Trunomi LTD.

Patent Trials and Appeals Board

Feb 23, 2022

2021001041 (P.T.A.B. Feb. 23, 2022)

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. 15/130,892 04/15/2016 Stuart H. Lacey 102987-5004-US 8100 24341 7590 02/23/2022 Morgan, Lewis & Bockius LLP (PA) 1400 Page Mill Road Palo Alto, CA 94304-1124 EXAMINER NGUY, CHI D ART UNIT PAPER NUMBER 2435 NOTIFICATION DATE DELIVERY MODE 02/23/2022 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): padocketingdepartment@morganlewis.com vskliba@morganlewis.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STUART H LACEY, NARESH SINGHAL, and DAVID P. MALLON Appeal 2021-001041 Application 15/130,892 Technology Center 2400 Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and CARL L. SILVERMAN, Administrative Patent Judges. KUMAR, 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 1-8, and 10-24. 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 Trunomi Ltd. Appeal Br. 4. Appeal 2021-001041 Application 15/130,892 2 CLAIMED SUBJECT MATTER Claim 1, reproduced below with the disputed limitation highlighted, illustrates the claimed subject matter: 1. A server system for facilitating the sharing of information, comprising: a processor and memory storing one or more programs comprising computer instructions for execution by the processor; a pointer database that is communicatively coupled to the processor, wherein a pointer stored by the pointer database includes a unique identifier of information associated with a user and a local storage location of the information on a repository device; a network communications interface electronically coupled to the processor and configured to: electronically receive, via a computer network, from a client device associated with the user, an electronic authorization to share the information with a recipient third-party device of a plurality of recipient third-party devices remote from the client device; in response to receiving the electronic authorization, transmit an information package including the pointer that includes the unique identifier of the information and the local storage location of the information on the repository device to one or more of the client device, the repository, or the third-party device to facilitate the sharing of the information with the recipient third-party device, wherein the information package, including the pointer that includes the unique identifier of the information and the local storage location of the information on the repository device, is encrypted using an encryption key; and create a certificate that includes an indication of a status of transmitting the information package, including the pointer, from the server system to the one or more of the client device, the repository, or the third-party device. Appeal Br. 41 (Claims App.). REJECTIONS Claims 1, 3-6, 8, 17, 19--22 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Moon (US 2015/0381716) in view of Maller et Appeal 2021-001041 Application 15/130,892 3 al. (US 2015/0121063 hereinafter "Maller") and further in view of Biffar (US 6,047,269). Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Moon in view of Maller and Biffar and further in view of Le Huerou et al. (US 2014/0351335 hereinafter "Huerou"). Claims 7 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Moon in view of Maller and Biffar and further in view of Liang et al. (US 2017/0249328 hereinafter "Liang"). Claims 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Moon in view of Maller and Biffar and further in view of James et al. (US 2014/0188803 hereinafter "James"). Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Moon in view of Maller and Biffar and further in view of Van Brandenburg et al. (US 2016/0198202 hereinafter "Brandenburg"). Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Moon in view of Maller and Biffar and further in view of Blot-Lefevre (US 2011/0107408). ISSUE ON APPEAL Appellant’s arguments in the Appeal Brief present the following dispositive issue: Whether the Examiner erred in finding the combination of Moon, Maller, and Biffar teaches or suggests the following limitations recited in independent claims 1 and 20: create a certificate that includes an indication of a status of transmitting the information package, including the pointer, from the server system Appeal 2021-001041 Application 15/130,892 4 to the one or more of the client device, the repository, or the third-party device. Appeal Br. 41, 44, 45. ANALYSIS We have reviewed the Examiner’s rejection in light of Appellant’s contentions in the Appeal Brief and the Reply Brief that the Examiner has erred, as well as the Examiner’s response to Appellant’s arguments in the Appeal Brief. As discussed below, Appellant’s contentions persuade us of Examiner error. For the limitations at issue, the Examiner relies on the disclosure in Biffar for creating a certificate that indicates the status of transmitting the information package, including the pointer from the server to a client device, a repository, or third-party device. Final Act. 5 (citing Biffar, col. 6, lines 8- 34, col. 15, lines 3-25). The Examiner further determines that it would have been obvious to one of ordinary skill in the art before effective filing date of the claimed invention to incorporate the teaching of Biffar into Moon in view of Maller “in order to record the movement of the electronic information through the system for the purpose of transaction auditing. Id. (citing Biffar, col. 3, Lines 27-45). Appellant contends the Examiner erred in finding that Biffar teaches the disputed claim limitations. Appeal Br. 16, 17.2 Appellant specifically asserts, and we agree: Biffar relates to a "self-contained payment system [that uses] circulating digital vouchers for the transfer of value." The voucher has two components - "an identifying element ... and a dynamic log." The 2 We do not address Appellant’s other arguments because this issue is dispositive of the appeal. Appeal 2021-001041 Application 15/130,892 5 first cited portion at Biffar, column 6, lines 8-34 describes a dynamic log having data that is "increased whenever there is a transaction involving the voucher ... a transaction includes a creation, any use including inactivation and redemption, or movement of the voucher." The dynamic log and the identifying element together are "evaluated against a set of criteria to determine to which of several destinations the voucher will be transferred to in a next step." The Final Office Action fails to articulate how Biffar's "identifying element" or "a dynamic log" corresponds to the claimed "indication of a status of transmitting the information package including the pointer, from the server system ... " as recited in claim 1. Biffar' s determination of "which of several destinations the voucher will be transferred in a next step" is not an "indication of a status of transmitting ... from a server." Rather, Biffar describes his vouchers as moving between different users (and a recipient of a voucher can transfer the voucher to the recipient's account in the central system). … Movements of the voucher between different users, or from a recipient back to his account in the central system cannot correspond to the claimed "indicating of a status of transmitting ... from the server system," because there is no transmission from the server system. … Rather, Biffar explains that "[t] he creation of the voucher 1 includes the setting of the identifying element which does not change as the voucher is circulated," and does not appear to include any "unique identifier of information associated with a user." …Biffar's transaction codes relate to "time, description of type of transaction, digital signature, security code, identification and authorization codes and, or any other elements relating to a transaction," and the Final Office Action did not articulate how such description relate to the claimed "indication of a status of transmitting the information package including the pointer, from the server system." Id. at 17-20. In the Answer, the Examiner restates the findings and the rationale for the rejection by explaining “that Moon discloses sending, by a transmitter Appeal 2021-001041 Application 15/130,892 6 terminal or user to the sharing server, a request for registering a file to be shared with a receiving terminal, and the sharing server generates and sends a virtual link.” Ans. 4 (citing Moon FIG. 12, ¶¶ 40, 44, 118). The Examiner also reasons that it would have been obvious to one of ordinary skill in the art before effective filing date of the claimed invention to incorporate the teaching of Biffar into Moon in view of Mailer in order to keep a log that records the movement of the electronic information such as transmitting email or message that includes links to files or documents for the purpose of auditing of transmitting file, email or message over the computing network including information of the sender and the recipients (Biffar, col. 3, lines 27-45). Id. at 5, 6. In the Reply Brief, Appellant responds to the Examiner’s findings. Reply Br. 11-18. Appellant specifically asserts, and we agree: If a POSITA were to combine Moon and Biffar … they would end up with transferring Moon's virtual link …and separately downloading, by the user of the transmitter terminal, Biffar's voucher that includes a log of movements of the voucher, not any virtual link. In other words, the voucher, which itself includes the dynamic log …, is updated when it is moved, not when some other information, like a virtual link, is transferred. Reply Br. 13. Based on our review of the references’ disclosures, we are persuaded by Appellant’s arguments. We specifically agree with Appellant that “it would make no sense to include the certificate as part of the information package being shared, as one would not be able to independently verify that the information package was transmitted if the certificate accompanies the information package (i.e., the server never keeps a copy of the voucher).” See Reply Br. 13 (emphases added). As further explained by Appellant, Appeal 2021-001041 Application 15/130,892 7 Biffar's voucher is updated to indicate the movements of itself. In other words, once the voucher is moved from the central system 200 to the remote device A 100, then the central system 200 cannot be the one updating the voucher, i.e., only the receiving device (here the remote device 100) would be able to update the voucher as it is moved around the system. Id. at 14. In view of the above analysis, we are persuaded by Appellant’s contention that combining the references, even if properly combined, does not teach or suggest the recited disputed limitations. CONCLUSION On the record before us, we are constrained to conclude that the Examiner erred in rejecting claim 1, as well as independent claim 20 that recites similar limitations, as well as claims dependent therefrom, as obvious. Therefore, we do not sustain the Examiner’s rejection of claims 1- 8, 10-24. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3-6, 8, 17, 19-22, 24 103(a) Moon, Maller, Biffar 1, 3-6, 8, 17, 19-22, 24 2 103(a) Moon, Maller, Biffar, Le Huerou 2 7, 10-12 103(a) Moon, Maller, Biffar, Liang 7, 10-12 13-16 103(a) Moon, Maller, Biffar, James 13-16 Appeal 2021-001041 Application 15/130,892 8 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 18 103(a) Moon, Maller, Biffar, Van Brandenburg 18 23 103(a) Moon, Maller, Biffar, Blot- Lefevre 23 Overall Outcome 1-8, 10-24 REVERSED