Ex Parte Shimotono

Patent Trial and Appeal Board

Apr 27, 2016

13116361 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/116,361 05/26/2011
124845 7590 04/29/2016
Russell Ng PLLC (LENOVO)
8729 Shoal Creek Blvd., Suite 100
Austin, TX 78757
FIRST NAMED INVENTOR
Susumu Shimotono
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
JP920100018-US-NP 5304
EXAMINER
SU, SARAH
ART UNIT PAPER NUMBER
2431
NOTIFICATION DATE DELIVERY MODE
04/29/2016 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):
s tephanie@russellnglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUSUMU SHIMOTONO
Appeal2014-004020
Application 13/116,361
Technology Center 2400
Before BRUCE R. WINSOR, JOHN F. HORVATH, and
NABEEL U. KHAN, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the final rejection
of claims 1-20, which constitute all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest identified by Appellant is Lenovo Corporation.
(App. Br. 3.)
Appeal2014-004020
Application 13/116,361
STATEMENT OF THE CASE
Appellant's disclosed "invention relates to computer security in
general, and in particular to ... ensuring the security of computers
connected to a network." (Spec. 1: 17-18.) Claim 1, which is illustrative,
reads as follows:
1. A method comprising:
in response to the receipt of an authentication
packet sequence by a second computer, wherein said
authentication packet sequence is transmitted from a
first computer to said second computer using a plurality
of transmission time slots, wherein said authentication
packet sequence is generated by using a first
authentication code, measuring by said second
computer arrival timings of a plurality of
authentication packets within said authentication packet
sequence to determine a set of slot intervals;
generating by said second computer a second
authentication code;
determining a set of pulse-position modulation
(PPM) codes by using said set of slot intervals to
decode said first authentication code; and
permitting said first computer to access said
second computer if said decoded first authentication
code matches said second authentication code.
The Examiner relies on the following prior art in rejecting the claims:
Ha et al. US 2008/0012688 Al Jan. 17,2008
("Ha")
Yoshikawa et al. US 2010/0197271 Al Aug. 5, 2010
("Yoshikawa")
Yao et al. US 2010/0290463 Al Nov. 18, 2010
("Yao")
Tyree US 2011/0145897 Al June 16, 2011
2
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Application 13/116,361
Coleri et al.
("Coleri")
WO 2009/036786 Al Mar. 26, 2009
Claims 1-3, 5, 6, 8, 9, 11-13, 15, 16, 18, and 192 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Tyree and Ha. (See Final
Act. 3-7.)
Claims 4 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tyree, Ha, and Yoshikawa. (See Final Act. 7-8.)
Claims 7 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tyree, Ha, and Coleri. (See Final Act. 8-9.)
Claims 10 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tyree, Ha, and Yao. (See Final Act. 10.)
Rather than repeat the arguments here, we refer to the Briefs ("App.
Br." filed Sept. 6, 2013, including a substitute Claims Appendix filed Oct. 7,
2013; "Reply Br." filed Dec. 18, 2013) and the Specification ("Spec." filed
May 26, 2011) for the positions of Appellant and the Final Office Action
("Final Act." mailed May 24, 2013) and Answer ("Ans." mailed Dec. 6,
2013) for the reasoning, findings, and conclusions of the Examiner. Only
those arguments actually made by Appellant have been considered in this
decision. Arguments that Appellant did not make in the Briefs have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2012).
2 In an apparent typographical error, the summary ground of rejection
identifies claims 7 and 17 as rejected over Tyree and Ha. (Final Act. 3.)
However claims 7 and 17 are rejected over Tyree, Ha and Coleri. (Final
Act. 8.)
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Application 13/116,361
ISSUES
Based on Appellant's arguments, we discuss the appeal by reference
to claims 1 and 10. The issues presented by Appellant's contentions are as
follows:
Does the Examiner err in finding the combination of Tyree and Ha
teaches or suggests "measuring by said second computer arrival timings of
a plurality of authentication packets within said authentication packet
sequence to determine a set of slot intervals" (hereinafter the "measuring
step"), as recited in claim 1?
Does the Examiner err in finding the combination of Tyree and Ha
teaches or suggests "determining a set of pulse-position modulation (PPM)
codes by using said set of slot intervals to decode said first
authentication code" (hereinafter the "determining step"), as recited in claim
1?
Does the Examiner err in finding the combination of Tyree, Ha, and
Yao teaches or suggests "one of said plurality of authentication packets
includes an IP header and an ICMP message," as recited in claim 10?
ANALYSIS
CLAIM 1
Measuring Step
Appellant contends "the Examiner does not specify what teachings of
Tyree were supposed to be modified [as taught by Ha], especially when
Tyree does not disclose the claimed measuring, determining and permitting
steps to begin with." (App. Br. 5.) We are not persuaded of error. Our
reviewing court instructs us as follows
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Application 13/116,361
[A]ll that is required of the [USPTO] to meet its prima facie
burden of production is to set forth the statutory basis of the
rejection and the reference or references relied upon in a
sufficiently articulate and informative manner as to meet the
notice requirement of § 132. As the statute itself instructs, the
examiner must "notify the applicant," "stating the reasons for
such rejection," "together with such information and references
as may be useful in judging the propriety of continuing
prosecution of his application." 35 U.S.C. § 132.
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011).
The Examiner identified the relied-upon teachings of both Tyree and
Ha and articulated a rationale for combining Tyree and Ha. (See Final Act.
3-5 (citing Tyree, Abstract; Ha i-fi-18, 21, 23, 25); see also Ans. 10-11.) We
conclude the Examiner has met the burden of producing a prima facie case,
shifting the burden of production to the Appellant rebut the prima facie case.
See Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential).
Appellant asserts "Ha discloses some ultra wideband[3] pulses in
RFID[4] systems. Ha does not disclose the claimed authentication packets
within a authentication packet sequence transmitted between a first computer
and a second computer, and neither has Tyree." (App. Br. 5.) Appellant's
contention argues Tyree and Ha separately, and does not take into account
the Examiner's reliance on a combination of Tyree and Ha. See In re Keller,
642 F.2d 413, 426 (CCPA 1981) ("[O]ne cannot show non-obviousness by
attacking references individually where, as here, the rejections are based on
combinations of references."). Furthermore, such a conclusory statement,
amounting to little more than a paraphrasing of the claim language and a
3 UWB. (Ha i-f 9.)
4 Radio-frequency-identification. (Ha, Abstract.)
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Application 13/116,361
general denial, is unpersuasive to rebut the prima facie case produced by the
Examiner. Cf 37 C.F.R. § 41.37(c)(iv) ("A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim."); see also 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."); cf In re Baxter Travenol Labs., 952 F.2d
3 8 8, 3 91 (Fed. Cir. 19 91) ("It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art.").
Appellant further contends "the Examiner has not explained how Ha's
teachings of ultra wideband pulses in RFID systems can be applied to
Tyree's teachings of webtokens." (App. Br. 5.) Appellant's contention
assumes the person of ordinary skill in the art would bodily incorporate Ha's
ultra wideband pulses into Tyree's authentication system. Although the
Examiner mentions Ha's UWB pulses in explaining Ha's teaching (see Ans.
11-12) the Examiner does not find or conclude that in using Ha's teaching
of PPM pulses in Tyree's authentication system, one of ordinary skill would
incorporate UWB pulses for transmission of data.
To justify combining reference teachings in support of a rejection
it is not necessary that a device shown in one reference can be
physically inserted into the device shown in the other. The test
for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must be
expressly suggested in any one or all of the references. Rather,
the test is what the combined teachings of the references would
have suggested to those of ordinary skill in the art.
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Application 13/116,361
Keller, 642 F.2d at 425 (citations omitted).
Appellant contends, for the first time in the Reply Brief5, that "Ha's
pulse signals are not 'generated by using a first authentication code' as the
claimed authentication packet sequence." (Reply Br. 2 (referring to Ha
i-fi-123, 25).) We are not persuaded of error. We agree with the Examiner
that Ha's "unique and critical ID" (Ha i125) is encompassed by the recited
"first authentication code" (claim 1 ). We also agree with the Examiner that
Ha's pulse signal "transfers the unique and critical ID" (Ha i125) and would
be understood by a person skilled in the art to be "generated by using [the]
first authentication code" (claim 1). (See Ans. 10.)
Appellant further contends, for the first time in the Reply Brief, that:
Ha explains that the "time slot of an incoming pulse is known a
priori for a conventional TH-PPM scheme," which means the
measurements of their arrival timings are not required or
performed. Importantly, Claim 1 recites "arrival timings of a
5 Arguments presented for the first time in the Reply Brief are not
automatically considered. See 37 C.F.R. § 41.41(b)(2); Ex parte Nakashima,
93 USPQ2d 1834, 1837 (BPAI 2010) (informative) (explaining that
arguments and evidence not timely presented in the principal Brief, will not
be considered when filed in a Reply Brief, absent a showing of good cause
explaining why the argument could not have been presented in the Principal
Brief); see also Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010)
(informative) ("Properly interpreted, the Rules do not require the Board to
take up a belated argument that has not been addressed by the Examiner,
absent a showing of good cause."). Were we to automatically consider such
newly raised arguments, "[r]ather than reviewing a record for error, the
Board would be considering, in the first instance, findings of fact proposed
by the Appellant, but not weighed by the Examiner [in the Examiner's
Answer] against the other evidence of record." Borden, 93 USPQ2d at
14 7 5. Here, in the interests of administrative and judicial economy, we
consider Appellant's newly presented arguments.
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Application 13/116,361
plurality of authentication packets within said authentication
packet sequence," and the Examiner's characterization of Ha's
pulse signals being the claimed authentication packet sequence
does not address the claimed authentication packets.
(Reply Br. 2-3 (discussing Ha i-f 23).) We are unpersuaded of error. One of
ordinary skill in the art would have understood that Ha's teaching of
"correlat[ing] incoming pulse signals with a template signal" (Ha i-f 23;
accord id. i-f 25 ("detection of UWB pulses require precise timing
synchronization")), teaches measuring the arrival time of the incoming
pulses by comparing them to a template signal. Furthermore, Ha teaches
that the "unique and critical ID" (Ha i-f 25), i.e., the recited "authentication
code" is transferred in UWB pulses (id.), i.e., the recited "authentication
packets," transmitted in time slots determines in accordance with a
pseudorandom modulation code (id.), i.e., the recited "authentication packet
sequence."
Determining Step
Appellant quotes passages of Ha relied upon by the Examiner to teach
the determining step (see Final Act. 4 (citing Ha i-fi-123, 25)) and contends, in
two places, they are "not related to the claimed determining step." (App.
Br. 6.) Such a conclusory statement, without argument or evidence to
explain what specific aspects of the determining step are missing from the
quoted passages of Ha, is insufficient to rebut the prima facie case of
obviousness produced by the Examiner. Cf Baxter Travenol Labs., 952
F.2d at 391.
Appellant further contends "Ha 's incoming pulses, unlike the claimed
authentication packets, do not include an IP header and an ICMP message,
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Application 13/116,361
as recited in [c]laims 10 and 20." (App. Br. 6.) Appellant's argument is
unpersuasive because it relies on limitations not found in claim 1.
Appellant's contention, presented for the first time in the Reply Brief
that "[s]ince Ha does not disclose the claimed first authentication code ...
[and] the claimed slot intervals, Ha could not have disclosed the claimed
determining step" (Reply Br. 3), is unpersuasive for the reasons discussed
supra.
Summary
Appellant does not persuasively demonstrate error in the rejection of
claim 1. Accordingly, for the reasons set forth above, we sustain the
rejections over various combination of Tyree, Ha, Yoshikawa, and Coleri, of
claim 1; independent claim 11, which is argued together with claim 1 (see,
e.g., App. Br. 4); and claims 2-9 and 12-19, which depend from claims 1
and 11 respectively and were not separately argued with particularity.
CLAIM 10
To the extent Appellant's contention that "Ha's incoming pulses,
unlike the claimed authentication packets, do not include an IP header and
an ICMP message, as recited in [c]laims 10 and 20" (App. Br. 6) was
intended as a separate argument for the patentability of claims 10 and 20, we
are not persuaded of error. The Examiner relies on Yao, when combined
with Tyree and Ha, and not on Ha alone, to teach the use of IP headers and
an ICMP message. (See Ans. 12; see also Final Act. 10.) Appellant does
not address the Examiner's findings and conclusions regarding Yao.
Accordingly, for the reasons set forth above, we sustain the rejection
over Tyree, Ha, and Yao of claims 10 and 20, which depend from claims 1
and 11 respectively.
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Application 13/116,361
DECISION
The decision of the Examiner to reject claims 1-20 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)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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