Ex Parte Harkins

Patent Trial and Appeal Board

Mar 13, 2018

13783001 (P.T.A.B. Mar. 13, 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.
13/783,001 03/01/2013 Daniel N. Harkins 84268592 6929
118856 7590 03/15/2018
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
FAROOQUI, QUAZI
ART UNIT PAPER NUMBER
2491
NOTIFICATION DATE DELIVERY MODE
03/15/2018 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):
iplegal @ arubanetworks. com
patents @ arubanetworks.com
hpe.ip.mail@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL N. HARKINS
Appeal 2017-002468
Application 13/783,0011
Technology Center 2400
Before ALLEN R. MacDONALD, CAROLYN D. THOMAS, and
DAVID J. CUTITTAII, Administrative Patent Judges.
Opinion for the Board filed by CUTITTA, Administrative Patent Judge.
Opinion dissenting-in-part filed by THOMAS, Administrative Patent Judge.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Final Rejection of
claims 1, 3—11, and 13—22, all the pending claims in the present application.2
See Appeal Br. 2. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 Appellant names ARUBA NETWORKS, INC. as the real party in interest.
See Appeal Br. 3.
2 Claims 2 and 12 are cancelled. See Appeal Br. 16, 19.
Appeal 2017-002468
Application 13/783,001
STATEMENT OF THE CASE
Invention
The present invention relates to “secure configuration of a headless
networking device.” See Spec. 113.3
Exemplary Claims
Claims 1,11, and 21 are independent claims. Claims 1 and 21 are
exemplary and are reproduced below with disputed limitation (the “disputed
limitation”) italicized:
1. A non-transitory computer-readable medium
comprising instructions which, when executed by one or more
hardware processors, cause the one or more hardware
processors to:
determine a public key associated with a networking
device using an external label associated with the networking
device;
authenticate the networking device based upon a
determination as to whether the networking device possesses a
private key analog to the public key associated with the
networking device; and
initiate a configuration process for the networking device
after the networking device is authenticated, wherein the
configuration process facilitates access by the networking
device to a secure network, and wherein the configuration
process includes sending a domain parameter to provide
configuration information for the configuration process and an
address for a domain name server to the networking device.
3 This Decision refers to: (1) Appellant’s Specification filed March 1, 2013
(“Spec.”); (2) the Final Office Action (“Final Act.”) mailed November 18,
2015; (3) the Appeal Brief (“Appeal Br.”) filed April 18, 2016; (4) the
Examiner’s Answer (“Ans.”) mailed September 29, 2016; and (5) the Reply
Brief (“Reply Br.”) filed November 29, 2016.
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Application 13/783,001
21. An apparatus comprising:
an external key label associated with a public key;
an internal secure key storage to store a private key;
a network interface to receive an authentication request
from an external device connected to the network, the request
including the public key;
internal processing logic to authenticate the apparatus to
the external device using the request by proving that it
possesses the private key and to configure the apparatus to the
network after authenticating, the configuring including
receiving a domain parameter and a domain name server from
the external device and using the received domain parameter
and domain name server to configure the apparatus.
Appeal Br. 16, 22.
REFERENCES
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Goss
Kimmel et al. (“Kimmel”)
Braun
Atherton
US 4,956,863
US 7,711,120 B2
US 2012/0128157 Al
WO 2013/020172 Al
Sept. 11, 1990
May 4, 2010
May 24, 2012
Feb. 14, 2013
REJECTIONS
Claims 1, 3, 6, 11, 13, 16, 21, and 22 stand rejected under 35 U.S.C.
§103 (a) as being unpatentable over the combination of Atherton and Braun.
Final Act. 5—10.
Claims 4, 5, 14, and 15 stand rejected under 35 U.S.C. § 103 (a) as
being unpatentable over the combination of Atherton, Braun, and Kimmel.
Final Act. 10—12.
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Application 13/783,001
Claims 7—10 and 17—20 stand rejected under 35 U.S.C. § 103 (a) as
being unpatentable over the combination of Atherton, Braun, and Goss.
Final Act. 12—17.
Our review in this appeal is limited only to the above rejections and
the issues raised by Appellant. Arguments not made are waived. See
Manual of Patent Examining Procedures (MPEP) § 1205.02; 37 C.F.R.
§§41.37(c)(l)(iv), 41.39(a)(1).
ISSUE
Based on Appellant’s arguments, the dispositive issue presented on
appeal is whether the Examiner errs in finding that Atherton teaches or
suggests “wherein the configuration process includes sending a domain
parameter to provide configuration information for the configuration process
and an address for a domain name server to the networking device,” as
recited in claim 1.
ANALYSIS
In support of the rejection of claim 1, the Examiner finds Atherton
teaches or suggests the disputed limitation. Specifically, the Examiner finds
Atherton teaches “data transferred over the internet from an RFID tag 100 to
the server 402 may in one embodiment include one or more of the following:
. . . unique ID code and/or internet address (URL) for the reader, to identify
the routing device.” Final Act. 6 (citing Atherton | 84, emphasis removed).
Appellant argues “Atherton appears to describe transferring these data
from the RFID tag 100 (which the Examiner has construed as being
equivalent to the ‘networking device’) to the server 402.” Appeal Br. 9.
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Application 13/783,001
Appellant further concludes “Atherton, in the portions cited by the Examiner
or in its entirety, does not appear to disclose sending configuration
information and an address for a domain name server to a networking device
at all.” Id.
We find Appellant’s arguments persuasive. In response to
Appellant’s argument, the Examiner confirms reliance on Atherton’s RFID
tag 100 to teach the claimed networking device and finds the RFID tag 100
“has bi-directional IP communication” and includes “device ID, IP address
and route information to reach another networking device or server for
authentication and other configuration purpose.” Ans. 5, emphasis omitted,
(citing Atherton | 84). The paragraph from Atherton relied upon by the
Examiner, however, discusses transferring data “over the internet from an
RFID tag 100 to the server 402.” Atherton | 84. The Examiner does not
indicate where Atherton describes server 402 sending a domain parameter
and an address to the RFID tag 100 and, thus, to a networking device, as
recited in claim 1. Nor does the Examiner provide a rationale for why one
skilled in the art would have found it obvious to send a domain parameter
and an address for a domain name server to the networking device, as
claimed, in view of the cited teachings of Atherton.
We respectfully disagree with the dissent’s finding that Atherton
teaches the disputed limitation. Even assuming the Examiner’s finding that
Atherton’s RFID tag 100 is a bi-directional networking device, the Examiner
still does not demonstrate that this entails sending a domain parameter and
an address for a domain name server to the RFID tag 100. Nor do we
understand Atherton’s description of sending control data to the RFID tag to
specifically teach sending “a domain parameter” and “an address for a
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Application 13/783,001
domain name server,” as claimed. See Atherton 1128. Accordingly, on this
record the Examiner has not shown how Atherton, alone or in combination
with Braun, teaches or suggests the disputed limitation, as claimed. Because
we agree with at least one of the dispositive arguments advanced by
Appellant for claim 1, we need not reach the merits of Appellant’s other
contentions.
Because we are persuaded of Examiner error we do not sustain the
Examiner’s 35 U.S.C. § 103(a) rejection of claim 1. We also do not sustain
the rejection of independent claim 11, which recites limitations
commensurate in scope to claim 1. We do not sustain the rejections of
dependent claims 3—10, and 13—20 for similar reasons.
Appellant argues claim 21 is patentable over Atherton and Braun
because claim 21 “recite[s] features similar to those discussed above with
respect to independent claim 1.” Appeal Br. 12.
We are unpersuaded. Appellant argues the rejection of claim 1 is
erroneous because Atherton does not suggest “initiate a configuration
process for the networking device . . . wherein the configuration process
includes sending a domain parameter to provide configuration information
for the configuration process and an address for a domain name server to the
networking device,” as recited in claim 1. See Appeal Br. 8—12; claim 1,
emphasis added. Appellant fails to establish, and we do not find, claim 21
includes “features similar to those discussed above with respect to
independent claim 1.” Appeal Br. 12. Thus, the arguments presented are
not applicable to claim 21. For this reason, we sustain the rejection of claim
21 and of dependent claim 22, which is not argued separately.
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DECISION
We reverse the Examiner’s decision rejecting claims 1, 3—11, and 13—
20 under 35 U.S.C. § 103(a).
We affirm the Examiner’s decision rejecting claims 21 and 22 under
35 U.S.C. § 103(a).
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-IN-PART
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Application 13/783,001
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL N. HARKINS
Appeal 2017-002468
Application 13/783,0014
Technology Center 2400
Before ALLEN R. MacDONALD, CAROLYN D. THOMAS, and
DAVID J. CUTITTAII, Administrative Patent Judges.
THOMAS, Administrative Patent Judge, Dissenting-in-part.
DISSENTING-IN-PART OPINION
I respectfully dissent from the Majority’s decision to reverse the
Examiner’s rejection of claims 1, 3—11, and 13—20 under 35 U.S.C. § 103(a).
Specifically, Appellant’s emphasis appears to be on the “direction” of
information in Atherton instead of rebutting the specific “type” of
information being transferred. For example:
4 Appellant names ARUBA NETWORKS, INC. as the real party in interest.
See Appeal Br. 3.
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Application 13/783,001
Appellant submits that Atherton appears to describe
transferring these data from the RFID tag 100 ... to the server
402. ... in the portions cited by the Examiner or in its entirety,
does not appear to disclose sending configuration information
and an address for a domain name server to a networking
device at all.
(App. Br. 9) (emphasis in original).
In the Examiner’s response, the Examiner finds that Atherton’s
“device with RFID tag is essentially a networking device . . . This device has
bi-directional IP communication and initiates configuration by identifying
authentication server for authentication purpose” (Ans. 5, citing Atherton
| 84). In the Final Action, the Examiner also directed Appellant’s attention
to various paragraphs in Atherton (see Final Act. 3—7, citing Atherton || 7,
84, 116, and 128).
For example, the Examiner directs Appellant’s attention to the fact
that Atherton’s RFID tag is a bi-directional networking device, i.e., a device
that can both receive and transmit information. The Examiner further directs
Appellant’s attention to Atherton stating: “In another embodiment said
control data may be transferred from the server 402 to the data processing
functional portion 103 of one or more specified RFID tags 100 and used to
modify the programming or configuration of the data processing functional
portion 103 of said specified RFID tags 100” (see Atherton 1128) (emphasis
added).
Although Appellant is correct that Atherton’s paragraph 84 describes
transferring data “from an RFID tag 100 to the server 402”, I find that
Atherton’s teachings are not limited to configuration data flowing from the
RFID tag to the server, but also describes configuration data being directed
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Application 13/783,001
from the server to the RFID tag. Thus, contrary to Appellant’s contention
that “Atherton, in the portions cited by the Examiner or in its entirety, does
not appear to disclose sending configuration information and an address for
a domain name server to a networking device at all” (see App. Br. 9), I find
that Atherton, in its entirety, does indeed teach/suggest the server’s
capabilities in sending configuration information to a networking device (see
Atherton || 76, 77, 82, 128).
I therefore, respectfully dissent from the Majority Decision reversing
the rejection of claims 1, 3—11, and 13—20 under 35 U.S.C. § 103(a).
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