Gregory Byrd et al.

Patent Trials and Appeals Board

Sep 30, 2020

11849210 - (D) (P.T.A.B. Sep. 30, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/849,210 08/31/2007 Gregory T. Byrd RSW920070131US1 5210
11445 7590 09/30/2020
IBM Corporation - Endicott Drafting Center
1701 North Street
Building 256-3
Endicott, NY 13760
EXAMINER
MCCORMICK, GABRIELLE A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
09/30/2020 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):
edciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY T. BYRD, MICHAEL G. MCINTOSH,
NATARAJ NAGARATNAM, and ANTHONY J. NADALIN
Appeal 2020-003413
Application 11/849,210
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 5–9, 11–13, and 17–20. Claims 2–4,
10, and 14–16 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
International Business Machines Corp. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to trusted statement verification for data
privacy. More specifically, the claimed subject matter is in “the field of data
privacy and identity management in a computer communications network,
and more particularly to data parsimony in pseudonymous e-commerce
transactions.” See Spec. ¶ 1. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A method for trusted statement verification for data
privacy within a voucher service data processing system
communicatively coupled to one or more end users computing
devices and one or more voucher consumers computing devices,
the method comprising:
deducing, by a processor of a computer in the voucher
service data processing system, a claim from an attribute of
personal data assigning a specific value to a variable and received
from an end user from an end user computing device by locating
the claim as having have been mapped to the attribute;
receiving, by the processor of the computer, a request from
a voucher consumer computing device issued via an exposed
application programming interface over a computer
communications network to vouch for an assertion based upon
the attribute of personal data, the assertion asserting the variable
to have a value of a particular range;
comparing the assertion to the claim to determine whether
the specific value is within the particular range; and
providing a voucher in the form of a secure token over the
computer communications network to the voucher consumer
computing device for the assertion on behalf of the end user upon
determining that the specific value is within the particular range
without revealing the specific value to the voucher
Appeal Br. 12–13 (Claims App.).
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REFERENCES2
The Examiner relies on the following references as prior art:
Name Reference Date
Sweeney US 2002/0169793 A1 Nov. 14, 2002
Korosec US 2003/0056113 A1 Mar. 20, 2003
Prafullchandra US 2007/0261116 A1 Nov. 8, 2007
REJECTION
Claims 1, 5–9, 11–13 and 17–20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Korosec, Sweeney, and Prafullchandra.
Final Act. 2.
ISSUE
Given the findings made in Board’s prior Decision on Appeal dated
February 2, 2018 (“the Prior Decision”), and in light of the record currently
before us, has the Examiner erred in finding Korosec teaches or suggests:
“receiving, by the processor of the computer, a request from a voucher
consumer computing device issued via an exposed application programming
interface over a computer communications network to vouch for an
assertion based upon the attribute of personal data,” as recited in claim 1?
ANALYSIS
The Prior Decision
In the Prior Decision, the Board reversed the Examiner’s obviousness
rejection of claims 1, 5–9, 11–13, and 17–20. That rejection relied the same
references currently before us. In so doing, the Board determined that “the

2 References are identified according to their first named author or inventor
only.
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claims require that the same device that receives the voucher also makes a
prior request for the voucher.” Prior Decision 10. The Board further
explained:
The Examiner relies on Korosec’s input component 130 and
output device 250 for providing a request for a voucher. Final
Act. 5 (citing Korosec ¶¶ 30, 41); Ans. 4. Although the processor
communicates a voucher to the output device for a claim based
on an attribute, Korosec does not disclose that the output device
provides a request to a processor for the voucher. See Korosec
¶¶ 30, 41, Fig. 5. The Examiner does not rely on Sweeney or
Prafullchandra to remedy the argued deficiency. We, therefore,
do not sustain the Examiner's rejection under§ 103(a) of
independent claim 1 and claims 5–8, which depend therefrom.
Independent claims 9 and 13 contain similar language and
requirements as independent claim 1. For similar reasons as for
independent claim 1, we do not sustain the Examiner's rejection
under § 103(a) of independent claims 9 and 13 and claims 11, 12,
and 17–20, which depend therefrom.
Prior Decision 10–11. The prior decision affirmed the decision to reject the
claims under 35 U.S.C. § 101.
The Current Rejection
Subsequent to the Prior Decision, Appellant reopened prosecution by
filing a Request for Continued Examination. Appellant narrowed the claims
by an amendment that added a new limitation. Appellant also persuaded the
Examiner to withdraw the patent-eligibility rejection under § 101. Final
Act. 2. However, the Examiner set forth a new rejection under 35 U.S.C.
§ 103(a) relying upon the same Korosec, Sweeney and Prafullchandra
combination addressed in the Prior Decision. Final Act. 2–4. The Examiner
finds that Korosec teaches most of the limitations of claim 1, including the
disputed “receiving” limitation. Final Act. 3–4 (citing Korosec, Figs. 4, 5;
¶¶ 60, 67). We note that in the rejection before us on appeal, the Examiner
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relies on portions of Korosec not previously relied upon in rejecting the
claims.
Our Review
Appellant asserts that the Examiner does not map “the actual claim
language” and if he had, his mapping would have “directly contradicted the
findings of the Board in the Decision on Appeal: Korosec does not disclose
that the output device provides a request to a processor for the voucher.”
Appeal Br. 9–10. Appellant argues the Prior Decision has a res judicata
effect on the issue of whether the cited references teach or suggest the
claimed invention, and that “under the doctrine of claim Preclusion, the
Examiner is barred from ‘relitigating’ the same issue already decided by the
Honorable Board.” Id. at 10–11.
We disagree with Appellant’s argument that res judicata applies in
this instance. At the outset, we note that the Examiner represents the Patent
and Trademark Office, and is not a party to this Ex parte (single party)
proceeding. Moreover, with the approval of the Supervisory Patent
Examiner (SPE), the Examiner can reopen prosecution after a Board
decision, as necessary, to ensure that only valid patent claims are issued by
the USPTO. See MPEP § 1207.04 (“Reopening of Prosecution After
Appeal”). Furthermore, because the Examiner is not a party to this Ex parte
proceeding, and because of the Examiner’s ability to reopen prosecution
with SPE approval, the doctrine of waiver is inapplicable to the Examiner.
Further, the doctrine of res judicata in an Ex parte proceeding precludes the
Appellant (Applicant) from “seeking a claim that is not patentably distinct
from a claim that was previously rejected if the rejection was affirmed on
appeal and the decision on appeal became final.” MPEP § 2190(II).
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That is not the case here.
As applicable to Appellant’s contention, the predecessor court to our
reviewing court rejected a claim of res judicata in a similar situation:
Appellants’ contention that the prior board decision reversing a
rejection under 35 USC 103 over Borkowski et al. in a parent
application should have been “res judicata” to the examiner in
this case is unpersuasive. This court stated in In re Craig, 56
CCPA 1438, 411 F.2d 1333, 162 USPQ 157 (1969), that the
policy and purpose of the patent laws preclude the applicability
of any doctrine akin to the judicially-developed doctrine of “res
judicata” to bar the granting of patents on inventions that comply
with the statute. The same policy and purpose precludes reliance
on any such doctrine to force the granting of patents on
inventions that do not comply with the statute.
In re Borkowski, 505 F.2d 713, 718 (C.C.P.A. 1974) (emphasis added).
As noted above, the Examiner relies on additional portions of Korosec
not previously relied upon. In accordance with the precedent of our
reviewing court, we do not agree with Appellant that, as a matter of claim
preclusion or res judicata, the Examiner’s rejection must be reversed.
Nevertheless, we are persuaded by Appellant’s other arguments
(Appeal Br. 9–10, Reply Br. 2) that the Examiner erred by not addressing
the findings made in the Prior Decision which gave rise to the reversal of the
Examiner’s obviousness rejection. Specifically, we agree with Appellant
that the Examiner’s additional citations to the same Korosec reference suffer
from the same deficiencies identified in the Prior Decision. The Prior
Decision concluded that “the claims require that the same device that
receives the voucher also makes a prior request for the voucher.” Prior
Decision 10. The Prior Decision found that the output device in Korosec
relied upon as receiving the voucher did not make a prior request for the
voucher. Id.
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Here, the newly cited sections of Korosec, paragraphs 60 and 67, do
not cure the above-noted deficiency. Paragraph 60 merely describes that
identification validation may be based on age, and paragraph 67 describes
that the age determination consider whether the age falls within a particular
age range. While these disclosures in Korosec may well teach “the assertion
asserting the variable to have a value of a particular range,” they do not
demonstrate that the “same device that receives the voucher also makes a
prior request for the voucher.” The Examiner provides no evidence or
explanation that addresses this aspect of the prior decision.
Therefore, on this record, we find a preponderance of the evidence
supports Appellant’s arguments regarding the contested claim limitation of
“receiving, by the processor of the computer, a request from a voucher
consumer computing device issued via an exposed application programming
interface over a computer communications network to vouch for an
assertion based upon the attribute of personal data, the assertion asserting
the variable to have a value of a particular range,” as being improperly
construed and mapped by the Examiner. See Appeal Br. 9–10, Reply Br. 2.
Accordingly, we reverse the Examiner’s obviousness rejection of each
independent claim 1, 9, and 13 on appeal. Because we have reversed all
independent claims on appeal, for the same reasons, we reverse the rejection
of all dependent claims on appeal.
CONCLUSION
We reverse Examiner’s rejection under 35 U.S.C. § 103(a).
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DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 5–9, 11–
13, 17–20
103 Korosec, Sweeney,
Prafullchandra
1, 5–9, 11–
13, 17–20

REVERSED