Ex Parte Saylor et al

Patent Trial and Appeal Board

Jun 28, 2018

13754115 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/754, 115 01/30/2013 David Lee SAYLOR
27975 7590 07/02/2018
ADD&G - 27975
1401 CITRUS CENTER 255 SOUTH ORANGE A VENUE
P.O. BOX 3791
ORLANDO, FL 32802-3791
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.
60837 9784
EXAMINER
TALUKDAR, ARVIND
ART UNIT PAPER NUMBER
2132
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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):
creganoa@allendyer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID LEE SAYLOR and
SHAWN PAGE FITZGERALD 1
Appeal 2017-011813
Application 13/7 54, 115
Technology Center 2100
Before MICHAEL J. STRAUSS, AMBER L. HAGY, and
SHARON PENICK, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is Carolina Promotions
Services, Inc. See App. Br. 1.
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Application 13/7 54, 115
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 2, 4, 6, 8-17, 20, 22-27, 31, 34--40, and42--47. Claim 3, 5, 7, 18, 19, 21,
28-30, 32, 33, and 41 are canceled. App. Br. 24--35 (Claims App'x.). We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm. 2
THE INVENTION
The claims are directed to generating universally unique identifiers
("UUIDs"). Claim 1, reproduced below with disputed limitations
emphasized in italics, is exemplary of the claimed subject matter:
1. A method of generating a plurality of universally unique
identifiers ("UUIDs") each of the plurality ofUUIDs comprising
a plurality of bits arranged in order from a most significant bit to
a least significant bit, and for each of the plurality ofUUIDs, the
method comprises:
generating, via a computer processor, a time value,
wherein the time value represents a current time of a computer
associated with the computer processor;
setting, via the computer processor, a plurality of the more
significant bits of the UUID to the time value;
setting, via the computer processor, a plurality of the less
significant bits of the UUID to a random number;
generating, via the computer processor, a metadata value
for the UUID, the metadata value identifying a format of the
UUID and comprising a version number corresponding to a
given one of a plurality of different random number generating
algorithms for the random number, the random number being set
based upon the given one of the plurality of random number
generating algorithms;
2 We refer to the Specification, filed Jan. 30, 2013 ("Spec."); the Final
Office Action, mailed Dec. 9, 2016 ("Final Act."); Appeal Brief, filed
Apr. 12, 2017 ("App. Br."); the Examiner's Answer, mailed Aug. 11, 2017
("Ans."); and the Reply Brief, filed Sept. 26, 2017 ("Reply Br.").
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Application 13/7 54, 115
setting bits of the UUID that are between the more
significant bits and the less significant bits to the metadata value;
and
storing, via the computer processor, the UUID in a
memory.
REFERENCES
The following prior art is relied upon by the Examiner in rejecting the
claims on appeal:
Shakib us 5,812,793 Sept. 22, 1998
Levi us 6,041,345 Mar. 21, 2000
Geer US 2004/0187015 Al Sept. 23, 2004
Oliveira US 2006/0184790 Al Aug. 17, 2006
Kyojima US 7,225,165 Bl May 29, 2007
Waldo US 2007 /0226758 Al Sept. 27, 2007
Baldonado US 7,860,918 Bl Dec. 28, 2010
Hito US 2011/0219427 Al Sept. 8, 2011
Pogmore US 2013/0086393 Al Apr. 4, 2013
Lawson US 2013/0212420 Al Aug. 15,2013
Yang US 2013/0254623 Al Sept. 26, 2013
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REJECTIONS 3
The Examiner made the following rejections:
Claims 1, 2, 4, 6, 7,4 9, 27, 34, 36, and 37 stand rejected under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over the combination of Geer,
Yang, and Pogmore. Final Act. 6-13.
Claims 8, 17, 20, 21, 22, 23, 31, 35, 40, 41, and 42 stand rejected
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the
combination of Geer, Yang, Pogmore, and Hito. Final Act. 13-26.
Claims 10, 11, 12, and 14 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Geer, Yang,
Pogmore, and Baldonado. Final Act. 26-29.
Claim 13 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over the combination of Geer, Yang, Pogmore, Baldonado, and
Oliveira. Final Act. 29-30.
Claims 15 and 16 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over the combination of Geer, Yang, Pogmore,
Baldonado, and Lawson. Final Act. 30-31.
3 Appellants argue, as a group, the rejection of claims 1, 2, 4, 6, 9, 27, 34,
36, and 37 under 35 U.S.C. § 103(a). App. Br. 11-17. Appellants argue the
rejection of claims 8, 17, 20-23, 31, 35, and 40-42 under 35 U.S.C. § 103(a)
for the same reasons presented for claims 1, 27, 34, and 36. App. Br. 17-18.
Appellants argue the rejection of the remaining claims under 35 U.S.C.
§ 103(a) for the same reasons presented for claims 1, 17, and 35. App. Br.
18-22. Based on Appellants' arguments, we decide the appeal of claims 1,
2, 4, 6, 8-17, 20, 22-27, 31, 34--40, and42--47 based on claim 1 alone. See
37 C.F.R. § 4I.37(c)(l)(iv) (2012).
4 We note Appellants cancelled claim 7 (App. Br. 25, Claims App'x.); its
inclusion in the Examiner's statement of the rejection is harmless error.
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Claims 24--26 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over the combination of Geer, Yang, Pogmore, Hito,
Waldo, and Baldonado. Final Act. 31-34.
Claims 38 and 39 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over the combination of Geer, Yang, Pogmore, and
Lawson. Final Act. 34--35.
Claims 43 and 45 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over the combination of Geer, Yang, Pogmore, and Levi.
Final Act. 36-37.
Claim 44 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over the combination of Geer, Yang, Pogmore, and Shakib.
Final Act. 37-38.
Claim 46 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over the combination of Geer, Yang, Pogmore, and Kyojima.
Final Act. 38-39.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments the Examiner has erred. 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. 2-
39); and (2) the reasons set forth by the Examiner in the Examiner's Answer
in response to Appellants' Appeal Brief (Ans. 5-14). We concur with the
conclusions reached by the Examiner, and we highlight the following points
for emphasis.
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"Random Number"
Appellants contend the Examiner erred in rejecting independent claim
1 because Yang's encryption does not generate the recited "random
number." App. Br. 11, 15-16; Reply Br. 2--4.
Appellants' contention is unpersuasive because Appellants' argument
directed to Yang fails to address the Examiner's findings that Geer's
UUID's random number field (Geer Fig. 1: 110) teaches the disputed
random number. Final Act. 7; Ans. 6. The Examiner relies upon the
combination of Geer and Yang for teaching "a plurality of different random
number algorithms for generating the random number," as claimed. Final
Act. 7-8. It is well established that one cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references. See In re Keller, 642 F.2d 413,426 (CCPA
1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The Examiner finds Geer's universally unique identifier (UUID)
generator (Geer Figs. 1, 4) generates a UUID with a field for a random
number (Final Act. 7, citing Geer Fig. 4: 438 and ,r 39, explaining the step
for providing a random number to random number field 110 of the UUID;
see esp. Geer Fig. 1: random number 110 ofUUID 100). The Examiner also
finds Yang's data processing system generates a number (e.g., as applied by
the Examiner, Geer's random number) according to a plurality of selectable
encryption algorithm circuits (see Yang Fig. 3a: 342, 344, 346 as related to
,r,r 9 and 40, which explain that the encoder circuits may be encryption
circuits). The Examiner finds the combination of Geer and Yang teach a
plurality of different algorithms for generating a random number. Final Act.
7-8; Ans. 6-9.
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We are additionally unpersuaded by Appellants' contention that
encryption algorithms produce known output (Reply Br. 3--4) such that
Yang's encryption does not generate a random number. Instead, for the
reasons explained below, we agree with the Examiner (Final Act. 3--4; Ans.
8-9) that Yang's encryption output would be unrecognizable, or appear
random or approximate properties of a random number, to a recipient
without the decryption key and, as such, teaches or suggests the disputed
random number.
In particular, when construing claim terminology (such as "random
number") during prosecution before the Office, claims are to be given their
broadest reasonable interpretation consistent with the specification, reading
claim language in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). "Construing claims broadly during prosecution is not
unfair to the applicant ... because the applicant has the opportunity to
amend the claims to obtain more precise claim coverage." Id.
The Examiner finds Appellants' Specification discloses a random
number is "a sequence of numbers or symbols that lack any pattern, i.e.
appear random." Final Act. 3; Ans. 7; see Spec. p. 5, 11. 12-13 (emphasis
added). The Examiner also finds Appellants' Specification discloses the
random number generator may be a pseudorandom number generator
algorithm, and that the pseudo random number generator is not only
deterministic, but is also "an algorithm generating a sequence of numbers
that approximates the properties of random numbers." Final Act. 3; Ans. 7;
see Spec. p. 5, 11. 13-17. The Examiner further finds Appellants' disclosed
random number is not truly random, referring to the Microsoft Computer
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Dictionary (see Final Act. 3--4; Ans. 8), which explains, "True random
number generation is generally viewed as impossible." Final Act. 3; Ans. 8
( citing MICROSOFT COMPUTER DICTIONARY 551 ( 5th ed. 2002) ). In other
words, Appellants' "random number" is not truly random because it is
generated by a deterministic, pseudorandom number generating algorithm,
wherein the generated number lacks pattern, appears random, or
approximates the properties of random numbers. We, therefore, agree with
the Examiner's interpretation that a "random number generator," consistent
with Appellants' Specification, includes a pseudorandom number generator
using a deterministic algorithm to generate numbers that lack any pattern,
appear random, or otherwise approximate the properties of being random.
Although Appellants proffer additional definitions of "random" and
"random number" (App. Br. 15), the fact that Appellants can point to other
definitions does not make the Examiner's definition unreasonable when the
Examiner can point to other sources that support the Examiner's
interpretation. See In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). This
is especially true where, as here, the Examiner cites Appellants'
Specification in support of the Examiner's broad interpretation. See
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)
("[T]he specification is always highly relevant to the claim construction
analysis. Usually, it is dispositive; it is the single best guide to the meaning
of a disputed term.") (emphasis added).
Addressing the prior art, the Examiner finds Yang's selectable
encryption circuits (Yang Fig. 3a: encoder circuit 340 with respect to ,r 9,
explaining the encoders may be encryption circuits) disclose a plurality of
different number generating algorithms. Final Act. 8. The term
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"encryption" means "[t]o encode (scramble) information in such a way that
it is unreadable to all but those individuals possessing the key to the code."
Final Act. 3; Ans. 8; MICROSOFT COMPUTER DICTIONARY 243 (5th ed. 2002).
Based on this definition of encryption, and in view of Appellants'
Specification's explanation of "random number" (Spec. p. 5, 11. 12-17), the
Examiner finds that Yang's encryption (Yang Fig. 3a: 340 with respect to
,r 9) is equivalent to generation of a random number because encryption uses
a deterministic algorithm to generate a number that is unreadable to those
without the decryption key, and thereby the generated number appears
random or approximates the properties of a random number to those without
the decryption key. Final Act. 3--4, 8; Ans. 8-9. We, therefore, additionally
disagree with Appellants' contention of error because of Appellants' failure
to provide sufficient evidence or persuasive argument that Yang's
encryption circuits do not generate a number appearing random, or
approximating properties of random numbers.
Rationale for Combining References
Appellants contend the Examiner's rationale for combining the
teachings of the prior art is not based upon reasons taught by the prior art or
sufficient technical rationale articulated by the Examiner such that the
Examiner's rationale is conclusory. App. Br. 16. The Examiner answers by
citing to the Manual of Patent Examining Procedure, section 2144(!), which
states the rationale to combine prior art need not be expressly stated in the
prior art, but may be reasoned from knowledge generally available to
persons skilled in the art. Ans. 10.
Appellants' contention is unpersuasive of Examiner error. The
Federal Circuit has "[held] that while an analysis of obviousness always
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depends on evidence that supports the required Graham factual findings, it
also may include recourse to logic, judgment, and common sense available
to the person of ordinary skill that do not necessarily require explication in
any reference or expert opinion." Perfect Web Techs., Inc. v. Info USA, Inc.,
587 F.3d 1324, 1329 (Fed. Cir. 2009); see also Nat'! Steel Car, Ltd. v.
Canadian Pacific Ry., Ltd., 357 F.3d 1319, 1337 (Fed. Cir. 2004) ("It has
long been the law that the motivation to combine need not be found in prior
art references, but equally can be found 'in the knowledge generally
available to one of ordinary skill in the art."' (quoting In re Jones, 958 F.2d
347, 351 (Fed. Cir. 1992))). The Court further instructs that
[ w ]hen there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
The Examiner finds the rationale for combining teachings from Geer
and Yang is to improve security in identifying or locating data. Final Act. 8;
Ans. 10-11. The Examiner also finds the reason for combining the
teachings of Pogmore, Geer, and Yang is to improve formatting data
structures for a UUID. Final Act. 9; Ans. 11. We agree with the Examiner.
In the absence of sufficient evidence or argument to the contrary, we find the
Examiner has articulated reasoning with rational underpinnings sufficient to
justify the legal conclusion of obviousness and are unpersuaded by
Appellants' contention that the Examiner's combination of references is
inadequate or improper.
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Metadata Value Between More Significant Bits
and Less Significant Bits of UUID
Lastly, the Examiner finds "setting bits of the UUID between the
more significant bits and the less significant bits to the metadata value" is a
matter of design choice for laying out one of the three fields in the UUID.
Final Act. 9--10; Ans. 13. Appellants argue "the Examiner failed to
articulate a 'convincing line of reasoning' to support a design choice
rejection." App. Br. 17.
We agree with the Examiner that the Appellants' location of data
fields within a UUID is mere design choice. A mere design choice, which
does not need to be shown explicitly in the prior art, is generally a minor and
obvious choice that solves no stated problem. Cf In re Kuhle, 526 F.2d 553,
555 (CCPA 1975) ("Use of such a means of electrical connection in lieu of
those used in the references solves no stated problem and would be an
obvious matter of design choice within the skill [in] the art."); see also In re
Gal, 980 F .2d 717, 719--20 (Fed. Cir. 1992) (holding a determination of an
"obvious design choice" was precluded where "the different structures of
[the two prior art references] achieve different purposes"). Thus, design
changes that do not "result in a difference in function or give unexpected
results" are "no more than obvious variations consistent with the principles
known in th[ e] art" of the patent at issue are obvious design choices. In re
Rice, 341 F.2d 309, 314 (CCPA 1965)); see also In re Chu, 66 F.3d 292,
298-99 (Fed. Cir. 1995) (determining "design choice" is appropriate where
"the applicant failed to set forth any reasons why the differences between the
claimed invention and the prior art would result in a different function or
give unexpected results").
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As the Examiner finds and we agree, Geer shows a "version field"
between a time field and a random number field (see Geer Fig. 1: the version
field 140 is between the timestamp fields 150, 160, and 180 and the random
number field 110). See Ans. 13 (citing Geer Figs. 1-2, ,r,r 15, 16). The
Examiner relies on "design choice" to "equate the version of Geer in view of
Yang and Pogmore to be the metadata." Ans. 13. The Examiner then finds
Geer teaches the same inventive concept as claimed by Appellants of
building a UUID "by concatenating a random number, a version and a
timestamp." Ans. 13. Appellants do not rebut these findings.
Appellants have, therefore, failed to provide sufficient evidence or
argument to persuade us of error in the Examiner's application of design
choice as the rationale for the ordinarily skilled artisan to modify the
disclosure of the prior art to satisfy the limitation of "setting bits of the
UUID between the more significant bits and the less significant bits to the
metadata value," as recited in claim 1.
DECISION
We affirm the Examiner's decision to reject claims 1, 2, 4, 6, 8-17,
20, 22-27, 31, 34--40, and 42--47 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv). See 3 7
C.F.R. § 41.50(±).
AFFIRMED
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