Ex Parte Karnik

Patent Trial and Appeal Board

Feb 6, 2015

12195737 (P.T.A.B. Feb. 6, 2015)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/195,737 08/21/2008 Aditya R. Karnik P003473-RD-JMC 9050
65798 7590 02/09/2015
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 300
BLOOMFIELD HILLS, MI 48304
EXAMINER
PAN, PEILIANG
ART UNIT PAPER NUMBER
2492
MAIL DATE DELIVERY MODE
02/09/2015 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 ADITYA R. KARNIK1
____________________

Appeal 2012-011321
Application 12/195,737
Technology Center 2400
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 According to Appellant, the real party in interest is General Motors, Inc.
App. Br. 3.
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STATEMENT OF THE CASE2
The Invention
Appellant's invention relates to methods that adaptively verify data in
resource constrained systems by employing an adaptive verification mode to
balance cost, performance, and security requirements. Abstract.
Exemplary Claims
Claims 1, 12, and 16, reproduced below, are representative of the
subject matter on appeal (emphases added to contested limitations):
1. A method for authenticating messages received at
a receiver device, said method comprising:
establishing a belief level for senders of messages that
are received at the receiver device as to the messages validity;
assigning the belief level to a scale where one end of the
scale indicates a bona fide sender or message that will be
accepted and the other end of the scale indicates a malicious
sender or message that will be discarded;
selecting an authentication mode based at least in part
on the belief level, wherein one authentication mode includes a
blind accept mode for a belief level at or around the bona fide
end of the scale, a discard mode for a belief level at or around
the malicious end of the scale and at least one mode
therebetween; and
performing an authentication process on the message
depending on which mode is selected.

2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
Mar. 22, 2012); Reply Brief ("Reply Br.," filed July 30, 2012); Examiner's
Answer ("Ans.," mailed May 31, 2012); Final Office Action ("Final Act.,"
mailed Oct. 26, 2011); and the original Specification ("Spec.," filed
Aug. 21, 2008).
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12. A method for authenticating a message received
by a vehicle, said method comprising:
performing a validity determination of a sending vehicle
of the message as to its validity;
selecting an authentication mode based on the validity
determination from a plurality of authentication modes where
the authentication modes have different strengths of
authentication so as to adapt an authentication process of the
message based on a determination as to the chance that the
message or sender may be malicious or bona fide; and
performing the authentication process using the selected
mode.

16. A method for authenticating a message received
by a vehicle, said method comprising:
establishing a belief level of a sending vehicle of the
message as to its validity;
providing a scale having a bona fide message at one end
and a malicious message at an opposite end where the belief
level of the message falls along the scale;
determining how much received message data is stored
in a queue in a buffer for processing for authentication;
establishing a table that identifies a plurality of
authentication modes for authenticating the message;
selecting a mode in the table for authenticating the
message based on a combination of how much data is stored in
the queue and where on the scale the belief level falls; and
performing an authentication process on the message
depending on which mode is selected.
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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Yeager et al.
("Yeager")
U.S. 2003/0055894 A1 Mar. 20, 2003
Lane et al.
("Lane")
U.S. 2004/0111369 A1 June 10, 2004
Bosseler U.S. 2007/0076733 A1 Apr. 5, 2007
Rejections on Appeal
R1. Claims 1, 3, 4, 6, 10, and 11 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Yeager. Final Act. 2; Ans. 3.
R2. Claims 2, 5, 8, 9, and 12–15 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Yeager and Lane.
Final Act. 6; Ans. 3.
R3. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Yeager and Bosseler. Final Act. 9;
Ans. 3.
R4. Claims 16–20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Yeager, Lane, and Bosseler. Final
Act. 10; Ans. 3.
CLAIM GROUPING
Based on Appellant's arguments (App. Br. 9–25), we decide the
appeal of Rejection R1 of claims 1, 4, 10, and 11 on the basis of
representative independent claim 1; we decide the appeal of Rejection R2 of
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claims 12–15 on the basis of representative independent claim 12; we decide
Rejection R2 of claims 2, 5, 8, and 9 on the basis of representative
dependent claim 2; and we decide the appeal of Rejection R4 of
claims 16–20 on the basis of representative independent claim 16.
We address separately argued Rejection R1 of claims 3 and 6, and
separately argued Rejection R3 of claim 7, infra.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments
which Appellant could have made but chose not to make in the Briefs so that
we deem any such arguments as waived. 37 C.F.R. § 41.37(c)(1)(vii).
We agree with Appellant's arguments with respect to claims 3 and 6.
However, we disagree with Appellant's arguments with respect to claims 1,
2, 4, 5, and 7–20, and we incorporate herein and adopt as our own: (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons and rebuttals set forth in the Examiner's
Answer in response to Appellant's arguments with respect to these claims.
We incorporate such findings, reasons, and rebuttals herein by reference
unless otherwise noted. We highlight and address specific findings and
arguments regarding claims 1–3, 12, and 16 for emphasis as follows.
1. § 102 Rejection R1 of Claims 1, 4, 10, and 11
Issue 1
Appellant argues (App. Br. 9–16; Reply Br. 1–2) the Examiner's
rejection of claims 1, 4, 10, and 11 under 35 U.S.C. § 102(e) as being
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anticipated by Yeager is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art combination
discloses a "method for authenticating messages" which includes, inter alia,
the steps of "selecting an authentication mode based at least in part on the
belief level . . . [and having] at least one mode . . . [between a blind accept
mode and a discard mode on opposite ends of a belief level scale]," and
"performing an authentication process on the message depending on which
mode is selected," as recited in claim 1?
Analysis
Appellant contends Yeager does not disclose a method for
authenticating messages based on a trust or belief value which includes
selecting an authentication mode based upon the belief level. App.
Br. 11–12. Appellant further contends Yeager does not disclose at least one
mode between a blind accept mode for belief level at or around a bona fide
end of a belief scale, and a discard mode for belief level at or around a
malicious end of the belief scale, as required by claim 1. App. Br. 12–13.
Appellant also contends Yeager does not disclose the step of "performing an
authentication process on the message depending on which mode is
selected," as recited in claim 1. App. Br. 13.
Appellant alleges the Examiner overstates Yeager's teachings because
Figure 6 "simply defines different levels of trust, from distrust to complete
trust, but does not designate specific authentication modes associated with
each of the belief (trust) levels," as claimed. App. Br. 13–14.
Appellant summarizes their arguments as follows:
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Appellant's claimed method is novel in first determining a
belief level in a message, and then using that belief level to
determine what message authentication process to use,
including multiple belief levels and associated authentication
modes, or lightweight or skipped authentication can save
computing resources and real-time, resource constrained
systems. . . . [W]hile Yeager discloses tremendous detail about
establishing a belief (trust) level and a message or sender,
Yeager does not [disclose] a method for authenticating
messages based on the belief level as claimed . . . .
App. Br. 14.
The Examiner finds Yeager discloses a belief level scale having
different levels of trust associated with different values along the scale.
Ans. 4 (citing Yeager ¶ 96). We find Yeager's teachings includes both a
bona fide end of the scale, and a malicious end of the same scale. See
Yeager Fig. 6 (where "-1" value for "Distrust" corresponds to the claimed
"malicious end," and the value "4" for "Complete trust" corresponds to the
claimed "bona fide" end.
We also find this portion of Yeager referenced by the Examiner
teaches a cooperation threshold based on trust from which risk of interaction
and security is assessed. We also find this concept carries through the
disclosure of Yeager. In particular, paragraph 104, "Security and the Trust
Mechanism," and paragraph 105 disclose:
[0105] Security may address privacy, authentication, integrity,
and/or non-repudiation. Various cryptographic techniques and
protocols may be implemented, for example, to attempt to
guarantee that a conversation is private, to authenticate a user,
to insure the integrity of data, and to assure that a transaction
cannot be repudiated by its originator.
Yeager ¶ 105 (emphasis added). Yeager further discloses:
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[0110] In one embodiment, the trust mechanism may provide a
trust spectrum, as illustrated in FIG. 9A. The trust mechanism
may not require a true, distributed Public Key Infrastructure
(PKI), but rather may provide for the creation of a trust
spectrum that neither requires nor prohibits a presence of a PKI.
At what point of trust in the spectrum peer group chooses to
communicate may be up to the participants in that group. A
peer may belong to two or more different peer groups, each
implementing a different security model in different levels of
the trust spectrum. In a trust spectrum, unique peer identities
may be established to enable authentication and the assignment
of the peers' associated access policies within a peer group,
e.g., authentication and authorization.
Yeager ¶ 110 (emphasis added).
We have reviewed Appellant's arguments in the Reply Brief (Reply
Br. 1 et seq.), but do not find these arguments to be persuasive of Examiner
error.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the disclosure of Yeager to
disclose the contested limitations of claim 1, nor do we find error in the
Examiner's resulting finding of anticipation. Accordingly, we sustain the
Examiner's anticipation rejection of independent claim 1 and claims 4, 10,
and 11, which fall therewith. See Claim Grouping, supra.
2. § 102 Rejection R1 of Claims 3 and 6
Issue 2
Appellant argues (App. Br. 15–16) the Examiner's rejection of claims
3 and 6 under 35 U.S.C. § 102(e) as being anticipated by Yeager is in error.
These contentions present us with the following issue:
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Did the Examiner err in finding Yeager anticipates claims 3 and 6
because claims 2 and 5, from which claims 3 and 6 respectively depend, are
rejected under a different statutory basis, i.e., obviousness under § 103 in
view of Yeager and Lane?
Analysis
Appellant contends the Examiner erred in rejecting claims 3 and 6
because, inter alia,
[C]laim 3 depends from claim 2, and claim 6 depends from
claim 5, and neither claim 2 nor claim 5 is rejected as being
anticipated by Yeager. For this additional reason, Appellant
respectfully submits that claims 3 and 6 cannot be anticipated
by Yeager.
App. Br. 16. We agree with Appellant's argument.
We note the Examiner completely failed to address Appellant's
argument regarding the impropriety of the rejection in the Answer.
Accordingly, based upon the findings above, on this record, we are
persuaded of error in the Examiner's reliance on Yeager to anticipate
claims 3 and 6, and we therefore do not sustain Rejection R1 of claims 3
and 6.3

3 In the event of further prosecution, we leave it to the Examiner to consider
whether claims 3 and 6 should instead be rejected under 35 U.S.C. § 103(a)
as being obvious over Yeager and Lane. While the Board is authorized to
reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn
when the Board elects not to do so. See Manual of Patent Examining
Procedure (MPEP) § 1213.02.
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3. § 103 Rejection R2 of Claims 2, 5, 8, 9, and 12–15
Issue 3
Appellant argues (App. Br. 17–20) the Examiner's rejection of claims
2, 5, 8, 9, and 12–15 under 35 U.S.C. § 103(a) as being obvious over the
combination of Yeager and Lane is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a "method for authenticating a message" which includes, inter
alia, the steps of:
selecting an authentication mode based on the validity
determination from a plurality of authentication modes where
the authentication modes have different strengths of
authentication so as to adapt an authentication process of the
message based on a determination as to the chance that the
message or sender may be malicious or bona fide; and
performing the authentication process using the selected mode,
as recited in claim 12?
Analysis
Appellant generally contends Yeager does not teach or suggest all the
claim limitations of claim 12 for the reasons "discussed above with respect
to claim 1." App. Br. 18. Further, Appellant alleges adding Lane's teaching
of a vehicle in the § 103 rejection does not remedy the purported
deficiencies of Yeager. Id.
Thus, for the same reasons discussed above with respect to claim 1,
Issue 1, Appellant has not provided sufficient evidence or argument to
persuade us of any reversible error in the Examiner's reading of the
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contested limitations on the cited prior art. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 12, and
claims 8, 9, and 13–15, which fall therewith. See Claim Grouping, supra.4
Further, while Appellant raises what may be characterized as separate
arguments for patentability of dependent claims 2 and 5 (App. Br. 19),
depending on claim 1, and rejected on the same basis as claim 12, we find
the Examiner has rebutted each of those arguments in the Answer by a
preponderance of the evidence. Ans. 8–10. Therefore, we adopt the
Examiner's findings and underlying reasoning, which we incorporate herein
by reference.
Consequently, we find no reversible error in the Examiner's rejections
of claims 2, 5, 8, 9, and 12–15 under § 103.
4. § 103 Rejection R3 of Claim 7
Issue 4
Appellant argues (App. Br. 20–22) the Examiner's rejection of claim 7
under 35 U.S.C. § 103(a) as being obvious over the combination of Yeager

4 With respect to dependent claims 8, 9, and 13–15, Appellant recites
portions of the claim limitations and contends the references do not teach the
limitations. App. Br. 18–19. We do not consider such statements to be
arguments. 37 C.F.R. § 41.37(c)(1)(vii) ("A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim."). In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art."). Thus, we do not find Appellant's
arguments to be persuasive.
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and Bosseler is in error. These contentions present us with the following
issue:
Did the Examiner err in combining Yeager with Bosseler to teach or
suggest the limitations of dependent claim 7 because Bosseler is allegedly
non-analogous art to the claimed invention and is therefore not properly
combinable with Yeager under § 103?
Analysis
Appellant argues:
[N]either Yeager nor Bosseler teach using a combination of
belief level and queue length to select an authentication mode.
Appellant further submits that it would not have been obvious
to combine Bosseler's teaching of determining how much
unprocessed data is present in a buffer with Yeager's
determination of a trust level, as Bosseler's disclosure is in a
nonanalogous art area and has nothing to do with message
authentication. . . . Appellant therefore respectfully submits that
claim 7 is not obvious over Yeager in view of Bosseler.
App. Br. 21–22.
We note the test of whether a reference is from an analogous art is
first, whether it is within the field of the inventor's endeavor, and second, if
it is not, whether it is reasonably pertinent to the particular problem with
which the inventor was involved. See In re Wood, 599 F.2d 1032, 1036
(CCPA 1979). A reference is reasonably pertinent if, even though it may be
in a different field of endeavor, it is one which, because of the matter with
which it deals, logically would have commended itself to an inventor's
attention in considering the inventor's problem. See In re Clay, 966 F.2d
656, 659 (Fed. Cir. 1992).
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We find Yeager is directed to representing trust in distributed peer-to-
peer networks, and Bosseler is generally related to changing a mode of
operation of a device based upon comparison of a predicted job queue length
with a predetermined threshold value. Thus, on this basis, we find Bosseler
to be sufficiently pertinent to Appellant's problem of mode selection solved
by the claimed invention.
Further, we find Appellant's arguments concerning Bosseler being
non-analogous art lack any evidentiary foundation. Attorney arguments and
conclusory statements that are unsupported by factual evidence are entitled
to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).5
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
contested limitation of claim 7, nor do we find error in the Examiner's
resulting legal conclusion of obviousness.
5. § 103 Rejection R4 of Claims 16–20
Issue 5
Appellant argues (App. Br. 22–25) the Examiner's rejection of
claims 16–20 under 35 U.S.C. § 103(a) as being obvious over the
combination of Yeager, Lane, and Bosseler is in error. These contentions
present us with the following issue:

5 "Argument in the brief does not take the place of evidence in the record."
In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (citing In re Cole, 326 F.2d
769, 773 (CCPA 1964)).
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Did the Examiner err in combining Yeager and Lane with Bosseler to
teach or suggest the limitations of independent claim 16 because Bosseler is
allegedly non-analogous art to the claimed invention and is therefore not
properly combinable with Yeager and Lane under § 103?
Analysis
Similar to Appellant's argument with respect to claim 7, Issue 4,
supra, Appellant contends, "it would not have been obvious to combine
Bosseler's teaching of determining how much unprocessed data is present in
a buffer with Yeager's determination of a trust level, as Bosseler's disclosure
is in a non-analogous art area and has nothing to do with message
authentication." App. Br. 23.
For the same reasons discussed with respect to claim 7, we disagree
with Appellant's argument concerning Bosseler allegedly being non-
analogous art.
We further note Appellant's challenge to the references individually is
not convincing of error in the Examiner's position because all of the features
of the secondary reference need not be bodily incorporated into the primary
reference, but consideration should be given to what the combined
teachings, knowledge of one of ordinary skill in the art, and the nature of the
problem to be solved as a whole would have suggested to those of ordinary
skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Furthermore, the artisan is not compelled to blindly follow the teaching of
one prior art reference over the other without the exercise of independent
judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed.
Cir. 1984).
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In addition, Appellant has provided no evidence that combining such
teachings was "uniquely challenging or difficult for one of ordinary skill in
the art," Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007), nor has Appellant presented evidence that this
incorporation yielded more than expected results.
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 16, and claims 17–20
which fall therewith. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellant advances new arguments in the Reply Brief
(Reply Br. 1–3) not in response to a shift in the Examiner's position in the
Answer, we note that "[a]ny bases for asserting error, whether factual or
legal, that are not raised in the principal brief are waived." Ex parte Borden,
93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Cf. with Optivus Tech.,
Inc. v. Ion Beam Appl'ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n
issue not raised by an appellant in its opening brief . . . is waived.").
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CONCLUSIONS6
(1) The Examiner did not err with respect to anticipation Rejection
R1 of claims 1, 4, 10, and 11 under 35 U.S.C. § 102(e) over Yeager, and we
sustain the rejection.
(2) The Examiner erred with respect to anticipation Rejection R1 of
claims 3 and 6 under 35 U.S.C. § 102(e) over Yeager, and we do not sustain
the rejection.
(3) The Examiner did not err with respect to obviousness
Rejections R2–R4 of claims 2, 5, 7–9, and 12–20 under 35 U.S.C. § 103(a)
over the cited prior art combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1, 2, 4, 5, and 7–
20, and we reverse the Examiner's decision rejecting claims 3 and 6.
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) (2011).
AFFIRMED-IN-PART

6 We observe all the steps of at least claim 1 could be performed as mental
steps by a person who receives (hears and/or sees) a message "at a receiver
device" (e.g., a person listening to a radio or viewing a television message).
In the event of further prosecution of this application, we leave it to the
Examiner to review all the claims for compliance under 35 U.S.C. § 101 in
light of the recently issued preliminary examination instructions on patent
eligible subject matter. See "Preliminary Examination Instructions in view
of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank
International, et al.," Memorandum to the Examining Corps, June 25, 2014.
Although the Board is authorized to reject claims under 37 C.F.R. §41.50(b),
no inference should be drawn when the Board elects not to do so. See
Manual of Patent Examining Procedure (MPEP) 1213.02.
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