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 examination of the ‘222 Patent, the Examiner finds 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 data exchange engine (DXE) 156 supports the exchange of information between users of the system 102. The DXE 156 provides interfaces to enable users to request information from each other, approve or deny requests for information, and provide authorized information. The DXE 156 also supports the definition and enforcement of rule-based behaviors on the availability of information, sharing of information in a global space (public directory), sharing of simple text messages, and event triggers based on requests and changes to authorized information.
In requesting information from another system 102 user, registered users may request either globally defined InfoCards (see the description of InfoCards above) of information, or globally defined fields of information from the other user. The DXE 156 provides event notification hooks for requests for information and messages. Users may approve or deny the request by InfoCard or field, and apply rules regarding access to any provided information, e.g., specifying an expiration date for access to the information. Furthermore, users may also provide any field or InfoCard to another user at any time.
The DXE 156 further provides interfaces for registered users to view information made available to them from other registered users. It is noted that when a user changes a field that has been shared, the changed information is available to other users immediately. This functionality is operative due to the DXE 156 architecture, which provides event notification hooks for changes to information that is available to other users.
The DXE 156 is operative to track relationships between users in a Data_Sharing table. Each record represents what is shared from user A to user B. A record exists only if user A is sharing one or fields with user B. In addition, if user B shares information with user A, an additional record appears in the Data_Sharing table. It is in this table that any rules regarding the sharing of information between the two users is defined.
As previously described, users can share information either by specifying individual fields of information, or by using the InfoCards feature. This sharing information is tracked by the DXE 156 in the Data_Sharing_Field_ID and Data_Sharing_Group_ID tables (shown below), respectively. The DXE 156 architecture explicitly normalizes this data in the database 160 to enable the capability to perform reverse lookups of shared information, e.g., finding all users that you are sharing your home phone number with. It is noted that there is one InfoCard that the DXE 156 treats specially, the Directory InfoCard. The Directory InfoCard is given the same ID for all users (which uniquely identifies it as the Directory InfoCard) and has the behavior attribute that all fields defined within this Infocard are implicitly shared with all other users. For example, when an application in the application layer 140 requests the information being shared by user A with user B, the system 102 returns all of the fields explicitly shared by A with B, and all the fields that A has placed in his/her Directory InfoCard.
In at least one embodiment, the primary database 160 tables with which the DXE 156 interacts to provide the capabilities described above are presented. Presentation of these exemplary tables is not intended to limit practice of the invention to utilization of only these tables or the specific data table structure presented, for those skilled in the art will recognize that a different data and table architecture may be implemented and still fall within the scope of the invention.
(‘222 Patent 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 providing definition and enforcement of rule-based behaviors that enable requests for personal information to either be provided or not, 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 FP3.6
In light of the finding that Functional Phrase 3 invokes 35 U.S.C. § 112 6th paragraph, Functional Phrase 3 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 performing the functions above, or its equivalent.
Claim Rejections – 35 U.S.C. § 112
35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Written Description
Claims 1-4, 6-8 and 10-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect to the limitations of claims 1, 10-12 and 18-22, the Examiner finds that claims 1, 10-12 and 18-22 recite “instruction(s)” claim requirements that are invoking 35 U.S.C § 112 6th paragraph (i.e., See §§ IX.B.(1)-(3)). Of the three (3) Functional Phrases invoking 35 U.S.C § 112 6th paragraph, the Examiner finds all three (3) of them indefinite. (See §§ IX.B.(1)-(3); also see § X.(B), infra). In this light, the Examiner finds that the specific “instruction ” claim requirements (i.e., “Terminating Instructions,” “Determining I/Providing Instructions,” and “Determining II/Receiving/Processing Instructions” as set forth supra) are insufficiently described in the original specification. The MPEP states,
[O]riginal claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV.
The level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. Ariad, 598 F.3d at 1351, 94 USPQ2d at 1172; Capon v. Eshhar, 418 F.3d 1349, 1357-58, 76 USPQ2d 1078, 1083-84 (Fed. Cir. 2005). Computer-implemented inventions are often disclosed and claimed in terms of their functionality. For computer-implemented inventions, the determination of the sufficiency of disclosure will require an inquiry into the sufficiency of both the disclosed hardware and the disclosed software due to the interrelationship and interdependence of computer hardware and software. The critical inquiry is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 682. 114 USPQ2d 1349, 1356 (citing Ariad Pharm., Inc. V. Eli Lilly & Co, 598 F.3d 1336, 1351, 94 USPQ2d 1161, 1172 (Fed. Cir. 2010) in the context of determining possession of a claimed means of accessing disparate databases).
(MPEP § 2161.01.(I); emphasis added).
From this perspective, and as discussed above, Applicant’s specification in the ‘222 Patent discloses the ‘algorithm[s]’ in no more detail than the claims themselves. (See §§ IX.B.(1)-(3), supra). For a computer-implemented invention, the algorithm must be of sufficient detail that one of ordinary skill in the art would understand how the inventor intended the functions to be performed. Applicant’s disclosure, however, lacks the required detailed algorithm.
Thus, as such, the Examiner concludes that there is insufficient indication in the specification that Owner had possession of a system comprising “Terminating Instructions,” “Determining I/Providing Instructions,” and “Determining II/Receiving/Processing Instructions.”
Claims 2-4, 6-8 and 13-17 are rejected in light of their dependency from at least original independent claims 1 and 10.
With respect to the limitations of claim 1, the Examiner finds that claims 21. 23 and 24 recite ,
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
(Aug 2021 Claim Amendment at claim 1; emphasis added). The Examiner finds that recitation to defining a time limit recited in the claim is not sufficiently described in the ‘222 Patent. First, the Examiner finds insufficient support for the claim requirements in the ‘222 Patent as indicated by Applicant. (See “Statement of Support…” in Aug 2021 Preliminary Amendment at 8). To support the Examiner’s position, the Examiner finds that the ‘222 Patent explicitly discloses the time limit/period being defined before automatically terminating computer network access to a first computer network user’s information. (See ‘222 Patent at c.3, ll.34-35, 41-46; c.4, ll.31-39; c.5, ll.3-6). While one of ordinary skill in the art would recognize that the ‘222 Patent discloses defining the time limit/period when either personal information is either enter or edited (i.e., utilization of the term “defined” as being past tense), the Examiner finds that the ‘222 Patent does not discloses actively and dynamically defining a time limit during the actual process of automatically terminating computer network access to a first computer network user’s information, as recited.
Thus, as such, the Examiner concludes that there is insufficient indication in the specification that Applicant had possession of “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” as recited. [Emphasis added].
Claims 2-4 and 6-8 are similarly rejected based on their dependency from independent claim 1.
35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4, 6-8 and 10-22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
With respect to claims 1, 10-12 and 18-22, the claim elements “Terminating Instructions,” “Determining I/Providing Instructions,” and “Determining II/Receiving/Processing Instructions” (i.e., FP1-FP3) are limitations that invoke 35 U.S.C. 112, sixth paragraph. However, the written description fails to clearly link or associate the disclosed algorithms, steps, or acts to the claimed functions such that one of ordinary skill in the art would recognize what algorithms, steps, or acts perform the claimed function.
With respect to the “Terminating Instructions,” the phrase is indefinite because–to one of ordinary skill in this art–the metes and bounds of the phrase cannot be reasonably determined. The Examiner finds that the ‘222 Patent’s written description fails to disclose the corresponding algorithms, steps, or acts for the claimed function. (See § IX.B.(1) for explanation supra).
With respect to the “Determining I/Providing Instructions,” the phrase is indefinite because–to one of ordinary skill in this art–the metes and bounds of the phrase cannot be reasonably determined. The Examiner finds that the ‘222 Patent’s written description fails to disclose the corresponding algorithms, steps, or acts for the claimed function. (See § IX.B.(2) for explanation supra).
With respect to the “Determining II/Receiving/Processing Instructions,” the phrase is indefinite because–to one of ordinary skill in this art–the metes and bounds of the phrase cannot be reasonably determined. The Examiner finds that the ‘222 Patent’s written description fails to disclose the corresponding algorithms, steps, or acts for the claimed function. (See § IX.B.(1) for explanation supra).
Therefore, the claims are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112, sixth paragraph; or
(b) Amend the written description of the specification such that it expressly recites what algorithms, steps, or acts perform the claimed function without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding algorithms, steps, or acts so that one of ordinary skill in the art would recognize what algorithms, steps, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding algorithms, steps, or acts for performing the claimed function and clearly links or associates the algorithms, steps, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding algorithms, steps, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 2-4, 6-8, 11-17 and 19-22 are rejected in light of their dependency from at least original independent claims 1, 10 and 18.
Claims 1-4, 6-8 and 10-22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 1 and 10 recite the limitation “a computer network” in line 2. Claim 18 recites the limitation “a computer network” in line 3.
Claims 1, 10 and 18 further recites the limitation “a computer network " in lines 15, 9, 11, respectively 17 after the prior recitation to “a computer network” in lines 2, 3, respectively. It is unclear and indefinite to whether the “computer network” in claims 1, 10 and 18 is a single computer network structure or multiple computer network structures. Further clarification is required to either provide proper antecedent basis or further differentiate the claim requirements. The claims are examined as a single computer network structure.
Claims 2-4, 6-8, 11-17 and 19-22 are rejected in light of their dependency from at least original independent claims 1, 10 and 18.
Claim 1 recites the limitation “memory” in line 3; and claims 2-4, 6 and 7 recite the limitation “memory” in line 2. Claim 10 recites the limitation “memory” in line 3; and again in lines 5, 8 and 18. Claim 18 recites the limitation “memory” in line 5; and again in lines 7, 10 and
Claims 19-21 further recite the limitation “memory " in line 2, respectively. It is unclear and indefinite to whether the “memory” in claims 1, 10 and 18 is a single memory structure or multiple memory structures. Further clarification is required to either provide proper antecedent basis or further differentiate the claim requirements. The claims are examined as a single memory structure.
Claims 2-4, 6-8, 11-17 and 19-22 are rejected in light of their dependency from at least original independent claims 1, 10 and 18.
Claim 1 recites the limitation “the personal information” in line 21; the limitation “the second party” in lines 21-22; and the limitation “the first party” in line 22. Claim 10 recites the limitation “the identity” in line 3. There is insufficient antecedent basis for these limitations in the claim. Further clarification is required to either provide proper antecedent basis or further differentiate the claim requirements.
Claims 13-17 recite the limitations in regards to further steps being performed by the method (i.e., “receiving a message… and processing the message…,” “receiving a message… and providing…,” “transmitting a message…,” ““receiving a permission… to determine…,” and “transmitting….” It is unclear and indefinite to whether these steps are performed in a vacuum or are also performed by “executing instructions stored in memory” as the preceding claim requirements do. Further clarification is required to either provide proper antecedent basis or further differentiate the claim requirements. The Examiner recommends that Applicant either (1) remove the “executing instructions stored in memory” claim requirements in the preceding claim, or (2) add the “executing instructions stored in memory” claim requirements to claims 13-17, or to any of the claims where it is required.
The Examiner finds that because claims 1-4, 6-8 and 10-22 are indefinite under 35 U.S.C. §112 second paragraph as outlined above, it is impossible to properly construe claim scope at this time. See e.g. Honeywell International Inc. v. ITC, 68 USPQ2d 1023, 1030 (Fed. Cir. 2003) (“Because the claims are indefinite, the claims, by definition, cannot be construed.”). However, in accordance with MPEP § 2173.06 and the USPTO’s policy of trying to advance prosecution by providing art rejections even though these claims are indefinite, the claims are construed and the art is applied as much as practically possible.
Broadening of Examined Claims
Broadening of Examined Claims’ Limitations
Claim 1
As set forth infra, the Examiner further finds that claim enlarges the scope of the patent, i.e., a claim which is greater in scope than each and every claim of the original patent.
Specifically, the Examiner finds that amended original claim 1 (“RI Claim 1”) of the instant ‘450 Reissue Application recites,
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,
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
(“Broad RI Claim 1 Information”; Aug 2021 Claim Amendment, RI Claims 1; emphasis added). The Examiner finds that now patented claim 1 of the ‘222 Patent (“Patent Claim 1”), in part, recites,
determine an identity of a first party to be provided personal information,
determine whether a selected field of the personal information of a second party can be provided to the first party,
determine whether the first party is attempting to access the selected field of [the] personal information of the second party during a defined period of time as defined by the second party, and
if the first party is determined to have access to the selected field of the personal information of the second party within the defined period of time, provide the selected field of the personal information of the second party to the first party
(“Narrow Patent Claim 1 Information”; ‘222 Patent, claim 1; emphasis added).
The Examiner finds that the Broad RI Claim 1 Information is broader than the Narrow Patent Claims 1/12 Deriving/Generating Implementation. Specifically, the Examiner finds that Broad RI Claim 1 does not have the requirement of the information of the user being “personal.” (See Aug 2021 Claim Amendment Claim Amendment at claim 1 with replacement of “personal information” with “information.”) (“RI Claim 1 Personal Information Omission”; emphasis added).
Thus, since the RI Claim 1 Personal Information Omission provides claims which are broader/greater in scope than each and every claim of the original patent, the Examiner concludes that at least RI Claim 1 is broadened reissue claim as compared to the claims of the ‘222 Patent.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
U.S. Patent No. 8,812,548
Claims 10-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11, respectively, (“‘548 ODP Claims”) of U.S. Patent No. 8,82,548 (“‘548 Patent”) in view of Robertson (U.S. Patent No. 6,269,369).
With respect to the limitations of claim 10, although the claims at issue are not identical, they are not patentably distinct from each other because the scopes of the pending claim 10 is identical or similar and/or covered by the ‘548 ODP Claims. The Examiner finds that claim 10 of the ‘450 Reissue Application has essentially the same claim requirements as the ‘548 ODP Claims.7 In addition, where claim 10 of the ‘450 Reissue Application and the ‘548 ODP Claims are not exactly the same, the Examiner finds that claim 10 of the ‘450 Reissue Application would be obvious variants to one of ordinary skill in the art based on engineering expediency of the ‘548 ODP Claims.
The Examiner finds that the ‘548 ODP Claims disclose all the limitations, as set forth above, except for specifically calling for the steps for performing the method being instructions stored in memory and executable by a processor.
However, a method for protecting and limiting access to a computer network comprising the steps for performing the method being instructions stored in memory and executable by a processor is known in the art. The Examiner finds that Robertson, for example, teaches an apparatus and method for maintaining and updating user sets of information in which the system allows each user to specify which of their respective contacts are permitted access to datums of their personal information. (Robertson at Abstract; c.2, ll. 47-52, c.2, l.58 – c.3, l.30; c.4, l.18 – c.5, l.64; c.7, ll.20-27; c.8, l.30 – c.10, l.16; c11, ll.38-59; c.12, ll.25-44; c.14, l.63 – c.16, l.21; see Figures 5-10, 13-14). Moreover the Examiner that Robertson discloses the system comprising personal contact manager software 343, being stored in hard disk 336 and executed in RAM 334 by CPU 332, being essentially instructions that allows the server computer system 330 to provide the functionality of the system. (Id.)
The Examiner finds that that it would have been obvious to one of ordinary skill in the art at the time of the invention was made to incorporate the steps for performing the method being instructions stored in memory and executable by a processor as described by Robertson.
A person of ordinary skill in the art would be motivated to incorporate the steps for performing the method being instructions stored in memory and executable by a processor, since it provides a mechanism to deliver greater flexibility and portability of an operating system to provide personal information exchange. In other words, such a modification would have provided an apparatus and method for personal information exchange that may be implemented at any location, thereby increasing operational efficiency of the system.
With respect to the limitations of claims 11-17, the Examiner finds that Robertson discloses an apparatus being a server computer system 330 running server software (i.e.. weber server software 342; personal contact manager software 343; and operating system software 344) executed in RAM 334 by CPU 332. (Robertson at c.4, ll.18-60). The Examiner finds that the personal contact manager software 343 is essentially instructions that allows the server computer system 330 to provide the functionality of the system. (Id. at Abstract; c.2, ll. 47-52, c.2, l.58 – c.3, l.30; c.4, l.18 – c.5, l.64; c.7, ll.20-27; c.8, l.30 – c.10, l.16; c11, ll.38-59; c.12, ll.25-44; c.14, l.63 – c.16, l.21; see Figures 5-10, 13-14). The Examiner finds that Robertson discloses this functionality including processing requests for personal information, processing customized fields of the personal information; determining access for a user to any other users personal information, and variations thereof. (Id.) Moreover, the Examiner further finds that this functionality is determined based upon a first and/or second user logging into the system. (Id.)
The Examiner finds that that it would have been obvious to one of ordinary skill in the art at the time of the invention was made to incorporate the steps/instructions and functionality of instructions/steps od claims 11-17 as described by Robertson.
A person of ordinary skill in the art would be motivated to incorporate the steps/instructions and functionality of instructions/steps od claims 11-17, since it provides a mechanism to: share information between multiple users; post changes to a user’s own information for the benefits of others; and provide practical notification methodology to notify users when personal information for particular user change. In other words, such a modification would have provided an apparatus and method for personal information exchange that is dynamic and user friendly to informational changes, thereby increasing operational efficiency of the system.
Claim Rejections – 35 U.S.C. § 251
Broadened Claim
Claims 1-4 and 6-8 are rejected under 35 U.S.C. 251 as being broadened in a reissue application filed outside the two year statutory period. The Examiner finds that amended original claim 1 is broadened with the removal of the claim requirement “personal” from “personal information.” (See § XI.A, supra; emphasis added to RI Claim 1 Personal Information Omission). A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects.
Original Patent Requirement
Claims 1-4 and 6-8 are rejected under 35 U.S.C. 251 as being in violation of the original patent requirement.
Section 251 requires that reissue is for “the invention disclosed in the original patent.” In order to satisfy the original patent requirement, “[i]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.” U.S. Indus. Chems., Inc. v. Carbide & Carbon Chems. Corp., 315 U.S. 668, 676 (1942). Furthermore, “it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.” Id. In other words, the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354, 1362 (Fed. Cir. 2014).
In the instant case, it does not appear from the face of the original patent that Applicant intended to cover an information exchange system/method/computer readable medium (CRM) for protecting and limiting access to a computer network user’s information stored in a computer network in which the user’s information is not “personal information. (‘222 Patent at c.1, ll.16-20, 48-52; c.3, ll.15-33; c.4, ll.14-62; c.5, ll.3-6; c.13, ll.54-61; original claims 1, 10 , 18). The Technical Problem first makes clear that the invention is drawn to a system/method/CRM, which can independently maintain, manage and facilitate user’s personal information, via rules and permissions, to enable/allow a sharing of only desired personal information. (Id. at c.1, ll.16-20, c.2, ll.7-9, 16-45). The Examiner finds the problem being solved by particular device of Figure 1. (Id. at c.2,l.57 – c.5, l.6). It is readily apparent that the entire point of the ‘222 Patent was to solve the problem of maintaining, managing and facilitating user’s personal information in order to enable/allow a sharing of only desired personal information. (Id. at c.1, ll.16-20, 48-52; c.3, ll.15-33; c.4, ll.14-62; c.5, ll.3-6; c.13, ll.54-61; original claims 1, 10 , 18). The claims as filed and during prosecution were always drawn to: an information exchange system/method/CRM for protecting and limiting access to a computer network user’s information stored in a computer network comprising steps of (1) determining an identity of a first computer network user to be provided a second computer network user’s personal information; (2) determining whether a selected field of the first computer network user’s personal information can be provided to the second computer network user; (3) determining whether a selected field of the personal information of the second computer network user can be provided to the first computer network user; (4) determining whether the second computer network user’s personal information, that can be provided to the first computer network user, is limited to a defined period; and (5) providing the second computer network user’s personal information to the to the first computer network user if the first computer network user is determined to have access to second computer network user’s personal information during the defined period. (Id. at c.4, l.14 – c.5, l.6).
This situation is also somewhat analogous to the recent Federal Circuit decision in Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346 (Fed. Cir. 2019). In Forum US, the original patent claims were drawn to a workpiece having a body member and a plurality of arbors (arbors circled):
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Forum US, 926 F.3d at 1348-49. In reissue, patentee broadened the claims to remove the requirement as to arbors. (Id. at 1349). The Federal Circuit determined that the new claims did not comply with the original patent requirement of section 251 because the face of the patent did not disclose any arbor-less embodiment, and the abstract, summary of invention, and all disclosed embodiments including arbors. (Id. at 1352.) The Court concluded that the specification did not clearly and unequivocally disclose an embodiment without arbors, thus the original patent requirement was violated by broadening the claims to no longer require arbors. (Id.) Similarly, the ‘222 Patent here does not clearly and unequivocally disclose any embodiment that includes: an information exchange system/method/CRM for protecting and limiting access to a computer network user’s information stored in a computer network comprising the steps of maintaining, managing and facilitating user’s information, in which the user’s information is not personal information. Thus, to broaden the claims to permit such an embodiment runs afoul of the original patent requirement.
Claims 2-4 and 6-8 are similarly rejected based on their dependency from independent claim 1, respectively.
Claim Rejections – 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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”).
With respect to the limitations of claim 1, Robertson discloses
[a]n information exchange system for protecting and limiting access to a computer network user’s information stored in a computer network comprising:
In this regard, the Examiner finds that Robertson discloses an apparatus and method for maintaining and updating user sets of information in which the system allows each user to specify which of their respective contacts are permitted access to datums of their personal information. (Robertson at Abstract; c.2, ll. 47-52, c.2, l.58 – c.3, l.30; c.4, l.18 – c.5, l.64; c.7, ll.20-27; c.8, l.30 – c.10, l.16; c11, ll.38-59; c.12, ll.25-44; c.14, l.63 – c.16, l.21; see Figures 5-10, 13-14).
a computing device having a processor executing instructions 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
As set forth supra, the Examiner finds that Functional Phrase 1 does invoke 35 U.S.C. §112, 6th paragraph. (See § IX.B.(1) supra). In addition, the Examiner finds that Functional Phrase 1 as recited in claim 1 is indefinite. (See § X.B supra). In this light and to advance prosecution by providing art rejections even though this claim is indefinite, the Examiner construes the ‘instructions …’ as instructions, that can be executed by a computer/processing device, 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.
From this perspective, the Examiner finds that Robertson discloses an apparatus being a server computer system 330 running server software (i.e.. weber server software 342; personal contact manager software 343; and operating system software 344) executed in RAM 334 by CPU 332. (Robertson at c.4, ll.18-60). The Examiner finds that the personal contact manager software 343 is essentially instructions that allows the server computer system 330 to provide the functionality of the system. (Id. at Abstract; c.2, ll. 47-52, c.2, l.58 – c.3, l.30; c.4, l.18 – c.5, l.64; c.7, ll.20-27; c.8, l.30 – c.10, l.16; c11, ll.38-59; c.12, ll.25-44; c.14, l.63 – c.16, l.21; see Figures 5-10, 13-14). Specifically, the personal contact manager software 343 allows (1) a plurality of users to enter and edit personal information into the database 340; (2) each user to develop relational database relationships between a subset of the plurality of users based on multiple categories; and (3) each user to grant or deny access to their personal information on a field by field basis. (Id.; emphasis at Abstract; c.2, ll. 47-52, c.2, l.58 – c.3, l.30; c.5, ll.5-64; c.6, ll.14-26; c.8, l.30 – c.10, l.16). The Examiner finds that Robertson discloses, through the utilization of the system as disclosed in Figure 5, the personal contact manager software 343 providing all users the ability to: (1) log-on, with the system determining a user’s ID upon log-on; (2) based upon the user’s ID, determine which other user’s personal data can be shared with the user logging on; and (3) sharing the personal information of the other user on a field by field basis based upon the permission granted to the logging on user. (Id. at Abstract; c.2, ll. 47-52, c.2, l.58 – c.3, l.30; c.4, l.18 – c.5, l.64; c.7, ll.20-27; c.8, l.30 – c.10, l.16; c11, ll.38-59; c.12, ll.25-44; c.14, l.63 – c.16, l.21; see Figures 5-10, 13-14).
The Examiner finds that the Robertson discloses all the limitations, as set forth above, except for specifically calling for the determining whether the permission-granted personal information shared data is limited to a time period; and providing the permission-granted personal information shared data if it is determined that the permission-granted personal information shared data is being accessed within the time period.
However, a data providing device and method determining whether information being shared is limited to a time period and providing the information if it is determined that the information requested is being accessed within the time period is known in the art. The Examiner finds that Tsukakoshi, for example, teaches a data transmission method for transmitting data from a first device to a second device which is dependent on a predetermined time period including a current date. (Tsukakoshi at Abstract; c.4, ll.5-20; c.6, ll.19-23; c.8, ll.6-12; c.8, l.56 – c.9, l.7; c.9, ll.26-67; see Figure 5). From this perspective, the Examiner find that Tsukakoshi sufficiently teaches determining whether information being shared is limited to a time period and providing the information if it is determined that the information requested is being accessed within the time period. (Id.)
The Examiner finds that that it would have been obvious to one of ordinary skill in the art at the time of the invention was made to incorporate determining whether information being shared is limited to a time period and providing the information if it is determined that the information requested is being accessed within the time period as described by Tsukakoshi to the determining whether personal information may be shared step/instructions of the method of Robertson.
A person of ordinary skill in the art would be motivated to provide determining whether information being shared is limited to a time period and providing the information if it is determined that the information requested is being accessed within the time period, since it provides a mechanism to transfer data that matches a predetermined condition; and provide only certain data related material related to that predetermined condition, instead of all the available data. (Id. at c.4, ll.5-20). In other words, such a modification would have provided an information exchange system and method that provides only desired and required informational data, thereby increasing the overall efficiency of the information exchange system and method.
Moreover, the Examiner finds that incorporating determining whether information being shared is limited to a time period and providing the information if it is determined that the information requested is being accessed within the time period with the as described by Tsukakoshi to determining whether personal information may be shared step/instructions of the method of Robertson would terminate computer network access to a first computer network user’s information upon an expiration of a defined period of time.
This combination of references also satisfies at least rationale C identified by the Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007): "Use of known technique to improve similar devices (methods, or products) in the same way." (See MPEP 2143.) The elements of the Graham factual inquiry for supporting a finding of obviousness based on this rationale are provided below:
(1) A finding that the prior art (Robertson) contained a “base” device (a device for transmitting user sets of information) upon which the claimed invention can be seen as an “improvement” for including determining whether information being shared is limited to a time period and providing the information if it is determined that the information requested is being accessed within the time period in order to provide only desired and required informational data.
(2) A finding that the prior art (Tsukakoshi) contained a "comparable" device (a device for transmitting user sets of information) that has been improved in the same way as the claimed invention, i.e. the Tsukakoshi device(s) for transmitting user sets of information utilizes determining whether information being shared is limited to a time period and providing the information if it is determined that the information requested is being accessed within the time period in order to transfer data that matches a predetermined condition; and provide only certain data related material related to that predetermined condition, instead of all the available data.
(3) A finding that one of ordinary skill in the art could have applied the known “improvement” technique in the same way to the “base” device (the Robertson device for transmitting user sets of information) and the results would have been predictable to one of ordinary skill in the art. Here, because Robertson indicates that the device can be utilized for transmitting user sets of information that is sufficient to share the personal information of the other user on a field by field basis based upon the permission granted to the logging on user and Tsukakoshi teaches a manner for improving this, the results would be predictable. In other words, the Tsukakoshi successful implementation or providing determining whether information being shared is limited to a time period and providing the information if it is determined that the information requested is being accessed within the time period proves that the implementation is both successful and entirely predictable. In Robertson, the device for transmitting user sets of information modified according to Tsukakoshi would be capable of incorporating determining whether information being shared is limited to a time period and providing the information if it is determined that the information requested is being accessed within the time period to carry out the function of transferring data that matches a predetermined condition; and providing only certain data related material related to that predetermined condition, instead of all the available data that provides only desired and required informational data, as evidenced by the success in the Tsukakoshi device for transmitting user sets of information.
In that regard, the Examiner asserts the use of known technique to improve similar devices in the same way is obvious to one of ordinary skill in the art. That is, the manner of enhancing a particular device (transferring data that matches a predetermined condition; and providing only certain data related material related to that predetermined condition, instead of all the available data that provides only desired and required informational data including determining whether information being shared is limited to a time period and providing the information if it is determined that the information requested is being accessed within the time period) was made part of the ordinary capabilities of one skilled in the art based upon the teaching of such improvement in Tsukakoshi. Accordingly, one of ordinary skill in the art would have been capable of applying this known “improvement” technique in the same manner to the prior art device for transmitting user sets of information of Robertson and the results would have been predictable to one of ordinary skill in the art, namely, one skilled in the art would have readily recognized that transferring data that matches a predetermined condition; and providing only certain data related material related to that predetermined condition, instead of all the available data that provides only desired and required informational data including determining whether information being shared is limited to a time period and providing the information if it is determined that the information requested is being accessed within the time period in Robertson would positively provide a means to carry out, in addition to sharing the personal information of the other user on a field by field basis based upon the permission granted to the logging on user a new function of transferring data that matches a predetermined condition; and providing only certain data related material related to that predetermined condition, instead of all the available data that provides only desired and required informational data, since such functionality is taught to be highly desirable by Tsukakoshi, as set forth above.
Thus, the rationale to support a conclusion that the claim would have been obvious is that a method of enhancing a particular class of devices (methods, or products) has been made part of the ordinary capabilities of one skilled in the art based upon the teaching of such improvement in other situations. One of ordinary skill in the art would have been capable of applying this known method of enhancement to a “base” device (method, or product) in the prior art and the results would have been predictable to one of ordinary skill in the art. The Supreme Court in KSR noted that if the actual application of the technique would have been beyond the skill of one of ordinary skill in the art, then using the technique would not have been obvious. KSR, 550 U.S. at 398, 82 USPQ2d at 1396. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
With respect to the limitations of claims 2-4, 6 and 7, Robertson and Tsukakoshi teaches and/or renders obvious
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 (claim 2);
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 (claim 3);
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 (claim 4);
instructions (executable by a processor) stored in memory to process one or more customized fields of the first computer network user’s information (claim 6); and
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 (claim 7).
As set forth supra, the Examiner finds that Functional Phrase 3 does invoke 35 U.S.C. §112, 6th paragraph. (See § IX.B.(3) supra). In addition, the Examiner finds that Functional Phrase 3 as recited in claims 2-4, 6 and 7 is indefinite. (See § X.B supra). In this light and to advance prosecution by providing art rejections even though this claim is indefinite, the Examiner construes the ‘instructions …’ as instructions, that can be executed by a computer/processing device, comprising: some type of software which provides the capability of performing the functions above, or its equivalent.
From this perspective, the Examiner finds that Robertson discloses an apparatus being a server computer system 330 running server software (i.e.. weber server software 342; personal contact manager software 343; and operating system software 344) executed in RAM 334 by CPU 332. (Robertson at c.4, ll.18-60). The Examiner finds that the personal contact manager software 343 is essentially instructions that allows the server computer system 330 to provide the functionality of the system. (Id. at Abstract; c.2, ll. 47-52, c.2, l.58 – c.3, l.30; c.4, l.18 – c.5, l.64; c.7, ll.20-27; c.8, l.30 – c.10, l.16; c11, ll.38-59; c.12, ll.25-44; c.14, l.63 – c.16, l.21; see Figures 5-10, 13-14). The Examiner finds that Robertson discloses this functionality including processing requests for personal information, processing customized fields of the personal information; determining access for a user to any other users personal information, and variations thereof. (Id.) Moreover, the Examiner further finds that this functionality is determined based upon a first and/or second user logging into the system. (Id.)
With respect to the limitations of claim 8, Robertson and Tsukakoshi teaches and/or renders obvious
comprising a computer network database configured to store the selected field of the first computer network’s information.
In this regard, the Examiner finds that Robertson discloses the server computer system 330 comprising a database 340 that stores the respective tables 350 which include the numerous fields of personal information. (Robertson at Abstract; c.4, ll.41-45; c.4, l.61 – c.6, l.39; see Figures 5, 6).
With respect to the limitations of claims 10 and 18, Robertson discloses
[a]n information exchange method for protecting and limiting access to a computer network user’s information stored in a computer network comprising; and
[a] computer readable storage medium having embodied thereon a program, the program being executable by a processor to perform a method for protecting and limiting access to a computer network user’s information stored in a computer network, the method comprising:
In this regard, the Examiner finds that Robertson discloses an apparatus and method for maintaining and updating user sets of information in which the system allows each user to specify which of their respective contacts are permitted access to datums of their personal information. (Robertson at Abstract; c.2, ll. 47-52, c.2, l.58 – c.3, l.30; c.4, l.18 – c.5, l.64; c.7, ll.20-27; c.8, l.30 – c.10, l.16; c11, ll.38-59; c.12, ll.25-44; c.14, l.63 – c.16, l.21; see Figures 5-10, 13-14). Moreover the Examiner that Robertson discloses the system comprising personal contact manager software 343, being stored in hard disk 336 and executed in RAM 334 by CPU 332, being essentially instructions that allows the server computer system 330 to provide the functionality of the system. (Id.)
executing instructions stored in memory to determine an identity of a first computer network user to be provided a second computer network user’s information,
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 [party] computer network user is attempting to access, via a computer network, the selected field of personal information of the second [party] computer network user during a defined period of time as defined by the second [party] 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
As set forth supra, the Examiner finds that Functional Phrase 2 does invoke 35 U.S.C. §112, 6th paragraph. (See § IX.B.(2) supra). In addition, the Examiner finds that Functional Phrase 2 as recited in claims 10-12 is indefinite. (See § X.B supra). In this light and to advance prosecution by providing art rejections even though this claim is indefinite, the Examiner construes the ‘instructions …’ 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.
From this perspective, the Examiner finds that Robertson discloses an apparatus being a server computer system 330 running server software (i.e.. weber server software 342; personal contact manager software 343; and operating system software 344) executed in RAM 334 by CPU 332. (Robertson at c.4, ll.18-60). The Examiner finds that the personal contact manager software 343 is essentially instructions that allows the server computer system 330 to provide the functionality of the system. (Id. at Abstract; c.2, ll. 47-52, c.2, l.58 – c.3, l.30; c.4, l.18 – c.5, l.64; c.7, ll.20-27; c.8, l.30 – c.10, l.16; c11, ll.38-59; c.12, ll.25-44; c.14, l.63 – c.16, l.21; see Figures 5-10, 13-14). Specifically, the personal contact manager software 343 allows (1) a plurality of users to enter and edit personal information into the database 340; (2) each user to develop relational database relationships between a subset of the plurality of users based on multiple categories; and (3) each user to grant or deny access to their personal information on a field by field basis. (Id.; emphasis at Abstract; c.2, ll. 47-52, c.2, l.58 – c.3, l.30; c.5, ll.5-64; c.6, ll.14-26; c.8, l.30 – c.10, l.16). The Examiner finds that Robertson discloses, through the utilization of the system as disclosed in Figure 5, the personal contact manager software 343 providing all users the ability to: (1) log-on, with the system determining a user’s ID upon log-on; (2) based upon the user’s ID, determine which other user’s personal data can be shared with the user logging on; and (3) sharing the personal information of the other user on a field by field basis based upon the permission granted to the logging on user. (Id. at Abstract; c.2, ll. 47-52, c.2, l.58 – c.3, l.30; c.4, l.18 – c.5, l.64; c.7, ll.20-27; c.8, l.30 – c.10, l.16; c11, ll.38-59; c.12, ll.25-44; c.14, l.63 – c.16, l.21; see Figures 5-10, 13-14).
The Examiner finds that the Robertson discloses all the limitations, as set forth above, except for specifically calling for the determining whether the permission-granted personal information shared data is limited to a time period; and providing the permission-granted personal information shared data if it is determined that the permission-granted personal information shared data is being accessed within the time period.
However, a data providing device and method determining whether information being shared is limited to a time period and providing the information if it is determined that the information requested is being accessed within the time period is known in the art. The Examiner finds that Tsukakoshi, for example, teaches a data transmission method for transmitting data from a first device to a second device which is dependent on a predetermined time period including a current date. (Tsukakoshi at Abstract; c.4, ll.5-20; c.6, ll.19-23; c.8, ll.6-12; c.8, l.56 – c.9, l.7; c.9, ll.26-67; see Figure 5). From this perspective, the Examiner find that Tsukakoshi sufficiently teaches determining whether information being shared is limited to a time period and providing the information if it is determined that the information requested is being accessed within the time period. (Id.)
The Examiner finds that that it would have been obvious to one of ordinary skill in the art at the time of the invention was made to incorporate determining whether information being shared is limited to a time period and providing the information if it is determined that the information requested is being accessed within the time period as described by Tsukakoshi to the determining whether personal information may be shared step/instructions of the method of Robertson.
A person of ordinary skill in the art would be motivated to provide determining whether information being shared is limited to a time period and providing the information if it is determined that the information requested is being accessed within the time period, since it provides a mechanism to transfer data that matches a predetermined condition; and provide only certain data related material related to that predetermined condition, instead of all the available data. (Id. at c.4, ll.5-20). In other words, such a modification would have provided an information exchange system and method that provides only desired and required informational data, thereby increasing the overall efficiency of the information exchange system and method.
This combination of references also satisfies at least rationale C identified by the Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007): "Use of known technique to improve similar devices (methods, or products) in the same way." (See MPEP 2143.) The elements of the Graham factual inquiry for supporting a finding of obviousness based on this rationale are provided below:
(1) A finding that the prior art (Robertson) contained a “base” device (a device for transmitting user sets of information) upon which the claimed invention can be seen as an “improvement” for including determining whether information being shared is limited to a time period and providing the information if it is determined that the information requested is being accessed within the time period in order to provide only desired and required informational data.
(2) A finding that the prior art (Tsukakoshi) contained a "comparable" device (a device for transmitting user sets of information) that has been improved in the same way as the claimed invention, i.e. the Tsukakoshi device(s) for transmitting user sets of information utilizes determining whether information being shared is limited to a time period and providing the information if it is determined that the information requested is being accessed within the time period in order to transfer data that matches a predetermined condition; and provide only certain data related material related to that predetermined condition, instead of all the available data.
(3) A finding that one of ordinary skill in the art could have applied the known “improvement” technique in the same way to the “base” device (the Robertson device for transmitting user sets of information) and the results would have been predictable to one of ordinary skill in the art. Here, because Robertson indicates that the device can be utilized for transmitting user sets of information that is sufficient to share the personal information of the other user on a field by field basis based upon the permission granted to the logging on user and Tsukakoshi teaches a manner for improving this, the results would be predictable. In other words, the Tsukakoshi successful implementation or providing determining whether information being shared is limited to a time period and providing the information if it is determined that the information requested is being accessed within the time period proves that the implementation is both successful and entirely predictable. In Robertson, the device for transmitting user sets of information modified according to Tsukakoshi would be capable of incorporating determining whether information being shared is limited to a time period and providing the information if it is determined that the information requested is being accessed within the time period to carry out the function of transferring data that matches a predetermined condition; and providing only certain data related material related to that predetermined condition, instead of all the available data that provides only desired and required informational data, as evidenced by the success in the Tsukakoshi device for transmitting user sets of information.
In that regard, the Examiner asserts the use of known technique to improve similar devices in the same way is obvious to one of ordinary skill in the art. That is, the manner of enhancing a particular device (transferring data that matches a predetermined condition; and providing only certain data related material related to that predetermined condition, instead of all the available data that provides only desired and required informational data including determining whether information being shared is limited to a time period and providing the information if it is determined that the information requested is being accessed within the time period) was made part of the ordinary capabilities of one skilled in the art based upon the teaching of such improvement in Tsukakoshi. Accordingly, one of ordinary skill in the art would have been capable of applying this known “improvement” technique in the same manner to the prior art device for transmitting user sets of information of Robertson and the results would have been predictable to one of ordinary skill in the art, namely, one skilled in the art would have readily recognized that transferring data that matches a predetermined condition; and providing only certain data related material related to that predetermined condition, instead of all the available data that provides only desired and required informational data including determining whether information being shared is limited to a time period and providing the information if it is determined that the information requested is being accessed within the time period in Robertson would positively provide a means to carry out, in addition to sharing the personal information of the other user on a field by field basis based upon the permission granted to the logging on user a new function of transferring data that matches a predetermined condition; and providing only certain data related material related to that predetermined condition, instead of all the available data that provides only desired and required informational data, since such functionality is taught to be highly desirable by Tsukakoshi, as set forth above.
Thus, the rationale to support a conclusion that the claim would have been obvious is that a method of enhancing a particular class of devices (methods, or products) has been made part of the ordinary capabilities of one skilled in the art based upon the teaching of such improvement in other situations. One of ordinary skill in the art would have been capable of applying this known method of enhancement to a “base” device (method, or product) in the prior art and the results would have been predictable to one of ordinary skill in the art. The Supreme Court in KSR noted that if the actual application of the technique would have been beyond the skill of one of ordinary skill in the art, then using the technique would not have been obvious. KSR, 550 U.S. at 398, 82 USPQ2d at 1396. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
With respect to the limitations of claims 11 and 12, Robertson and Tsukakoshi teaches and/or renders obvious
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 (claim 11);
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 (claim 12);
In this regard, the Examiner finds that Robertson discloses an apparatus being a server computer system 330 running server software (i.e.. weber server software 342; personal contact manager software 343; and operating system software 344) executed in RAM 334 by CPU 332. (Robertson at c.4, ll.18-60). The Examiner finds that the personal contact manager software 343 is essentially instructions that allows the server computer system 330 to provide the functionality of the system. (Id. at Abstract; c.2, ll. 47-52, c.2, l.58 – c.3, l.30; c.4, l.18 – c.5, l.64; c.7, ll.20-27; c.8, l.30 – c.10, l.16; c11, ll.38-59; c.12, ll.25-44; c.14, l.63 – c.16, l.21; see Figures 5-10, 13-14). The Examiner finds that Robertson discloses this functionality including processing requests for personal information, processing customized fields of the personal information; determining access for a user to any other users personal information, and variations thereof. (Id.) Moreover, the Examiner further finds that this functionality is determined based upon a first and/or second user logging into the system. (Id.)
With respect to the limitations of claims 13-16 and 19-22, Robertson and Tsukakoshi teaches and/or renders obvious
receiving 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 processing the message to provide the selected field of the personal information to the first computer network user. (claim 13);
receiving 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 processing the message to provide the selected field of the personal information to the first computer network user. (claim 14);
further comprising transmitting a message to one or more third computer network users when the selected field is updated, where the selected field can be provided to the one or more third computer network users (claim 15); and
further comprising receiving a permission from the second computer network user, to determine whether the selected field can be provided to the first computer network user based on the permission (claim 16).
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 (claim 19).
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 (claim 20).
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 (claim 21).
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 (claim 22).
As set forth supra, the Examiner finds that Functional Phrase 3 does invoke 35 U.S.C. §112, 6th paragraph. (See § IX.B.(3) supra). In addition, the Examiner finds that Functional Phrase 3 as recited in claims 19-22 is indefinite. (See § X.B supra). In this light and to advance prosecution by providing art rejections even though this claim is indefinite, the Examiner construes the ‘instructions …’ as instructions, that can be executed by a computer/processing device, comprising: some type of software which provides the capability of performing the functions above, or its equivalent.
From this perspective, the Examiner finds that Robertson discloses an apparatus being a server computer system 330 running server software (i.e.. weber server software 342; personal contact manager software 343; and operating system software 344) executed in RAM 334 by CPU 332. (Robertson at c.4, ll.18-60). The Examiner finds that the personal contact manager software 343 is essentially instructions that allows the server computer system 330 to provide the functionality of the system. (Id. at Abstract; c.2, ll. 47-52, c.2, l.58 – c.3, l.30; c.4, l.18 – c.5, l.64; c.7, ll.20-27; c.8, l.30 – c.10, l.16; c11, ll.38-59; c.12, ll.25-44; c.14, l.63 – c.16, l.21; see Figures 5-10, 13-14). The Examiner finds that Robertson discloses this functionality including processing requests for personal information, processing customized fields of the personal information; determining access for a user to any other users personal information, and variations thereof. (Id.) Moreover, the Examiner further finds that this functionality is determined based upon a first and/or second user logging into the system. (Id.)
With respect to the limitations of claim 17, Robertson and Tsukakoshi teaches and/or renders obvious
transmitting to a database at least one field of the personal information of a second computer network user.
In this regard, the Examiner finds that Robertson discloses the server computer system 330 comprising a database 340 that stores the respective tables 350 which include the numerous fields of personal information. (Robertson at Abstract; c.4, ll.41-45; c.4, l.61 – c.6, l.39; see Figures 5, 6). The Examiner finds that Robertson discloses the personal contact manager software 343 facilitating the storage of the fields of personal information in the respective tables 350 of the database 340. (Id.)
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
U.S. Publication No. 2002/0069113 to Stern is a teaching of method and apparatus for disseminating information including a database which has information associated to a time period in which the information is considered valid.
U.S. Patent No. 7,233,948 to Shamoon et al. is a teaching of providing rules/permissions including a time period in which the protected information may be used.
Conclusion
Applicant is respectfully reminded that any suggestions or examples of claim language provided by the Examiner are just that—suggestions or examples—and do not constitute a formal requirement mandated by the Examiner. To be especially clear, any suggestion or example provided in this Office Action (or in any future office action) does not constitute a formal requirement mandated by the Examiner.
Should Applicant decide to amend the claims, Applicant is also reminded that—like always—no new matter is allowed. The Examiner therefore leaves it up to Applicant to choose the precise claim language of the amendment in order to ensure that the amended language complies with 35 U.S.C. § 112(a).
Independent of the requirements under 35 U.S.C. § 112(a), Applicant is also respectfully reminded that when amending a particular claim, all claim terms must have clear support or antecedent basis in the specification. See 37 C.F.R. § 1.75(d)(1) and MPEP § 608.01(o). Should Applicant amend the claims such that the claim language no longer has clear support or antecedent basis in the specification, an objection to the specification may result. Therefore, in these situations where the amended claim language does not have clear support or antecedent basis in the specification and to prevent a subsequent ‘Objection to the Specification’ in the next office action, Applicant is encouraged to either (1) re-evaluate the amendment and change the claim language so the claims do have clear support or antecedent basis or, (2) amend the specification to ensure that the claim language does have clear support or antecedent basis. See again MPEP § 608.01(o) (¶3). Should Applicant choose to amend the specification, Applicant is reminded that—like always—no new matter in the specification is allowed. See 35 U.S.C. § 132(a). If Applicant has any questions on this matter, Applicant is encouraged to contact the Examiner via the telephone number listed below.
Applicant is reminded of the obligation to apprise the Office of any prior or concurrent proceedings in which the ‘222 Patent is or was involved, such as interferences or trials before the Patent Trial and Appeal Board, other reissues, reexaminations, or litigations and the results of such proceedings.
In accordance with MPEP § 1406, the Examiner has reviewed and considered the prior art cited or ‘of record’ in the original prosecution of the ‘222 Patent. Applicant is reminded that a listing of the information cited or ‘of record’ in the original prosecution of the ‘222 Patent need not be resubmitted in this reissue application unless Applicant desires the information to be printed on a patent issuing from this reissue application.
Applicant is further reminded of the continuing obligation under 37 C.F.R. §1.56 to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN J RALIS whose telephone number is (571)272-6227. The Examiner can normally be reached on Monday-Friday 8:30am-5:30pm.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Hetul Patel can be reached on 571-272-4184. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9900.
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/Stephen J. Ralis/Primary Examiner, Art Unit 3992 Conferees:
/KENNETH WHITTINGTON/Primary Examiner, Art Unit 3992
/H.B.P/
Hetul PatelSupervisory Patent Examiner, Art Unit 3992
SJR
6/14//2024
1 The Examiner notes that the Aug 2021 Preliminary Amendment indicates that “[c]laims 1-20 are currently amended; and claims 21-24 remain unchanged.” The Examiner finds this incorrect, as noted above and below.
2 Since it is unclear what exact structure the Applicant intend to claim as the structure embodying the “instructions” of Functional Phrase 1, the claims are subject to rejection under 35 U.S.C. § 112 second paragraph as failing to particularly point out and distinctly claim the subject matter which the inventors regard as the invention.
3 See Egenera, Inc. v. Cisco Sys., Inc., 972 F.3d 1367 (Fed. Cir. 2020)
4 Since it is unclear what exact structure the Applicant intend to claim as the structure embodying the “instructions” of Functional Phrase 2, the claims are subject to rejection under 35 U.S.C. § 112 second paragraph as failing to particularly point out and distinctly claim the subject matter which the inventors regard as the invention.
5 See Egenera, Inc. v. Cisco Sys., Inc., 972 F.3d 1367 (Fed. Cir. 2020)
6 Since it is unclear what exact structure the Applicant intend to claim as the structure embodying the “instructions” of Functional Phrase 3, the claims are subject to rejection under 35 U.S.C. § 112 second paragraph as failing to particularly point out and distinctly claim the subject matter which the inventors regard as the invention.
7 The Examier finds that the claim 10 in the instant ‘450 Reissue Application invokes 35 U.S.C. §112(6th ¶), as set forth above. In this light, the Examiner finds that analysis for the ‘548 ODP Claims is the same as for the analysis of claim 10 (i.e., no algorithm disclosed and claim examined under BRI; see § IX.B.(2), supra).
Prosecution Insights