Ex Parte Vaswani et al

Patent Trial and Appeal Board

Jul 11, 2017

12939702 (P.T.A.B. Jul. 11, 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.
12/939,702 11/04/2010 Raj VASWANI 0072045-000108 5913
95240 7590 07/13/2017
Silver Spring Networks, Inc.
c/o Buchanan Ingersoll & Rooney PC
PO Box 1404
Alexandria, VA 22313-1404
EXAMINER
PATEL, ASHOKKUMAR B
ART UNIT PAPER NUMBER
2491
NOTIFICATION DATE DELIVERY MODE
07/13/2017 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJ VASWANI, WILSON CHUEN YEW YEUNG,
CRISTINA SEIBERT, NELSON BRUCE BOLYARD,
BENJAMIN N. DAMM, and MICHAEL C. STJOHNS
Appeal 2016-005067
Application 12/939,702
Technology Center 2400
Before CAROLYN D. THOMAS, DANIEL J. GALLIGAN, and
ADAM J. PYONIN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants filed a Request for Rehearing under 37 C.F.R.
§ 41.52(a)(1) (hereafter “Request”) on May 26, 2017 for reconsideration of
our Decision mailed March 27, 2017 (hereafter “Decision”). We have
reconsidered the Decision in light of Appellants’ arguments; however, we are
not persuaded of any error therein.
Appeal 2016-005067
Application 12/939,702
DISCUSSION
In our Decision, we determined:
[i]n the Reply Brief, Appellants present new arguments
that “neither Salazar nor Ransom distinguish between different
levels of security for different types of commands” and “[a]t no
point does Salazar disclose or suggest that a device such as the
EP 102, including its processing apparatus 204 or metrology
apparatus 206, determines whether a command it generated
requires a permit for the command to be performed.” Reply Br.
3,5. As these arguments are not responsive to findings presented
for the first time in the Examiner’s Answer, and good cause has
not been shown as to why the arguments were not earlier
presented, the arguments will not be considered for the purposes
of this appeal.
Decision 5—6.
Appellants argue “the Board misapprehended or overlooked
Appellant’s prior arguments in its Appeal Brief filed on May 18, 2015, when
the Board indicated that Appellant presented new arguments in its Reply
Brief filed on January 8, 2016.” Request 1. Particularly, Appellants
“respectfully request[] the Board to reconsider its assertion that the Reply
Brief presented new arguments with respect to whether Salazar discloses a
device that determines whether a command it generated requires a command
[] permit for the command to be performed. Since this argument was
presented previously, it should be given full consideration by the Board in
assessing the erroneous rejections of claims 22, 32 and 39.” Id. 3^4. In
support, Appellants refer to the following arguments in the Appeal Brief:
Therefore, the proposed combination of Salazar and Ransom
does not result in the claimed invention. Even if Salazar was
combined with Ransom, the resultant combination would be that
messages from the network management apparatus 108 to the
EPs 102 of Salazar would be encrypted, and messages from the
EPs 102 to the network management apparatus 108 would be
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Appeal 2016-005067
Application 12/939,702
similarly encrypted. However, neither Salazar nor Ransom
disclose or suggest that a back office system determines
whether a command it generated requires a permit for the
command to be performed, and if so, forwards the generated
command to a permission server which is a secured
component of the back office system, (emphasis added).
Id. 2 (quoting App. Br. 10).
We find that the aforementioned argument presented by Appellants
merely makes a conclusory statement but fails to persuasively argue that
“Salazar’s EP 102 does not determine whether a command it generated
requires a permit for the command to be performed” as belatedly presented
in Appellants’ Reply Brief. Therefore, Appellants do not persuade us we
misapprehended or overlooked any points in the Decision, in which we
considered Appellants’ arguments presented on Page 10 of the Appeal Brief.
See Decision 3 (quoting pages 10-11 of the Appeal Brief). In our analysis
of these arguments, we agreed with the Examiner that “Ransom teaches ‘the
back end server system permits users to interact with devices by determining
if a user should receive the necessary keys and authentication data in order
to submit commands to the utility devices.’” Decision 5 (quoting Ans. 20).
We further agreed with the Examiner that the combination of Salazar and
Ransom teaches or suggests the claim limitations disputed in the Appeal
Brief, as “Salazar . . . teaches determining to authenticate a requestor of a
utility network, [and] Ransom . . . teaches using a back office server (of a
utility network) for authentication.” Decision 5 (citing Final Act. 4—5; Ans.
20-21). Thus, we do not find agree we overlooked or misapprehended any
of Appellants’ Appeal Brief arguments.
Appellants further argue the Reply Brief does not contain new
arguments, because
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Application 12/939,702
[t]he additional inclusion of the phrase “such as the EP 102,
including its processing apparatus 204 or metrology apparatus
206” in the above arguments in the Reply Brief refers to the
devices in paragraphs 55—58 of Salazar which the Examiner cites
as disclosing the feature “determining whether the generated
command requires a permit for the generated command to be
performed” (see, e.g., page 4 of the Examiner’s Answer
addressing features of claim 22).
Request 3. As an initial matter, we note that Appellants admit that their
remarks in the Reply Brief have an “additional inclusion” {id.), i.e., a new
argument. Further, although the Examiner cites paragraph 55—58 of Salazar
in the Answer, as argued by Appellants, we highlight that the Examiner’s
Answer merely restates the rejection of the Final Action. See Final Act. 4—5
(citing, e.g., Salazar || 55—58); Ans. 3^4. As discussed in our Decision,
“these arguments are not responsive to findings presented for the first time
in the Examiner’s Answer” (Decision 5). Thus, Appellants do not persuade
us we erred in finding the Reply Brief presented new arguments.
Accordingly, we do not agree that any points were misapprehended or
overlooked in our Decision. See 37 C.F.R. § 41.52(a).
DECISION
We have granted Appellants’ request to the extent that we have
reconsidered our Decision, but we deny the request with respect to making
any changes therein.
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)(iv).
REHEARING DENIED
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