Ex Parte Izdepski

Patent Trial and Appeal Board

Oct 28, 2014

11285054 (P.T.A.B. Oct. 28, 2014)

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.
11/285,054 11/22/2005 Erich J. Izdepski NXTL 0289 8319
57541 7590 10/28/2014
SPRINT NEXTEL CORPORATION
6391 SPRINT PARKWAY
MAILSTOP: KSOPHT0101-Z2100
OVERLAND PARK, KS 66251-2100
EXAMINER
HSIEH, PING Y
ART UNIT PAPER NUMBER
2647
MAIL DATE DELIVERY MODE
10/28/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERICH J. IZDEPSKI
____________

Appeal 2012-000223
Application 11/285,054
Technology Center 2600
____________

Before CARLA M. KRIVAK, CARL W. WHITEHEAD JR., and
CATHERINE SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4, 5, 7–9, 11–14, 16, 17, 19–21, 23-26, 28, 29, 31–
37, 39–49. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
In reaching the decision, we have considered only the arguments
Appellant actually raised. Arguments Appellant did not make are deemed to
be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).

Appeal 2012-000223
Application 11/285,054

2
STATEMENT OF THE CASE
The present invention relates to wireless network security. See
generally Spec. 1. Claim 1 is exemplary:
1. A system comprising:
an originating wireless device, connected to a personal
area network, adapted to detect a malware attack of said
originating wireless device over said personal area network,
wherein the malware attack is by another wireless device that is
also connected to the personal area network, wherein said
originating wireless device is further in communication with a
separate data network to transmit data representative of said
malware attack over said data network;
a control center in communication with said data
network, said control center adapted to:
receive said data over said data network;
generate one or more alerts regarding said malware
attack, based at least in part on said data;
identify one or more target wireless devices in
physical proximity to said originating wireless device;
and
provide, over the data network, said one or more
alerts to the identified one or more target wireless
devices.
THE REJECTIONS
Claims 1, 2, 4, 5, 7–9, 11–14, 16, 17, 19–21, 23–26, 28, 29, 31–37,
39–49 are rejected under 35 U.S.C. § 103(a) as being unpatentable over ’195
Publication (US 2004/0127195 A1; July 1, 2004) and Srey (US 7,496,348
B2; Feb. 24, 2009).1

1 Although the Examiner lists claim 18 in the rejections (Ans. 5 and 7), both
Appellant and the Examiner agree claim 18 has been cancelled. See Final
Rej. Cover; Ans. 3; Br. 2.
Appeal 2012-000223
Application 11/285,054

3
ISSUES
Under 35 U.S.C. § 103, has the Examiner erred by finding the ’195
Publication and Srey collectively teach claim 1?
ANALYSIS
On this record, we find the Examiner did not err in rejecting claim 1.
Appellant contend:
[T]he claims recite the following two distinct features:

1. A “malware attack” that successfully occurs over a personal
area network, i.e., from “another wireless device” to the
“originating wireless device”; and
2. The recited detecting and reporting of such “malware attack”
(which again has occurred over the personal area network) is
carried out by that same originally-attacked wireless device,
i.e., the “originating wireless device.”
. . . Appellants [] disagree[sic] that Srey reasonably discloses
such an improper access occurring over a PAN.
Even if the Examiner’s reading of Srey were accurate, Srey
would still fail to teach or suggest the combination of the two above-
identified claimed features.
Br. 7.
.
Appellant further contends “[a]lthough not relied on, Appellant would
like to further note for the record that the [’]195 Publication also cannot
reasonably be relied on for teaching or suggesting the two above-identified
features of the independent claims as it does not even consider the context of
a personal area network at all.” Br. 10.
Appeal 2012-000223
Application 11/285,054

4
We disagree with Appellant’s arguments (Br. 6–10), and agree with
and adopt the Examiner’s findings and conclusions on pages 5–6 and 12 of
the Answer as our own. Therefore, we limit our discussion to the following
points for emphasis.
First, because the Examiner relies on the ’195 Publication and Srey
collectively to teach claim 1, neither reference needs to teach all of the claim
limitations by itself. As a result, Appellant cannot establish nonobviousness
by attacking the references individually. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Appellant fails to persuade us of error because
Appellant fails to provide analysis of the ’195 Publication—the main
reference cited by the Examiner—to counter the Examiner’s findings. As a
result, Appellant’s assertion that Srey fails to teach the disputed claim
limitations, which the Examiner maps to the disclosures of both the ’195
Publication and Srey, is unpersuasive.
Indeed, the Examiner relies heavily on the ’195 Publication for
rejecting claim 1. For example, the Examiner relies on the ’195 Publication
to teach an originating wireless device (mapped to the ’195 Publication’s
mobile terminal) . . . adapted to detect a malware attack of said originating
wireless device (mapped to the ’195 Publication’s mobile terminal checking
whether it is infected by viruses). See Ans. 5; ’195 Publication, Fig. 1; ¶ 22.
Further, the Examiner finds the ’195 Publication teaches said originating
wireless device is further in communication with a separate data network
(mapped to the ’195 Publication’s data network in Figure 1) to transmit data
representative of said malware attack over said data network (mapped to the
’195 Publication’s disclosure of sending a vaccine request message, which
includes a vaccine field, a virus information field, and other information, to
Appeal 2012-000223
Application 11/285,054

5
the VMU [virus monitoring unit] 132). See Ans. 5; ’195 Publication, Fig. 1;
¶ ¶ 31, 32, 34.
Because the Examiner already has mapped those claim limitations to
the ’195 Publication’s disclosures, the Examiner does not need to find such
claim elements in Srey again.
As to Srey, the Examiner finds Srey teaches detecting virus attack in a
wireless network. See Ans. 6, 12, Srey, Fig. 2; 4:34–5:43. The Examiner
further finds in Srey, [a wireless device] connected to a personal area
network (mapped to Srey’s Home IP Network, Private Network, or Home
Access Provider Network), and over said personal area network (mapped to
Srey’s over Home IP Network, Private Network, or Home Access Provider
Network). See Ans. 6, 12; Srey, Fig. 2; 4:34–5:43.
Second, Appellant’s assertion “[a]lthough not relied on, Appellant
would like to further note for the record that the [’]195 Publication also
cannot reasonably be relied on for teaching or suggesting the two above-
identified features of the independent claims as it does not even consider the
context of a personal area network at all” is unpersuasive because (1)
Appellant fails to provide analysis of the ’195 Publication to counter the
Examiner’s findings, and (2) contrary to Appellant’s assertion, the Examiner
relies on the ’195 Publication and Srey to teach the limitations recited in
claim 1.
Finally, we note Appellant did not file a Reply Brief. As a result, the
Examiner’s findings in the Response to Arguments (Ans. 12) are unrebutted.
Accordingly, we sustain the Examiner’s rejection of claim 1, and
corresponding dependent claims that Appellant does not separately argue, or
Appeal 2012-000223
Application 11/285,054

6
Appellant argues should be allowed for the same or similar reason as claim
1.
Regarding claims 5, 17, and 29, we disagree with Appellant’s
arguments (Br. 10–11), and agree with and adopt the Examiner’s findings
and conclusions on pages 12 and 13 of the Answer as our own. Therefore,
we limit our discussion to the following points for emphasis.
Because Appellant did not rebut the Examiner’s findings in the
Response to Arguments (Ans. 12–13), the Examiner’s findings are not
refuted.
Further, we observe with respect to claim 5, the claim limitation “a
time of said malware attack and a description of said malware attack” is non-
functional descriptive material because the terms “time” and “description” of
the malware attack merely label the data, and do not functionally affect the
recited claim limitation “an originating wireless device” or the claimed
system itself.2 Therefore, the recited “a time of said malware attack and a
description of said malware attack” (claim 5) is analogous to the instructions
in In re Ngai. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) (holding
the instructions are non-functional descriptive matter). As a result, because
the claim limitation constitutes non-functional descriptive material, it “will
not distinguish the invention from the prior art in terms of patentability.”
Id.; see also Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008)
(precedential) (“[T]he nature of the information being manipulated does not
lend patentability to an otherwise unpatentable computer-implemented
product or process.”).

2 For similar reasons, our observation of claim 5 applies to claims 17 and 29.
Appeal 2012-000223
Application 11/285,054

7
DECISION
The Examiner’s decision rejecting claims 1, 2, 4, 5, 7–9, 11–14, 16,
17, 19-21, 23–26, 28, 29, 31–37, 39–49 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)(1)(iv).

AFFIRMED

kme