Ex Parte Singhal

Patent Trial and Appeal Board

Apr 26, 2016

13068328 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/068,328
103550 7590
Tara Chand Sighal
P.O. Box 5075
Torrance, CA 90510
FILING DATE FIRST NAMED INVENTOR
05/09/2011 Tara Chand Singhal
04/26/2016
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.
l l 195.72C2 8516
EXAMINER
HENNING, MATTHEW T
ART UNIT PAPER NUMBER
2491
MAILDATE DELIVERY MODE
04/26/2016 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 TARA CHAND SINGHAL
Appeal2014-005356
Application 13/068,328 1
Technology Center 2400
Before CAROLYN D. THOMAS, JASON V. MORGAN, and
SHARON PENICK, Administrative Patent Judges.
PENICK, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-5, 7, and 16-19.2 Claims 8-15 are cancelled.
(Appeal Br. 4.) We have jurisdiction under 35 U.S.C. § 6(b)(l).
We affirm.
1 According to Appellant, the real party in interest is the inventor, Tara
Chand Singhal, proceeding prose. (Appeal Br. 1, 4.)
2 Although Appellant states that the rejection of claims 1-7 and 16-20 are
the subject of the appeal (Appeal Br. 4), claim 6 has been objected to, but
indicated as allowable if rewritten in independent form to include the
limitations of its base claim and any intervening claims (Final Action 6.)
Additionally, the Examiner has not specifically addressed claim 20 in any of
the rejections. (Final Action 3---6.) We, therefore, do not address claims 6
and 20 in this decision.
Appeal2014-005356
Application 13/068,328
Invention
Appellant's invention relates to security in a nationwide wireless
network with geographically dispersed wireless routers. The wireless routers
have an interface function with an ability to receive telephone calls from an
authorized caller. The router, in response and on demand, generates a set of
bounded random numbers (BRN) as a random seed for use in generation of
encryption keys for communication security between the router and a
portable wireless device of the caller. (Abstract.) According to one
embodiment of the invention, a call screening function receives cellular
calls with caller id and geographic cell data and screens permitted calls
based on a prestored list of caller ids, a call mapping function that maps the
call to a wireless access point (W AP) in the area identified by the cell, and a
call routing function that routes the call to a telephone number assigned to a
WAP in the area. (Spec. 20: 11-15.)
Illustrative Claims
Claims 1---4, reproduced belmv, are illustrative:
1. A system for security in a wireless network with
geographically dispersed wireless access point (W AP)
routers to the network and a user's wireless device
desiring access to the network, comprising:
a. a screen function that screens cellular telephone
network originated calls originating from a device user's
cell phone to a telephone number assigned to the wireless
network;
b. the screen function maintains a pre-stored
database of caller ids of authorized users and a pre-stored
database of W AP routers in the network with their
geographic locations and their assigned network access
addresses;
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Application 13/068,328
c. the screen function screens the originating calls
based on the pre-stored caller id database and then a
mapping function maps to a geographic area based on the
call cell area.
2. The system as in claim 1, further comprising:
the call is first screened based on caller id that
identifies the caller as belonging to one of a plurality of
authorized group of users, then maps the geographic
location of the call origination to one of the wireless access
points in the pre-stored database of W APs.
3. The system as in claim 2, further comprising:
the call is then mapped to a W AP router of the
authorized group and a routing function then routes the
call to the nearest geographic W AP router of the group.
4. The system as in claim 3, further comprising:
the router, for the received call, creates an
identifying record in its memory, generates a random seed
and delivers the seed to the caller.
Re1ectzons
The Examiner rejects claims 1-3, 7, and 16-18 under 35 U.S.C.
§ 103(a) as unpatentable over Barnes et al. (US 4,829,554; May 9, 1989)
("Barnes") and Joseph et al. (US 2003/0123436 Al; July 3, 2003)
("Joseph"). (Final Action 3-5.)
The Examiner rejects claims 4, 5, and 19 under 35 U.S.C. § 103(a) as
unpatentable over Barnes, Joseph and Iyengar et al. (US 6,349,213 B 1; Feb.
19, 2002) ("Iyengar"). (Final Action 5---6.)
Issues
Did the Examiner err in finding Barnes and Joseph to be analogous art
to the claimed invention?
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Application 13/068,328
Did the Examiner err in finding that the combination of Barnes and
Josephs teaches "a pre-stored database of caller ids of authorized users," as
in claim 1?
Did the Examiner err in the obviousness rejection of claim 4?
ANALYSIS
Appellant, proceeding prose, challenges the Examiner's rejection of
the claims as obvious in light of Barnes and Joseph. Appellant's arguments
in the Appeal Brief are addressed to (A) Barnes and Joseph as analogous
prior art, (B) whether certain elements of Claim 1 are taught or suggested by
the combination of Barnes and Joseph, and (C) whether generation of a
random seed (as in, e.g., claim 4) is taught or suggested by the prior art.
Barnes and Joseph as Analogous Art
Appellant argues that the Examiner "misunderstands and
misconstrues" the invention, and provides a summary of the field of
endeavor of the invention. (Appeal Br. 9-11.) Appellant refers to the first
prong of obviousness analysis articulated in Graham v. John Deere,
requiring a determination of the scope and content of the prior art, and
argues that "[i]f the prior art teaches solution to problem A and the claims
teach the solution to a problem Band where problem A and Bare unrelated
then the claims are prima facie not obvious over the prior art." (Appeal Br.
14.) Appellant argues that the claimed subject matter "depends on a cellular
telephone system and its ability to make a cellular telephone connection"
and is directed to "a screen function ... to be able to screen incoming
[cellular] calls from authorized callers and route those authorized calls to ...
a Wireless Router access point." (Appeal Br. 12-13.) Appellant argues that,
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Application 13/068,328
in contrast, Barnes is directed to a connection between a landline and a
cellular telephone, and Joseph is directed to voice and data connections
using IP protocols. (Appeal Br. 12.) The essence of Appellant's argument
is that the Examiner has not shown that Barnes and Joseph are analogous art.
(Id. at 14 ("the two [references] are directed to an entirely different
problem")).
We consider two criteria in determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor as the
invention, regardless of the problem addressed, and (2) if the reference is not
within the field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved. In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992). The Supreme
Court directs us to construe the scope of analogous art broadly, stating that
"familiar items may have obvious uses beyond their primary purposes, and
in many cases a person of ordinary skill will be able to fit the teachings of
multiple patents together like pieces of a puzzle." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 420 (2007).
We agree with the Examiner in finding that the field of endeavor of
Appellant's invention is cellular communications and authorizing cellular
calls. (Answer 5.) Barnes is directed towards a flexible secure cellular
telephone system including routing within that system. (Barnes Abstract.)
Joseph is directed towards telephone routing over the Internet, including
calls originating from cellular telephones. (Joseph Abstract.) Thus, both
references, being within the field of endeavor of Appellant's invention, are
analogous. Furthermore, while we recognize the differences Appellant
describes between the subject matter of the invention and these pieces of
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prior art, we agree with the Examiner that these references logically would
have commended themselves to the attention of an artisan of ordinary skill
in considering the problems Appellant addresses, further evincing that the
references are analogous art.
Obviousness Rejection of Claim 1
Appellant includes in the Appeal Brief conclusory arguments, for the
preamble and each element (a) through ( c) of claim 1, quoting the claim
limitation and asserting for each that the limitation "is neither taught nor
fairly suggested by the cited combination of the prior art." (Appeal Br. 13-
14.) "A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim." 37 C.F.R.
§ 41.37(c)(iv) (2013). Thus, these arguments are unavailing.
Additionally, Appellant specifically argues that the combination of
Barnes and Josephs does not teach or suggest the claimed "pre-stored
database of caller ids of authorized users" because Barnes "(1) stores all
telephone numbers identification and (2) [they are] used for an entirely
different purpose, where in contrast the claimed subject matter database is of
authorized callers who would have access to" wireless access point routers.
(Appeal Br. 12.) The Examiner finds that the claim limitation is taught or
suggested by the set of valid and current mobile units stored in Barnes.
(Final Action 4; Answer 2-3.) The Examiner notes that Barnes teaches that
the set of valid and current mobile units is used to forward calls to such
units, and that verification also occurs to determine that a caller is valid and
a current mobile unit. (Answer 2-3.)
The Appellant urges us to consider the claim limitation and more
narrowly interpret it in light of the specification (Appeal Br 9, 12; Reply 8).
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Appellant argues that the claimed database consists of "authorized callers to
[a] specific assigned telephone number." (Reply 7.) However, our
reviewing court cautions that, "although the specification often describes
very specific embodiments of the invention, we have repeatedly warned
against confining the claims to those embodiments .... [C]laims may
embrace 'different subject matter than is illustrated in the specific
embodiments in the specification."' Phillips v. AWH Corp., 415 F.3d 1303,
1323 (Fed. Cir. 2005) (en bane) (citations omitted). A basic canon of claim
construction is that one may not read a limitation into a claim from the
written description. Renishaw PLC v. Marposs Societa 'per Azioni, 158 F.3d
1243, 1248 (Fed. Cir. 1998). Because "applicants may amend claims to
narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee." In re ICON Health and Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).
Thus, we decline to narrow the interpretation of the claim term as the
Appellant urges, and we agree with the Examiner that Barnes teaches or
suggests "a pre-stored database of caller ids of authorized users," as in claim
1. Thus, we are not persuaded on this basis of error in the Examiner's
obviousness rejection of claim 1.
Appellant additionally argues that:
The claimed subject matter here, teaches elements of
delivering a random seed to the ends of a communication
channel using an out of band method. Since these features are
not taught nor suggested by any prior art and thus the need for
the second leg of the obviousness enquiry and KSR
amplification of person of ordinary skill in the art does not even
anse.
That is the "Screen Function" of the claimed subject
matter is not obvious over the cited combination of the prior art.
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Like[]wise dependent claims are also not obvious. Claim 16
and its dependent claims are method analogs of claim 1 and are
also thus not obvious for the same and similar reasons.
Therefore the claimed subject matter is not obvious over the
cited combination of the prior art.
(Appeal Br. 15.) However, while the screen function appears in claim 1, the
generation and delivery of a random seed does not, but appears in dependent
claim 4 (and claims dependent therefrom). Thus, this distinction also does
not persuade us of error in the rejection of claim 1.
Appellant includes in the Reply Brief a number of arguments made
for the first time regarding the proper interpretation of claim terms under the
broadest reasonable interpretation standard. (Reply Br. 5-9.) We have
considered supra certain arguments relating to the interpretation of the "pre-
stored database of caller ids of authorized users," in light of their relation to
arguments made in the Appeal Brief. However, arguments addressed
towards the broadest reasonable interpretation of other terms are waived as
they appear for the first time in the Reply Brief with no showing of good
cause. 37 C.F.R. § (b)(2) (2013); See Ex parte Borden, 93 USPQ2d 1473,
1474 (BPAI 2010) (Informative) ("[T]he reply brief [is not] an opportunity
to make arguments that could have been made in the principal brief on
appeal to rebut the Examiner's rejections, but were not.").
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of claim 1, and the rejections of claims 2, 3, 7, and 16-18, not separately
argued with specificity.
Claims 4, 5, and 19 include a limitation with respect to the delivery of
a random seed, as such we consider these claims separately in light of
arguments made by Appellant with respect to this limitation.
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Obviousness Rejection of Claim 4
With respect to the issue of the delivery of a random seed and the
rejection of claim 4, claim 4 was rejected over a combination of Barnes,
Joseph, and Iyengar (Final Action 4), which is not addressed by the
Appellant (Appeal Br. 15-16.) While Appellant describes this as a
distinction over the art, no argument appears in the Appeal Brief regarding
the combination of prior art and the Examiner's reliance on Iyengar, which
the Examiner finds teaches or suggests the delivery of a random seed (Final
Action 5). Thus we are not persuaded of error in the rejection of claim 4.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of claim 4, and the rejections of claims 5 and 9 not separately argued with
specificity.
DECISION
We affirm the Examiner's decision rejecting claims 1-5, 7, and 16-
19.
Pursuant to 37 C.F.R. § 1.136(a)(l )(iv), no time period for taking any
subsequent action in connection with this appeal may be extended.
AFFIRMED
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