application and service provider (ASP) wherein a first tier
of the two tier object oriented format comprises mandatory attributes;
determining a compatibility of said application request including
determining a compatibility of customer premises equipment (CPE) with
said available services; configuring end user's (EU) system for available
services activation; and
providing information indicative of the selected services, EU system
configuration and selected ASP.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Lichtman
Rigo le
Aquila
us 5,787,246
US 2001/0049632 Al
US 2002/0035488 Al
July 28, 1998
Dec. 6, 2001
March 21, 2002
The following rejections are before us for review.
Claims 21and23-29 are rejected under 35 U.S.C. § 101.
Claims 21-39 are rejected under 35 U.S.C. § 112 2nd paragraph.
Claims 21and23-39 are rejected under 35 U.S.C. 103(a) over Rigole,
Lichtman, and Aquila.
2
Appeal2013-002304
Application 10/155,768
FINDINGS OF FACT
1. We adopt the Examiner's findings as set forth on pages 7-11 of the
Final Action to only the obviousness rejection.
2. The Specification describes a two tier object oriented format as:
In an exemplary embodiment, customization
features may be provided in a two tier object
oriented format, wherein the first tier comprises
mandatory attributes and the second tier comprises
optional attributes within each mandatory attribute,
as shown in Figure 6. Exemplary mandatory
attributes are shown in row 80 and associated
optional attributes shown in row 82. At least one
optional attribute must be selected for each
mandatory attribute. For the mandatory attribute of
authentication, an EU may select options
pertaining to the privilege level and authentication
method, or combination thereof. Para. 34.
3. Rigole discloses,
The IPCS website may be organized by service
sector, such as long distance telephone or utilities.
Once the consumer selects the desired service
sector, a listing of service providers for that
particular category is provided. At this point, the
consumer can use a criteria feature to list the
services in order of preference based upon one or
more selected characteristics, such as price or
service level. The consumer can then select a
particular service provider and review the pertinent
service information. And once the consumer
decides on a particular service and provider, an
online enrollment process provides data fields for
the consumer to input their identifying
information.
Para 22.
4. Aquila discloses:
3
Appeal2013-002304
Application 10/155,768
The user authentication sub-system 215
provides security control to the system 30. The
user authentication sub-system 215 requires a user
to provide a valid user id and password
combination. For new users, the user
authentication sub-system 215 registers the user,
determines the user's level of access according to
insurance carrier business rules (e.g., security
tables), then stores the user authentication profile
information (user id, password, level of access) on
data layer 219. In another embodiment, user
authentication information is stored on the external
partner systems 62. Subsequently, each user who
wishes to access the system must first be
authenticated by the user authentication subsystem
215, which then determines what functional
subsystems of the system 30 the user is authorized
to access and utilize, what data stored in the data
layer 219 the user is authorized to access and to
what degree the user can edit or add to that data.
Para. 98.
5. Aquila discloses
Application layer 213 comprises several sub-
systems including application software programs
for performing various functions within an
application server 50. In one embodiment, the
application layer 213 includes user authentication
sub-system 215, EAI 217, Deskview sub-system
200, first notice of loss sub-system (FNOL) 210,
triage sub-system 220, assignment sub-system 230,
audit subsystem 240, automated payment sub-
system 250, CSI collection sub-system 260 (CSI),
reports sub-system 270.
Para. 97
4
Appeal2013-002304
Application 10/155,768
ANALYSIS
35 U.S.C. § 112 2ND PARAGRAPH REJECTION
We will reverse the rejection of claims 21, and 23-38 under 35 U.S.C.
§ 112 second paragraph because we do not agree with the Examiner that,
"the term 'the AR comprising customization features' is vague and
indefinite in that it is not clear whether the 'application request' has
customization features, or the 'at least one service' has customization
features." (Answer 4--5.) This is because the claim on its face states "the
AR comprising customization features." Concerning the Examiner's
rejection of claims 31, 34, and 38, we do not sustain these rejections because
the Examiner's concerns are a matter of claim breadth, not indefiniteness.
"Breadth is not indefiniteness." In re Gardner, 427 F.2d 786, 788 (1970).
We sustain the rejection of claim 39 because we do not find any
antecedent basis in the term "said customer premise equipment" in either
claims 39 or 36.
35 U.S.C. § 103 REJECTION
The Appellants argue independent claim 21 (Appeal Br. 11-25), and
rely on the same arguments to establish error in the rejection of independent
claims 30 and 36 (Appeal Br. 25). Thus, independent claims 30 and 36 rise
and fall with independent claim 1.
Concerning the claim limitation of, said customization features being
provided in a two tier object oriented format, and determined by one or
more selected application and service provider (ASP) wherein a first tier of
the two tier object oriented format comprises mandatory attributes; ... , the
Examiner found;
5
Appeal2013-002304
Application 10/155,768
Aquila describes a user authentication sub-system
which provides security control to the system -
[0097] and [0098]. The user authentication sub-
system requires a user to provide a valid user id
and password combination. For new users, the user
authentication sub-system registers the user,
determines the user's level of access according to
insurance carrier business rules (e.g., security
tables), then stores the user authentication profile
information (user id, password, level of access) on
data layer [Id.]. Examiner interprets valid user id
and password combination as indicative of
Applicant's mandatory attributes in as much as the
user authentication sub-system requires (emphasis
added) a valid user id and password. (Final Act. 3,
emphasis omitted).
Appellants argue,
As can be seen, there is no mention of "first tier of
the two object oriented format" in the disclosed
text as the Examiner seems to suggest. The prior
art element performs a different function as that
specified in the claim and produces different
results as the corresponding element. For example,
the prior art's valid user id and password does not
"correspond to the first tier of the two tier object
oriented format" as claimed because the prior art's
arrangement makes no reference to an object
oriented fonnat. Therefore, the test for
"equivalence" is not satisfied since the first
indicium does not support the conclusion that a
claimed element is an equivalent.
(App. Br. 13).
We agree with the Examiner. Here the Examiner finds that:
... Aquila teaches a centralized system and
methods of administering, tracking and managing
insurance claims processing [0017]. He discloses
logical components using an Object Oriented and
multi-tier approach [0089] and [Figure 2]. He
6
Appeal2013-002304
Application 10/155,768
discloses various layers including an application
layer - [0093], and data layer - [0094] - and
[Figure 2]. Examiner interprets application layer
and data layer as indicative of Applicant's two tier
object oriented format.
(Ans. 8, emphasis omitted).
Thus, under the Examiner's reasoning, either the application layer or the
data layer can be the first tier. Aquila in paragraph 98 explicitly discloses
that "user id, password, level of access" data are all stored on the data layer
219. The
Examiner interprets valid user id and password
combination as indicative of Applicant's
mandatory attributes in as much as the user
authentication sub-system requires (emphasis
added) a valid user id and password.
(Final Act. 3, emphasis omitted). Thus, we agree with the Examiner's
finding that the data layer 219 in Aquila corresponds to the claimed first tier
leaving the application layer as the second tier. This is because in Aquila
both the id and password are stored in the data layer tier, which data layer
the Examiner finds to be the first tier of a two tier format.
Appellants allege that the term "mandatory attributes" is defined in
the Specification, citing to paragraph 34 of the Specification. (Appeal Br.
16.) But, paragraph 34 of the Specification describes only by way of
example, "Exemplary mandatory attributes". Fig. 6 of the Specification is
also only described as "an exemplary embodiment of the invention."
(Specification 3:i-fl3) Thus, we find that Appellants' Specification does not
specifically define the term "mandatory", nor does it utilize the term
contrary to its customary meaning. The ordinary and customary definition
7
Appeal2013-002304
Application 10/155,768
of mandatory is "required by a law or rule."2 As found supra, the attributes,
user id, password, level of access, are stored in in memory by rule to their
respective required fields in memory, and thus meet the definition of
mandatory. In other words, because Aquila discloses that "the user
authentication profile information (user id, password, level of access)" data
is stored in data layer 219 (FF. 4 ), we find that such authentication profile
information/attributes are mandatory to their respective required fields in
memory.
Appellants also argue that, "apparently the phrases: 'determined by
one or more selected application and service provider (ASP)' and 'wherein a
first tier of the two tier object oriented format comprises mandatory
attributes' were not accorded any patentable weight within the context of the
claims. " (Appeal Br. 17, emphasis omitted).
We disagree with Appellants. The Examiner found Rigo le at
paragraph 22 discloses that the two tiered requirement is determined by one
or more selected application and service provider (ASP). (Final Act. 8).
Also, as found supra, "Examiner interprets valid user id and password
combination [of Aquila] as indicative of Applicant's mandatory attributes in
as much as the user authentication sub-system requires (emphasis added) a
valid user id and password. (Final Act. 3, emphasis omitted).
We further disagree with the Appellants that the Examiner "failed to
properly establish 'any differences between the claimed subject matter and
the prior art.'" (Appeal Br. 20). We find that throughout pages 8-11 of the
Final Office Action, the Examiner made findings for example, of what
Rigole discloses (see Final Act. pages 7-8 ), and what it does not disclose
2 http://www.merriam-webster.com/dictionary/mandatory (last visited
8/2/2016).
8
Appeal2013-002304
Application 10/155,768
(see Final Act. Page 8), and how Lichtman discloses what is found to be
missing in Rigo le (Id.).
Appellants further argue,
Importantly, Rigole was conceived (filed) in 1999
designed to operate with a specific underlying
technology, e.g., 1999 processor capability
whereas Lichtman was conceived (filed) five (5)
years earlier, i.e., 1994. With capabilities of
electronic devices doubling approximately every
two years, it is doubtful that a piece of software
designed in 1999 could be executed on a processor
built in 1994 with the exact same results as if the
same piece of software were executed on a
processor built in 1999. As stated above, issues
such as binary compatibility and all sorts of other
compatibility issues arise. It may be argued that
most software is binary compatible.
(Appeal Br. 22, footnote omitted).
Appellants' argument is not persuasive because it seeks an
explanation of how the processor of Lichtman would be bodily incorporated
into the system disclosed by Rigole, which is not the test for obviousness.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
We further are not persuaded that the "Examiner has failed to provide
a motivation to combine Rigole-Lichtman and Aquila that has some rational
underpinning to support the legal conclusion of obviousness" (Appeal Br.
23-24), because the Examiner has provided such articulated reasoning as set
forth in the record (Final Act. 3--4, 8-11 and Answer 13-21) which we adopt
as our own. To the extent Appellants seek an explicit suggestion or
motivation in the reference itself, this is no longer the law in view of the
Supreme Court's holding in KSR Int'! Co. v. Teleflex Inc., 127 S. Ct. 1727,
1741 (2007). As found supra, the Examiner has provided some articulated
9
Appeal2013-002304
Application 10/155,768
reasoning with some rational underpinning for why a person with ordinary
skill in the art would modify the authentication subsystem in Aquila with
Rigo le and Lichtman. Thus, Appellants' argument is not persuasive as to
error in the rejection.
We also affirm the rejections of dependent claims 23-29, 31-35, 37-
39 since Appellants have not challenged such with any reasonable
specificity (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)).
35 U.S.C. § 101 REJECTION
We do not reach a decision on the 35 U.S.C. § 101 rejection because
our decision on the 35 U.S.C. § 103(a) rejection is dispositive.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claim 39 under 35
U.S.C. § 112 second paragraph, but did err in rejecting claims 21, and 23-38
under the same section.
We conclude the Examiner did not err in rejecting claims 21 and 23-
39 under 35 U.S.C. § 103.
We do not reach a decision to the 35 U.S.C. § 101 rejection of claims
21, 23-39.
DECISION
The decision of the Examiner to reject claims 21 and 23-39 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
10