Ex Parte Marquet et al

Patent Trial and Appeal Board

Aug 7, 2014

10846542 (P.T.A.B. Aug. 7, 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.
10/846,542 05/17/2004 Bertrand Marquet ALC 3133 3559
7590 08/08/2014
KRAMER & AMADO, P.C.
1725 Duke Street, Suite 240
Alexandria, VA 22314
EXAMINER
POWERS, WILLIAM S
ART UNIT PAPER NUMBER
2434
MAIL DATE DELIVERY MODE
08/08/2014 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 BERTRAND MARQUET, JEAN-MARC ROBERT, and
FRANCOIS J. N. COSQUER
____________

Appeal 2012-003834
Application 10/846,542
Technology Center 2400
____________

Before JOHN A. JEFFERY, MARC S. HOFF, and JEREMY J. CURCURI,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1, 8–10, and 13–22. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellants’ invention provides security of management and control
functions at a network element, whose control card functions in association
with an execution device such as a smart card. The execution device has
embedded processors each implementing specific security-related functions.
See generally Abstract. Claim 1 is illustrative:
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1. A system for performing secured management and control
functions in a digital communications network, the system comprising:
a network element comprising a control card, the control card
controlling security functionality of the network element;
an interface device operatively connected to the control card, the
interface device comprising a smart card connector; and
a plurality of execution devices implemented as smart cards, the
execution devices removably connected to the connector of the interface
device for executing selected security management and control functions,
each execution device addressing a different security aspect, wherein the
network element is only activated when the plurality of execution devices
are detected in the connector of the interface device, and the plurality of
execution devices are synchronized with each other in real time.

THE REJECTION
The Examiner rejected claims 1, 8–10, and 13–22 under 35 U.S.C.
§ 103(a) as unpatentable over Williams (US 7,069,437 B2, June 27, 2006),
Hansmann (US 7,055,041 B1, May 30, 2006), Wilson (US 5,742,680, Apr.
21, 1998), and Maiterth (US 6,471,550 B2, Oct. 29, 2002). Ans. 4-11.1

CONTENTIONS
The Examiner finds that Williams discloses (1) a network element
with a control card, and (2) an interface device with a connector as recited in
claim 1, but lacks a smart card interface and plural smart card execution
devices removably connected to the connector, where each execution device
addresses a different security aspect and the network element is activated
only when the execution devices are detected in the connector and
synchronized with each other in real time. Ans. 5–8. The Examiner,

1 Throughout this opinion, we refer to (1) the Appeal Brief filed October 6,
2011 (“App. Br.”); (2) the Examiner’s Answer mailed November 30, 2011
(“Ans.”); and (3) the Reply Brief filed December 30, 2011 (“Reply Br.”).
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however, cites Hansmann as teaching a smart card interface, and Hansmann
and Wilson for collectively teaching activating the network element only
when plural execution devices are detected in the connector. Ans. 6–7, 12–
13. The Examiner also cites Wilson for teaching synchronizing plural
execution devices with each other in real time in view of their mutual
“coordination and cooperation” in selecting and using the associated
decryption algorithm. Ans. 8, 16. In view of these collective teachings,
along with Maiterth’s teaching a single interface connection between
multiple smart cards and a host device, the Examiner concludes that the
claim would have been obvious. Ans. 5–8, 11–16.
Appellants argue that Wilson teaches away from removably
connecting plural execution devices to an interface device connector, where
each execution device addresses a different security aspect because Wilson’s
receptacle removably receives a single smart card. App. Br. 6–8. As such,
Appellants contend, the Examiner’s reliance on Wilson for teaching
activating the network element only when plural execution devices are
detected in the connector is flawed, as is the Examiner’s reliance on
Hansmann whose activation is based on a single smart card. App. Br. 7–9;
Reply Br. 3–4. Appellants add that Wilson does not teach or suggest
synchronizing plural execution devices with each other in real time because
only a single smart card is used at a time. App. Br. 8–9; Reply Br. 4.
Appellants argue various other recited limitations summarized below.

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ISSUES
Under § 103, has the Examiner erred by finding that Williams,
Hansmann, Wilson, and Maiterth collectively would have taught or
suggested:
(1) the limitations of the last paragraph of claim 1?
(2) activation of each different security aspect depends upon
availability of a corresponding execution device as recited in claim 19?
(3) the control card incorporates plural execution devices as recited in
claim 21?
(4) the plural execution devices are configured for use by plural
operators as recited in claim 22?

ANALYSIS
Claims 1, 8–10, and 13–18
We begin by noting that the Examiner’s findings regarding Williams
and Maiterth as they pertain to claim 1 are undisputed. Accordingly, we
confine our discussion to Wilson and Hansmann, the Examiner’s reliance on
which form the basis for this dispute.
Turning to claim 1, the claim recites, in pertinent part, that the
interface device comprises a smart card connector to which plural smart card
execution devices are connected. We emphasize the indefinite article “a”
here, for it is well settled that it means “‘one or more’” where, as here, the
claim contains the transitional phrase, “‘comprising.’” KCJ Corp. v. Kinetic
Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). To be sure, “[w]hen
the claim language and specification indicate that ‘a’ means one and only
one, it is appropriate to construe it as such even in the context of an open-
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ended ‘comprising’ claim.” Harari v. Lee, 656 F.3d 1331, 1341 (Fed. Cir.
2011). That exception is not the case here; nor have Appellants shown as
much on this record.
Therefore, nothing in the claim precludes “a smart card connector”
from including multiple connectors, as is the case with Wilson’s individual
receptacles 43 that each removably receive an associated smart card 41. See
Wilson, col. 5, ll. 42–67; Fig. 4. Accord Ans. 15–16 (“There is no claim
language that prohibits a smart card slot from accepting only one smart
card.”). As such, Appellants’ argument that Wilson does not removably
connect plural smart-card “execution devices” to a single connector (App.
Br. 6–7) is unavailing and not commensurate with the scope of the claim.
Moreover, because Wilson’s smart cards store different decrypting
algorithms, each such execution device addresses a different security aspect,
as the Examiner indicates. Ans. 15 (citing Wilson, Abstract; col. 5, ll. 30–
40).
Nor do we find error in the Examiner’s reliance on Hansmann and
Wilson for collectively teaching only activating the network element when
plural execution devices are detected in the connector. Ans. 6–7, 12–13.
Ans. 8, 16. Notably, the network-element activation limitation contains an
ambiguity, for it could be construed as only activating the element when one
condition is met, namely when plural execution devices are detected in the
connector. Alternatively, the limitation could be construed plausibly as only
activating the network element when two conditions are met, namely when
plural execution devices are (1) detected in the connector, and (2)
synchronized with each other in real time.
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Although the Examiner and Appellants apparently construe this
limitation according to the first interpretation, requiring only one condition
(as do we), we nonetheless leave the question of whether this ambiguity
renders the claims indefinite under 35 U.S.C. § 112(b) to the Examiner
should prosecution follow this opinion. See Ex parte Miyazaki, 89 USPQ2d
1207, 1211 (BPAI 2008) (precedential) (“[I]f a claim is amenable to two or
more plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite.”).
Turning to the rejection, the Examiner cites Hansmann for teaching
the recited activation when a single smart card is detected—a point that is
undisputed. See App. Br. 7–8 (noting that Hansmann’s activation is based
on a single smart card). But the Examiner did not rely solely on Hansmann
to teach the recited activation limitation, but rather also relied on Wilson.
A key aspect of the Examiner’s position is that after plural smart cards
are simultaneously inserted into Wilson’s converter box, then the user can
watch received signals. Ans. 12–13 (citing Wilson, Abstract). We
emphasize “signals” here, for although only one of these received signals is
selected for viewing at a time and decrypted via the associated card, the
functionality enabling the user to select different signals for viewing and
decryption via other cards is nonetheless activated after all associated smart
cards are inserted simultaneously. See Wilson, Abstract; col. 5, l. 32 – col.
6, l. 15; Fig. 4.
The scope and breadth of the term “activated” does not preclude this
interpretation. Because the term is not defined in Appellants’ Specification,
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we construe “activate” with its plain meaning, namely “make active or more
active.” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY 12 (10th ed. 1993)
(emphasis added). The Examiner’s interpretation comports with the latter
definition, for even assuming, without deciding, that Wilson’s viewing
functionality would be made active by inserting only one smart card to
render only one signal viewable, Wilson’s signal viewing functionality
would at least be made more active by detecting multiple smart cards
inserted simultaneously that would enable the viewer to watch multiple
signals. Accord Ans. 12–13 (finding that the user can watch received
signals after the smart cards are inserted simultaneously in Wilson’s
converter box).
Although Wilson’s decryption uses only one smart card at a time as
Appellants indicate (App. Br. 8–9; Reply Br. 4), we nonetheless see no error
in the Examiner’s position that there would at least some synchronization
among the smart cards for the interface 45 to select the appropriate card for
decryption and not select other cards at that time. Accord Ans. 16 (noting
that when a user selects a channel in Wilson, a smart card associated with
another channel does not try to decrypt the signal). Accordingly, the
Examiner’s reliance on Wilson and Hansmann for collectively teaching the
last clause of claim 1 has at least a rational basis that is not persuasively
rebutted.
Therefore, we are not persuaded that the Examiner erred in rejecting
representative claim 1, and claims 8–10, and 13–18 not argued separately
with particularity.

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Claims 19 and 20
We likewise sustain the Examiner’s rejection of claim 19 reciting
activation of each different security aspect depends upon availability of a
corresponding execution device. Appellants do not persuasively rebut the
Examiner’s position that activating a different security aspect in Wilson,
namely the different decryption algorithms, depends on availability of a
corresponding smart card or “execution device.” Ans. 10, 17 (citing Wilson,
Abstract; col. 6, ll. 1-15.)
Appellants’ contention that only one execution device would be
available in Wilson (App. Br. 10) is unavailing. As noted above, although
only one received signal is selected for viewing at a time and decrypted via
the associated card in Wilson, the functionality enabling the user to select
different signals for viewing and decryption via other cards is nonetheless
activated after all associated smart cards are inserted simultaneously. See
Wilson, Abstract; col. 5, l. 32 – col. 6, l. 15; Fig. 4.
Therefore, we are not persuaded that the Examiner erred in rejecting
representative claim 19, and claim 20 not argued separately with
particularity.

Claim 21
We also sustain the Examiner’s rejection of claim 21 reciting that the
control card incorporates plural execution devices. We see no error in the
Examiner’s position, at least to the extent that Williams at least suggests
incorporating a smart card reader in a control card. Ans. 17-18 (citing
Williams, col. 4, ll. 35-62). In that passage, Williams discusses providing
“‘security devices,’” namely network interface cards, to prevent
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unauthorized third parties from gaining access to a network host. Williams,
col. 4, ll. 37–42, 57–58. These security devices are self-contained circuit
boards directly integrated in the host system hardware, and provide user
identification and authentication via an attached card reader. Id. at col. 6, ll.
55–59; col. 7, ll. 7–9; col. 10, ll. 12–27 (discussing installing security device
information in a security device by reading an authentication card via an
attached card reader).
Although the control card associated with Williams’ security device
uses only one execution device (smart card), we see no error in the
Examiner’s position that using multiple such execution devices in lieu of a
single execution device would have been obvious in view of Wilson’s plural
smart-card-based functionality. Appellants’ contention regarding the
shortcomings of the Examiner’s reliance on a single execution device (Reply
Br. 4) is unavailing. In short, Appellants do not persuasively rebut the
Examiner’s position that is not based on Williams alone, but rather the
collective teachings of Williams and Wilson, the latter of which teaches
plural execution devices as noted above.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 21.

Claim 22
We also sustain the Examiner’s rejection of claim 22 reciting that the
plural execution devices are configured for use by plural operators. In the
rejection, the Examiner concludes that while not stated explicitly, it would
have nonetheless been obvious that set-top boxes are configured for use by
plural users in view of at least Hansmann and Wilson. Ans. 11. Although
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Appellants understandably interpret this statement as the Examiner equating
the recited “execution devices” to set-top boxes (App. Br. 12), the Examiner
nonetheless clarifies later in the Answer that the recited execution devices
are equated to smart cards in Hansmann and Wilson—not set-top boxes.
Ans. 18. This mapping is consistent with the Examiner’s rejection of claim
1 that recites explicitly that execution devices are implemented as smart
cards as the Examiner indicates. Id.
Despite the Examiner’s somewhat inartful articulation in the rejection
of claim 22, skilled artisans would nonetheless understand that set-top boxes
are associated with smart cards, and that configuring those smart cards for
use by plural operators or users would have least been an obvious variation
in light of the teachings of the cited prior art.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 22.

CONCLUSION
The Examiner did not err in rejecting claims 1, 8–10, and 13–22 under
§ 103.

DECISION
The Examiner’s decision rejecting claims 1, 8–10, and 13–22 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
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