Ex Parte Lagosanto et al

Patent Trial and Appeal Board

Mar 28, 2014

10485469 (P.T.A.B. Mar. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LAURENT LAGOSANTO and
JEAN-JACQUES VANDEWALLE
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Appeal 2011-011757
Application 10/485,469
Technology Center 2400
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Before JAMES R. HUGHES, MICHAEL J. STRAUSS, and
J. JOHN LEE, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Non-Final decision rejecting claims 1-7 and 9-13, which are all
the claims remaining in the application. Claims 8 and 14 have been
canceled. (App. Br. 2.)1 We have jurisdiction under 35 U.S.C. § 6(b). An
Oral Hearing was held on February 25, 2014.
We reverse.
Appellants’ Invention
The invention at issue on appeal concerns systems and methods for
establishing a communication channel between a client application
executing on a client machine and a service application executing on a
communicating device dependent on a terminal. (Spec. 1:5-13; 21:12-23:30;
Abstract.)
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A system establishing a communication channel
via a connection between a client application executing on a
client machine and a service application executing on a
communicating device dependent on a terminal, comprising:
a representative of the service application installed in the
client machine;

1 We refer to Appellants’ Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed July 19, 201March 21, 2011; and Reply Brief (“Reply Br.”) filed July
11, 2011. We also refer to the Examiner’s Answer (“Ans.”) mailed May 26,
2011.
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a formatting module situated at the client machine,
downstream of said representative, for formatting messages of
the client application in a form that can be read by the service
application; and
a gateway situated at the terminal for taking delivery of
said messages that can be read by the communicating device
and transmitting said messages to the service application.
Rejections on Appeal
1. The Examiner rejects claims 1-7 and 9-13 under 35 U.S.C.
§ 102(e) as being anticipated by U.S. Patent No. 6,839,756 B1, issued Jan. 4,
2005 (filed Feb. 17, 2000) (“Boudou”).
2. The Examiner rejects claims 1-7 and 9-13 under 35 U.S.C.
§ 102(e) as being anticipated by U.S. Patent No. 7,191,234 B2, issued Mar.
13, 2007 (filed Oct. 15, 2001, claiming priority to S/N 60/239,890, filed on
Oct. 13, 2000) (“Farrugia”).
3. The Examiner rejects claims 1-7 and 9-13 under 35 U.S.C.
§ 102(e) as being anticipated by U.S. Patent No. 6,944,650 B1, issued Sept.
13, 2005 (PCT App. filed Mar. 15, 2000) (“Urien”)2.
4. The Examiner rejects claims 1-7 and 9-13 on the grounds of
obviousness-type double patenting over U.S. Patent No. 7,003,663 B2,
issued Feb. 21, 2006 (filed Dec. 22, 2000) (“Lagosanto”).

2 The Examiner cites foreign priority application WO 00/56030 for the
rejection but actually relies on USP 6,944,650. (Ans. 21.) Thus, we
understand the ground of rejection to be anticipation by USP 6,944,650
under § 102(e).
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ISSUE
Based upon our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issues
before us follow:
1. Does the Examiner err in finding that (1) Boudou, (2) Farrugia,
and (3) Urien disclose:
a representative of the service application installed in the
client machine;
a formatting module situated at the client machine,
downstream of said representative, for formatting messages of
the client application in a form that can be read by the service
application; and
a gateway situated at the terminal for taking delivery of
said messages that can be read by the communicating device
and transmitting said messages to the service application
within the meaning of Appellants’ claim 1 and the commensurate limitations
of claim 9?
2. Does the Examiner err in concluding that the claims of
Lagosanto teach the disputed limitations of Appellants’ claim 1 and the
commensurate limitations of claim 9?

ANALYSIS
Anticipation by Boudou
We agree with Appellants that the portions of Boudou identified by
the Examiner do not disclose the disputed features of claim 1. Specifically,
we agree with Appellants that Boudou does not disclose the recited
“representative of the service application” and “formatting module.” (App.
Br. 5-8; Reply Br. 4-5.)
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In particular, the Examiner does not clearly map the elements of
Boudou to the corresponding elements of Appellants’ claim and does not
clearly explain how Boudou’s elements perform the recited functionality.
(Ans. 3-7, 41-46 (citing Boudou, col. 3, ll. 23-col. 4, l. 64).) The Examiner
seems to equate Boudou’s “script translators” and “intelligent agents” with
the recited “representative of the service application” and “formatting
module.” (Ans. 3-7, 41-46.) We note, however, that Boudou’s script
translators are located on the communication device or smart card, not the
client. (See Boudou, col. 12, l. 5-col. 13, l. 25; Abstract; Figs. 5A-5C).
Further, the intelligent agents format and convert client application
commands at both the client/terminal and the smart card. (See Boudou, col.
7, l. 28-col. 8, l. 42; col. 9, l. 65-col. 10, l. 29; col. 12, l. 5-col. 13, l. 25;
Abstract; Fig. 4.) Thus, rather than describe the recited “representative of
the service application” which allows the “formatting module” to
“formatting messages of the client application in a form that can be read by
the service application,” as recited in claim 1, Boudou’s intelligent agents
format and convert the client application commands into Application
Protocol Data Units (APDUs) and communicate these to the corresponding
agent on the card. (See col. 12, l. 5-col. 1, l. 25; Abstract.) Accordingly, we
find that Boudou fails to disclose the recited features of Appellants’ claim 1.
Consequently, we are constrained by the record before us to conclude
that Boudou does not anticipate the recited features of claim 1. Independent
claim 9 includes limitations of commensurate scope. Dependent claims 2-7
and 10-13 depend on and stand with their respective base claims.
Accordingly, we reverse the rejection of claims 1-7 and 9-13 under 35
U.S.C. § 102(e) as being anticipated by Boudou.
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Anticipation by Farrugia
We also agree with Appellants that the portions of Farrugia identified
by the Examiner do not disclose the disputed features of claim 1.
Specifically, we agree with Appellants that Farrugia does not disclose the
recited “representative of the service application” and “formatting module.”
(App. Br. 11-13; Reply Br. 8-10.)
In particular, as with the Boudou rejection (supra), the Examiner does
not clearly map the elements of Farrugia to the corresponding elements of
Appellants’ claim and does not clearly explain how Farrugia’s elements
perform the recited functionality. (Ans. 14-15, 49-57 (citing Farrugia, col. 3,
ll. 23-col. 4, l. 64).) The Examiner essentially reiterates the explanation
utilized with respect to the Boudou rejection (supra), asserting that the
recited portion describes, inter alia, a client-side applet, servlets, and using
Java (Ans. 14-15, 49-57), as well as “card applet representative software for
the applet of the smart card, Java, at the client device support the smart card
transaction . . . ”—which we interpret to mean Java software. (Ans. 14.)
Farrugia does not explicitly disclose the elements cited by the Examiner,
with the exception of an applet. Farrugia does mention a “client applet”
(col. 4, ll. 22)—this applet, however, is resident in the smart card, not the
client/terminal (e.g., the user device (22)). (See Farrugia, col. 4, ll. 21-26.)
While the disclosure of the applet infers utilizing Java software, the cited
portion of Farrugia does not mention, much less describe in any detail, using
Java, servlets, or any other representative software (representative of the
applet on the smart card). It is unclear how the Examiner has mapped the
cited elements of Farrugia to the recited features of Appellants’ claim 1, or
how these elements perform the functionality recited in Appellants’ claim 1.
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Consequently, we are constrained by the record before us to conclude
that Farrugia does not anticipate the recited features of claim 1. Independent
claim 9 includes limitations of commensurate scope. Dependent claims 2-7
and 10-13 depend on and stand with their respective base claims.
Accordingly, we reverse the rejection of claims 1-7 and 9-13 under 35
U.S.C. § 102(e) as being anticipated Farrugia.
Anticipation by Urien
We also agree with Appellants that the portions of Urien identified by
the Examiner do not disclose the disputed features of claim 1. Specifically,
we agree with Appellants that Urien does not disclose the recited
“representative of the service application” and “formatting module.” (App.
Br. 16-18; Reply Br. 13-15.)
As with the Boudou and Farrugia rejections (supra), the Examiner
does not clearly map the elements of Urien to the corresponding elements of
Appellants’ claim and does not clearly explain how Urien’s elements
perform the recited functionality. (Ans. 21-23, 57-63 (citing Urien, col. 3, ll.
23-col. 4, l. 64).) Here, the Examiner again reiterates the explanation
utilized with respect to the Boudou rejection (supra). The disclosures of
Boudou (supra) and Urien are very similar, and much of the portion of Urien
cited by the Examiner is identical to the cited portion of Boudou.
Accordingly, we find that Urien fails to disclose the recited features of
Appellants’ claim 1 for the same reasons as Boudou (supra). Consequently,
we are constrained by the record before us to conclude that Urien does not
anticipate the recited features of claim 1. Independent claim 9 includes
limitations of commensurate scope. Dependent claims 2-7 and 10-13
depend on and stand with their respective base claims. Accordingly, we
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reverse the rejection of claims 1-7 and 9-13 under 35 U.S.C. § 102(e) as
being anticipated by Urien.
Obviousness-Type Double Patenting Rejection of Claims 1-7 & 9-13
We also agree with Appellants that the Examiner’s obviousness-type
double patenting rejection of claims 1-7 and 9-13 over the claims of
Lagosanto (Ans. 29-41; 69-81) does not render the claims obvious with
respect to the corresponding claims discussed in the rejection (App. Br. 21;
Reply Br. 18-21). For example, with respect to Appellants’ claim 1, the
Examiner’s citations simply highlight various terms or phrases in
Appellants’ claim 1 and asserts they correspond to various highlighted terms
and phrases in Lagosanto’s claims 6 and 22. (Ans. 30-33; 70-73.) The
Examiner, however, fails to provide a clear correspondence (map) between
the elements of Lagosanto’s claims and the corresponding elements of
Appellants’ claim and does not clearly explain how Lagosanto’s elements
teach the elements or their recited functionality. Even if we were to
speculate as to the correspondence, Appellants provided a detailed,
persuasive argument why the claims of Lagosanto do not render their
corresponding claims obvious. (Reply Br. 18-21.) In contrast, the Examiner
provides insufficient explanation in support of the rejection. (Ans. 30-33;
70-73.) Consequently, we are constrained by the record before us to
conclude that a preponderance of the evidence demonstrates that the claims
of Lagosanto do not render Appellants’ corresponding claims obvious.
Accordingly, we reverse the Examiner’s obviousness-type double patenting
rejection of claims 1-7 and 9-13.

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CONCLUSION
Appellants have shown that the Examiner erred in rejecting claims
1-7 and 9-13 under 35 U.S.C. § 102(e).
Appellants have shown that the Examiner erred in rejecting claims
1-7 and 9-13 on the grounds obviousness-type double patenting.

DECISION
We reverse the Examiner’s rejection of claims 1-7 and 9-13.

REVERSED

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