Ex Parte Ca et al

Board of Patent Appeals and Interferences

Mar 17, 2009

09876568 (B.P.A.I. Mar. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JALALUDEEN CA and NANDAUMAR GN
____________________

Appeal 2008-2923
Application 09/876,5681
Technology Center 2100
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Decided:2 March 17, 2009
____________________

Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and
JAY P. LUCAS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on June 7, 2001. The real party in interest is Agere Systems Inc.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 32. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

Appellants’ Invention
Appellants invented a method and system for detecting the removal of
a portable computer connected to a network. (Spec. 1.) As shown in Figure
1, the portable computer (110) is equipped with a theft protection utility
process to monitor the connection with the network (100). Upon detecting
that a user who is not featured in the authorized database (200) has
disconnected the portable computer (110) from the network (100), the theft
protection utility process (300) generates an alarm to alert other users of an
imminent removal of the computer. ( Id. at 2-3.) The portable computer
system also includes a fail-safe mechanism to prevent the computer from
being turned off or to prevent the volume of the computer from being
reduced below a predetermined threshold minimum. ( Id. at 4-5.)

Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method for detecting removal of a device connected to a
network by a network connection, comprising:
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monitoring said network connection; and
generating an alarm in said removed device if said network
connection is disconnected.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Sanders 5,231,375 Jul. 27, 1993
Cromer 6,021,493 Feb. 1, 2000
Lam 6,140,923 Oct. 31, 2000
Pearce 6,308,272 B1 Oct. 23, 2001

Mark Minasi, Mastering Windows NT Server 4, at 378, 380, 434
(Sybex Inc., 6th ed. 1999) (hereinafter “Minasi”).

Charles J. Sippl and Roger J. Sippl, Computer Dictionary and
Handbook, at 12 (H.W. Sams, 3rd ed. 1980) (hereinafter “Computer
Dictionary”).

Mark G. Sobell, A Practical Guide to the UNIX System, at 493
(Addison Wesley, 3rd. ed. 1994) (hereinafter “Sobell”).

Paul Thurrott, What's new in Windows 2000 RC2 Reviewed, at 1-3,
http://www.winsupersite.com/reviews/win2k_rc2_whatsnew.asp (hereinafter
“Thurrott”).

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1, 10, 17, 22, 26 through 29, 31, and 32 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Thurrott.
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2. Claims 1, 7 through 10, 12, 17, 22, 26 through 29, 31, and 32
stand rejected under 35 U.S.C. § 102(b)/103(a)) as being anticipated by or,
in the alternative, as being unpatentable over Cromer.
3. Claims 2, 3, 13, 14, 18, 19, 23, and 24 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Cromer,
Sanders, and Lam.
4. Claims 3, 14, 19, and 24 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over the combination of Cromer and Minasi.
5. Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Cromer and Pearce.
6. Claims 6, 11, 15, 16, 20, 21, 25, and 30 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Cromer and
Sobell.

Appellants’ Contentions
1. Appellants argue that Thurrott does not teach generating a theft
alarm to indicate the removal of a device from a network. Particularly,
Appellants argue that while Thurrott teaches using a visual clue to alert a
user of a computer that the computer is disconnected from a network, such
an alert is ineffective to prevent an unauthorized user from stealing the
computer since it does not alert other people besides the computer user.
Therefore, Appellants submit that Thurrott does not anticipate independent
claim 1. (App. Br. 4, Reply Br. 4-5.)
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2. Appellants argue that Cromer does not teach generating an
alarm in the removed device. Particularly, Appellants argue that while
Cromer teaches a main computer that sends a theft alert message to a
network administrator to indicate that a client computer is being
disconnected from the network, the alert message is not generated from a
device being disconnected or removed from the network as recited in claim
1. Rather, the alert message is generated from another computer besides the
one being disconnected. (App. Br. 5.) Further, Appellants argue that the
generated message sent to the administrator is not an alarm, but rather a
signal to generate an alarm. (Reply Br. 6.) Additionally, Appellants argue
that Cromer does not teach removing the computer system from the network
since it is not clear that the computer system would continue to operate to
generate an alert message if it is no longer powered by the AC source when
it is removed from the network. (Id. at 5.) Therefore, Appellants submit that
Cromer neither anticipates nor renders independent claim 1 unpatentable.
(Id. at 6.)

Examiner’s Findings/Conclusions
1. The Examiner finds that Thurrott’s disclosure of generating a
visual cue in a computer to indicate that the computer is disconnected from a
network teaches the step of generating an alarm in a removed device when it
is disconnected from a network, as recited in claim 1. (Ans. 9-10.)
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Consequently, the Examiner finds that Thurrott anticipates independent
claim 1. (Id.)
2. The Examiner finds that Cromer’s disclosure of a server
computer, upon determining that a client computer is no longer connected to
the network, alerts the network administrator teaches or suggests the step of
generating an alarm in a removed device when it is disconnected from the
network, as recited in claim 1. (Ans. 10-15.) Consequently, the Examiner
finds that Cromer anticipates or renders independent claim 1unpatentable.
(Id.)

II. ISSUE
1. Have Appellants shown that the Examiner erred in finding that
Thurrott’s disclosure anticipates the claimed invention? Particularly, the
issue turns on whether Thurrott’s disclosure of generating a visual cue in a
computer when the computer is disconnected from the network teaches the
step of generating an alarm in a removed device when it is disconnected
from the network, as recited in claim 1.
2. Have Appellants shown that the Examiner erred in finding that
Cromer’s disclosure anticipates or renders the claimed invention
unpatentable? Particularly, the issue turns on whether Cromer’s disclosure
of a server that alerts a network administrator upon determining that a
computer is disconnected from the network teaches the step of generating an
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alarm in a removed device when it is disconnected from the network, as
recited in claim 1.

III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Thurrott
1. As depicted in figure 3, Thurrott discloses a network disconnect
cue feature in a Windows 2000 Release Candidate 2 (RC2) that, upon
determining a user’s machine has been disconnected from the network,
displays a visual cue on the user’s machine to alert the user that the Ethernet
card or the network cable has been disconnected. (P. 1.)

Cromer
2. As shown in Figure 1, Cromer discloses a system for
determining when a computer is removed from a network. Particularly,
Cromer discloses a server computer (34) having an application software
running thereon that periodically sends data packets to client computers (10)
connected to a network to determine if these connections are still active. If a
polled client fails to respond to numerous status inquiries, the server
suspects that the client may no longer be connected to the network, and
consequently alerts the network administrator of the client computer being
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possibly missing or stolen from the network. (Col. 7, ll. 31-49, col. 9, ll. 21-
23.)

Sanders
3. As depicted in Figure 2, Sanders discloses a theft detection and
alarm system (1010) that produces an audible alarm signal upon detecting a
sustained absence of current in a circuit, indicating that a cable has been
disconnected, severed or power has been turned off in a portable electronic
device. (Col. 5, ll. 33-43.)

Lam
4. Lam discloses sounding an audible alarm when a retractable
cable attached to a portable electronic device is pulled to thereby notify
people in the vicinity that trouble is afoot. (Col. 2, ll. 25-30.)

Minasi
5. Minasi discloses a system for creating and managing user
rights. Particularly, Minasi discloses that an administrator can assign rights
to a user to access certain objects on a server, including the right to shut
down the server. (PP. 378, 380.)

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IV. PRINCIPLES OF LAW
Claim Construction
"[T]he words of a claim 'are generally given their ordinary and
customary meaning.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (internal citations omitted). "[T]he ordinary and customary
meaning of a claim term is the meaning that the term would have to a person
of ordinary skill in the art in question at the time of the invention, i.e., as of
the effective filing date of the patent application." Id. at 1313.
"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)). Our reviewing court has repeatedly warned against confining the
claims to specific embodiments described in the specification. Phillips v.
AWH Corp., 415 F.3d at 1323.

Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis
Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn.
Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d
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1559, 1565 (Fed. Cir. 1992)). “Anticipation of a patent claim requires a
finding that the claim at issue ‘reads on’ a prior art reference.” Atlas Powder
Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999) (“In other words, if
granting patent protection on the disputed claim would allow the patentee to
exclude the public from practicing the prior art, then that claim is
anticipated, regardless of whether it also covers subject matter not in the
prior art.” (Internal citations omitted)).

V. ANALYSIS
1. Thurrott- Claims 1, 10, 17, 22, 26 through 29, 31, and 32
Independent claim 1 recites in relevant part generating an alarm in a
removed device if a network connection for the device is disconnected.
We first consider the scope and meaning of the term “alarm,” which
must be given its broadest reasonable interpretation consistently with
Appellant’s disclosure, as explained in In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997):
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.

See also In re Zletz, 893 F.2d at 321 (stating that “claims must be interpreted
as broadly as their terms reasonably allow.”).
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Our reviewing court further states, “the ‘ordinary meaning’ of a claim
term is its meaning to the ordinary artisan after reading the entire patent.”
Phillips v. AWH Corp., 415 F.3d at 1321.
Upon reviewing Appellants’ Specification, we fail to find a definition
for the claim term “alarm”. We therefore construe alarm consistently with
its ordinary meaning as provided in a dictionary.
The Examiner construed “alarm” as a visual signal that alerts a
computer user that the computer is disconnected from the network. As
support for construing the term “alarm” in the stated manner, the Examiner
asserts that
Computer Dictionary defines the term “alarm” as a “signal, by
display or audio device, which signifies that an error has
occurred, or an emergency condition exists that is interfering or
could interfere with the proper execution or completion of a
program”.

(Ans. 9.)
Alternatively, Appellants recur to Dictionary.com to provide a
narrower definition of “alarm” as
an “automatic device that serves to call attention, to rouse from sleep,
or to warn of fire, smoke, an intruder, etc.”

(Reply Br. 4-5.)
We will apply the broader definition offered by the Examiner since it
gives the term alarm its broadest reasonable interpretation. As set forth in
the Findings of Facts section, Thurrott discloses that upon determining that
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the user’s computer is disconnected from a network, displaying a visual cue
on the user’s computer to alert the user of the disconnection. (FF. 1.)
Consistently with the broader definition of alarm adopted above, we find
that by displaying the visual cue on the user’s own computer, Thurrott
teaches that an alarm is generated in the user’s computer to alert the user that
his/her computer has been disconnected from the network. Further, we
agree with the Examiner that Thurrott’s teaching that the user computer has
been disconnected from the network also implies that the computer has also
been removed therefrom since it is no longer part of the network.
Additionally, we agree with the Examiner that Appellants’ argument
regarding Thurrott’s alarm not being a theft alarm is not commensurate in
scope with the claim because the claim does not recite a theft alarm.
Appellants’ argument is therefore unpersuasive. It follows that Appellants
have not shown that the Examiner erred in finding that Thurrott anticipates
independent claim 1.
Appellants did not provide separate arguments with respect to the
rejection of claims 1, 10, 17, 22, 26 through 29, 31, and 32. We thus select
claim 1 as being representative of the cited claims. It follows for the same
reasons detailed in our discussion of claim 1 above that Appellants have not
shown that the Examiner erred in rejecting claims 10, 17, 22, 26 through 29,
31, and 32. 37 C.F.R. § 41.37(c)(1)(vii).

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2. Cromer-1, 7-10, 12, 17, 22, 26- 29, 31, and 32
As set forth above, Cromer discloses that upon failing to receive a
response from a polled client computer connected to a network, a server
computer alerts the network administrator through a message that the client
computer might be disconnected or removed from the network. (FF. 2.) We
note that both Appellants and the Examiner initially agreed that Cromer does
teach that an alarm is generated to alert a network administrator that a client
computer has been removed from the network, even though the alert is not
generated in the removed client computer. (Ans. 4, App. Br. 5.) We find
such initial characterization to accurately describe Cromer’s disclosure.
Particularly, we find that the message sent to the administrator comports
with the definition of alarm that we adopted above. The message is at least a
visual signal that informs the administrator of a potential problem having
occurred on the network. We also agree with the Examiner that if the client
computer is indeed disconnected from the network, it is therefore removed
therefrom since it is no longer connected to the network. Thus, we do not
agree with Appellants’ argument that a removed client computer from the
network would require independent AC powering. We find such argument
to exceed the scope of the claimed invention since the claim does not recite
independent powering of the removed device.
Further, we agree with the Examiner that the failure of the client
computer to respond to a status inquiry from the server results in the alarm
being generated. However, we do not agree that such a failure to respond to
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the status inquiry teaches or suggests that the alarm is generated on the client
computer, as alleged by the Examiner (Ans. 13-14.) It is clear from
Cromer’s disclosure that the message is generated on the server, and not the
client computer. Therefore, the Examiner’s finding is far too reaching.
Nevertheless, we find that one of ordinary skill in the art would have found
it obvious to modify Cromer to cause the alarm to be generated from the
client computer at the time of the impending removal since such practice
would predictably result in deterring or thwarting such unauthorized attempt.
Thus, we find that Cromer renders claim 1 unpatentable.
Alternatively, we find that Cromer also anticipates claim 1. As noted
above, Cromer teaches that the server device, upon detecting of its
disconnection from a client computer, generates an alarm to alert the
network administrator. (FF. 2.) We are satisfied that such teaching is
sufficient to anticipate claim 1 since the alarm is generated in the server
device, which is removed or disconnected from the client computer. Plainly
put, the Cromer reference anticipates claim 1 because it teaches a server
device that generates an alarm when the network connection between the
server device with the client computer is broken.
Appellants’ arguments at pages 5 through 8 of the Appeal Brief
against the combination of Cromer with Thurrott, Sanders, Lam, Pearce,
Sobell, and/or Minasi is misplaced since these secondary references were not
relied upon to reject independent claims 1, 12, 17, 22, 31, and 32. Further,
Appellants did not provide separate arguments regarding the rejection of
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claims 7 through 10, and 26 through 29. We therefore select claim
independent claim 1 as being representative of claims 7 through 10, 12, 17,
22, 26 through 29, 31, and 32. It follows, for the same reasons discussed
above for claim 1, that Appellants have also failed to show error in the
Examiner’s rejection of these claims. 37 C.F.R. § 41.37(c)(1)(vii).

Claims 2, 3, 13, 14, 18, 19, 23, and 24
Appellants argue that the combination of Cromer, Sanders and Lam
does not teach preventing the volume of an output device from being
reduced below a predefined minimum level, as recited in claims 2 or from
being turned off as recited in claim 3. (App. Br. 9.) We do not agree with
Appellants. As detailed in the Findings of Fact section above, Sanders and
Lam both teach sounding an audible alarm in a portable electronic device
when a cable attached thereto has been pulled or removed. (FF. 3, 4.) We
find that the suggested combination of Cromer, Sanders and Lam explicitly
teaches sounding an alarm upon detecting that a cable connecting a portable
computing device to a network has been pulled or severed. We also find that
the suggested combination is silent on any mechanism to control the volume
of the alarm or to turn off the computing device. Therefore, this absence of a
volume control or a shut off mechanism in the proffered combination
reasonably suggests that the volume of the alarm cannot be turned down or
the removed device cannot be turned off. We note that the claimed
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recitation is a negative limitation that does not particularly require the use of
a special mechanism to turn down the volume of the alarm or to turn off the
removed device. We are therefore satisfied that, without any evidence in the
record before us to show otherwise, the absence of a control mechanism
implies that the volume of the alarm cannot be turned down and that the
removed device cannot be turned off. It follows that Appellants have not
shown error in the Examiner’s rejection of claims 2, 3, 13, 14, 18, 19, 23,
and 24 as being unpatentable over the combination Cromer, Sanders and
Lam.

Claims 3, 14, 19, and 24
Appellants argue that the combination of Cromer and Minasi does not
teach preventing the volume of an output device from being turned off as
recited in claim 3. (App. Br. 9.) We do not agree with Appellants. As
detailed in the Findings of Fact section above, Minasi teaches assigning
rights to a user to access certain objects on a network including the right to
shut down a computing device. (FF. 5.) We find that the suggested
combination of Cromer and Minasi teaches an administrator providing a user
computer the right to turn off an NT server on a computing network.
Further, we find no discussion in the proffered combination of controlling
the volume of the alarm, or turning off the removed device. As discussed
above, without any evidence in the record before us to show otherwise, the
absence of a control mechanism implies that the volume of the alarm cannot
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be turned down and that the removed device cannot be turned off. It follows
that Appellants have shown error in the Examiner’s rejection of claims 3, 14,
19, and 24 as being unpatentable over the combination Cromer and Minasi.

Appellants have not separately argued the rejection of claims 4
through 6, 11, 15, 16, 20, 21, 25, and 30. These arguments are therefore
deemed to have been waived. See 37 CFR 41.37(c)(1) (vii). See also In re
Watts, 354 F.3d 1362, 1368 (Fed. Cir. 2004). It follows that Appellants
have not shown that the Examiner erred in concluding that the cited claims
are unpatentable over the proffered combinations.

VI. CONCLUSIONS OF LAW
1. Appellants have not shown that the Examiner erred in finding
that Thurrott anticipates claims 1, 10, 17, 22, 26 through 29, 31, and 32.
2. Appellants have not shown that the Examiner erred in finding
that Cromer anticipates claims 1, 7 through 10, 12, 17, 22, 26 through 29,
31, and 32.
3. Appellants have not shown that the Examiner erred in
concluding that the combination of Cromer, Sanders, and Lam renders
claims 2, 3, 13, 14, 18, 19, 23, and 24 unpatentable.
4. Appellants have not shown that the Examiner erred in
concluding that the combination of Cromer and Minasi renders claims 3, 14,
19, and 24 unpatentable.
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5. Appellants have not shown that the Examiner erred in
concluding that the combination of Cromer and Pearce renders claims 4 and
5 unpatentable.
6. Appellants have not shown that the Examiner erred in
concluding that the combination of Cromer and Scholl renders claims 6, 11,
15, 16, 20, 21, 25, and 30 unpatentable.
VII. DECISION
We affirm the Examiner’s decision to reject claims 1 through 32.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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