Ex Parte Fitzgerald et al

Patent Trial and Appeal Board

Dec 29, 2016

12060862 (P.T.A.B. Dec. 29, 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.
12/060,862 04/01/2008 William Fitzgerald 101908.00003 7480
23619 7590 01/03/2017
Snnire Patton Rnaas (HSR T T P
EXAMINER
1 E. Washington Street
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TRUONG, THONG P
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2433
NOTIFICATION DATE DELIVERY MODE
01/03/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM FITZGERALD, PETER BERMINGHAM,
FRANK HANNIGAN, and PAUL PRENDERGAST
Appeal 2016-003543
Application 12/060,862
Technology Center 2400
Before CARLA M. KRIVAK, HUNG H. BUI, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3—46, and 48—51, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-003543
Application 12/060,862
STATEMENT OF THE CASE
Appellants’ invention is directed to methods and systems for
“detecting the loss, theft or unauthorized use of a device” and “altering the
function of an electronic device in response to the device being lost, stolen
or used in an unauthorized manner” (Abstract; Spec. 12).
Independent claim 1, reproduced below, is exemplary of the subject
matter on appeal.
1. A method comprising:
providing, by a mobile device, a notification describing
how to return the mobile device to an authorized user;
detecting, by the mobile device, that a security
compromise event has occurred; and
determining whether the function of the device should be
altered in response to said security compromise event;
wherein the mobile device is configured:
to detect that a security compromise event has
occurred by receiving a message from a security authority
said security authority is an entity other than the
authorized user, that includes one of a governmental law
enforcement organization, a private security firm, and an
insurance agency; and
to determine, based on decoding the content of the
message from the security authority, that a security
compromise event has occurred.
REFERENCES and REJECTIONS
The Examiner provisionally rejected claims 1, 7, 8, and 10-14 under
35 U.S.C. § 101 for statutory double patenting as claiming the same
invention as claims 1, 8, 10-13, 19, and 20 of co-pending Application No.
12/203,832.
The Examiner rejected claims 1, 5—8, 10, 11, 20—26, 41—44, and 48
under 35 U.S.C. § 103(a) based upon the teachings of Helle (US 6,662,023
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Application 12/060,862
Bl, issued Dec. 9, 2003) and Pomerantz (US 2007/0111707 Al, published
May 17, 2007).
The Examiner rejected claims 3 and 4 under 35 U.S.C. § 103(a) based
upon the teachings of Helle, Pomerantz, and Reding (US 2008/0085728 Al,
published Apr. 10, 2008).
The Examiner rejected claims 9 and 12 under 35 U.S.C. § 103(a)
based upon the teachings of Helle, Pomerantz, and Moshir (US
2008/0214111 Al, published Sept. 4, 2008).
The Examiner rejected claim 13 under 35 U.S.C. § 103(a) based upon
the teachings of Helle, Pomerantz, and Ganley (US 2005/0280546 Al,
published Dec. 22, 2005).
The Examiner rejected claim 14 under 35 U.S.C. § 103(a) based upon
the teachings of Helle, Pomerantz, and Kreek (US 2007/0097065 Al,
published May 3, 2007).
The Examiner rejected claims 15—19, 40, and 49 under
35 U.S.C. § 103(a) based upon the teachings of Helle, Pomerantz, and
Bhansali (US 2005/0044404 Al, published Feb. 24, 2005).
The Examiner rejected claims 27—29 under 35 U.S.C. § 103(a) based
upon the teachings of Helle, Pomerantz, and Atkin (US 2005/0064856 Al,
published Mar. 24, 2005).
The Examiner rejected claims 30, 33—37, 45, and 46 under
35 U.S.C. § 103(a) based upon the teachings of Helle, Pomerantz, and Cook
(US 7,783,281 Bl, issued Aug. 24, 2010).
The Examiner rejected claims 31 and 32 under 35 U.S.C. § 103(a)
based upon the teachings of Helle, Pomerantz, Cook, and Inoue (US
2005/0197103 Al, published Sept. 8, 2005).
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Application 12/060,862
The Examiner rejected claims 38 and 39 under 35 U.S.C. § 103(a)
based upon the teachings of Helle, Pomerantz, and Kohinata (US
2003/0129964 Al, published July 10, 2003).
The Examiner rejected claims 50 and 51 under 35 U.S.C. § 103(a)
based upon the teachings of Helle and Andersson (US 2008/0222692 Al,
published Sept. 11, 2008).
ANALYSIS
Statutory Double Patenting Rejection
Appellants’ arguments, in the Briefs, do not address the Examiner’s
statutory double patenting rejection of claims 1, 7, 8, and 10-14 (see App.
Br. 10). Accordingly, we pro forma sustain the rejection of claims 1, 7, 8,
and 10-14 under 35 U.S.C. § 101 under statutory double patenting as
claiming the same invention as claims 1, 8, 10-13, 19, and 20 of Application
No. 12/203,8327
35 U.S.C. § 103 Rejections
With respect to claim 1, Appellants contend the combination of Helle
and Pomerantz does not teach detecting that a security compromise event
has occurred “by receiving a message from a security authority” that is “an
1 We note Application No. 12/203,832 is now US Patent 8,932,368 (issued
January 13, 2015) whose claims are not the same as the claims originally
considered by the Examiner when the statutory double patenting rejection
was asserted. As the claims of US Patent 8,932,368 are not identical to
claims 1, 7, 8, and 10-14 currently on appeal, the Examiner may wish to
reconsider the rejection of claims 1, 7, 8, and 10—14 under non-statutory
double patenting grounds in view of the issued claims of US Patent
8,932,368.
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Application 12/060,862
entity other than the authorized user, that includes one of a governmental
law enforcement organization, a private security firm, and an insurance
agency” (App. Br. 12—19; Reply Br. 3—5). In particular, Appellants argue
there is insufficient rationale to combine Helle’s authorized user with
Pomerantz’ Mobile Network Operator (MNO) agent or insurance entity to
obtain the claimed “security authority” (App. Br. 16—18; Reply Br. 3—5).
Appellants assert the Examiner’s combination of Helle and Pomerantz is
improper because “Helle . . . cannot have the authorized user be something
other than himself’ (e.g., be Pomerantz’ insurance entity); additionally, there
is no reason for Pomerantz’ MNO support agent to “adopt a common
interest of protecting someone else’s property” (App. Br. 17). Appellants
also argue Helle’s disclosure of the authorized user monitoring his device
teaches away from monitoring done by “an entity other than the authorized
user” as claimed (App. Br. 15—16; Reply Br. 5). We do not agree.
We agree with and adopt the Examiner’s findings as our own.
Particularly, we agree with the Examiner Helle teaches receiving a message
from an authorized user/phone owner regarding a security compromise event
of the user’s phone (Ans. 4; Final Act. 10 (citing Helle 4:5—21, 5:23^44)).
Additionally, the Examiner has articulated sufficient reasoning for
combining Helle’s remote control of the lost or stolen phone by its
authorized user, with Pomerantz’ theft monitoring insurance by the MNO, to
protect the phone against unauthorized use—a concern shared by Helle and
Pomerantz (Ans. 6; Final Act. 3, 10 (citing Helle 4:5—21, 5:23 44;
Pomerantz || 13, 65, 69); see also Helle Abstract, 1:44^46, 1:59-61;
Pomerantz Abstract, 110). The skilled artisan would recognize “[Helle’s]
owner of the mobile phone and [Pomerantz’ MNO] agent, acting on behalf
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of the insurance company that provides insurance for the mobile phone . . .
are entities who have reasonable interest of protecting the mobile phone
against loss or unauthorized use” (Ans. 6 (emphasis added)).
Thus, we agree with the Examiner that “modify[ing] Helle’s ‘security
authority’, the authorized user/owner, to be Pomerantz’s ‘security
authority’, the MNO, as an alternative security authority that has a common
interest in protecting the security of the mobile phone” is not beyond the
abilities of the skilled artisan (Ans. 4). Appellants have not persuasively
rebutted the Examiner’s specific findings and conclusion regarding Helle in
combination with Pomerantz. Appellants contend “[a] security authority as
set forth in the claimed invention is a different element altogether than the
end user” of Helle (Reply Br. 5). However, the Examiner relies on
Pomerantz for teaching the claimed “security authority is an entity other than
the authorized user” (Ans. 5—6).
We are also not persuaded by Appellants’ arguments Helle teaches
away from its combination with Pomerantz, and the combination of Helle
and Pomerantz would produce unpredictable results (App. Br. 14—16; Reply
Br. 4—5). No persuasive evidence has been identified showing error in the
Examiner’s combination of Helle and Pomerantz that would result in an
unpredictable variation or that could not be implemented by an ordinarily
skilled artisan. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(“When a work is available in one field of endeavor, design incentives and
other market forces can prompt variations of it... . If a person of ordinary
skill can implement a predictable variation, § 103 likely bars its
patentability.”). We agree with the Examiner that replacing “Helle’s
authorized user/owner with Pomerantz’s insurance agent of the MNO, as an
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alternative ‘security authority’” is within the abilities of the skilled artisan
(Ans. 6).
Appellants’ teaching away argument is also unpersuasive because
Helle’s failure to disclose a security authority other than the authorized user
is not a criticism against an entity other than the authorized user being the
security authority. Mere description of an implementation in the prior art
that differs from Appellants’ claimed invention, without more, does not
show the prior art is “teaching away” from the invention claimed. In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Thus, Appellants have failed to clearly distinguish the claimed
invention over the prior art relied on by the Examiner. We therefore sustain
the Examiner’s rejection of independent claim 1, dependent claims 4, 9, 12—
19, 27-40, 45, 46, and 49 argued for their dependency from claim 1 (App.
Br. 19, 21—26), and dependent claims 5—8, 10, 11, 20—26, 41—44, and 48 for
which no separate arguments are provided (App. Br. 19).
With respect to independent claims 50 and 51, Appellants provide
substantially the same arguments regarding the Helle reference (App. Br.
26). However, we agree with the Examiner Andersson teaches and suggests
a security authority is a governmental law enforcement organization or a
private security firm, as recited in claims 50 and 51 (Ans. 9; Final Act. 36,
38 (citing Andersson | 63)). Accordingly, we sustain the Examiner’s
rejection of claims 50 and 51 as unpatentable over Helle and Andersson.
Regarding dependent claim 3, Appellants contend Reding does not
teach “a public key associated with the security authority” as claimed;
rather, Reding teaches away from using a public key of a security authority
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because Reding’s public key “correspond^] to the user, not the security
authority” (App. Br. 21 (citing Reding || 95, 99); see also Reply Br. 6—7).
As discussed supra with respect to claim 1, we are not persuaded the
combination of Helle and Pomerantz does not teach and suggest the security
authority of claim 1 (from which claim 3 depends).
Additionally, as discussed supra with respect to claim 1, we agree
with the Examiner that Helle’s disclosure of an authorized user does not
teach away from the claimed security authority (Ans. 5—6). For the same
reasons, we agree with the Examiner Reding’s disclosure of an authorized
user’s public key does not teach away from the claimed security authority’s
public key (Ans. 8; Final Act. 4). Rather, the combination of Reding’s
decryption by a public key associated with a user, with Pomerantz’ security
authority, teaches and suggests decrypting with a public key associated with
the security authority, as recited in claim 3 (Ans. 8; Final Act. 4, 19-20).
Accordingly, we sustain the Examiner’s rejection of claim 3.
DECISION
The Examiner’s decision provisionally rejecting claims 1, 7, 8, and
10-14 under 35 U.S.C. § 101 for statutory double patenting as claiming the
same invention as claims 1, 8, 10-13, 19, and 20 of Application No.
12/203,832, is affirmed.
The Examiner’s decision rejecting claims 1, 3—46, and 48—51 under
35 U.S.C. § 103(a) is affirmed.
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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