Ex Parte Aijaz

Patent Trial and Appeal Board

Jul 21, 2016

11922425 (P.T.A.B. Jul. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111922,425 03/17/2009 Amer Aijaz
26646 7590 07/25/2016
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
111501135 6313
EXAMINER
WANG,JACKK
ART UNIT PAPER NUMBER
2682
NOTIFICATION DATE DELIVERY MODE
07/25/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
uspto@kenyon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMER AIJAZ
Appeal2013-009111
Application 11/922,425
Technology Center 2600
Before ALLEN R MACDONALD, DEBRA K. STEPHENS, and
HUNG H. BUI, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 26-52. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUNDS OF
REJECTION UNDER 37 C.F.R. § 41.50(b).
1 Claims 1-25 have been cancelled (Transmittal of New Application, Dec.
17, 2007).
Appeal2013-009111
Application 11/922,425
STATEMENT OF THE INVENTION
According to Appellant, the claims are directed to a method and
device for secure communication of a component of a vehicle with an
external communication partner via a wireless communication link
(Abstract). Claim 26, reproduced below, is representative of the claimed
subject matter:
26. A method for secure communication of at least one of
multiple components of a vehicle with at least one external
communication partner via a wireless communication link, each
of the multiple components including at least one
communication module for data exchange, comprising:
exchanging data packets between a transceiver device of the
vehicle and an external transceiver station;
ascertaining a communication status of the wireless
communication link; and
at least one of (a) enabling or (b) disabling as a :thnction of the
communication status at least one of (i) data exchange between
at least one of (a) the at least one component or (b) the external
communication partner and others of the multiple components or
(ii) access of at least one of (a) the at least one component or (b)
the external communication partner to the others of the multiple
components.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Humphries et al.
Spaur et al.
Kampert et al.
US 2005/0162309 Al
US 2005/0266879 Al
US 2007 /0266250 Al
2
Jul. 28, 2005
Dec. 1, 2005
Nov. 15, 2007
Appeal2013-009111
Application 11/922,425
REJECTIONS
Claims 26-32, 37, 39--45, 49, 50, and 52 stand rejected under 35
U.S.C. §102(e) as being anticipated by Humphries (Final Act. 2-5).
Claims 33, 35, 36, 38, 46--48, and 51 stand rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over Humphries and Kampert, hereafter
Kampert '250 (Final Act. 5-7).
Claim 34 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Humphries and Spaur (Final Act. 8).
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(l)(iv) (2016).
ISSUES
35 U.S.C. § 102(e): Claims 26--32, 37, 39--45, 49, 50, and 52
Appellant argues his invention is not anticipated by Humphries (App.
Br. 4--7). The issues presented by the arguments are:
Issue 1: Did the Examiner err in finding Humphries discloses
"ascertaining a communication status of the wireless communication link,"
as recited in claim 26, and similarly recited in claims 39 and 52?
Issue 2: Did the Examiner err in finding Humphries discloses
at least one of (a) enabling or (b) disabling as a function of the
communication status at least one of (i) data exchange between
at least one of (a) the at least one component or (b) the external
communication partner and others of the multiple components
or (ii) access of at least one of (a) the at least one component or
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Application 11/922,425
(b) the external communication partner to the others of the
multiple components,
as recited in claim 26, and similarly recited in claims 39 and 52?
Issue 3: Did the Examiner err in finding Humphries discloses
"wherein the communication status is ascertained in the ascertaining step
based on at least one of (a) an encryption or (b) an authentication used by the
external transceiver station," as recited in claim 27, and similarly recited in
claims 28, 40 and 41?
ANALYSIS
Appellant argues Humphries does not disclose "ascertaining a
communication status of the wireless communication link," as recited in
claim 26, and similarly in claims 39 and 52 (App. Br. 5). Appellant
concedes Humphries discloses the transmission of a device status (id.).
However, Appellant argues the device status "merely describe[ s] that the
system generates alerts when a device 103 enters or exits a configured area;"
and the alert is not a communication status, it is a position status that
describes "the location of the device 103" (id.).
We are not persuaded by Appellant's argument. The Examiner finds
Humphries discloses a device status, which "includes 'enters or exits'
status ... described at paragraphs [0034] and [0040]" (Ans. 10). We agree
with the Examiner's finding that a device status indicating when a device
enters or exits a configured area is a communication status; an alert that is
generated when entering or exiting a communication area is a
communication status (id.; Humphries i-f 40). Further, the Examiner's
finding does not conflict with Appellant's disclosure because the term
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Application 11/922,425
"communication status" is not defined in the claim language or Appellant's
Specification.
Next, Appellant argues Humphries does not disclose
at least one of (a) enabling or (b) disabling as a function of the
communication status at least one of (i) data exchange between
at least one of (a) the at least one component or (b) the external
communication partner and others of the multiple components
or (ii) access of at least one of (a) the at least one component or
(b) the external communication partner to the others of the
multiple components,
as recited in claim 26, and similarly in claims 39 and 52 (App. Br. 5---6).
Specifically, Appellant argues Humphries does not disclose "the enabling
and/or disabling step," and the portions cited by the Examiner does not
"disclose[ d] that any data exchange or access is enabled or disabled, and
certainly not as a function of the communication status" (id. at 5---6).
Appellant further argues the cited portions of Humphries "merely
describe[ d] scheduled acquisitions of data from a data log, and ties the use of
that schedule to a digital input," and turning the schedule "on or off' is
unrelated to a communication status (id. at 6).
We are not persuaded by Appellant's argument. First, the claim
limitation in question contains no punctuation; therefore, it is unclear which
Markush elements are required to fulfill the claim language (Cl. 26).
"Alternative expressions are permitted if they present no uncertainty or
ambiguity with respect to the question of scope or clarity of the claims"
(Manual of Patent Examining Procedure (MPEP) § 2173.05(h).I, 8th ed.,
Rev. 9 (August 2012)). Appellant's lack of punctuation adds ambiguity and
uncertainty (i.e., breadth) to the scope of the claim limitation.
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Application 11/922,425
Nonetheless, even interpreting the claim as urged by Appellant, we
are not persuaded. Appellant concedes the scheduling disclosed in
Humphries permits enablement and disablement of a status (App. Br. 6).
We agree with the Examiner - the enablement and disablement of data
acquisition based on schedules is one of enabling or disabling as a function
of the communication status (Final Act. 9-10).
With respect to claim 27, we do not agree with Appellant's arguments
that Humphries fails to disclose "wherein the communication status is
ascertained in the ascertaining step based on at least one of (a) an encryption
or (b) an authentication used by the external transceiver station" (App. Br.
7). Rather, we agree with the Examiner's finding of the encrypted
messaging and performance of authentication tasks by the presentation
server, describing a communication status (Ans. 11 ). Specifically, we agree
with the Examiner that authentication is inherent to an authentication task
(Ans. 11 ). If the device is not authenticated by the server, then it cannot
communicate; thus, we find the communication status is ascertained based
on authentication by the external transceiver.
It follows, we are not persuaded the Examiner erred in finding
Humphries discloses the limitation as recited in claim 27.
Accordingly, we are not persuaded the Examiner erred in finding
Humphries discloses the invention as recited in claims 26-27 and claims 28-
32, 37, 39--45, 49, 50, and 52, not separately argued. Therefore, we sustain
the rejection of claims 26-32, 37, 39--45, 49, 50, and 52 under
35 U.S.C. § 102(b) for anticipation by Humphries.
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Application 11/922,425
35 U.S.C. § 103(a): Claim 34
Appellant asserts his invention is not unpatentable over the
combination of Humphries and Spaur (App. Br. 8-9). The issue presented
by the arguments is:
Issue 4: Did the Examiner err in finding the combination of
Humphries and Spaur discloses the claim features recited in dependent claim
34?
ANALYSIS
Claim 34 depends directly from claim 26, and further recites:
performing at least one of ( a) an authentication or (b) an
encryption in OSI layers by a central security component of the
vehicle.
Appellant does not present separate patentability arguments for claim
34; rather, Appellant reiterates the same arguments presented against its
independent claim 26. App. Br. 8. As previously discussed, the Examiner
has shown Humphries discloses the claimed invention of independent claim
26. Thus, for the reasons set forth above, claim 34 stands with its respective
independent claim 26.
35 U.S.C. § 103(a): Claims 33, 35, 36, 38, 46--48, and 51
Appellant asserts his invention is not obvious over Humphries and
Kampert '250 (App. Br. 7-8). The issue presented by the arguments is:
Issue 5: Has the Examiner erred in finding the combination of
Humphries and Kampert '250 teaches the claim features recited in
dependent claims 33, 35, 36, 38, 46-48, and 51, and in finding Kampert '250
does qualifies as prior art?
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ANALYSIS
Appellant argues the combination of Humphries and Kampert '250
cannot teach the claim features recited in dependent claims 33, 35, 36, 38,
46-48, and 51 because Kampert '250 "does not constitute prior art against
the present application" (App. Br. 8). Specifically, Appellant argues the
relied upon Kampert '250 reference is disqualified as prior art because "the
underlying PCT application is not the basis of the current rejection" (id.).
We agree with Appellant that the US Pre-Grant Publication Kampert
'250 does not constitute prior art. The Examiner acknowledges Appellant
filed their foreign application in Germany June 15, 2005 (Ans. 11; Final Act.
10). To receive the earlier priority date of June 15, 2005, Appellant was then
required to file their PCT application within twelve months (see MPEP
§ 1842.II, 8th ed., Rev. 9 (August 2012)), and the Examiner also
acknowledged Appellant filed the PCT May 4, 2006 (Ans. 11-12).
Additionally, in order to receive the earliest priority date of June 15, 2005,
Appellant had to enter the national phase by filing a complete US
application within thirty months from the original foreign filing date (see
MPEP § 1842.VII.A, 8th ed., Rev. 9 (August 2012)); and Appellant did file
their US application December 17, 20072. The Examiner acknowledges
Appellant is entitled to the earliest filing date of June 15, 2005 (Ans. 11).
However, the Examiner incorrectly argues US Pre-Grant Publication of
2 The Application was filed December 17, 2007, the Monday following the
Saturday deadline of December 15, 2007, which qualifies as a timely
application (BIB; see MPEP § 513.I, 8th ed., Rev. 9 (August 2012)).
Initially, the December 17, 2007 filing was missing the required signed oath;
Appellant was notified January 22, 2009, filed the required signed oath
March 17, 2009, and the oath was accepted May 19, 2009 (see IFW Table of
Contents).
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Application 11/922,425
Kampert '250 qualifies as a "35 U.S.C. 102(a) and 102(b)" reference, having
a priority date of August 5, 2004 based on the WIPO publication of PCT
application PCT/EP2004/000505 (id. at 11-12). A publication qualifies as
prior art under 35 U.S.C. 102(e) "[i]fthe international application meets the
following three conditions: (a) an international filing date on or after
November 29, 2000; (b) designated the United States; and (c) published
under PCT article 21(2) in English" (MPEP § 706.02(f)(l).I(C)(l), 8th ed.,
Rev. 9 (August 2012)). Appellant correctly argues the PCT application
PCT /EP2004/000505, the international application underlying US Pre-Grant
Publication 2007 /0266250 Kampert '250, was not published in English
(App. Br. 8; see WO 2004/066219).
Appellant additionally asserts these claims are patentable based on
their dependencies on independent claims 26 and 39, respectively (App. Br.
8). However, as set forth above, we are not persuaded the Examiner erred in
finding the invention as recited in claims 26 and 39 is not anticipated by
Humphries.
Accordingly, we are persuaded that US Pre-Grant Publication of
Kampert '250 does not qualify as prior art against Appellant's claims 33, 35,
36, 38, 46-48, and 51. Therefore, we are constrained to reverse the rejection
of claims 33, 35, 36, 38, 46-48, and 51under35 U.S.C. § 103(a) for
obviousness over Humphries and Kampert '250.
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Application 11/922,425
NEW GROUND OF REJECTION:
35 U.S.C. § 103(a)-CLAIMS 33, 35, 36, 38, 46-48, AND 51
We do, however, in a new ground of rejection, conclude an ordinarily
skilled artisan would have found it obvious to combine Humphries and
Kampert (WO 2004/066219), hereafter Kampert '219. Thus, we enter a new
ground of rejection of claims 33, 35, 36, 38, 46-48, and 51 under
35 U.S.C. § 103(a) as being unpatentable over Humphries and Kampert
'219, using Kampert '250 as the translation. Specifically, we find Kampert
'219 does qualify as a 35 U.S.C. 102(a) reference based on the publication
date August 5, 2004 (see MPEP § 706.02(±)(1 ).I(C)(2), 8th ed., Rev. 9
(August 2012)). We further find Kampert '250 serves as a translation of
Kampert '219 based on certified copies received July 21, 2005 in US
application 10/542,960. Using Kampert '250 as a translation of Kampert
'219, we find the Examiner appropriately determined the rejections based on
the previously cited portions of Kampert '250.
Appellant proffers no additional arguments as to why these claims are
patentable over Humphries and Kampert '250, but instead rely on arguments
set forth with respect to claim 26 (App. Br. 7-8). Therefore, for the reasons
set forth above, Appellant has not provided sufficient evidence or argument
to persuade us of error in the Examiner's findings.
Accordingly, using our authority under 37 C.F.R. § 41.50(b), we enter
a new ground of rejection for claims 33, 35, 36, 38, 46-48, and 51 as being
unpatentable over Humphries and Kampert '219, using Kampert '250 as the
translation.
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Application 11/922,425
DECISION
The Examiner's rejection of claims 26-32, 37, 39--45, 49, 50, and 52
under 35 U.S.C. § 102(e) as being anticipated by Humphries is AFFIRMED.
The Examiner's rejection of claim 34 under 35 U.S.C. § 103(a) as
being unpatentable over Humphries and Spaur is AFFIRMED.
The Examiner's rejection of claims 33, 35, 36, 38, 46--48, and 51
under 35 U.S.C. § 103(a) as being unpatentable over Humphries and
Kampert '250 is REVERSED. However, we newly reject the same set of
claims 33, 35, 36, 38, 46--48, and 51under35 U.S.C. § 103(a), as being
unpatentable over Humphries and Kampert '219.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (2010). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same record ....
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Application 11/922,425
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART;
37 C.F.R. § 41.50(b)
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