Ex Parte Vacon et al

Patent Trial and Appeal Board

Aug 8, 2013

10807005 (P.T.A.B. Aug. 8, 2013)

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.
10/807,005 03/23/2004 Gary Vacon 27592-01423-US 2816
30678 7590 08/09/2013
NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
1875 EYE STREET, N.W.
SUITE 1100
WASHINGTON, DC 20006
EXAMINER
TURCHEN, JAMES R
ART UNIT PAPER NUMBER
2439
MAIL DATE DELIVERY MODE
08/09/2013 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 GARY VACON and FLOYD BACKES
____________

Appeal 2011-003955
Application 10/807,005
Technology Center 2400
____________

Before MAHSHID D. SAADAT, BARBARA A. BENOIT, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

CLEMENTS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Appellants’ invention relates to a method and apparatus for securing
communication in a wireless network by authenticating new members of the
network based on their ability to be physically proximate to at least one
Appeal 2011-003955
Application 10/807,005

2
other member of the network. See generally Abstract. Claim 1 is illustrative
with disputed limitations in italics:
1. A method for securing communications between members of a
network including the steps of:
receiving a signal from a device attempting to become a
member of the network, the device being within communication
range;
determining whether to authenticate the device as a member of
the network by verifying that the device is physically proximate to at
least one member of the network, where being physically proximate is
indicated by a distance that is less than maximum communication
range of the network, including, responsive to a user action at the
device and at a first member, determining a distance between the first
member and the device; and
if the device is not physically proximate, refusing to
authenticate of the device.

REFERENCES
Brown US 6,377,792 B1 Apr. 23, 2002
Ammon US 2003/0217289 A1 Nov. 20, 2003
McCorkle US 2004/0203600 A1 Oct. 14, 2004
(filed Dec. 13, 2002)
Olson US 6,928,295 B2 Aug. 9, 2005
(filed Jan. 30, 2002)
H. Zhun and C. Hongyi, A Truly Random Number Generator Based
on Thermal Noise, Proc. IEEE Int. Conf. ASIC, pp. 862–864
2001(hereinafter “Zhun”).
Nancy Cam-Winget et al., IEEE 802.11i Overview, December 2002,
available at
http://csrc.nist.gov/wireless/S10_802.11i%20Overviewjw1.pdf
(hereinafter “Cam-Winget”).

Appeal 2011-003955
Application 10/807,005

3
THE REJECTIONS
1. Claims 1-7, 9, and 11-14 stand rejected under 35 U.S.C. § 102(e)
as anticipated by McCorkle. Ans. 3-6.
2. Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over McCorkle and Brown. Ans. 7.
3. Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over McCorkle and Olson. Ans. 7-8.
4. Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over McCorkle and Ammon. Ans. 8.
5. Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over McCorkle and Zhun. Ans. 8-9.
6. Claims 15-22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over McCorkle and Cam-Winget. Ans. 9-11.

THE ANTICIPATION REJECTION
The Examiner finds that McCorkle discloses every recited element of
claim 1. Ans. 3-4.
Appellants argue that McCorkle does not disclose “responsive to a
user action at the device and at a first member, determining a distance
between the first member and the device” because McCorkle’s distance
calculation is not “responsive to a user action at the device” and to another
user action “at a first member.” App. Br. 6-7. Appellants add that
McCorkle’s “authentication device 960” does not disclose the recited “a first
member” because it is not a member of the network. Reply Br. 7-8.

Appeal 2011-003955
Application 10/807,005

4
ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that McCorkle discloses “responsive to a user action at the device and at a
first member, determining a distance between the first member and the
device”?

ANALYSIS
On this record, we are unpersuaded of error in the Examiner’s
anticipation rejection of claim 1. Relying upon Figure 13 of McCorkle,
Appellants argue that the distance calculation of step 1315 is not responsive
to a user action. App. Br. 6. To the contrary, the distance determination in
step 1315 is responsive to user actions performed in step 1305. Ans. 11-12
(citing McCorkle ¶¶ 0191-0193). Specifically, McCorkle states:
As shown in FIG. 13, the process begins when the user physically
enables communications in a secure manner. (Step 1305) This can
include (1) activating an authentication enable element to put a new
device 910 in a mode to receive the authentication data for a limited
time; (2) activating an authentication element within the limited time
to instruct an authentication device 960 to start the authentication
process; and (3) making certain that the authentication device 960 and
the new device 910 are close enough to make this process work.
McCorkle ¶ 0191 (emphasis added). To the extent Appellants intend to
argue that step 1315 is not “responsive to” step 1305 because of intervening
step 1310, such an argument is not commensurate with the scope of the
claims. The term “responsive to” is not used in the Specification, and the
plain meaning of the term does not preclude the performance of an
intervening step, such as step 1310. As a result, we are not persuaded that
McCorkle’s distance determination is not “responsive to” a user action.
Appeal 2011-003955
Application 10/807,005

5
We also are not persuaded by Appellants’ argument that McCorkle
discloses only one user action, not two user actions as required by the claim.
App. Br. 7. To the contrary, and as pointed out by the Examiner, paragraph
0191 of McCorkle describes two user actions: (1) activating an
authentication enable element on a new device (i.e., “a user action at the
device”); and (2) activating an authentication enable element on
authentication device 960 (i.e., “a user action . . . at a first member”). Ans.
11-12.
We also are not persuaded by Appellants’ argument that
authentication device 960 is not the recited “first member” because it is a
token shuttle, not a member of the network. Reply Br. 8. As an initial
matter, McCorkle describes the token shuttle as communicating wirelessly
with the new device. McCorkle ¶¶ 0117, 0119 (“The token shuttle 740 in
this embodiment can wirelessly pass an authentication token throughout a
limited range of operation 750.”) (emphasis added). Even if the token
shuttle were not a member of the wireless network, the token shuttle is
merely one embodiment of an authentication device. McCorkle ¶ 0131
(“authentication device 960, e.g., a token shuttle, . . .”) (emphasis added).
We observe that McCorkle discloses alternate embodiments of
authentication device 960, which are members of the network. See, e.g.,
McCorkle Fig. 10, ¶ 0147 (“The antenna 1010 and the transceiver 1020
serve to wirelessly communicate data between the authentication device
1000 and other devices. This is done using any known wireless data
transmission scheme, and so will not be described in detail.”); see also
McCorkle ¶¶ 0025, 0144-0146, 0148-0155. McCorkle further discloses that
the authentication device also has a “normal operation” in which it
Appeal 2011-003955
Application 10/807,005

6
communicates over the network using normal power and antenna sensitivity.
McCorkle ¶ 0064 (“Under normal operation, the authentication device 510
has a normal effective transmission range 512 based on its normal
transmission power and a normal level of antenna sensitivity.”) (emphasis
added).

CONCLUSION
The Examiner did not err in rejecting claim 1 under § 102 as
anticipated by McCorkle. We therefore sustain the Examiner’s rejection of
(1) independent claim 1 and (2) the remaining dependent claims, not
separately argued.

DECISION
The Examiner’s decision rejecting claims 1-22 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

gvw