Ex Parte ALVAREZ et al

Patent Trial and Appeal Board

Aug 23, 2018

14521762 (P.T.A.B. Aug. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/521,762
129925
ABB Inc.
7590
FILING DATE
10/23/2014
08/27/2018
Taft, Stettinius & Hollister LLP
One Indiana Square
Suite 3500
Indianapolis, IN 46204-2023
FIRST NAMED INVENTOR
Fernando ALVAREZ
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.
ABBCH-3 1063
EXAMINER
SALEHI, HELAI
ART UNIT PAPER NUMBER
2433
NOTIFICATION DATE DELIVERY MODE
08/27/2018 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):
taft-ip-docket@taftlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FERNANDO ALVAREZ,
FRANK HOHLBAUM, and MARTIN MEULI
Appeal2018-002006
Application 14/521,762 1
Technology Center 2400
Before MAHSHID D. SAADAT, JOHN A. EVANS, and
JASON J. CHUNG, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-20 and 25-28. 2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
INVENTION
The invention is directed to central user account management in
Industrial Automation and Control Systems. Spec. ,r 2. Claim 1 is
illustrative of the invention and is reproduced below:
1 According to Appellant, ABB Schweiz AG is the real party in interest.
App. Br. 2.
2 Claims 21-24 have been cancelled. App. Br. 14.
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Application 14/521,762
1. A method of granting access to an Intelligent
Electronic Device (IED) of an Industrial Automation and Control
System (IACS), wherein the IED has a Local Human Machine
Interface (LHMI) with a restricted IED key set of IED keys, the
method comprising:
verifying, by an Access Enabler (AE) communicatively
connected to the IED and physically separated from the IED, user
credentials presented by a user to the AE;
generating a temporary session secret consisting of a
succession of keys or key combinations chosen from the
restricted IED key set;
communicating the session secret to the user and
communicating the session secret, or a hash of the session secret,
to the IED; and
granting IED access to the user when a secret subsequently
presented to the IED by the user matches the session secret;
the user credentials presented to the AE thereby being
replaced by the session secret at the IED, the session secret being
less complex than the user credentials, wherein the session secret
includes keys or gestures which can be easily input at the LHMI
using the restricted IED key set of IED keys.
REJECTIONS AT ISSUE
Claims 7-10, 15-18, 20, 26, and 28 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to point out and
distinctly claim the subject matter. Ans. 2-3.
Claims 1-20 and 25-28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Smith and Colbert. Ans. 3-16.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants 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).
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Application 14/521,762
ANALYSIS
35 U.S.C. § 112, second paragraph: Claims 7-10, 15--18, 20, 26, and 28
The Examiner determines claims 7-10, 15-18, 20, 26, and 28 are
indefinite because the written description fails to disclose the structure of the
claimed "module." Ans. 2. The Examiner determines the description fails
to disclose the corresponding structure, material, or acts for the claimed
function. Id. The Examiner determines replacing "to" to "for" and deleting
the "ing" from the verb does not overcome the indefiniteness of the present
claims. Id. at 17.
Appellants argue the Examiner improperly relies on claim language
prior to the February 3, 2016 amendment. App. Br. 5. In addition,
Appellants argue because the claims do not recite "means," there is a
rebuttable presumption that 35 U.S.C. § 112, sixth paragraph is not invoked.
Reply Br. 2 ( citing MPEP § 2181 ). 3 We disagree with Appellants.
We are not persuaded of error in the Examiner's determination that
claims 7-10, 15-18, 20, 26, and 28 are indefinite because the written
description fails to disclose the structure of the claimed "module." Ans. 2.
Although the Examiner determines replacing "to" to "for" and deleting the
"ing" from the verb does not overcome the indefiniteness of the present
claims (id. at 17), 4 we determine there is no difference between reciting "to"
and "for" in the present claims. See Signtech USA, LTD. v. Vutek, Inc., 174
3 Appellants' argument is timely because it is responsive to the Examiner's
new determination that replacing "to" to "for" and deleting the "ing" from
the verb does not overcome the indefiniteness of the present claims. See
Ans. 17; 37 C.F.R. § 4I.41(b)(2).
4 Appellants actually replaced "for" with "to," rather than "to" with "for."
See amendment filed February 3, 2016.
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Application 14/521,762
F.3d 1352, 1355-1358 (Fed. Cir. 1999) (Claims reciting "ink delivery means
to produce" invoked 35 U.S.C. § 112, sixth paragraph.).
We note MPEP § 2181 does not say only what Appellants argue. That
is, it also enumerates a non-limiting list of 10 generic placeholders that
invoke 35 U.S.C. § 112, sixth paragraph. In particular, MPEP § 2181 states:
[ t ]he presumption may be overcome if the claim limitation uses
a generic placeholder ( a term that is simply a substitute for the
term "means"). The following is a list of non-structural generic
placeholders that may invoke 35 U.S.C. 112(!) or pre-AJA 35
U.S.C. 112, paragraph 6: "mechanism for," "module for,"
"device for" "unit for" "component for" "element for"
' ' ' ' "member for," "apparatus for," "machine for," or "system for."
This list is not exhaustive, and other generic placeholders may
invoke 35 U.S.C. 112([) or pre-AIA 35 U.S.C. 112, paragraph 6.
MPEP § 2181 (internal case citations omitted) ( emphases added). Although
the MPEP is not law, we note several Federal Circuit decisions support the
notion that "module" invokes 35 U.S.C. § 112, sixth paragraph. See Welker
Bearing Co., v. PHD, Inc., 550 F.3d 1090, 1096, 89 USPQ2d 1289, 1293-94
(Fed. Cir. 2008); Massachusetts Inst. of Tech. v. Abacus Software, 462 F.3d
1344, 1354, 80 USPQ2d 1225, 1228 (Fed. Cir. 2006); Personalized Media
Commc 'ns, LLC v. ITC, 161 F.3d 696, 704, 48 USPQ2d at 1886-87 (Fed.
Cir. 1998); Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1214-
1215, 48 USPQ2d 1010, 1017 (Fed. Cir. 1998).
Accordingly, we sustain the Examiner rejection of claims 7-10, 15-
18, 20, 26, and 28 under 35 U.S.C. § 112, Second Paragraph.
35 U.S.C. § 103(a): Claims 1-20 and 25--28
The Examiner finds Colbert teaches a host device 11 a and one or
more participant devices 11 b-11 d, which the Examiner maps to the
limitations "Access Enabler" and "Intelligent Electronic Device,"
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Appeal2018-002006
Application 14/521,762
respectively, recited in claims 1 and 7. Final Act. 5 ( citing Colbert ,r 57, Fig.
6). Further, the Examiner finds Colbert teaches a host sends an invite to
participants to partake in a closed conference call that lasts for a specific
duration and the invite includes a telephone number and conference
password, which the Examiner maps to the limitation "temporary session
secret" recited in claims 1 and 7. Final Act. 5-7 (citing Colbert ,r,r 79-85,
87, 100, Figs. 8-9). The Examiner finds Colbert teaches authentication
using a device identifier that is unique to the associated user, which the
Examiner maps to the limitation "user credentials" recited in claims 1 and 7.
Final Act. 6-7 (citing Colbert ,r,r 100-102).
Appellants argue Colbert fails to teach the claimed "Access Enabler"
and "Intelligent Electronic Device" because they are separate devices,
whereas Colbert's telephone number and password are presented to the same
device. App. Br. 6; Reply Br. 3. In addition, Appellants argue Colbert fails
to teach the limitation "temporary session secret" recited in claims 1 and 7
because there is no evidence Colbert's device identifier is a secret, the
device identifier is associated with the device rather than a particular
session, and the device identifier is not temporary. App. Br. 6-7.
Additionally, Appellants argue Colbert fails to teach the limitation "user
credentials" because Colbert's telephone number and password do not
identify or relate to any particular user; rather, the telephone number and
password relate to a conference call. Id. at 5---6; Reply Br. 4. And
Appellants argue Colbert fails to teach replacement of user credentials
presented to the Access Enabler with the session secret at the Intelligent
Electronic Device and the session secret is less complex than the user
credentials. Reply Br. 5. We disagree with Appellants.
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Appeal2018-002006
Application 14/521,762
The cited portions of Colbert teach a host device 11 a (i.e., the claimed
"Access Enabler") and one or more participant devices l lb---1 ld (i.e.,
"Intelligent Electronic Device), which teaches the limitations "Access
Enabler" and "Intelligent Electronic Device," respectively, recited in claims
1 and 7. Final Act. 5 ( citing Colbert ,r 57, Fig. 6). Also, the cited portions of
Colbert teach a host (i.e., the claimed "Access Enabler") sends an invite (i.e.,
the invite teaches the claimed "temporary session secret") to participants to
partake in a closed conference call (i.e., the conference call is a session) that
lasts for a specific duration (i.e., the specific duration denotes that it is
temporary) and the invite includes a telephone number and conference
password (i.e., the invite is secret because it is sent to only a few people in a
closed group and the invite includes a conference password). Final Act. 5-7
( citing Colbert ,r,r 79-85, 87, 100, Figs. 8-9).
Furthermore, the cited portions of Colbert teach authentication using a
device identifier that is unique to the associated user, teaches the limitation
"user credentials" recited in claims 1 and 7. Final Act. 6-7 ( citing Colbert
,r 101 ). We note that participant device 11 b---11 d authenticates by sending
user credentials to the host device I la directly or indirectly to establish a
conference call session. Colbert ,r 99.
Regarding Appellants' argument that Colbert fails to teach
replacement of user credentials presented to the Access Enabler with the
session secret at the Intelligent Electronic Device and the session secret is
less complex than the user credentials (see Reply Br. 5), 5 this argument is
5 In the event of further prosecution, Appellants should consider arguing that
Colbert fails to teach replacement of user credentials presented to the Access
Enabler with the session secret at the Intelligent Electronic Device.
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Application 14/521,762
untimely and waived because the Examiner initially cited to paragraphs 79-
85, 87, and 100-102, Figures 6, 8, and 9 of Colbert in the Final Rejection
and later in the Answer. See 37 C.F.R. § 4I.41(b)(2); compare Final Act. 5-
7 (citing Colbert ,r,r 79-85, 87, 100-102, Figs. 6, 8, and 9) with Ans. 4---6
(citing Colbert ,r,r 79-85, 87, 100-102, Figs. 6, 8, and 9).
Appellants do not argue separately dependent claims 2-6, 8-20, and
25-28 with particularity, but assert the rejections of those claims should be
withdrawn for at least the same reasons as argued in independent claims 1
and 7. App. Br. 11. Accordingly, we sustain the Examiner's rejection of:
(1) independent claims 1 and 7; and (2) dependent claims 2-6, 8-20, and
25-28 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's decision rejecting claims 7-10, 15-18, 20,
26, and 28 under 35 U.S.C. § 112, Second Paragraph.
We affirm the Examiner's decision rejecting claims 1-20 and 25-28
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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