Ex Parte Feinberg et al

Patent Trial and Appeal Board

Dec 8, 2016

12985264 (P.T.A.B. Dec. 8, 2016)

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.
12/985,264 01/05/2011 Eugene M. Feinberg 7637-0005 3981
27571 7590
Ascenda Law Group, PC
333 W San Carlos St.
Suite 200
San Jose, CA 95110
12/12/2016 EXAMINER
LIU, JUNG-JEN
ART UNIT PAPER NUMBER
2473
NOTIFICATION DATE DELIVERY MODE
12/12/2016 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):
patents @ ascendalaw.com
tarek.fahmi@ascendalaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EUGENE M. FEINBERG, BEREND OZCERI, BRUCE SMITH,
and YUVAL KOREN
Appeal 2014-0092755
Application 12/985,264
Technology Center 2400
Before THU A. DANG, ERIC S. FRAHM, and NATHAN A. ENGELS,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2014-009255
Application 12/985,264
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—12. Claims 13—18 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Exemplary Claim
Exemplary independent claim 1, under appeal, with emphases added
to the key/disputed portions of the claim, reads as follows:
1. A method, comprising:
associating, at a server, a user account established by an
owner of a removable media card with information sufficient to
permit a client device of the owner to join a wireless local area
network (WLAN) of which an access point (AP) hosted by the
removable media card is a part; and
upon receipt of account credentials of the owner,
providing the client device, via an out of band (OOB) network
different from the WLAN, with the information sufficient
to permit the client device to join the WLAN of which the AP is
apart.
Examiner’s Rejection
The Examiner rejected claims 1—12 as being unpatentable under
35 U.S.C. § 103(a) over McRae (US 2006/0221917 Al; published Oct. 5,
2006), Manchester (US 2005/0198233 Al; published Sept. 8, 2005), and
Shin (US 2011/0099598 Al; published Apr. 28, 2011 and filed Oct. 26,
1999). Final Act. 3—30; Ans. 3—30.
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Application 12/985,264
Issues on Appeal1
Based on Appellants’ arguments in the Appeal Brief (App. Br. 8—10)
and the Reply Brief (Reply Br. 5—9), the following issues are presented on
appeal:
Did the Examiner err in rejecting claims 1—12 as being obvious over
the combination of McRae, Manchester, and Shin because McRae, and thus
the combination, fails to teach or suggest “account credentials” associated
with “a user account established by an owner of a removable media card,” as
recited in representative independent claim 1?
ANALYSIS
We have reviewed the Examiner’s rejections (Final Act. 3—30; Ans.
3—30) in light of Appellants’ contentions in the Appeal Brief (App. Br. 8—
10) and the Reply Brief (Reply Br. 5—9) that the Examiner has erred, as well
as the Advisory Action mailed April 8, 2014, and the Examiner’s response
(Ans. 31—35) to Appellants’ arguments in the Appeal Brief. We disagree
with Appellants’ arguments.
With regard to representative claim 1, we concur with the conclusions
reached by the Examiner, and 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. 3—8; Ans. 3—7), and (2) the reasons set forth by the Examiner in the
1 Appellants argue both independent claims 1 and 7 as a group and present
detailed arguments on the merits only with respect to independent claim 1
(App. Br. 8—9; Reply Br. 5—9). Appellants rely on the arguments presented
for claim 1 as to the patentability of remaining dependent claims 2—6 and 8—
12 which contain similar features. Accordingly, we select independent
claim 1 as representative of the group of claims (claims 1—12) rejected for
obviousness over the combination of McRae, Manchester, and Shin.
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Application 12/985,264
Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 31—35).
We highlight and amplify certain teachings and suggestions of the
references, as well as certain ones of Appellants’ arguments as follows.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis (see In re Fine, 837 F.2d 1071, 1073
(Fed. Cir. 1988)), and provide articulated reasoning in the rejection
possessing a rational underpinning to support the legal conclusion of
obviousness (KSRInt’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (citing
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))). An improved product in
the art is obvious if that “product [is] not [one] of innovation but of ordinary
skill and common sense.” KSR, 550 U.S. at 421.
We find that it would have been obvious to one of ordinary skill in the
art at the time of Appellants’ invention to combine (1) McRae’s Access
Point (AP) provisioning system and Dual Mode Device, system and method,
(2) Manchester’s network connectivity, transfer, and configuration
procedures, (3) Shin’s removable card for hosting APs, and (3) the
knowledge and common sense of the ordinarily skilled artisan in the field of
communications and security in order to provide better security when
connecting and updating connections over networks, including DMDs
operating over OOB networks and WFANs. See In re Graves, 69 F.3d
1147, 1152 (Fed. Cir. 1995) (citing In re LeGrice, 301 F.2d 929, 936 (CCPA
1962)) (confirming the longstanding interpretation that the teachings of a
reference may be taken in combination with knowledge of the skilled artisan
to put the artisan in possession of the claimed invention even though the
patent does not specifically disclose certain features.). An ordinarily skilled
artisan at the time of Appellants’ invention recited in representative claim 1
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Application 12/985,264
employing common sense would have recognized that in combining
McRae’s DMD device/system/method using an Out-Of-Band network to
update Access Points (APs) with Manchester’s AP information for use in a
Wireless Local Area Network (WLAN) to transfer/configure network
settings using Shin’s removable media card that hosts an AP, it would have
been advantageous to utilize authentication information (e.g., user name,
password, SSID, login information) from the owner of the removable card of
Shin for security purposes. To allow for a more secured network connection
and configuration process (such as using WEP, an encrypted protocol) is
obvious and is not the product of innovation, but of ordinary skill and
common sense. KSR, 550 U.S. at 421. It would also be common sense that
the authentication information used for setting up or updating a secured
connection, when using a removable card, should be the information relating
to the owner of the card, and not a random and/or unauthorized user of the
card.
We agree with the Examiner as to representative claim 1 (Final Act.
3—8; Ans. 3—7, 32—34) that McRae (H 21—34) teaches or suggests “account
credentials” associated with “a user account established by an owner of a
removable media card,” as required by representative claim 1. Specifically,
McRae discloses the use of login information (para. 26), security
information (para. 17), Service Set Identifiers (SSIDs) (para. 29; see also
para. 46), and user name and password (para. 33) in an authentication
process (Fig. 2, especially step 225). We also agree with the Examiner that
McRae discloses (i) a Dual Mode Device (DMD) 102 and 302 for use with a
Wireless Local Area Network (WLAN) (Ans. 32—34 citing McRae, Figs. 1—
4, paras. 17, 21—37; see also paras. 13—15), as well as (ii) an Out-Of-Band
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Application 12/985,264
(OOB) network 104 (see Advisory Action mailed April 8, 2014, p. 2 citing
McRae, para. 16; see also paras. 21, 39, 43^44, 46). Furthermore,
Appellants have not responded to or refuted the Examiner’s additional
citation to Appellants’ Specification (Spec. 12, paras. 4—5, 14 admitting pre­
shared keys (PSKs) and network identifiers such as SSIDs for use in user
authentication, removable cards, and OOB networks were all known at the
time of Appellants’ invention). Therefore, Appellants have not shown error
in the Examiner’s conclusion that the combination of McRae, Manchester,
and Shin teaches or suggests the disputed limitation. Finally, we note that
both Appellants (Spec. para. 3) and McRae (para. 34), discussing use of the
same security protocol, namely Wired Equivalent Privacy (WEP).
In view of the foregoing, we sustain the obviousness rejection of
representative claim 1, along with claims 2—12 grouped therewith, under 35
U.S.C. § 103(a).
CONCLUSION
The Examiner has not erred in rejecting claims 1—12 as being obvious
over the combination of McRae, Manchester, and Shin because McRae, and
thus the combination, teaches or suggests “account credentials” associated
with “a user account established by an owner of a removable media card,” as
recited in representative independent claim 1.
DECISION
The Examiner’s rejection of claims 1—12 under 35 U.S.C. § 103(a) is
affirmed.
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Application 12/985,264
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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