Ex Parte Challener et al

Patent Trial and Appeal Board

Jan 15, 2013

09758927 (P.T.A.B. Jan. 15, 2013)

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.
09/758,927 01/11/2001 David Carroll Challener RPS920000084US1 9620
58139 7590 01/16/2013
IBM CORP. (WSM)
c/o WINSTEAD P.C.
P.O. BOX 131851
DALLAS, TX 75313
EXAMINER
ABRISHAMKAR, KAVEH
ART UNIT PAPER NUMBER
2494
MAIL DATE DELIVERY MODE
01/16/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID CARROLL CHALLENER,
PETER ALEXANDER MANSON, and
DOUGLAS MORGAN TRENT
____________________

Appeal 2010-000997
Application 09/758,927
Technology Center 2400
____________________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 2-
45. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The claims on appeal are directed to “a method and system for
integrating a telephone function within an Internet appliance and, in
particular,] to integrating a telephone function with security and guidance
features.” (Spec. 1). Claim 3, reproduced below, is representative of the
claimed subject matter:
3. A method of integrating telephony function with security
and guidance features on an Internet appliance comprising the
steps of:

selecting a communication access number using a
selection means, said communication access number operable
to access a communication link via said Internet appliance;

alerting a user of said Internet appliance when an attempt
is made to select said communication link via a dialing action
of said Internet appliance using said communication access
number;

receiving an authorization for said dialing action by said
user of said Internet appliance; and

using a security protocol for encrypting and decrypting
information transmitted on said communication link in response
to authorizing said dialing action for said communication link.

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REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Gullman US 5,280,527 Jan. 18, 1994
Stewart US 6,272,629 B1 Aug. 07, 2001
Voit US 6,430,275 B1 Aug. 06, 2002
Rao US 6,757,823 B1 June 29, 2004

REJECTIONS
1. Claims 3-13 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over the combination of Voit and Rao. (Ans. 3-8).
2. Claims 14, 16-30, and 32-45 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over the combination of Voit and Stewart.
(Ans. 8-20).
3. Claim 2 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over the combination of Voit, Rao, and Stewart. (Ans. 20-21).
4. Claims 15 and 31 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over the combination of Voit, Stewart, and Gullman.
(Ans. 21-23).

ANALYSIS
We address Appellants’ contentions regarding the claims rejected
under the four -stated rejections by proceeding seriatim from Rejection 1
through Rejection 4.
Rejection 1
Claims 3-13 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over the combination of Voit and Rao.
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Independent claim 3 and dependent claims 4, 11, and 12
Regarding the obviousness rejection of independent claim 3,
Appellants contend, inter alia, that: “[t]here is no language in the cited
passage [of Rao] that teaches using a security protocol for encrypting and
decrypting information on a communication link in response to authorizing a
dialing action for the communication link.” (App. Br. 6) (emphasis
omitted).
Issue: Under § 103, did the Examiner err in finding that the cited
references, either alone or in combination, would have taught or suggested
the following disputed limitation:
using a security protocol for encrypting and decrypting
information transmitted on said communication link in response
to authorizing said dialing action for said communication link,
within the meaning of independent claim 3?
In reviewing the record, we agree with the Examiner (Ans. 23-24) that
Voit teaches authorizing a dialing action (col. 14, l. 40: “Internet Telephony
Authorization”), and that Rao teaches “using a security protocol for
encrypting and decrypting information transmitted on said communication
link” within the meaning of claim 3. (See Rao col. 4, ll. 19-24: “H.323
gateways perform a 20 secure registration process in which they exchange
information among themselves or with a translation server associated with
the IP i.e., Internet Protocol] network. The essence of the information
exchanged includes encryption algorithms and public key Data.”). (See also
Ans. 24). Thus, Appellants’ argument turns on whether the security protocol
taught by Rao is used in response to the authorizing of the dialing
information, as taught by Voit, which we conclude is a combinability
argument.
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Notwithstanding Appellants’ arguments (see also Reply Br 2-3), our
reviewing court guides that “when a patent ‘simply arranges old elements
with each performing the same function it had been known to perform’ and
yields no more than one would expect from such an arrangement, the
combination is obvious.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417
(2007) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
This reasoning is applicable here, given that we find a security
protocol would be desirable after the call (dialing action) is authorized to
secure the communication. Thus, we are not persuaded of error regarding
the Examiner’s proffered rationale that “it would have been obvious to one
of ordinary skill in the art to use the specific security features of Rao with
the system of Voit to achieve a secure and encrypted communication line
between two parties. This authentication would allow for not only the
security of the communication lines against hackers, but also allows for the
repudiation of the calling parties.” (Ans. 4-5).
For these reasons, on this record, we sustain the Examiner’s §103
rejection of independent claim 3 over the combination of Voit and Rao.
Claims 4, 11, and 12 (not argued separately) fall with claim 3. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Dependent claims 5-7, 9, 10, and 13
Regarding the obviousness rejection of dependent claims 5-7, 9, 10,
and 13 over the combination of Voit and Rao, we 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 set forth by the Examiner in the Answer
in response to arguments made in Appellants’ Appeal Brief. (See Ans. 24, et
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seq.). Therefore, we sustain the Examiner’s §103 rejection of dependent
claims 5-7, 9, 10, and 13 over the combination of Voit and Rao.
Dependent claim 8
Responsive to Appellants’ arguments regarding dependent claim 8
(App. Br. 9-10), we reverse the Examiner’s rejection of claim 8 because the
Examiner has not fully developed the record to show how the proffered
combination of references teaches or suggests at least the claimed “built-in
key escrow function” and the recited negative limitation of performing
Voice-over IP (VOIP) services “between devices and a web page server
lookup [that] may be performed in a DHCP i.e., Dynamic Host
Configuration Protocol] environment without side-channel communication
for call or web reference look-up” (claim 8), as argued by Appellants (App.
Br. 9-10). We agree with Appellants (App. Br. 9-10) that Voit’s column 17,
ll. 55-61 and Figure 1B, as relied on by the Examiner (Ans.7, 26), do not
provide sufficient detail to fully support the rejection. See our reversal of
dependent claims 25 and 41 infra, which recite commensurate limitations.
Rejection 2
Claims 14, 16-30, and 32-45 stand rejected under 35 U.S.C. §103(a)
as being unpatentable over the combination of Voit and Stewart.
Independent claims 14 and 30
Regarding the obviousness rejection of independent claims 14 and 30,
Appellants contend that the cited portions of Voit and Stewart do not teach
or suggest “one or more personal identification means (PIM) input units
coupled to a system bus in an ICA i.e., Internet Client Appliance], said PIM
input units operable to generate unique PIM signals,” as recited in identical
form in claims 14 and 30. (App. Br.13 ).
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In particular, Appellants contend “[t]here is no language in the cited
passages that teaches a personal identification means input unit in an Internet
appliance. Neither is there any language in the cited passages that teaches a
personal identification means input unit coupled to a system bus in an
Internet appliance.” (App. Br. 13) (emphasis omitted).
Issue: Under § 103, did the Examiner err in finding that the cited
references, either alone or in combination, would have taught or suggested
the following disputed limitations (labeled L1-L3):
[L1] one or more personal identification means (PIM)
input units coupled to a system bus in an ICA,1 said PIM input
units operable to generate unique PIM signals;
[L2] a security protocol circuit operable to encrypt,
decrypt, store and retrieve said PIM signals and device driver
code;
. . . .

[L3] a dialing action controller (DAC) coupled to said
system bus, and said Modems, said DAC operable receive a
dialing action request and to alert a user of said dialing action
and to enable or disable said dialing action to said Modems in
response to said verification signal and a user signal,]

within the meaning of independent claim 14 (footnote added), and the
commensurate language of independent claim 30?
Limitation L1
When we look to Appellants’ Specification for context, we note that
Appellants broadly describe “[an] Internet appliance [as] a device
specialized for accessing e-mail and/or other data from the Web.” (Spec.

1 See Appellants’ Specification, Fig. 1, step 102, depicting a dialing action
that is requested from the Internet Client Appliance (ICA).
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2:22-23). Thus, under a broad but reasonable construction, we construe the
claimed ICA, or Internet Client Appliance (claims 14 and 30), as any client
device that accesses data on the Internet. We are of the view that Voit’s C2
object (that the Examiner finds teaches or suggests the claimed PIM, Ans.
29) is necessarily coupled to such a device bus, as required to effect the
VOIP communication over the Internet. Moreover, Appellants acknowledge
that “Voit teaches an object requiring a user ID and password to be provided
prior to completing a voice over IP call.” (App. Br. 14, ll. 4-5). We note
that Voit describes the C2/C3 objects as follows:
C2: The Internet Telephony Call Control Object
C3: The Internet Telephony Authorization and Usage
Recording Object
(Voit, col. 8, ll. 52-54). According to at least one of the portions of
Voit pointed to by the Examiner (Ans. 9), Voit teaches:
The C3 object is invoked during a call when an
Authorization request is relayed over the interface C3.14. This
interface is responsible for allowing an authorization of ITG
i.e., Internet Telephony Network] usage by a service
subscriber, and for maintaining the current state of a
subscriber's connections within C3, as well as passing ITG
generated usage records from C2 to C3 in real time.
Communication through the C3.14 interface is preferably
encrypted and secure. The authorization request 45 relayed
over C3.14 typically consists of an account number and
password provided by the PC User to be authenticated by C3.
At this point C3 checks the account password and available
account balance. If the password is correct and the account
remaining balance permits the call to be established, then C3
responds affirmatively to C2. C3 also retains data indicating
that a call associated with that account is in progress. In such
an architecture, mutual authentication of C2 and C3, and a
secure transaction between them is preferred.
(Voit, col. 9, ll. 37-55) (emphasis added).
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Voit teaches that “[t]he C2 object may require a user ID and password
to be provided by the PC Client software prior to completing a V/IP call.
This information is authenticated via the C3 object.” (Col. 13, ll. 29-32,
emphasis added). Voit further teaches that “[t]he C3 object ensures
coordination between User Authorization and Usage Recording for a single
PC i.e., Personal Computer] user's customer account” (col. 9, ll. 12-14), and
that “[s]uccessful account validation by the C3 Object is a prerequisite to
successful call establishment by the C2 Object.” (Col. 13, ll. 49-51,
emphasis added). We particularly observe that Voit’s “FIG. 9 provides a
high level diagrammatic illustration of a typical PC which may be utilized
by a user in the system of the invention” (col. 7, ll. 30-32), and that Figure 9
expressly depicts a PC system bus. We also conclude that the claimed
coupling does not preclude intermediate couplings.
Given these teachings and suggestions, we find at least Voit’s C2/C3
objects are coupled to the system bus contained within the “single PC,”
which we find is an ICA within the meaning of independent claims 14 and
30. Therefore, on this record, we are not persuaded of Examiner error
regarding limitation L1 of claims 14 and 30.
Limitation L2
Regarding disputed limitation [L2]: “a security protocol circuit
operable to encrypt, decrypt, store and retrieve said PIM signals and device
driver code” (claim 14), we agree with and adopt the Examiner’s underlying
factual findings and ultimate legal conclusion of obviousness, as articulated
on pages 29-30 of the Answer:
The examiner contends that Voit teaches that the
communications are preferably encrypted and secure (column 9
lines 44-45). The communication between two endpoints is
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encrypted, and therefore, the decryption function is inherent in
the endpoints, or else no communications could be understood.
Furthermore, the argument that the cited prior arts do not teach
retrieving a device driver code is not found persuasive. Stewart
was used to teach the limitation of using drivers in modems.
Stewart states that "almost all modems in use at the
present time are so-called "driver-based ] modems" (column 4
lines 14-20). Therefore, based on Stewart's teaching, at the
time of invention, Voit would use a driver-based modem
because that would the predominant type of modem available to
use in a network to "establish a network connection" (Stewart:
Abstract). Therefore, the motivation to use such a modem is
that it is the most common modem that would have been
available at the time of invention.
(Ans. 29-30) (emphasis added).
Limitation L3
Regarding disputed limitation [L3]: “a dialing action controller (DAC)
coupled to said system bus . . . ” (claim 14), we again note that at least
Voit’s PC (col. 13, l. 22) is expressly depicted with a system bus. (See Voit,
Fig. 9: “Bus”). As noted above, we conclude that the claimed coupling does
not preclude intermediate couplings. Therefore, we find the weight of the
evidence supports the Examiner’s underlying findings and ultimate legal
conclusion of obviousness regarding disputed limitation L3:
The Examiner contends that the Voit teaches a dialing
action controller that is operable to retrieve a dialing action
request and to alert a user of the dialing action and to
enable/disable the dialing action in response to a verification
signal and a user signal. Voit teaches that the "C2 object is able
to signal various states of a connection (ringing, busy, etc.) to a
PC user" (column 13 lines 18-21), and further states that the
"C2 object may require a user ID and a password prior to
completing a V/IP call" (column 13 lines 26-29). This is
interpreted as being the dialing action controller because the
dialing is disabled if the authorization information is incorrect,
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and enabled when the proper user name and password are
received.
(Ans. 30).
We do not find Appellants’ additional combinability arguments
persuasive (App. Br. 19-21) because we find Appellants’ claims simply
arrange old elements with each performing the same function it had been
known to perform and thus “yields no more than one would expect from
such an arrangement.” See KSR, 550 U.S. at 417 (citation omitted). We also
agree with the Examiner that “Stewart is analogous art because it also deals
with communication over a network with the use of modems, which is
similar to the network communication methods of Voit.” (Ans. 38).
For these reasons, we find the weight of the evidence supports the
Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness. Accordingly, we sustain the Examiner’s §103 rejection of
independent claims 14 and 30 over the combination of Voit and Stewart.
Claims 20-23 and 27 (not argued separately) fall with claim 14.
Claims 36-39 and 43 (not argued separately) fall with claim 30. See 37
C.F.R. § 41.37(c)(1)(iv).
Dependent claims 16-19, 24, 26, 28, 29, 32-35, 40, 42, 44 and 45
Regarding the obviousness rejection over the combination of Voit and
Stewart of dependent claims 16-19, 24, 26, 28, 29, and associated paired
commensurate claims 32-35, 40, 42, 44 and 45, we 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 set forth by the Examiner in the Answer
in response to arguments made in Appellants’ Appeal Brief (Ans. 23 et seq.).
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Therefore, we sustain the Examiner’s §103 rejection of dependent
claims 16-19, 24, 26, 28, 29, 32-35, 40, 42, 44 and 45 over the combination
of Voit and Stewart.
However, we reverse the Examiner’s rejection of dependent claims 25
and 41 for the same reasons discussed above regarding dependent claim 8,
which recites commensurate limitations.
Rejection 3
Claim 2 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over the combination of Voit, Rao, and Stewart.
Dependent claim 2
Regarding the obviousness rejection of dependent claim 2, Appellants
contend that “Voit, Rao and Stewart, taken singly or in combination, do not
teach or suggest ‘prompting said user to enter a user personal identification
means (PIM) in response to selecting said communication access number’ as
recited in claim 2.” (App. Br. 30) (emphasis added). Appellants also
contend that “Voit, Rao and Stewart, taken singly or in combination, do not
teach or suggest ‘initiating a pre-determined security protocol to retrieve a
corresponding secure PIM for comparison’ as recited in claim 2.” (App. Br.
31). Appellants further contend that “Voit, Rao and Stewart, taken singly or
in combination, do not teach or suggest ‘retrieving secure device driver code
for executing said dialing action using said security protocol in response to
said authorization’ as recited in claim 2.” (App. Br. 31). Appellants further
contend that “Voit, Rao and Stewart, taken singly or in combination, do not
teach or suggest ‘executing said dialing action using said device driver code
for said communication link in response to said authorization and a user
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response to said connectivity cost alert’ as recited in claim 2.” (App. Br.
32).
Issue: Under § 103, did the Examiner err in finding that the cited
references, either alone or in combination, would have taught or suggested
the following disputed limitations (labeled L1-L4):
[L1] prompting said user to enter a user personal
identification means (PIM) in response to selecting said
communication access number;
[L2] initiating a pre-determined security protocol to
retrieve a corresponding secure PIM for comparison;
. . . .
[L3] retrieving secure device driver code for executing
said dialing action using said security protocol in response to
said authorization;
. . . .
[L4] executing said dialing action using said device
driver code for said communication link in response to said
authorization and a user response to said connectivity cost
alert,]
within the meaning of dependent claim 2?
In reviewing the record, we agree with the Examiner (Ans. 36-37) that
the first two disputed limitations of claim 2 [L1-L2] are taught or suggested
by Voit (col. 13, ll. 39-42). The Examiner finds Voit teaches an
authorization request as “being the same as prompting a user to enter the
personal identification means as it is being requested of the user to enter a
password and account number.” (Ans. 36; see also 37; see also Voit, col. 5,
ll. 6, 52, 54; col. 6, l. 8; col. 9, l. 48; col. 10, l. 2; col. 13, l. 6, 19). We
observe that Voit teaches “[t]he C2 object may require a user ID and
password to be provided by the PC Client software prior to completing a
V/IP call. This information is authenticated via the C3 object.” (Voit, col.
13, ll. 29-32, emphasis added).
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Because we find any password authentication system necessarily
requires comparing the entered password with a stored password (i.e.,
retrieve a corresponding secure PIM for comparison), we agree that the
proffered combination teaches or suggests both limitations L1 and L2. See
Voit: “If the password is correct and the account remaining balance permits
the call to be established, then C3 responds affirmatively to C2.” (Col. 9, ll.
49-50).
Regarding disputed limitations L3 and L4, we note that the Examiner
relies on Stewart as teaching or suggesting the device driver code limitation
(Ans. 37). The security and authorization and dialing actions are taught or
suggested by Voit and Rao, as previously discussed above. We note that the
Examiner’s rejection is based on the combined teachings and suggestions of
Voit, Rao, and Stewart.
We do not find Appellants’ additional combinability arguments
persuasive (App. Br. 33-36) because we find Appellants’ claims simply
arrange old elements with each performing the same function it had been
known to perform and thus “yield[] no more than one would expect from
such an arrangement.” See KSR, 550 U.S. at 417 (citation omitted). As
previously discussed, we agree with the Examiner that “Stewart is analogous
art because it also deals with communication over a network with the use of
modems, which is similar to the network communication methods of Voit.”
(Ans. 38).
Therefore, on this record, we are not persuaded of Examiner error.
Accordingly, we the sustain obviousness rejection of dependent claim 2 over
the combination of Voit, Rao, and Stewart.

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Rejection 4
Claims 15 and 31 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over the combination of Voit, Stewart, and Gullman.
Dependent claims 15 and 31
Based on Appellants’ arguments, we will decide the appeal of the
rejection of dependent claims 15 and 31 on the basis of representative claim
15. See 37 C.F.R. § 41.37(c)(1)(iv).
Regarding the obviousness rejection of claims 15 and 31, Appellants
contend, inter alia, that:
Appellants respectfully traverse that Voit, Stewart and
Gullman, taken together, teach a smart card reader. Appellants
performed a search of the phrase "smart card reader" in Voit,
Stewart and Gullman and were unable to identify the phrase
"smart card reader" or any variation thereof. The Examiner
cites the Abstract of Gullman as teaching "an integrated circuit
card" and concludes that Gullman teaches a smart card reader.
The Examiner must provide a basis in fact and/or technical
reasoning to conclude that the teaching of an integrated circuit
card in Gullman is equivalent to a smart card reader.
(App. Br. 36-37) (emphasis added).
The Examiner disagrees:
The Examiner contends that the Voit and Gullman
references in combination do teach a smart card reader.
Gullman states that an IC card [is used for] storing biometric
information, and [is] used for the purpose of accessing secure
areas (column 5 lines 34-39). Furthermore, in this embodiment,
there is a scanning device (smart card reader) which can read
biometric data from the card (column 5 lines 49-54). Therefore,
it is interpreted that this sensor is a smart card reader.
(Ans. 39).
We agree with the Examiner that card 14 (Gullman, Fig. 3) falls
within the broad scope of the claimed “smart card,” according to the plain
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meaning of the term. Because Gullman describes sensor 18 (located on card
14, Fig. 3) as a “scanning device” (for detecting a fingerprint, col. 5, l. 50),
we find it is a smart card reader (i.e., a reader or scanning device on a smart
card). Nor do we find Appellants’ additional combinability arguments
persuasive (App. Br. 37), because we find Appellants’ claims 15 and 31
simply arrange old elements with each performing the same function it had
been known to perform and thus “yield[] no more than one would expect
from such an arrangement.” See KSR, 550 U.S. at 417 (citation omitted).
For these reasons, we sustain the Examiner’s rejection of claims 15
and 31 (which recite the identical “smart card reader” limitation disputed by
Appellants).

DECISION
We reverse the Examiner’s obviousness rejections of claims 8, 25, and
41 under § 103.
We affirm the Examiner’s obviousness rejections of claims 2-7, 9-24,
26-40, and 42-45 under § 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).

ORDER
AFFIRMED-IN-PART

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