Ex Parte Newsome

Patent Trial and Appeal Board

Mar 30, 2017

13803431 (P.T.A.B. Mar. 30, 2017)

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.
1576-0766 8786
EXAMINER
TERRELL, EMILY C
ART UNIT PAPER NUMBER
2689
MAIL DATE DELIVERY MODE
13/803,431 03/14/2013
10800 7590 03/30/2017
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
James Duran Newsome JR.
03/30/2017 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 JAMES DURAN NEWSOME JR.
Appeal 2016-006594
Application 13/803,43 U
Technology Center 2600
Before HUNG H. BUI, MICHAEL M. BARRY, and
DAVID J. CUTITTAII, Administrative Patent Judges.
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—20, which constitute all of the pending claims in the application on
appeal. Appeal Br. 1. We have jurisdiction over this appeal under 35
U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is Robert Bosch GmbH.
See Appeal Br. 2.
Appeal 2016-006594
Application 13/803,431
STATEMENT OF THE CASE
According to Appellant, the application relates to authentication of
communications between computing devices. Spec. 11.2
CLAIMED SUBJECT MATTER
Claims 1 and 10 are independent. Claim 1 is illustrative and is
reproduced below with disputed limitations italicized:
1. A first computing device, comprising:
a transmitter;
a receiver;
a user interface configured to emit a human perceptible
stimulus;
a memory in which command instructions are stored; and
a processor operably connected to the transmitter,
receiver, user interface, and memory, and configured to execute
the command instructions to:
form an association with a second computing device using
the transmitter and the receiver,
compute a fingerprint of a common key derived during the
association formation with the second computing device, and
control the user interface to emit a first audio stimulus, the
first audio stimulus based upon the computed fingerprint,
wherein the first audio stimulus is at least one octave number
apart from a second audio stimulus emitted by the second
computing device based upon the common key.
2 Throughout this Opinion, we refer to the following documents for their
respective details: (1) Appellant’s Specification filed Mar. 14, 2013
(“Spec.”); (2) the Final Office Action (“Final Act.”) mailed June 11, 2015;
(3) the Appeal Brief (“Appeal Br.”) filed December 10, 2015; (4) the
Examiner’s Answer (Ans. ”) mailed April 20, 2016; and (5) the Reply Brief
(“Reply Br.”) filed June 20, 2016.
2
Appeal 2016-006594
Application 13/803,431
Appeal Br. 20 (Claims App’x).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal includes:
Lenihan et al.
(“Lenihan”)
Farrett
Iwamoto
Willey
Kindberg et al.
(“Kindberg”)
Levy et al. (“Levy”)
Winograd et al.
(“Winograd”)
US 5,127,004 June 30, 1992
US 5,636,325 June 3, 1997
US 2001/0037196 Al Nov. 1, 2001
US 2003/0065918 Al Apr. 3, 2003
US 7,370,200 B2 May 6, 2008
US 7,711,564 B2 May 4, 2010
US 2012/0072730 Al Mar, 22, 2012
REJECTIONS
Claims 1, 2, 8, 9, 10, 11, 17, 18 and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kindberg, Levy, and Iwamoto. Final
Act. 3-9.
Claims 3, 7, 12 16, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kindberg, Levy, Iwamoto, and Willey. Final
Act. 9-17.
Claims 4 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kindberg, Levy, Iwamoto, and Farrett. Final Act. 17—19.
Claims 5 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kindberg, Levy, Iwamoto, and Lenihan. Final Act. 19—
21.
3
Appeal 2016-006594
Application 13/803,431
Claims 6 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kindberg, Levy, Iwamoto, and Winograd. Final Act. 22—
25.
Our review in this appeal is limited only to the above rejections and
issues raised by Appellant. We have not considered other possible issues
that have not been raised by Appellant and which are, therefore, not before
us. See 37 C.F.R. § 41.37(c)(l)(iv) (2014).
ISSUE
Based on Appellant’s arguments, the dispositive issue presented on
appeal is whether the Examiner errs in finding that the combination of
Kindberg, Levy, and Iwamoto teaches or suggests “control the user interface
to emit a first audio stimulus, the first audio stimulus based upon the
computed fingerprint,” as recited in claim 1.
ANALYSIS
In support of the rejection of claim 1, the Examiner finds Kindberg
teaches the disputed limitation: “control the user interface to emit a first
audio stimulus, the first audio stimulus based upon the computed
fingerprint,” wherein the computed fingerprint is of a common key. Final
Act. 3^4; Ans. 3 (citing Kindberg 4:11—16, 6:4—24). The Examiner finds
Levy teaches the fingerprint. Final Act. 4 (citing Levy 9:59—10:35).
Kindberg discusses a method of validating an association between
first (Device A) and second (Device B) computing devices using a
succession of human-perceptible stimuli, which may include a succession of
musical tones. Kindberg 3:1—6, 4:11—16, 6:26—32. After the devices
4
Appeal 2016-006594
Application 13/803,431
exchange network addresses and encryption keys, an operator validates the
association by operating one of the devices (an “initiator”) to send
commands to the other device (the “responder”) to generate the succession
of human-perceptible stimuli. Kindberg 3:45—65, 4:10—22. The association
is validated if the operator perceives the correct succession of stimuli is
received at the responder. Kindberg 4:14—16.
Appellant argues
In contrast to the Examiner’s position, when Device A of
Kindberg is operated as an initiator, the human-perceptible
stimuli emitted from Device A is not generated based upon the
common key. According to Kindberg, the human-perceptible
stimuli to be rendered by the initiator (Device A) are either (i)
selected by the human operator of the initiator (Device A) (id. at
column 4, lines 23-26) or (ii) pre-stored in the memory of the
initiator (Device A) (id. at column 4, lines 55-56). Therefore, the
selected stimuli are not dependent upon the common key in any
way.
Appeal Br. 6.
The Examiner responds by finding that, in Kindberg, “the human-
perceptible stimuli emitted by Device A (when operated as the initiator)
assists in generation of and secure association of the key.” Ans. 10 (citing
Kindberg 6:4—25). The Examiner therefore concludes that under the
broadest reasonable interpretation of “based upon,” Kindberg “does indeed
disclose that the human-perceptible stimuli emitted by Device A are ‘based
upon’ the common key.” Ans. 10.
We do not agree with the Examiner. That is, even assuming the
Examiner’s interpretation of “based upon” is reasonable, we disagree with
the Examiner’s finding that because the human-perceptible stimuli emitted
5
Appeal 2016-006594
Application 13/803,431
by Device A assist in generation of the key, Kindberg teaches generating the
stimuli based upon the key.
Rather, we agree with Appellant that the Examiner has not
demonstrated that these findings are supported by Kindberg’s disclosure
because “[ujsing a human-perceptible stimulus to assist in generation and
association of a common key as taught by Kindberg is not and cannot be
considered the same as using a fingerprint/common key to assist in
generation of a first audio stimulus as required in claim 1.” Reply Br. 4.
Accordingly, we concur with Appellant that the Examiner has failed
to establish Kindberg teaches, suggests, or renders obvious the disputed
limitation of claim 1.
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.
We, therefore, reverse the Examiner’s 35 U.S.C. § 103(a) rejection of
claim 1. We also reverse the rejections of independent claim 10, which
recites commensurate limitations, and of dependent claims 2—9 and 11—20,
which stand with their respective independent claims.
DECISION
On the record before us, we conclude that the Examiner has erred in
rejecting claims 1—20 under 35 U.S.C. § 103(a).
REVERSED
6