Ex Parte Davis et al

Patent Trial and Appeal Board

Mar 1, 2018

14017065 (P.T.A.B. Mar. 1, 2018)

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.
14/017,065 09/03/2013 Masha Leah Davis 2943AAAB-130-CON-2 1993
26201 7590 03/05/2018
FISH & RICHARDSON P.C. (AU)
P.0 BOX 1022
Minneapolis, MN 55440-1022
EXAMINER
ABRISHAMKAR, KAVEH
ART UNIT PAPER NUMBER
2494
NOTIFICATION DATE DELIVERY MODE
03/05/2018 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASHA LEAH DAVIS, ROBERT WAMSLEY,
and TAM HULUSI
(Applicant: Assa Abloy AB)
Appeal 2016-004936
Application 14/017,0651
Technology Center 2400
Before NORMAN H. BEAMER, ADAM J. PYONIN,
and MICHAEL J. ENGLE, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 39-59. Claims 1—38 are cancelled. We have
jurisdiction over the pending rejected claims under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Assa Abloy AB as the real party in interest. (Br. 2.)
Appeal 2016-004936
Application 14/017,065
THE INVENTION
Appellants’ disclosed and claimed inventions are directed to making
access decisions in a secure access network by a portable credential using
data and algorithms stored on the credential. (Abstract.) Claim 39,
reproduced below, is illustrative of the claimed subject matter:
39. A method, comprising:
receiving location information at a portable credential;
analyzing the location information by an application
stored on the portable credential; and
making an access control decision based on the analysis
of the location information.
REJECTIONS
The Examiner rejected claims 39—59 on the ground of nonstatutory
double patenting as being unpatentable over claims 1—46 of U.S. Patent No.
8,578,472, and over claims 1—36 of U.S. Patent No. 8,074,271 and Stone
(US 7,698,566 Bl, issued Apr. 13, 2010). (Final Act. 7—9.)2
The Examiner rejected claims 39-59 under 35 U.S.C. § 103(a) as
being unpatentable over Larson et al. (US 4,727,368, issued Feb. 23, 1988)
and Gounder (US 2006/0164235 Al, pub. July 27, 2006). (Final Act. 9-18.)
2 Appellants request the double patenting rejection “be held in abeyance
until such time as the allowable form of the claim becomes known.”
(Br. 11.) However, we agree with the Examiner that the failure of
Appellants to file a terminal disclaimer or otherwise traverse this rejection
commends summary affirmance. (Ans. 9—10.)
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Application 14/017,065
ISSUES ON APPEAL
Appellants’ arguments present the following issues:3
Issue One: Whether the Examiner erred in finding the combination of
Larson and Gounder teaches or suggests the “location” limitations of
independent claims 39, 51, and 57. (Br. 6-9.)
Issue Two: Whether the Examiner erred in finding the combination of
Larson and Gounder teaches or suggests the additional limitations of
dependent claims 49, 50, and 52. (Br. 9-11.)
Issue Three: Whether the Examiner erred in finding the combination
of Larson and Gounder teaches or suggests the additional limitations of
dependent claims 42, 45, 53, 55, and 56. (Br. 9—11.)
ANALYSIS
We have reviewed the Examiner’s obviousness rejections in light of
Appellants’ arguments that the Examiner errs. Except with respect to
dependent claims 42, 45, 53, 55, and 56, we disagree with Appellants’
arguments, and we adopt as our own (1) the pertinent findings and reasons
set forth by the Examiner in the Action from which this appeal is taken
(Final Act. 7—18) and (2) the corresponding reasons set forth by the
Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief
3 Rather than reiterate the arguments of Appellants and the findings of the
Examiner, we refer to the Appeal Brief (filed Aug. 31, 2015, hereinafter
“Br.”); the Final Office Action (mailed Apr. 17, 2015, hereinafter “Final
Act.”); and the Examiner’s Answer (mailed Feb. 5, 2016, hereinafter “Ans.”)
for the respective details.
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Application 14/017,065
(Ans. 2—10). We concur with the applicable conclusions reached by the
Examiner and emphasize the following.
Issue One
In rejecting the independent claims, the Examiner relies on the
disclosure in Larson of a real estate lockbox and key system in which access
is granted by a lockbox to an agent holding an electronic key, as a result of
an exchange of control signals, including a control signal received by the
key from the lockbox, identifying the lockbox, and including identification
of “the board, agency and agent which listed the house.” (Final Act. 2—3, 9—
10; Ans. 2—3; Larson Abstract, Fig. 1, col. 3,11. 12—24, col. 4,11. 21—30.) In
particular, the Examiner relies on Larson’s disclosure that the control signal
sent to the key includes an identification of the real estate board as teaching
or suggesting the location receiving and analyzing limitations of the claims
— finding “[i]t is well-known that the real estate board is state specific.”
(Ans. 3.)
The Examiner also relies on the disclosure in Gounder of providing
access to cargo containers based on location information provided by a
Global Positioning System (GPS) receiver. (Final Act. 10; Gounder
Abstract, 147.)
Appellants argue the Examiner erred in taking official notice that real
estate boards are state specific without proper reliance on sufficient
documentary evidence, and also argue the real estate board information
disclosed in Larson is “silent to . . . location.” (Br. 5—7.) We find this
argument unpersuasive as we agree with the Examiner that one of skill in the
art, in light of Appellants’ disclosure, would understand the location
information to include a region (or particular door) served by the real estate
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Application 14/017,065
board. See Ans. 3; Larson 3:15—20 (describing access control decisions can
be based on the lockbox identifier and board identification). Such
construction is consistent with the Specification, which does not recite the
term “location information.” See Spec. 9:20—24.
Additionally, the Examiner alternatively finds Gounder’s use of GPS
location teaches or suggests the location limitations of the claims. (Final
Act. 10.) The Examiner finds, and we agree:
Assuming arguendo that the information identifying the state
affiliation of the agent lockbox is not construed to be “location
information” as claimed, the rejection also relies on Gounder.
Gounder, was introduced to disclose a specific geographic
location. Gounder discloses a card which is used to unlock a
container (paragraph 0047). The GPS receiver (analogous to
local host) checks for location data and if the location is valid,
the container (analogous to lockbox of Larson) is allowed to be
unlocked (paragraph 0047). Therefore as combined, Larson
clearly shows the agent key making access determinations
based on received information (including real estate board
affiliation), and modifying Larson by incorporating physical
location information as taught by Gounder would disclose the
agent key making the access determination based on received
information including physical location information.
(Ans. 3—4.)
Appellants argue Gounder is distinguishable because the containers
described are more analogous to a lock than a key, and the containers are not
stationary like a lockbox. (Br. 8.) However, the Examiner finds “Larson
discloses that a lockbox can be removed and placed on another house” and
“[therefore, the lockbox is not stationary and is intended to be placed in
different locations.” (Ans. 4; Larson 6:67—7:1.) Moreover, this argument is
unpersuasive as arguing the reference individually, whereas the Examiner
relies on the combination of Larson and Gounder as teaching or suggestion
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Application 14/017,065
the limitations of the independent claims. Non-obviousness cannot be
established by attacking references individually where, as here, the ground
of unpatentability is based upon the teachings of a combination of
references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Rather, the test for obviousness is whether the combination of references,
taken as a whole, would have suggested the patentee’s invention to a person
having ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA
1981).
In regard to independent claim 51, Appellants additionally argue the
Examiner errs in finding the combination of Larson and Gounder teaches or
suggests the limitations requiring receiving and analyzing both a “first
location” and a “second location.” (Br. 8—9.) However, we agree with the
Examiner that Larson’s disclosure of the capability of the real estate key to
gain access to different lockboxes at different locations, when considered in
combination with Gounder, teaches or suggests these limitations. (Ans. 4—
5.)
Accordingly, we sustain the Examiner’s rejection of independent
claims 39, 51, and 57.
Issue Two
Dependent claim 49, depending from claim 39, requires “wherein the
received location information is location information of the portable
credential.” (Br. 14.) Appellants argue the Examiner errs because the GPS
receiver is not a portable credential. (Br. 10.) However, the electronic key
of Larson is a portable credential, and the Examiner finds “[t]he portable
credential in Larson (agent key) is part of a real estate board which is
associated with a certain state.” (Ans. 6.) Moreover, the Examiner relies on
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the combination of Larson and Gounder for the obviousness rejections.
(Ans. 6—7.) Therefore, as discussed above, this argument is unpersuasive as
focusing on Larson alone, and the Examiner’s rejection of claim 49 is
sustained.
Dependent claim 50, depending from claim 39, requires “the location
information is received from a local host.” (Br. 14.) Appellants repeat the
argument that a portable credential is not taught by Gounder. (Br. 10.) This
argument is unpersuasive for the reasons discussed above, and therefore the
Examiner’s rejection of claim 50 is sustained.
Dependent claim 52, depending from claim 51, requires “making a
second access control decision based on the analysis of the second location
information.” (Br. 15.) Appellants argue, similar to their argument with
respect to claim 42 discussed below, that, in Larson, “an agent key that is
determined to be authorized to access a first lockbox is not deemed to have
authority to access a second lockbox.” (Br. 10.) However, unlike claim 42,
claim 52 does not require the second access control decision to depend on
information from a first host. We agree with the Examiner that Larson’s
disclosure of the capability of the real estate key to gain access to different
lockboxes at different locations, when considered in combination with
Gounder, teaches or suggests the limitation of claim 52. (Ans. 7—8.)
Therefore, we sustain the Examiner’s rejection of claim 52.
In addition to our disposition of the dependent claims discussed
above, we sustain the obviousness rejections over Larson and Gounder of
claims 40, 41, 43, 44, 46-48, 54, 58, and 59, which rejections are not argued
separately with particularity. See In re Jung, 637 F.3d 1356, 1366 (Fed. Cir.
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Application 14/017,065
2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”).
Issue Three
Dependent claim 42, depending from claim 40 which in turn depends
from claim 39, requires “transmitting a signal from the portable credential in
accord with the access control decision,” where the signal is “transmitted]
. . . to a second local host.” (Br. 13, emphasis added.) The Examiner relies
on the above described capability of Larson’s real estate key to gain access
to different lockboxes. (Ans. 5—6.) However, we agree with Appellants that
this capability does not teach or suggest sending an access control decision
signal generated from a first host to a second host. (Br. 9.) Therefore, on
the record before us, we are constrained to not sustain the Examiner’s
rejection of claim 42.
Dependent claim 45, depending from claim 39, requires “determining
a host identifier based upon the location information.” (Br. 14.) The
Examiner relies on the above described control signal in Larson which
identifies the real estate board associated with the listing. (Ans. 6.)
However, according to Larson, the control signal separately includes
information identifying the lockbox, rather than relying on location
information to determine a lockbox identifier. (Larson col. 3,11. 16—19.)
Although, as discussed above, we agree with the Examiner that the
combination of Larson and Gounder teaches or suggests receiving and
analyzing location information, we agree with Appellants that there is no
teaching or suggestion of determining a “host identifier based upon the
location information.” (Br. 9.) Therefore, on the record before us, we are
constrained to not sustain the Examiner’s rejection of claim 45.
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Dependent claim 53, depending from claim 52, requires “wherein the
second access control decision is dependent upon the first access control
decision.” (Br. 15.) Dependent claim 55, depending from claim 54, which
in turn depends from claim 52, which further depends from claim 51,
requires “wherein making the second access control decision is based at least
in part on the determined state of the first access controller” (from claim 54)
and “determining the state of the first access controller has changed from the
first state to a second state” (from claim 55). (Id.) Dependent claim 56,
depending from claim 51, requires “wherein making the second access
control decision is based upon determining a time between receiving the first
location information and receiving the second location information is within
an acceptable time range.” (Id.) Thus, each of claims 53, 55, and 56
requires an access control decision signal at a second host dependent on
information generated from a first host which, as discussed above for claim
41, is not taught or suggested by the Larson/Gounder combination. (Br. 11.)
Therefore, on the record before us, we are constrained to not sustain the
Examiner’s rejection of claims 53, 55, and 56.
DECISION
We summarily affirm the Examiner’s rejection of claims 39—59 on the
ground of nonstatutory double patenting.
We affirm the Examiner’s obviousness rejections over Larson and
Gounder of claims 39-41, 43, 44, 46—52, 54, and 57—59.
We reverse the Examiner’s obviousness rejections over Larson and
Gounder of claims 42, 45, 53, 55, and 56.
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Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
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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