DETAILED ACTION
Contents
I. Notice of Pre-AIA or AIA Status 4
II. Priority 4
III. Pertinent Prosecution History 4
IV. Claim Status 5
V. Reissue Requirements 5
VI. Reissue Oath/Declaration 7
VII. Specification Objections 7
VIII. Claim Objections 7
IX. Claim Interpretation 9
A. Lexicographic Definitions 10
B. 35 U.S.C § 112 6th Paragraph 10
(1) Functional Phrase – “Terminating Instructions” 11
(2) Functional Phrase – “Determining I/Providing Instructions” 18
(3) Functional Phrase – “Determining II/Receiving/Processing Instructions” 25
X. Claim Rejections – 35 U.S.C. § 112 32
A. 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph 32
(1) Written Description 32
B. 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph 35
XI. Broadening of Examined Claims 40
A. Broadening of Examined Claims’ Limitations 40
(1) Claim 1 40
XII. Double Patenting 42
A. U.S. Patent No. 8,812,548 43
XIII. Claim Rejections – 35 U.S.C. § 251 45
A. Broadened Claim 46
B. Original Patent Requirement 46
XIV. Claim Rejections – 35 USC § 103 49
A. Claims 1-4, 6-8 and 10-22 are rejected under pre-AIA 35 U.S.C. 103(a) as obvious over Robertson (U.S. Patent No. 6,269,369) in view of Tsukakoshi et al. (U.S. Patent No. 5,926,623 (“Tsukakoshi”). 49
XV. Prior Art 67
XVI. Conclusion 69
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Priority
Applicant filed the instant reissue application 17/400,450 (“‘450 Reissue Application”) on 12 August 2021 for U.S. Application No. 09/742,699 (“‘699 Application"), filed 20 December 2000, now U.S. Patent No. 7,788,222 (“‘222 Patent”), issued 31 August 2010, which claims domestic priority to Provisional Application No. 60/172,977 (“‘977 Prov Application”), filed 20 December 1999.
Thus, the Examiner concludes that for examination purposes the instant ‘450 Reissue Application claims a priority date of 20 December 1999.
Pertinent Prosecution History
As set forth supra, Applicant filed the application for the instant ‘450 Reissue Application on 12 August 2021. The Examiner finds that the instant ‘450 Reissue Application included a preliminary amendment (“Aug 2021 Preliminary Amendment”) to the claims (“Aug 2021 Claim Amendment”). The Aug 2021 Claim Amendment includes an amendment: providing amended original claims 1-4, 6-8 and 10-22; and canceled original claims 5, 9, 23 and 24.1
Claim Status
The Examiner finds that the claim status in the instant ‘811 Reissue Application is as follows:
Claim(s) 1-4, 6-8 and 10-22 (Original and amended)
Claim(s) 5, 9, 23 and 24 (Original and canceled)
Thus, the Examiner concludes that claims 1-4, 6-8 and 10-22 are pending in the instant ‘450 Reissue Application. Claims 1-4, 6-8 and 10-22 are examined (“Examined Claims”).
Reissue Requirements
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the ‘343 Patent is or was involved. These proceedings would include interferences, reissues, reexaminations, post-grant proceedings and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
The Examiner notes that Amendment practice for Reissue Applications is NOT the same as for non-provisional applications. See MPEP §§ 1413 and 1453. Reissue application amendments must comply with 37 CFR 1.173, while non-provisional application amendments must comply with 37 CFR 1.121. Particularly,
Manner of making amendments under 37 CFR 1.173:
All markings (underlining and bracketing) are made relative to the original patent text, 37 CFR 1.173(g) (and not relative to the prior amendment).
For amendments to the abstract, specification and claims, the deleted matter must be enclosed in brackets, and the added matter must be underlined. See 37 CFR 1.173(d).
For amendments to the drawings, any changes to a patent drawing must be submitted as a replacement sheet of drawings which shall be an attachment to the amendment document. Any replacement sheet of drawings must be in compliance with § 1.84 and shall include all of the figures appearing on the original version of the sheet, even if only one figure is amended. Amended figures must be identified as "Amended," and any added figure must be identified as "New." In the event that a figure is canceled, the figure must be surrounded by brackets and identified as "Canceled." All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawings. See 37 CFR 1.173(d)(3).
The Examiner further notes that all amendments to the instant ‘668 Reissue Application must comply with 37 CFR 1.173(b)-(g).
Reissue Oath/Declaration
The Examiner finds that the Declaration filed by Applicant on 12 August 2021 (“Aug 2021 Oath/Declaration”) is defective. The Examiner finds that the Aug 2021 Oath/Declaration filed by Applicant states,
The patentee claimed more than he had the right to claim in the patent.
(Aug 2021Oath/Declaration). Specifically, the Aug 2021 Oath/Declaration is defective because the statement does not specify a particular error within the ‘222 Patent as a basis for the instant ‘450 Reissue Application. Rather, a proper error statement must identify a single word, phrase, or expression in the specification or in an original claim in the underlying patent, i.e., the ‘222 Patent, and how it renders the original patent wholly or partly inoperative or invalid. (See MPEP §1414(II)). Thus, Applicant is required to provide a new declaration with a statement of error with respect to ‘222 Patent identifying “a single word, phrase, or expression” from the ‘222 Patent that was not included therein that rendered the 630 Patent invalid or inoperative. (See 37 CFR 1.175 and MPEP § 1414).
Specification Objections
The disclosure is objected to because of the following informalities: in c.14, ll.29-30, the disclosure to “… via the network 102...” Should read – … via the network 120... –.
Appropriate correction is required.
Claim Objections
MPEP § 1453 states,
pursuant to 37 CFR 1.173(c), each amendment submitted must set forth the status of all patent claims and all added claims as of the date of the submission. The status to be set forth is whether the claim is pending or canceled. The failure to submit the claim status will generally result in a notification to applicant that the amendment before final rejection is not completely responsive (see 37 CFR 1.135(c) ) (see 37 CFR 1.135(c)).
(MPEP § 1453; emphasis added). The Examiner finds the claim status provided by Applicant indicates that “[c]laims 1-24 are currently pending” with emphasis on “[c]laims 1-20 [being] currently amended; and claims 21-24 remain[ing] unchanged.” (Aug 2021 Preliminary Amendment at 1). While the Aug 2021 Preliminary Amendment did provide a claim status statement, the Examiner find that the claim status statement provided in the Aug 2021 Preliminary Amendment is incorrect. (See §§ III-IV, supra).
From this perspective, since the claim status provided by Applicant is incorrect, appropriate correction is required in the next response by Applicant. The Examiner further asserts that a claim amendment filed after final not complying with 37 CFR 1.173(c) will not be entered. (MPEP § 1453).
In addition, the Examiner finds that the removed subject matter in the Aug 2021 Claim Amendment seems to be indicated by “bracketing” and “strike-throughs.” (See Aug 2021 Claim Amendment at claim 1). For amendments to the abstract, specification and claims, the deleted matter must be enclosed in brackets (i.e., single-bracketing; emphasis added), and the added matter must be underlined. See 37 CFR 1.173(d).
Moreover, claims 1, 3, 11 and 12 are objected to because of the following informalities:
Claim 1 is objected to because of the following informalities: “determining whether the second computer network user is accessing the selected field of the first computer network user’s information with the time limit …” in lines 17-19, respectively, should read – determining whether the second computer network user is accessing the selected field of the first computer network user’s information within the time limit –. [Emphasis added]. The claim will be examined as such.
Claims 3 is objected to because of the following informalities: “determine whether the selected field of first computer network user’s information provided to the second computer network user using a unique identifier of the first computer network user …” in line 1, respectively, should read – determine whether the selected field of first computer network user’s information can be provided to the second computer network user using a unique identifier of the first computer network user –. [Emphasis added]. The claim will be examined as such.
Claims 11 and 12 are objected to because of the following informalities: “wherein determining whether the…” in line 1, respectively, should read – wherein said/the determining whether the –. [Emphasis added]. The claim will be examined as such.
Claim Interpretation
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111, MPEP § 2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP § 2111.01(I). It is further noted it is improper to import claim limitations from the specification, i.e., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP § 2111.01(II). Therefore, unless one of the exceptions applies below, Examiners will interpret the limitations of the pending and examined claims using the broadest reasonable interpretation (“BRI”).
Lexicographic Definitions
A first exception to the prohibition of reading limitations from the specification into the claims is when the Applicant for patent has provided a lexicographic definition for the term. See MPEP § 2111.01(IV). Following an independent review of the claims in view of the specification herein, Examiners find that Applicant has not provided any lexicographic definitions related to claim terms with any reasonable clarity, deliberateness and precision.
35 U.S.C § 112 6th Paragraph
A second exception to the prohibition of reading limitations from the specification into the claims is when the claimed feature is written as a means-plus-function or a step-plus-function. See 35 U.S.C. § 112(6th ¶) and MPEP §§ 2181-2183. As noted in MPEP § 2181, a three prong test is used to determine the scope of a means-plus-function or step-plus-function limitation in a claim:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as "configured to" or "so that"
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
The Examiner finds herein that claims 1-4, 6-8 and 10-22 include one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. §112 (6th ¶) because the claim limitations uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Each such limitation will be discussed in turn as follows:
Functional Phrase – “Terminating Instructions”
A first means-plus-function phrase is recited in claim 1 (and included in each of dependent claims 2-4 and 6-8) which recites “instructions …” or hereinafter “Functional Phrase 1” or “FP1.” The Examiner determines herein that FP1does meet the three prong test and thus will be interpreted as a means-plus-function limitation under 35 U.S.C. §112(6th ¶).
The Examiner finds that claim 1 expressly recites:
Instructions (executable by a processor) stored in memory to automatically terminate computer network access to a first computer network user’s information upon an expiration of a defined period of time by
determining an identity of a second computer network user to be provided the first computer network user’s information,
determining whether a selected field of the first computer network user’s information can be provided to the second computer network user,
determining whether the second computer network user is attempting to access the selected field of the first computer network user’s information,
defining a time limit that the second computer network user can access, via a computer network, the selected field of the first computer network user’s information party,
determining whether the second computer network user is accessing the selected field of the first computer network user’s information with[in] the time limit, and
providing the selected field of the personal information of the second party to the first party
[emphasis added];
i. 3-Prong Analysis: Prong (A)
FP1 meets invocation prong (A) because "means ... for" type language is recited. The Examiner first finds that “instructions” is a generic placeholder or nonce term equivalent to “means” because the term “instructions” does nothing more than simply define a generic structure, i.e., means. The Examiner further notes that the specification of the ‘222 Patent does not specifically define “instructions” and thus the specification of the ‘222 Patent does not impart or disclose any structure for the phrase. Rather, the Examiner finds that the ‘222 Patent uses this same phrase in the claims to describe several instructions.
Furthermore, the Examiner finds there is no disclosure or suggestion from the prior art that instructions is a sufficient and definite structure to perform the functions recited in FP1. For example, U.S. Patent No. 5,926,623 illustrates instructions for terminating computer network access to a first computer network user’s information upon an expiration of a defined period of time having different instructions (i.e., implemented blocks) and distinct operation from any of the instructions of the ‘222 Patent. Similarly, U.S. Patent No. 7,233,948 illustrates instructions for terminating computer network access to a first computer network user’s information upon an expiration of a defined period of time having different instructions (i.e., implemented blocks) and distinct operation from any of the instructions of the ‘222 Patent.
Accordingly, the Examiner finds nothing in the specification, prosecution history or the prior art to construe “instructions …” in FP1 as the name of a sufficiently definite structure for performing the functions recited in FP1 so as to take the overall claim limitation out of the ambit of §112(6th ¶). See Williamson v. Citrix Online, L.L.C., 115 USPQ2d 1105, 1112 (Fed. Cir. 2015).
In light of the above, the Examiner concludes that the term “instructions …” is a generic placeholder having no specific structure associated therewith. Because “instructions …” is merely a generic placeholder having no specific structure associated therewith, the Examiner concludes that FP1 meets invocation Prong (A).
ii. 3-Prong Analysis: Prong (B)
Based upon a review of FP1, the Examiner finds that the claimed function(s) is:
[T]erminat[ing] (automatically) computer network access to a first computer network user’s information upon an expiration of a defined period of time by
[D]etermining an identity of a second computer network user to be provided personal the first computer network user’s information,
[D]etermining whether a selected field of the first computer network user’s information can be provided to the second computer network user,
[D]etermining whether the second computer network user is attempting to access the selected field of the first computer network user’s information,
[D]efining a time limit that the second computer network user can access, via a computer network, the selected field of the first computer network user’s information party,
[D]etermining whether the second computer network user is accessing the selected field of the first computer network user’s information with the time limit, and
[P]roviding the selected field of the personal information of the second party to the first party
Because FP1 recites the above recited functions, the Examiner concludes that FP1 meets Invocation Prong (B).
iii. 3-Prong Analysis: Prong (C)
Based upon a review of the entire Functional Phrase 1, the Examiner finds that Functional Phrase 1 does not contain sufficient structure for performing the entire claimed function that is set forth within Functional Phrase 1. Specifically, the Examiner finds that FP1 recites further instructions including: (1) determining an identity of a second computer network user to be provided personal the first computer network user’s information; (2) determining whether a selected field of the first computer network user’s information can be provided to the second computer network user; (3) determining whether the second computer network user is attempting to access the selected field of the first computer network user’s information; (4) defining a time limit that the second computer network user can access, via a computer network, the selected field of the first computer network user’s information party; (5) determining whether the second computer network user is accessing the selected field of the first computer network user’s information with the time limit, and (6) providing the selected field of the personal information of the second party to the first party. However, even though FP1 does recite further instructions (i.e., (1)-(6), supra) utilized to automatically terminate computer network access to a first computer network user’s information upon an expiration of a defined period of time, the Examiner finds these instructions insufficient to perform the entire claimed function that is set forth within Functional Phrase 1. To support the Examiner’s position, the Examiner finds that the ‘222 Patent, for example, explicitly discloses the instructions of determining an identity of a second computer network user to be provided personal the first computer network user’s information requiring additional steps. (See ‘222 Patent at c.4, ll.42-50). The Examiner finds that the other instructions requiring further steps/instructions as well. (Id. at c.4, ll.31-39, 52-62; c.4, l.63 – c.5, l.6; c.11, ll.44-64). From this perspective, the Examiner finds that Functional Phrase 1 does not recite sufficient structure for performing the claimed function.
Because Functional Phrase 1 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that Functional Phrase 1 meets invocation Prong (C).
Because Functional Phrase 1 does meet the 3-prong analysis as set forth in MPEP § 2181 I., the Examiner concludes that Functional Phrase 1 does invoke 35 U.S.C § 112 6th paragraph.
Corresponding structure for Functional Phrase 1
Once a claimed phrase invokes 35 U.S.C. § 112 6th paragraph, the next step is to determine the corresponding structure. (MPEP § 2181 II). In order to satisfy the requirements of 35 U.S.C. § 112, second paragraph, there must be identified in the applications’ disclosure a single structure and/or algorithm which performs the function of FP1.
The Examiner has carefully reviewed the original disclosure to determine the corresponding structure for FP1. In reviewing the original disclosure, the Examiner finds that the ‘222 Patent discloses
the system 102, primarily through operation of a data exchange engine 156 of exchange engine layer 150 and permissions data 166 of database 160, provides the capability for the friend to manage access to personal information by directing the contact manager 148 to share this or any other personal information with the user for a defined period of time only After expiration of this defined period, the user will no longer be able to view the friend's information.
(‘222 Patent at c.4, ll.31-39). In lieu of above, the Examiner finds that the ‘222 Patent discloses engines, managers, and databases interacting together to protect and limit access to computer networks user’s personal information stored in a computer network. From this perspective, one of ordinary skill in the art would look to the rest of the ‘222 Patent for specific disclosure of the specific instructions (i.e., algorithms) required to satisfy the function of Functional Phrase 1. In examination of the ‘222 Patent, the Examiner finds that the engines, managers, and databases as being essentially “black box[s].” As noted in the MPEP, “merely referencing [] a black box designed to perform their cited function, will not be sufficient because there must be some explanation of how the computer or the computer component performs the claimed function. [Emphasis added.] ” (MPEP § 2181 II. B citing Blackboard). In lieu of the black box, the Examiner finds that the ‘222 Patent discloses,
The contact manager 148 manages the information about each registered user's static contacts by storing these in the database 160 and retrieving it when necessary. In contrast, to manage dynamic contacts the contact manager 148 invokes the VRM 154 and the data exchange engine (DXE) 156. The contact manager 148 first invokes the account manager 152 to verify that the user logging in to the system 102 is a registered user and to retrieve the internal account ID of the user. The contact manager 148 would then communicate with the VRM 154, providing the VRM 154 with the account ID of the registered user. The VRM 154 is operative to retrieve from the database 160 and to present to the user the names and account IDs of the user's dynamic contacts. The contact manager 148 then invokes the DXE 156 to determine which fields of each dynamic contact are being shared with this registered user.
Once the contact manager 148 is familiar with the fields (represented as field IDs) shared by one registered user with another (i.e., shared by the dynamic contact with the logged-in user), it invokes the VRM 154 to read the contents of the shared fields. The system 102 is capable of then providing the content of these fields to the appropriate interface layer server 131-139, for transmission to the associated client platform 111-119.
It is noteworthy that the contact manager 148 provides a rich set of information about a user's contacts, including every piece of information that the contact registered user allows one to see. In addition, the contact manager 148 provides the capability for the user to query the contact manager 148 in order to determine who has actually viewed which personal information fields in their information repository. Furthermore, if a personal information field has been constructed as time-limited, the system 102 will automatically stop sharing this information upon expiration of the associated time limit.
(‘222 Patent at c.4, l.40 – c.5, l.6). In addition, the Examiner find that the DXE 156 provides the interfaces to enable the users to utilize the system. (Id. at c.11, l.44 – c.12, l.44). The Examiner finds that the ‘222 Patent discloses a system to protect and limit access to computer networks user’s personal information stored in a computer network by automatically terminating computer network access to a first computer network user’s information upon an expiration of a defined period of time, however, the ‘222 Patent provides a simple functional overview without detailing what steps and/or algorithms are needed to perform the required instructional steps. Specifically, the ‘222 Patent fails to disclose or discuss any exact, unique and separate specific algorithms utilized to perform the various instructional steps, as recited. In addition to the above discussion, the Examiner finds insufficient disclosure to any instructions just performing: (1) a simple query step of solely “determining whether the second computer network user is attempting to access the selected field of the first computer network user’s information,” nor (2) defining any time limits during the active instructions of automatically terminating computer network access to a first computer network user’s information. Thus, the Examiner concludes that the ‘222 Patent fails to clearly link and associate corresponding structure to FP1.2
In light of the finding that Functional Phrase 1 invokes 35 U.S.C. § 112 6th paragraph, Functional Phrase 1 is construed to cover the corresponding structure described in the specification and equivalents thereof. In light of the examination of the ‘222 Patent above, the Examiner finds that the ‘222 Patent provides insufficient corresponding structures and thus this phrase is nothing more than “instructions.” From this perspective, and to advance prosecution by providing art rejections infra, the Examiner construes the structure for performing the claimed function as instructions, stored in memory, that can be executed by processor, comprising: some type of software which provides the capability of (1) determining an ID of a user attempting to access personal data of another user; (2) determining whether personal data of the another user can be provided to the user; (3) determining whether the personal data of the another user, that can be provided to the user, is limited to a defined period; and 4) providing the personal data of the another user to the to the user if the user is determined to have access to the personal data of the another user during the defined period, or its equivalent.
Functional Phrase – “Determining I/Providing Instructions”
A second means-plus-function phrase is recited in claims 10, 11, 12 and 18 (and included in each of dependent claims 11-17 and 19-22) which recite “instructions …” or hereinafter “Functional Phrase 2” or “FP2.” The Examiner determines herein that FP2 does meet the three prong test and thus will be interpreted as a means-plus-function limitation under 35 U.S.C. §112(6th ¶).
The Examiner finds that claim 10 expressly recites:
executing instructions stored in memory to determine an identity of a first computer network user to be provided personal information of a second computer network user,
executing instructions stored in memory to determine whether a selected field of the personal information of the second computer network user can be provided to the first computer network user
executing instructions stored in memory to determine whether the first computer network user is attempting to access, via a computer network, the selected field of personal information of the second computer network user during a defined period of time as defined by the second computer network user, and
if the first computer network user is determined to have access to the selected field of the personal information of the second computer network user within the defined period of time
executing instructions stored in memory to provide the selected field of the personal information of the second computer network user to the first computer network user
[emphasis added]; claim 11 recites
wherein determining whether the selected field of the personal information of the second computer network user can be provided to the first computer network user uses a unique digital identifier of the second computer network user.
[emphasis added]; claim 12 recites
wherein determining whether the selected field of the personal information of the second computer network user can be provided to the first computer network user uses a unique digital identifier of the first computer network user
[emphasis added]; and claim 18 recites:
executing instructions stored in memory to determine an identity of a first computer network user to be provided personal information;
executing instructions stored in memory to determine whether a selected field of the personal information of a second computer network user can be provided to the first computer network user
executing instructions stored in memory to determine whether the first computer network user is attempting to access, via a computer network, the selected field of personal information of the second computer network user during a defined period of time as defined by the second computer network user, and
if the first computer network user is determined to have access to the selected field of the personal information of the second computer network user within the defined period of time,
executing instructions stored in memory to provide the selected field of the personal information of the second computer network user to the first computer network user
[emphasis added].
i. 3-Prong Analysis: Prong (A)
FP2 meets invocation prong (A) because "means ... for" type language is recited. The Examiner first finds that “instructions” is a generic placeholder or nonce term equivalent to “means” because the term “instructions” does nothing more than simply define a generic structure, i.e., means. The Examiner further notes that the specification of the ‘222 Patent does not specifically define “instructions” and thus the specification of the ‘222 Patent does not impart or disclose any structure for the phrase. Rather, the Examiner finds that the ‘222 Patent uses this same phrase in the claims to describe several instructions.
Furthermore, the Examiner finds there is no disclosure or suggestion from the prior art that instructions is a sufficient and definite structure to perform the functions recited in FP2. For example, U.S. Patent No. 6,269,369 illustrates instructions for protecting and limiting access to a computer network user’s stored in a computer network having different instructions (i.e., implemented blocks) and distinct operation from any of the instructions of the ‘222 Patent.
Accordingly, the Examiner finds nothing in the specification, prosecution history or the prior art to construe “instructions …” in FP2 as the name of a sufficiently definite structure for performing the functions recited in FP2 so as to take the overall claim limitation out of the ambit of §112(6th ¶). See Williamson v. Citrix Online, L.L.C., 115 USPQ2d 1105, 1112 (Fed. Cir. 2015).
In light of the above, the Examiner concludes that the term “instructions …” is a generic placeholder having no specific structure associated therewith. Because “instructions …” is merely a generic placeholder having no specific structure associated therewith, the Examiner concludes that FP2 meets invocation Prong (A).
ii. 3-Prong Analysis: Prong (B)
Based upon a review of FP2, the Examiner finds that the claimed function(s) is:
[D]etermining an identity of a first computer network user to be provided personal a second computer network user’s information,
[D]etermining whether a selected field of the personal information of the second computer network user can be provided to the first computer network user,
[D]etermining whether the second computer network user is attempting to access the selected field of the first computer network user’s information, wherein [said] determining whether the selected field of the personal information of the second computer network user can be provided to the first computer network user uses a unique digital identifier of the first/second computer network user
[P]rovid[ing]e the selected field of the personal information of the second computer network user to the first computer network user if the first computer network user is determined to have access to the selected field of the personal information of the second computer network user within the defined period of time
Because FP2 recites the above recited functions, the Examiner concludes that FP2 meets Invocation Prong (B).
iii. 3-Prong Analysis: Prong (C)
Based upon a review of the entire Functional Phrase 2, while one of ordinary skill in the art would recognize that “instructions” or “logic” implies some structures, it is not alone a sufficient structure for performing the claimed function.3 Thus, the Examiner finds that Functional Phrase 2 does not contain sufficient structure for performing the entire claimed function that is set forth within Functional Phrase 2.
Because Functional Phrase 2 does meet the 3-prong analysis as set forth in MPEP § 2181 I., the Examiner concludes that Functional Phrase 2 does invoke 35 U.S.C § 112 6th paragraph.
Corresponding structure for Functional Phrase 2
Once a claimed phrase invokes 35 U.S.C. § 112 6th paragraph, the next step is to determine the corresponding structure. (MPEP § 2181 II). In order to satisfy the requirements of 35 U.S.C. § 112, second paragraph, there must be identified in the applications’ disclosure a single structure and/or algorithm which performs the function of FP2.
The Examiner has carefully reviewed the original disclosure to determine the corresponding structure for FP2. In reviewing the original disclosure, the Examiner finds that the ‘222 Patent discloses
the system 102, primarily through operation of a data exchange engine 156 of exchange engine layer 150 and permissions data 166 of database 160, provides the capability for the friend to manage access to personal information by directing the contact manager 148 to share this or any other personal information with the user for a defined period of time only After expiration of this defined period, the user will no longer be able to view the friend's information.
(‘222 Patent at c.4, ll.31-39). In lieu of above, the Examiner finds that the ‘222 Patent discloses engines, managers, and databases interacting together to protect and limit access to computer networks user’s personal information stored in a computer network. From this perspective, one of ordinary skill in the art would look to the rest of the ‘222 Patent for specific disclosure of the specific instructions (i.e., algorithms) required to satisfy the function of Functional Phrase 2. In examination of the ‘222 Patent, the Examiner finds that the engines, managers, and databases as being essentially “black box[s].” As noted in the MPEP, “merely referencing [] a black box designed to perform their cited function, will not be sufficient because there must be some explanation of how the computer or the computer component performs the claimed function. [Emphasis added.] ” (MPEP § 2181 II. B citing Blackboard). In lieu of the black box, the Examiner finds that the ‘222 Patent discloses,
The contact manager 148 manages the information about each registered user's static contacts by storing these in the database 160 and retrieving it when necessary. In contrast, to manage dynamic contacts the contact manager 148 invokes the VRM 154 and the data exchange engine (DXE) 156. The contact manager 148 first invokes the account manager 152 to verify that the user logging in to the system 102 is a registered user and to retrieve the internal account ID of the user. The contact manager 148 would then communicate with the VRM 154, providing the VRM 154 with the account ID of the registered user. The VRM 154 is operative to retrieve from the database 160 and to present to the user the names and account IDs of the user's dynamic contacts. The contact manager 148 then invokes the DXE 156 to determine which fields of each dynamic contact are being shared with this registered user.
Once the contact manager 148 is familiar with the fields (represented as field IDs) shared by one registered user with another (i.e., shared by the dynamic contact with the logged-in user), it invokes the VRM 154 to read the contents of the shared fields. The system 102 is capable of then providing the content of these fields to the appropriate interface layer server 131-139, for transmission to the associated client platform 111-119.
It is noteworthy that the contact manager 148 provides a rich set of information about a user's contacts, including every piece of information that the contact registered user allows one to see. In addition, the contact manager 148 provides the capability for the user to query the contact manager 148 in order to determine who has actually viewed which personal information fields in their information repository. Furthermore, if a personal information field has been constructed as time-limited, the system 102 will automatically stop sharing this information upon expiration of the associated time limit.
(‘222 Patent at c.4, l.40 – c.5, l.6). In addition, the Examiner find that the DXE 156 provides the interfaces to enable the users to utilize the system. (Id. at c.11, l.44 – c.12, l.44). The Examiner finds that the ‘222 Patent discloses a system to protect and limit access to computer networks user’s personal information stored in a computer network by automatically terminating computer network access to a first computer network user’s information upon an expiration of a defined period of time, however, the ‘222 Patent provides a simple functional overview without detailing what steps and/or algorithms are needed to perform the required instructional steps. Specifically, the ‘222 Patent fails to disclose or discuss any exact, unique and separate specific algorithms utilized to perform the various instructional steps, as recited. Thus, the Examiner concludes that the ‘222 Patent fails to clearly link and associate corresponding structure to FP2.4
In light of the finding that Functional Phrase 2 invokes 35 U.S.C. § 112 6th paragraph, Functional Phrase 2 is construed to cover the corresponding structure described in the specification and equivalents thereof. In light of the examination of the ‘222 Patent above, the Examiner finds that the ‘222 Patent provides insufficient corresponding structures and thus this phrase is nothing more than “instructions.” From this perspective, and to advance prosecution by providing art rejections infra, the Examiner construes the structure for performing the claimed function as instructions, stored in memory, that can be executed by processor, comprising: some type of software which provides the capability of (1) determining an ID of a user attempting to access personal data of another user; (2) determining whether personal data of the another user can be provided to the user; (3) determining whether the personal data of the another user, that can be provided to the user, is limited to a defined period; and 4) providing the personal data of the another user to the to the user if the user is determined to have access to the personal data of the another user during the defined period, or its equivalent.
Functional Phrase – “Determining II/Receiving/Processing Instructions”
A third means-plus-function phrase is recited in claims 2, 3, 4, 6, 7, 19, 20, 21 and 22 which recite “instructions …” or hereinafter “Functional Phrase 3” or “FP3.” The Examiner determines herein that FP3 does meet the three prong test and thus will be interpreted as a means-plus-function limitation under 35 U.S.C. §112(6th ¶).
The Examiner finds that claim 2 expressly recites:
Instructions (executable by a processor) stored in memory to determine whether the selected field of the first computer network user’s information can be provided to the second computer network user using a unique identifier of the second computer network user
[emphasis added]; claim 3 expressly recites:
Instructions (executable by a processor) stored in memory to determine whether the selected field of first computer network user’s information [can be] provided to the second computer network user using a unique identifier of the first computer network user
[emphasis added]; claim 4 expressly recites:
Instructions (executable by a processor) stored in memory to receive a message indicating a request from the second computer network user for the selected field of the first computer network user’s to process the message to provide the selected field of the first computer network user’s information to the second computer network user
[emphasis added]; claim 6 expressly recites:
Instructions (executable by a processor) stored in memory to process one or more customized fields of the first computer network user’s information
[emphasis added]; claim 7 expressly recites:
Instructions (executable by a processor) stored in memory to receive a permission from the first computer network user to determine whether the selected field of the first computer network user’s information can be provided to the second computer network user based on the permission
[emphasis added]; claim 19 expressly recites:
Instructions (executable by a processor) stored in memory to direct the processor to determine whether the selected field of the first computer network user’s information can be provided to the second computer network user using a unique identifier of the second computer network user
[emphasis added]; claim 20 expressly recites:
Instructions (executable by a processor) stored in memory to determine whether the selected field of the personal information of the second computer network user can be provided to the first computer network user using a unique identifier of the first computer network user
[emphasis added]; claim 21 expressly recites:
Instructions (executable by a processor) stored in memory to direct the processor to receive a message indicating a request from the first computer network user for the selected field of the personal information of the second computer network user and to process the message to provide the selected field of the personal information to the first computer network user
[emphasis added]; claim 22 expressly recites:
Instructions (executable by a processor) stored in memory to direct the processor to receive a message indicating a request from the second computer network user for the selected field of the personal information of the second computer network user and to process the message to provide the selected field of the personal information to the first computer network user
[emphasis added].
i. 3-Prong Analysis: Prong (A)
FP3 meets invocation prong (A) because "means ... for" type language is recited. The Examiner first finds that “instructions” is a generic placeholder or nonce term equivalent to “means” because the term “instructions” does nothing more than simply define a generic structure, i.e., means. The Examiner further notes that the specification of the ‘222 Patent does not specifically define “instructions” and thus the specification of the ‘222 Patent does not impart or disclose any structure for the phrase. Rather, the Examiner finds that the ‘222 Patent uses this same phrase in the claims to describe several instructions.
Furthermore, the Examiner finds there is no disclosure or suggestion from the prior art that instructions is a sufficient and definite structure to perform the functions recited in FP3. For example, U.S. Patent No. 6,269,369 illustrates instructions for protecting and limiting access to a computer network user’s stored in a computer network having different instructions (i.e., implemented blocks) and distinct operation from any of the instructions of the ‘222 Patent.
Accordingly, the Examiner finds nothing in the specification, prosecution history or the prior art to construe “instructions …” in FP3 as the name of a sufficiently definite structure for performing the functions recited in FP3 so as to take the overall claim limitation out of the ambit of §112(6th ¶). See Williamson v. Citrix Online, L.L.C., 115 USPQ2d 1105, 1112 (Fed. Cir. 2015).
In light of the above, the Examiner concludes that the term “instructions …” is a generic placeholder having no specific structure associated therewith. Because “instructions …” is merely a generic placeholder having no specific structure associated therewith, the Examiner concludes that FP3 meets invocation Prong (A).
3-Prong Analysis: Prong (B)
Based upon a review of FP3, the Examiner finds that the claimed function(s) is:
[D]etermin[ing] whether the selected field of the first computer network user’s information can be provided to the second computer network user using a unique identifier of the second computer network user
[D]etermin[ing] whether the selected field of first computer network user’s information [can be] provided to the second computer network user using a unique identifier of the first computer network user
[R]eceiv[ing] a message indicating a request from the second computer network user for the selected field of the first computer network user’s to [P]rocess the message to provide the selected field of the first computer network user’s information to the second computer network user
[P]rocess[ing] one or more customized fields of the first computer network user’s information
[R]eceiv[ing] a permission from the first computer network user to [D]etermine whether the selected field of the first computer network user’s information can be provided to the second computer network user based on the permission
[D[irect[ing] the processor to [D]etermine whether the selected field of the first computer network user’s information can be provided to the second computer network user using a unique identifier of the second computer network user
[D]etermin[ing] whether the selected field of the personal information of the second computer network user can be provided to the first computer network user using a unique identifier of the first computer network user
[D]irect[ing] the processor to [R]eceive a message indicating a request from the first computer network user for the selected field of the personal information of the second computer network user and to [P]rocess the message to provide the selected field of the personal information to the first computer network user
[D]irect[ing] the processor to [R]eceive a message indicating a request from the second computer network user for the selected field of the personal information of the second computer network user and to [P]rocess the message to provide the selected field of the personal information to the first computer network user
Because FP3 recites the above recited functions, the Examiner concludes that FP3 meets Invocation Prong (B).
iii. 3-Prong Analysis: Prong (C)
Based upon a review of the entire Functional Phrase 3, while one of ordinary skill in the art would recognize that “instructions” or “logic” implies some structures, it is not alone a sufficient structure for performing the claimed function.5 Thus, the Examiner finds that Functional Phrase 3 does not contain sufficient structure for performing the entire claimed function that is set forth within Functional Phrase 3.
Corresponding structure for Functional Phrase 3
Once a claimed phrase invokes 35 U.S.C. § 112 6th paragraph, the next step is to determine the corresponding structure. (MPEP § 2181 II). In order to satisfy the requirements of 35 U.S.C. § 112, second paragraph, there must be identified in the applications’ disclosure a single structure and/or algorithm which performs the function of FP3.
The Examiner has carefully reviewed the original disclosure to determine the corresponding structure for FP3. In reviewing the original disclosure, the Examiner finds that the ‘222 Patent discloses:
the system 102, primarily through operation of a data exchange engine 156 of exchange engine layer 150 and permissions data 166 of database 160, provides the capability for the friend to manage access to personal information by directing the contact manager 148 to share this or any other personal information with the user for a defined period of time only After expiration of this defined period, the user will no longer be able to view the friend's information.
(‘222 Patent at c.4, ll.31-39). In lieu of above, the Examiner finds that the ‘222 Patent discloses engines, managers, and databases interacting together to protect and limit access to computer networks user’s personal information stored in a computer network. (Id. at Figure 1). From this perspective, one of ordinary skill in the art would look to the rest of the ‘222 Patent for specific disclosure of the specific instructions (i.e., algorithms) required to satisfy the function of Functional Phrase 3. In ex