Ex Parte CasilliDownload PDFPatent Trials and Appeals BoardMay 29, 201814187575 - (D) (P.T.A.B. May. 29, 2018) Copy Citation 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). 2 Appeal2018-000932 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 3 Appeal2018-000932 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 4 Appeal2018-000932 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 5 Appeal2018-000932 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. 6 Appeal2018-000932 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 7 Copy with citationCopy as parenthetical citation