Ex Parte AijazDownload PDFPatent Trial and Appeal BoardJul 21, 201611922425 (P.T.A.B. Jul. 21, 2016) Copy Citation 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 3 Appeal2013-009111 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 4 Appeal2013-009111 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. 5 Appeal2013-009111 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. 6 Appeal2013-009111 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? 7 Appeal2013-009111 Application 11/922,425 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). 8 Appeal2013-009111 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. 9 Appeal2013-009111 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. 10 Appeal2013-009111 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 .... 11 Appeal2013-009111 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) 12 Copy with citationCopy as parenthetical citation