Appeal No. 2005-2338
Application No. 09/754,001
which requires the identity of the user be apparent to the service provider. The
claims require that the request include the user/subscriber identifier; whether or
not the service provider can directly interpret the identifier is not addressed in the
claims. We find that Teper, in column 9, lines 50-55, discusses the initial
communication with a service provider when the user “attempts to use the SP
[service provider’s] service,” we consider an attempt to use a service to be a
request. Teper teaches that this transmission includes a negotiate message
which includes the user’s unique ID. Thus, we find that Teper teaches a request
which includes a unique user/subscriber identifier as claimed.
Lastly, on page 8 of the brief appellants state that:
The law is also well settled that if there was anticipation, there
should have been symmetry with infringement, “[t]hat which infringes if
later, anticipates if earlier”, see e.g. Kalman v. Kimberly-Clark Corp., 713
F.2d 760, 772, 218 USPQ 781 (Fed. Cir. 1983), cert denied, 465, U.S.
1026 (1984). In other words, if Teper, in particular the cited passages
have taught an element that anticipated the required element of claim 1,
then Appellants should be able to find Teper, in particular, the cited
passage infringing, had Teper been later than the application on appeal.
However, no such infringement can be found in the cited passage.
As Appellants has explained in a prior response, an infringing
method must employ a GUID that uniquely identifies a user across all
systems, all services, all communities and so forth. Since, Teper’s unique
identifier is merely unique within Teper’s community, Teper does not
infringe on Appellants’ claim.
In response the examiner states “infringement is beyond the scope of
examination.”
We concur with the examiner. Initially, we find no quotation in Kalman v.
Kimberly-Clark Corp. which states “that which infringes if later, anticipates if
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