Ex Parte Etchegoyen

Patent Trial and Appeal Board

Sep 2, 2016

13660651 (P.T.A.B. Sep. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/660,651
96051 7590
Uniloc USA Inc.
Legacy Town Center
7160 Dallas Parkway
Suite 380
Plano, TX 75024
10/25/2012
09/07/2016
FIRST NAMED INVENTOR
Craig S. Etchegoyen
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.
UN-NP-DF-127 4986
EXAMINER
HOLMES, ANGELA R
ART UNIT PAPER NUMBER
2497
NOTIFICATION DATE DELIVERY MODE
09/07/2016 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):
sean. burdick@unilocusa.com
tkiatkulpiboone@unilocusa.com
kris.pangan@unilocusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG S. ETCHEGOYEN1
Appeal2015-000971
Application 13/660,651
Technology Center 2400
Before MAHSHID D. SAADAT, KRISTEN L. DROESCH, and
JOHNNY A. KUMAR, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 9-16.2 Final Act. 3-5. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Appellant notes that the real parties of interest are the assignee Uniloc
Luxembourg S.A. and Uniloc USA, Inc. (App. Br. 3).
2 Claims 1-8 and 17-20 have been cancelled.
Appeal2015-000971
Application 13/660,651
Invention
The claimed invention on appeal relates to a method of authenticating
a device by comparing device fingerprints or components with previously
stored fingerprints (App. Br. 3). Some device fingerprints are expected to
change and therefore a tolerance is provided for changes based on typical
and non-typical upgrade components such that a device may still be
authenticated (id.).
Representative Claim
9. A method for building tolerance into authentication of a
device, comprising steps of:
receiving a digital fingerprint from the device, the digital
fingerprint having a plurality of finger print portions, each
fingerprint portion being associated with a component of the
device;
comparing the received digital fingerprint with stored
digital fingerprints of known devices;
flagging each fingerprint portion that creates an error
during the comparing step;
categorizing the associated component of each flagged
fingerprint portion as a typical-upgrade component or a non-
typical-upgrade component; and
authenticating the received digital fingerprint when, for
any single comparison between fingerprints, a ratio of non-
typical-up grade components to typical-upgrade components
exceeds a predetermined acceptance value.
(Emphasis added).
Rejection
Claims 9-16 are rejected under 35 U.S.C. § 103(a) over the combined
teachings and suggestions of Pierson (US 2012/0030771 Al; Feb 2, 2012)
and Wheeler (US 2003/0097562 Al; May 22, 2003).
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Application 13/660,651
Grouping of Claims
Based on Appellant's arguments, we decide the appeal of the rejection
of claims 9-16 on the basis of representative claim 9 (App. Br. 7). See
37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
Issue: Under 35 U.S.C. § 103(a), did the Examiner err in finding the
combination of Pierson and Wheeler would have taught or suggested the
contested limitation "authenticating the received digital fingerprint when, for
any single comparison between fingerprints, a ratio of non-typical-upgrade
components to typical-upgrade components exceeds a predetermined
acceptance value," as recited in claim 1 (emphasis added)?3
Appellant argues that Pierson does not teach categorizing fingerprint
portions as non-typical-upgrade or typical-upgrade (App. Br. 7), and that
Pierson does not teach or suggest a ratio of any kind (App. Br. 8). At the
outset, Appellant acknowledges that Pierson teaches a Host may establish
rules for system drift and which one or more elements of the NDF (network
device fingerprint) is perceived as critical and therefore should not be
changed without causing an exception error message (App. Br. 8 (citing
Pierson i-f 51 )). However, Appellant contends that these rules do not
determine in what ways a device fingerprint can change over time and still
match (id.).
The Examiner finds that Pierson teaches elements not present in the
original device fingerprint such as a new piece of software or hardware, and
3 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997).
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Appeal2015-000971
Application 13/660,651
that these may correspond to typical and non-typical-upgrade components
(Ans. 3). It is noted that these are also listed in the typical and non-typical-
upgrade examples provided in Appellant's Specification (id.; see Spec. 3).
By way of illustration, the Examiner points out that Pierson teaches both
typical-upgrade components such as a change in the amount of memory in
the network device, and non-typical-upgrade components such as the serial
number of the central processing unit, concluding that the established rules
for system drift comprise these components and determine which of these
may be changed without causing an error (Ans. 3 (citing Pierson i-fi-1 8 and
51) ). Therefore, the Examiner concludes, and we agree, that the amount of
allowed change corresponds to the ratio between these two types of
components exceeding a pre-determined acceptance value.
We are not persuaded that the Examiner's interpretation of the terms
"typical-upgrade component" and "non-typical-upgrade component" are
overly broad or unreasonable (Ans. 3--4), because Pierson in paragraph 51
explicitly states that the NDF may be updated with critical, i.e., non-typical
elements, or with new software or hardware which are not worrisome, i.e.,
typical-upgrade elements. 4
Although Appellant further argues that Wheeler does not teach device
fingerprints, non-typical-upgrades or typical-upgrades, the teachings of
Wheeler are considered cumulative and were merely used by the Examiner
4 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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Application 13/660,651
to show that security features of a device need to be updated to maintain its
security level (Ans. 4).
For these reasons, we are unpersuaded by Appellant's arguments that
the Examiner has erred in concluding that the combination of Pierson and
Wheeler would have rendered the contested limitation obvious.
Reply Brief
To the extent Appellant advances new arguments in the Reply Brief
not in response to a shift in the Examiner's position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner's Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
In particular, Appellant contends claim 9 recites a "ratio of flagged
components test", asserting that both non-typical-upgrade components and
typical-upgrade components are "flagged" when an error is created during
the comparison of the received digital fingerprint with the stored digital
fingerprints of known devices (Reply. Br. 2--4).
The Examiner points to paragraph 51 of Pierson (Ans. 3) for
fingerprint pair match or comparison, where some amount of change is
permitted for non-typical-upgrade and typical-upgrade components.
Therefore, we are unpersuaded of error in the Examiner's consideration of
the cited match as a comparison between components that are flagged.
Flagging is essentially noticing which components have changed at
Pierson's fingerprint pair match step, and a certain amount or ratio of
changed or flagged components may not cause a mismatched pair (id.).
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Appeal2015-000971
Application 13/660,651
Accordingly, we find Appellant's arguments in the Reply Brief unavailing
(Reply. Br. 2--4).
Conclusion
For the reasons discussed above, we find a preponderance of the
evidence supports the Examiner's underlying factual findings and ultimate
legal conclusion of obviousness for rejected claims 9-16.
DECISION
We affirm the Examiner's rejection of claims 9-16 under 35 U.S.C.
§ 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±).
AFFIRMED
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