Ex Parte Cudak et alDownload PDFPatent Trial and Appeal BoardNov 7, 201714301663 (P.T.A.B. Nov. 7, 2017) 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. 14/301,663 06/11/2014 Gary D. Cudak RPS920140031US2 2604 63638 7590 11/07/2017 STREETS & STEELE - IBM CORPORATION (ROC) 13100 WORTHAM CENTER DRIVE, SUITE 245 Suite 245 HOUSTON, TX 77065 EXAMINER MOTT, GENNA M ART UNIT PAPER NUMBER 3662 MAIL DATE DELIVERY MODE 11/07/2017 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 GARY D. CUDAK, CHRISTOPHER J. HARDEE, and ADAM ROBERTS Appeal 2017-003595 Application 14/301,6631 Technology Center 3600 Before ERIC S. FRAHM, MICHAEL J. STRAUSS, and AARON W. MOORE, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL 1 This application is a continuation of U.S. Patent Application No. 14/300,717, which is before the Patent Trial and Appeal Board as Appeal No. 2017-003592. See App. Br. 2; Spec. 11. The instant application concerns a method, and related application 14/300,717 concerns a computer program product to perform the method. Both applications are assigned to International Business Machines Corporation. App. Br. 2; see also Appeal No. 2017-003592, App. Br. 2. Appeal 2017-003595 Application 14/301,663 STATEMENT OF THE CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1—12, 15—18, and 20. During prosecution and after the final rejection, claims 6 and 12—20 have been canceled.2 Thus, only the final rejection of claims 1—5 and 7—11 is before us on appeal. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Disclosed Invention and Exemplary Claim Appellants’ disclosed invention relates to a method of preventing login attempts on an electronic device based on a stored itinerary of destinations and a monitored location of the device (Spec. Tflf 2, 5, Abs., Fig. 3, claim 1). Representative independent claim 1, with emphases on disputed portions of the claim, reads as follows: 1. A method, comprising: storing an itinerary in memory of an electronic device, wherein the itinerary includes a plurality of destinations and a time period associated with each destination; monitoring the location of the electronic device, including receiving signals from a global positioning system; comparing the location of the electronic device to the itinerary; 2 Claims 13, 14, and 19 were canceled in the amendment filed February 25, 2016. Claims 6, 12, 15—18, and 20 were canceled in the after final amendment filed June 9, 2016 (see pp. 3—5, 10-12), which was entered by the Advisory Action mailed June 21, 2016 (see p. 2, box 7). 2 Appeal 2017-003595 Application 14/301,663 preventing login attempts on the electronic device in response to determining that the location of the electronic device at the current time does not match the destination specified in the itinerary for the time period that includes the current time; and after preventing login attempts, allowing login attempts on the electronic device in response to the location of the electronic device matching a predetermined home location. Examiner’s Rejections3 (1) The Examiner rejected claims 1—4, 7, and 8 as being unpatentable under 35 U.S.C. § 103(a) over Ozeki (US 2003/0073448 Al, published Apr. 3 We consider the Examiner’s following rejections, made in the Final Office Action, to be withdrawn: the rejections of (i) claims 1—5, 7—12, and 15—18 under 35 U.S.C. § 101 (see Final Act. 4—6); (ii) claim 6 under 35 U.S.C. §103 over the combination of Ozeki and Bade (Final Act. 8); (iii) claim 12 under 35 U.S.C. § 103 over the combination of Ozeki, Bade, and Mahajan (US 2010/0216429 Al, published Aug. 26, 2010) (see Final Act. 12-13); (iv) claim 16 under 35 U.S.C. § 103 over the combination of Ozeki, Bade, and Meir (US 2015/0074796 Al, filed Sept 6, 2013) (see Final Act. 13); and (v) claim 20 under 35 U.S.C. § 103 over the combination of Ozeki and Ferren (US 2008/0034224 Al, published Feb. 7, 2008) (see Final Act. 13— 14). Although the Examiner states that every ground of rejection set forth in the Final Office Action is being maintained (Ans. 3), we take this to be harmless error in view of the cancellation of claims 6 and 12—20 (see Adv. Act. 1 (boxes 7 and 15)). In other words, the cancellation of claims 6 and 12—20 clearly obviates the obviousness rejections of those claims. In addition, we agree with the Examiner (see Ans. 3) and Appellants (see App. Br. 4) that only the obviousness rejections of claims 1—5 and 7—11 are at issue on appeal. Further, in light of the Examiner’s statement at page 1, box 15 of the Advisory Action that claim 6 is not rejected and Appellants’ cancellation of claim 6, contrary the statements of both Appellants (App. Br. 4) and the Examiner (Ans. 3) that claim 6 is rejected and ready for review on appeal, we consider canceled claim 6 not to be before us. 3 Appeal 2017-003595 Application 14/301,663 17, 2003) and Bade (US 2002/0137524 Al, published Sept. 26, 2002).4 Final Act. 6—10. (2) The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Ozeki, Bade, and Cooper (US 6,757,362 Bl, issued June 29, 2004). Final Act. 10-11. (3) The Examiner rejected claims 9-11 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Ozeki, Bade, and Horstemeyer (US 2004/0243664 Al, published Dec. 2, 2004). Final Act. 11-12. Principal Issue on Appeal Based on Appellants’ arguments (App. Br. 5—14; Reply Br. 3), the following principal issue is presented: Did the Examiner err in rejecting claims 1—5 and 7—11 as being obvious because the base combination of Ozeki and Bade is not properly combinable to teach or suggest a method of preventing login attempts on an electronic device based on a stored itinerary of destinations and a monitored location of the device, as set forth in representative claim 1? 4 Appellants present arguments primarily as to the patentability of claim 1 (App. Br. 5—13), and rely on those arguments as to remaining dependent claims 2—11 (App. Br. 13). We select independent claim 1 as representative of the group of claims rejected under § 103(a) over Ozeki and Bade (claims 1—4, 7, and 8), pursuant to our authority under 37 C.F.R. § 41.37(c)(l)(iv). Accordingly, our analysis herein will only address representative claim 1. We will decide the outcome of (i) claim 5 rejected over the combination of Ozeki, Bade, and Cooper, and (ii) claims 9-11 rejected over the combination of Ozeki, Bade, and Horstemeyer, based on the outcome for claim 1. 4 Appeal 2017-003595 Application 14/301,663 ANALYSIS We have reviewed the Examiner’s rejection (Final Act. 6—12) in light of Appellants’ contentions in the Appeal Brief (App. Br. 5—13) and the Reply Brief (Reply Br. 3) that the Examiner has erred, as well as the Examiner’s response to Appellants’ arguments in the Appeal Brief (Ans. 3— 6). We disagree with Appellants’ contentions. With regard to representative claim 1, we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 6—7); (2) the additional findings and reasoning set forth in the Advisory Action mailed June 21, 2016 (p. 2); and (3) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief (see Ans. 3—6). Reason to Combine The Examiner has provided a factual basis and articulated reasoning with a rational underpinning to support the conclusion of obviousness with regard to claim 1 (see Final Act. 6—7; Adv. Act. 2; Ans. 3—6). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We agree with the Examiner (Final Act. 7; Ans. 4—7) that it would have been obvious to modify Ozeki’s login prevention method with Bade’s geographical information criterion used to allow login attempts after the device enters a predetermined location. We also agree with the Examiner’s conclusion that such a modification would have been obvious “in order to prevent unauthorized access to the device based on locations where access is not likely to occur in case of theft or misplacement of the device (Bade [0008])†(Final Act. 7). We also agree with the Examiner’s reliance on Bade’s paragraphs 9, 10, and 25 as teaching or suggesting waiting for a change in conditions to allow a login, and note Appellants’ failure to rebut these findings with evidence or argument in the 5 Appeal 2017-003595 Application 14/301,663 Reply Brief. Finally, we agree with the Examiner that both references (i) involve login processes, and (ii) ensure device security (Final Act. 7; Ans. 3—4). Accordingly, we disagree with Appellants’ assertions (App. Br. 6—8) that there is no proper reason to combine Ozeki and Bade. Teaching Away Appellants’ arguments (App. Br. 7—8) that Ozeki teaches away from allowing login attempts after preventing login attempts as recited in claim 1 are unpersuasive. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.†In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). We agree with the Examiner’s response to Appellants’ arguments (Ans. 3—4), which Appellants do not rebut by way of evidence or argument, that Ozeki merely sets forth one type of criterion for allowing login attempts after having previously prevented login attempts, and does not discourage or prevent the use of other criteria. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not teach away ... if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.â€); In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (a prior-art reference that discloses alternatives does not, simply by preferring some alternatives, “teach away†from the non-preferred alternatives); see also Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (a particular reference’s mere 6 Appeal 2017-003595 Application 14/301,663 silence about a particular feature does not tend to teach away from it, especially if it is disclosed elsewhere in the prior art); In re Gurley, 27 F.3d at 553; Para-OrdinanceMfg., Inc. v. SGSImporters Inti, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995). Accordingly, we disagree with Appellants’ assertions (App. Br. 6—8) that Ozeki teaches away from the invention recited in claim 1. Hindsight Appellants contend (App. Br. 8) the Examiner’s obviousness determination is hinged upon impermissible hindsight and is thus conclusory. To support their hindsight argument, Appellants present conclusory statements that the combination of Ozeki and Bade, and specifically Bade, fails to teach waiting for a change in conditions to overcome a locked condition (App. Br. 8). Appellants’ conclusory statements are unsupported by factual evidence. In addition, arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974); Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017). Therefore, we accord very little probative value to Appellants’ conclusory statements that the combination fails to teach waiting for a change in conditions to overcome a locked condition. In fact, the Examiner cites Bade’s paragraphs 8—10, 25, and 28, as well as Figure 3 (login is granted in step 322 in response to determining if the device is in a certain area in step 318) as teaching or suggesting waiting for a change in conditions to allow a login. Appellants have not provided evidence or argument to rebut the Examiner’s findings in this regard. 7 Appeal 2017-003595 Application 14/301,663 Accordingly, Appellants’ contentions (App. Br. 8) that it would not have been obvious to combine Ozeki and Bade because the Examiner’s reasoning is conclusory and involves hindsight are unconvincing. Bade With regard to Appellants’ contention (App. Br. 8—10) that Bade fails to disclose “a subsequent iteration†as recited in claim 1, we agree with the Examiner (Ans. 4) that Bade’s paragraph 11 and Figure 3 (steps 320 and 322) teach or suggest this feature. Appellants have not responded to the Examiner’s reliance on paragraph 11 with either evidence or argument. With regard to Appellants’ contention (App. Br. 11—12) that Bade fails to disclose “preventing login attempts†as recited in claim 1, we agree with the Examiner (Ans. 5) that Bade’s step 320 in Figure 3 explicitly teaches denying access, which is encompassed by the recitation in claim 1 of “preventing login attempts.†We also agree with the Examiner (Ans. 5) that paragraphs 25 and 28 additionally support this understanding. With regard to Appellants’ contention (App. Br. 12—13) that Bade fails to disclose “a predetermined home location†as recited in claim 1, we agree with the Examiner (Ans. 5—6) that Bade’s paragraph 25 describes, and Figure 3 shows, allowing a login attempt in at least steps 312, 316, 318, and 322 based on a location matching an allowed access area such as a user’s office or places a user regularly travels. Bade also discloses allowing a user 102 to “define which locations are allowed access or are restricted access areas†(125; see also Fig. 3, step 310), determining if a device 104 is in the designated area (128, Fig. 3, step 318), and granting access when the device 104 is within the designated area (128. Fig. 3, step 322). One of ordinary skill in the art reading the disclosure of Bade flflf 8, 25, 28, Fig. 3) would 8 Appeal 2017-003595 Application 14/301,663 understand that it would be desirable to designate alocation (home, office, or place the user most often uses the device 104) as an area where access should be granted — i.e., a predetermined home location. Therefore, we agree with the Examiner (Final Act. 7; Ans. 5—6) that Bade teaches or suggests “a predetermined home location†as recited in claim 1. Summary In view of the foregoing, we sustain the Examiner’s obviousness rejection of independent claim 1. For similar reasons, and because (i) claims 2—5 and 7—11 each depend directly from sole independent claim 1 and therefore contain all of the salient limitations, and (ii) Appellants argue claims 2—5 and 7—11 are patentable for the same reasons as claim 1 (see App. Br. 13), we also sustain the Examiner’s obviousness rejections of dependent claims 2—5 and 7—11. CONCLUSIONS Ozeki and Bade are properly combinable, and the combination teaches or suggests a method of preventing login attempts on an electronic device based on a stored itinerary of destinations and a monitored location of the device, as set forth in representative claim 1. Appellants have not sufficiently shown that the Examiner erred in rejecting sole independent claim 1, as well as remaining claims 2—5 and 7—11, depending therefrom, under 35 U.S.C. § 103(a). Thus, we sustain the rejections before us. DECISION The Examiner’s rejections of claims 1—5 and 7—11 under 35 U.S.C. § 103(a) are affirmed. 9 Appeal 2017-003595 Application 14/301,663 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 10 Copy with citationCopy as parenthetical citation