Ex Parte Casilli

Patent Trial and Appeal Board

May 29, 2018

14187575 (P.T.A.B. May. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/187,575 02/24/2014
28524 7590 05/31/2018
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Chris Casilli
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.
2014 P02992US 7137
EXAMINER
CALLAHAN, PAULE
ART UNIT PAPER NUMBER
2437
NOTIFICATION DATE DELIVERY MODE
05/31/2018 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRIS CASILLI
Appeal2018-000932
Application 14/187,575
Technology Center 2400
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-3, 5-14, and 16-25. Claims 4and15 were
cancelled. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellant, the real party in interest is Siemens Industry, Inc.
(App. Br. 1 ).
Appeal2018-000932
Application 14/187,575
STATEMENT OF THE CASE
Appellant's invention relates to interfaces for modification of
parameters used in a building automation system (Spec. i-f 1 ). Representative
claim 1 under appeal reads as follows:
1. A secure machine readable code encoder, comprising:
an input device;
a memory; and
a processor coupled to the input device and memory,
where the processor generates a secure machine readable code
stored in the memory from data received at the input device and
have at least an encryption layer, a digital signature layer, and a
password layer, where a digital signature password is employed
by the processor to generate a digital signature and the machine
readable code is not dependent upon a session.
REFERENCES and REJECTIONS
Claims 1-3, 5-14, and 16-25 stand rejected under 35 U.S.C. § l 12(a)
as failing to comply with the written description requirement (see Final
Act. 4--5).
Claims 1-3, 5-7, 12-14, and 16-18 stand rejected under
35 U.S.C. § 103 as unpatentable over Binding et al. (US 7,039,946 Bl;
issued May 2, 2006) ("Binding") and Doyle (US 2012/0138679 Al;
published June 7, 2012) ("Doyle") (see Final Act. 6-8).
Claims 8-11 and 19-25 stand rejected under 35 U.S.C. § 103 as
unpatentable over Binding, Wehrenberg (US 7,519,180 B2; issued Apr. 14,
2009) ("Wehrenberg"), and Doyle (see Final Act. 9-11).
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Application 14/187,575
PRINCIPLES OF LAW
Written Description
The Federal Circuit has consistently held that 35 U.S.C. § 112(a)
contains a written description requirement separate from enablement. See
Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d. 1336, 1351 (Fed.
Cir. 2010) (en bane). To satisfy the written description requirement, an
applicant must convey with reasonable clarity to those skilled in the art that,
as of the filing date sought, he or she was in possession of the invention, and
that the invention, in that context is whatever is now claimed. See Vas-Cath,
Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir. 1991).
Obviousness
The Supreme Court has rejected the rigid requirement of
demonstrating a teaching, suggestion, or motivation in the references to
show obviousness. See KSR Int'! Co., v. Teleflex Co., 550 U.S. 398, 415-16
(2007); see also In re Ethicon, Inc., 844 F.3d 1344, 1350 (Fed. Cir. 2017)
("KSR directs that an explicit teaching, suggestion, or motivation in the
references is not necessary to support a conclusion of obviousness.").
Further, one cannot show non-obviousness by attacking references
individually when the rejection is based on a combination of references. See
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re
Keller, 642 F.2d 413, 425 (CCPA 1981).
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments in Appellant's Appeal Brief that the Examiner has erred. We are
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Application 14/187,575
unpersuaded by Appellant's contentions and concur with the findings and
conclusions reached by the Examiner as explained below.
Rejection Under 35 US.C. § 112(a)
The Examiner found Appellant's Specification fails to provide
sufficient written description support for the element "the machine readable
code is not dependent upon a session," as recited in independent claims 1, 8,
12, 19, and 23 (see Final Act. 4--5; see also Ans. 11-12). Appellant
contends the Specification adequately discloses the aforementioned element
(see App. Br. 8). More specifically, Appellant argues paragraph 12 of
Appellant's Specification discloses that a machine readable code is
generated and displayed for a user, as well as independently presented to a
code reader (see App. Br. 8-9 (citing Spec. i-f 12)). Appellant further argues
that paragraph 97 of the Specification discloses that a QR code (i.e., machine
readable code) is saved as a graphic or picture, and thus, the machine
readable code is not dependent on a session (see App. Br. 8 (citing
Spec. i-f 97)).
We are not persuaded of Examiner error. We agree with the
Examiner that Appellant's Specification fails to convey with reasonable
clarity that the Appellant was in possession of the claimed "machine
readable code," in the context of being independent of a "session" (see
Ans. 11). We also agree with the Examiner that paragraph 12 fails to
convey with reasonable clarity that either the generation, display, or
presentation of the machine readable code occurs independent of a session
(see Ans. 11-12). Furthermore, as explained by the Examiner, paragraph 97
of Appellant's Specification fails to convey with reasonable clarity that the
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Application 14/187,575
storage of the QR code (i.e., machine readable code) as a graphic or picture
occurs independent of a session (see Ans. 12).
Based on our analysis above, we agree with the Examiner that claims
1-3, 5-14, and 16-25 do not satisfy the written description requirement of
35 U.S.C. § 112(a). Therefore, we sustain the rejection of claims 1-3, 5-14,
and 16-25 under 35 U.S.C. § 112(a).
Rejection Under 35 USC§ 103
Independent Claims 1, 8, 12, 19, and 23
Appellant contends the combination of cited references fails to teach
or suggest "where the processor generates a secure machine readable code
stored in the memory from data received at the input device and have at least
an encryption layer, a digital signature layer, and a password layer, where a
digital signature password is employed by the processor to generate a digital
signature and the machine readable code is not dependent upon a session,"
as recited in independent claim 1 (see App. Br. 9-10). Appellant further
contends the combination of cited references fails to teach or suggest similar
elements recited in independent claims 8, 12, 19, and 23 (see App. Br. 10-
11 ).
Appellant's contentions are not persuasive. Appellant argues the
claims are not directed to a "password," but instead recite "a digital
signature password that is employed by [a] processor to generate [a] digital
signature" (see App. Br. 10). However, we agree with the Examiner that
Appellant's argument fails to persuasively show why Binding's disclosure of
a nonce (e.g., randomly generated number) digitally signed by a receiver
fails to teach or suggest the claimed "digital signature password" (see Final
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Application 14/187,575
Act. 6; see also Ans. 14). Appellant additionally argues Binding's
disclosure of a nonce fails to teach or suggest a machine readable code that
is not dependent upon a session (see App. Br. 10). This argument is not
persuasive either because the Examiner relied upon Doyle, rather than
Binding, for teaching or suggesting the claimed "machine readable code that
is not dependent upon a session" (see Final Act. 6; see also Ans. 14--15), and
Appellant's argument fails to address the Examiner's finding regarding
Doyle. Appellant further argues Doyle's disclosure of a QR code including
a timestamp fails to teach or suggest the claimed three layers of security
(i.e., the claimed "encryption layer," "digital signature layer," and
"password layer") (see App. Br. 10). This argument is also unpersuasive
because the Examiner relied upon Binding, rather than Doyle, for teaching
or suggesting the claimed three layers of security (see Final Act. 6; see also
Ans. 16), and Appellant's argument fails to address the Examiner's finding
regarding Binding.
Thus, we agree with the Examiner that the combination of cited
references teaches or suggests all the elements of claims 1, 8, 12, 19, and 23.
Accordingly, we sustain the rejection of claims 1, 8, 12, 19, and 23 under
35 U.S.C. § 103.
Remaining Claims
No separate arguments are presented for the remaining dependent
claims (see App. Br. 10-11 ). We therefore sustain their rejection for the
reasons stated with respect to independent claims 1, 8, 12, 19, and 23.
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Application 14/187,575
DECISION
We affirm the Examiner's rejection of claims 1-3, 5-14, and 16-25
under 35 U.S.C. § 112(a).
We affirm the Examiner's rejection of claims 1-3, 5-14, and 16-25
under 35 U.S.C. § 103.
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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