Ex Parte Barsoum et alDownload PDFPatent Trial and Appeal BoardDec 29, 201613400481 (P.T.A.B. Dec. 29, 2016) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/400,481 02/20/2012 Magued Barsoum 014.0419 (FT02) 7872 73411 7590 01/03/2017 T.KTlInhal rfiD-fzISvO EXAMINER 7010 E. COCHISE ROAD SCOTTSDALE, AZ 85253 GEE, JASON KAI YIN ART UNIT PAPER NUMBER 2495 NOTIFICATION DATE DELIVERY MODE 01/03/2017 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): docketing@lkglobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MAGUED BARSOUM and TONG ZHU Appeal 2016-003514 Application 13/400,4811 Technology Center 2400 Before JOHNNY A. KUMAR, LARRY J. HUME, and JOHN P. PINKERTON, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 1, 4—11, 14—18, and 20, which constitute all the claims pending in this application. Appellants have canceled claims 2, 3, 12, 13, and 19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is General Dynamics C4 Systems, Inc. App. Br. 4. Appeal 2016-003514 Application 13/400,481 STATEMENT OF THE CASE2 The Invention Appellants' disclosed and claimed inventions "generally relate[] to secure data transmission, and more particularly ... to encryption of data over a communications network." Spec. 12. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on appeal (emphases added to contested limitations): 1. A method of securely transmitting data in a wireless mesh network having end nodes that communicate through intermediate nodes, comprising: performing on a processor, assembling a header consisting of a recipient address associated with a first end node and a sender address associated with a second end node in an end-to-end manner, wherein the recipient address designates an encryption endpoint; associating encrypted data with the header; and presenting a packet for transmittal on the mesh network, wherein the packet includes the header and the encrypted data, wherein the assembling, the associating, and the presenting are performed within layer two of an Open System Interconnection model. 2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed Sept. 2, 2015); Reply Brief ("Reply Br.," filed Feb. 16, 2016); Examiner's Answer ("Ans.," mailed Dec. 14, 2015); Final Office Action ("Final Act.," mailed Feb. 11, 2015); and the original Specification ("Spec.," filed Feb. 20, 2012). 2 Appeal 2016-003514 Application 13/400,481 Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Moursund et al. ("Moursund") Beach et al. ("Beach") McAlister Sinha et al. ("Sinha") US 2003/0224735 Al US 2007/0121558 Al US 2008/0104693 Al US 2008/0304485 Al Dec. 4, 2003 May 31, 2007 May 1,2008 Dec. 11,2008 Rejections on AppeaP Rl. Claims 1, 4, 6—11, 14, 16, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Beach, Sinha, and Moursund. Final Act. 3. R2. Claims 5,15, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Beach, Sinha, Moursund, and McAlister. Final Act. 7. CFAIM GROUPING Based on Appellants' arguments (App. Br. 11—13), we decide the appeal of obviousness Rejection Rl of claims 1, 4, 6—11, 14, 16, 17, and 18 on the basis of representative claim 1. 3 We note the Examiner mistakenly states Rejection Rl is under 35 U.S.C. § 102(b) in the explicit statement of Rejection Rl (Final Act. 3), while the detailed rejection and "Response to Arguments" section of the Answer treat the rejection as being under 35 U.S.C. § 103(a). Final Act. 3 et seq.; Ans. 2 et seq. Neither the Examiner nor Appellants acknowledge this misstatement, and respond as if the rejection is for unpatentability under § 103. 3 Appeal 2016-003514 Application 13/400,481 Remaining claims 5, 15, and 20 in Rejection R2, not argued separately, stand or fall with the respective independent claim from which they depend.4 ISSUE Appellants argue (App. Br. 11—13; Reply Br. 3—4) the Examiner's Rejection R1 of claim 1 under 35 U.S.C. § 103(a) as being obvious over the combination of Beach, Sinha, and Moursund is in error. These contentions present us with the following issue: Did the Examiner err in providing proper motivation to combine the cited prior art combination in the manner suggested to render claim 1 unpatentable under § 103, allegedly because: "[I]t is not known to utilize an IP type header in the second layer of the OSI model;" and "it would not be obvious to incorporate the header taught by Moursund in the layer two taught by Beach to achieve the invention as claimed . . . [because] modifying Beach to include such a header would render Beach inoperable for its intended purpose." App. Br. 12. ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments that Appellants could have made but chose not to make in the Briefs, and we deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv). 4 "Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv). 4 Appeal 2016-003514 Application 13/400,481 We disagree with Appellants' arguments with respect to claims 1, 4— 11, 14—18, and 20, and we incorporate herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments. We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. Appellants assert: [W]hile it may be commonly known to form a header consisting of addresses of the sender and the destination at the Internet layer or the Network layer to achieve the purpose designed for the Internet Layer, it is not known to form a header consisting of addresses of the sender and the destination at layer two, the data link layer of the OSI model. Moursund fails to suggest incorporating such a header in any other layer than the Internet layer .... Appellants fail to find and the Examiner fails to provide any real motivation to combine the Moursund reference and the Beach reference. App. Br. 11-12. Appellants further contend: [Modifying Beach to include such a header would render Beach inoperable for its intended purpose. In particular, Beach is directed to sending packets in a hop-by-hop manner. If Beach's data packets were modified to include the header as arranged in the claim, then the hop-by-hop communication in Beach would no longer work. In other words, Beach relies on the other data in the data packet in order for the hop-by-hop communication to work and excluding the other data in the header would render the communication inoperable. Id. 5 Appeal 2016-003514 Application 13/400,481 We find Appellants' assertions amount to unsupported attorney argument, and therefore we give them little weight. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Huang, 100 F.3d 135, 139— 140 (Fed. Cir. 1996). Therefore, we do not find error in the Examiner's reliance on the combined teachings and suggestions of Beach, Sinha, and Moursund, as discussed further below. In setting forth the rejection of claim 1, the Examiner finds: In rejecting the claimed invention, three references were applied. The primary reference, Beach, was used to teach the bulk of the claims, which includes assembling a header with a recipient/sender address, associating encrypted data with the header, and transmitting the data in the mesh network, wherein the steps are performed within layer two of the OSI model. Sinha was used to show the obviousness of implementing encryption via a hop by hop or an end-to-end encryption method, both which are shown to be well known in the art. The Sinha reference also teaches performing such steps within layer two of the OSI model.... Finally, a third reference, Moursund, was used to teach that having a header with only two items ("consisting of' language in the claims) would have been obvious to one of ordinary skill in the art (Beach teaches assembling a header comprising a recipient/sender address and additional information). Ans. 3^4. In response to Appellants' argument that Moursund fails to teach the limitations because the header is formed in the Internet layer (instead of layer 2), the Examiner also finds Moursund is applied to show the obviousness of having two items in the header. "Forming headers in the Internet layer are taught via the Beach and Sinha references." Ans. 4. 6 Appeal 2016-003514 Application 13/400,481 Responsive to Appellants' contentions that it would not have been obvious to combine Moursund with Beach "because it is not known to utilize an IP type header in the second layer" {id.), "[t]he Examiner does not say that it would be obvious to use IP headers in an OSI model. . . [but instead] that it would be obvious to one of ordinary skill in the art to only have two items in a header." Id. Furthermore, because all the references are directed toward routing data, "[i]t would have been obvious to one of ordinary skill in the art to limit only having two items in a header, as Moursund teaches that IP headers, which are widely known in the art, may only have two items in the header." Ans. 4—5. We agree with the Examiner's findings, and specifically note Appellants' challenge to the references individually is not convincing of error in the Examiner's position because all of the features of the secondary reference need not be bodily incorporated into the primary reference, but consideration should be given to what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).5 Furthermore, the artisan is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Furthermore, "it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review." In 5 Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). 7 Appeal 2016-003514 Application 13/400,481 re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). The issue is whether the claims would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See Keller, 642 F.2d at 425. "Combining the teachings of references does not involve an ability to combine their specific structures." In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). Additionally, Appellants have not demonstrated that the Examiner's proffered combination of references would have been "uniquely challenging or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). Nor have Appellants provided objective evidence of secondary considerations which our reviewing court guides "operates as a beneficial check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013). (See also App. Br. 19, "Appendix B" ("There is no evidence being submitted with this appeal."). With respect to Appellants' arguments that Beach is directed toward sending packets in a hop-by-hop manner, which allegedly requires more information in the header, the Examiner finds: [I]t would have been obvious to one of ordinary skill in the art to send data in an end-to-end manner. As seen in paragraphs 71—72 of Sinha, it is merely a user choice to send data via a hop-by-hop or an end-to-end manner. Thus, if a user would wish to send items in an end-to-end manner, it would have been obvious to one of ordinary skill in the art to modify the headers such that data may be sent securely end-to-end (vs hop by hop). Further, as mentioned above, utilizing either type of encryption does not exclude the other. Thus, it is merely a user choice to use none, one of the encryption types, or a combination of both the encryption types. When using one of 8 Appeal 2016-003514 Application 13/400,481 these methods, it would have been obvious to one of ordinary skill in the art to adjust the headers accordingly such that the data would route correctly from one access point to another. Ans. 5. Accordingly, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitations of claim 1, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of independent claim 1, and grouped claims 4, 6—11, 14, 16, 17, and 18 which fall therewith. See Claim Grouping, supra. § 103(a) Rejection R2 of Claims 5, 15, and 20 In view of the lack of any substantive or separate arguments directed to the obviousness rejection of claims 5, 15, and 20 under § 103 (see App. Br. 13), we sustain the Examiner's rejection of these claims. We deem arguments not made waived.6 REPLY BRIEF To the extent Appellants may advance new arguments in the Reply Brief (Reply Br. 1—2) not in response to a shift in the Examiner's position in the Answer, we note arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the 6 Appellants merely argue, "these claims are allowable for at least the reasons previously presented with regard to independent claims 1,11, and 18." App. Br. 13. 9 Appeal 2016-003514 Application 13/400,481 Examiner’s Answer will not be considered except for good cause (see 37 C.F.R. § 41.41(b)(2)), which Appellants have not shown. CONCLUSION The Examiner did not err with respect to obviousness Rejections R1 and R2 of claims 1, 4—11, 14—18, and 20 under 35 U.S.C. § 103(a) over the cited prior art combinations of record, and we sustain the rejections. DECISION We affirm the Examiner's decision rejecting claims 1, 4—11, 14—18, and 20. 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). See 37 C.F.R. § 41.50(f). AFFIRMED 10 Copy with citationCopy as parenthetical citation