Ex Parte Vesuna

Board of Patent Appeals and Interferences

Dec 9, 2008

10834736 (B.P.A.I. Dec. 9, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SAROSH VESUNA
____________

Appeal 2008-5778
Application 10/834,736
Technology Center 2600
____________

Decided: December 9, 2008
____________

Before KENNETH W. HAIRSTON, JOHN A. JEFFERY
and BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 (2002) from the Examiner’s
rejection of claims 1-5, 9, 10, 14-25, 27, 29-34, 36 and 38-40. Claims 6-8,
11-13, 26, 28, 35 and 37 have been canceled (See Amendment received Mar.
13, 2006). We have jurisdiction under 35 U.S.C. § 6(b) (2002). We affirm.
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A. Appellant’s invention
Appellant’s invention relates to a system and method for improving
the security of data exchanged among wireless electronic devices (WEDs)
and an access point (such as a router) of a wireless network’s wired assets
(Spec. ¶¶ 0001-0003). Specifically, Appellant invented a security protocol
for such a network that requires the WED be physically contacted to the
access point (AP) by a user who has physical access to at least one of the
access point and the WED (Abstract). This security protocol is a
prerequisite for completing a subsequent authentication procedure (Id.).

B. The claims
The independent claims under appeal are claims 1, 23 and 32. They
read as follows:
1. An access point, comprising:

a memory storing an access scheme which defines an
authentication procedure for allowing the wireless
communications between a wireless electronic device and a
further asset, the authentication procedure utilizing data as
defined by the access scheme; and

a processor capable of performing the authentication
procedure,

wherein the access point allows the wireless
communications between the device and the further asset only
when the authentication procedure is successful, and

wherein before the authentication procedure, the data is
transferred directly between the device and the access point via
a physical access between the access point and the device.
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23. A system, comprising:

an electronic device including a wireless communication
arrangement; and

a wireless access point including a memory and capable
of wirelessly communicating with the device, the memory
storing an access scheme which defines an authentication
procedure for allowing the wireless communications between
the device and a further asset, the authentication procedure
utilizing data as defined by the access scheme,

wherein the access point allows the wireless
communications between the device and the further asset only
when the authentication procedure is successful, and

wherein before the authentication procedure, the data is
transferred directly between the device and the access point via
a physical access between the access point and the device.

32. A method, comprising the steps of:

transferring data directly between a wireless electronic
device and a wireless access point via a physical access
between the access point and the device, the access point
including a memory storing an access scheme which defines an
authentication procedure for allowing the wireless
communications between the device and a further asset, the
authentication procedure utilizing the data as defined by the
access scheme; and

allowing by the access point the wireless
communications between the device and the further asset only
when the authentication procedure is successful.
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C. The references and rejections

The Examiner relies on the following prior art references to show
unpatentability:
Pool US 2004/0000898 A1 Jan. 1, 2004
Fascenda US 2004/0068653 A1 Apr. 8, 2004
Takusagawa US 2004/0158639 A1 Aug. 12, 2004
(filed Dec. 24, 2003)
Ji US 6,836,657 B2 Dec. 28, 2004
(filed Nov. 12, 2002)
Melick US 2005/0150944 A1 Jul. 14, 2005
(eff. filed May 30, 2002)
Engler US 2005/0254652 A1 Nov. 17, 2005
(filed Jul. 14, 2003)

1. Claims 1-5, 9, 10, 17, 18, 23-25, 27, 32-34 and 36 stand rejected
under 35 U.S.C. § 103(a) as obvious over Fascenda in view of Ji.1
2. Claims 14-16, 29, 30, 38 and 39 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Fascenda in view of Ji and Melick.
3. Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as
obvious over Fascenda in view of Ji and Pool.
4. Claims 21, 31 and 40 stand rejected under 35 U.S.C. § 103(a) as
obvious over Fascenda in view of Ji and Takusagawa.
5. Claim 22 stands rejected under 35 U.S.C. § 103(a) as obvious over
Fascenda in view of Ji and Engler.

1 The Grounds of Rejection section of the Examiner’s Answer sets forth that
claims 1-5, 9, 10, 12, 13, 17, 18, 23-25, 27, 32-34 and 36 are rejected under
35 U.S.C. 103(a) as being unpatentable over Fascenda in view of Ji. As
claims 12 and 13 have been canceled (see Amendment filed Mar. 13, 2006),
we interpret this statement of rejection to include a typographical error
intending to recite that claims 1-5, 9,10, 17, 18, 23-25, 27, 32-34 and 36 are
so rejected.
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Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answer2 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made bud did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

ISSUES
The Examiner asserts, “Fascenda does not specifically teach the data
is transferred directly between the device and the access point via a physical
access between the access point and the device” (Ans. 4). The Examiner
addresses Fascenda’s perceived shortcoming by combining Ji. The
Examiner relies on Ji for teaching data transferred “directly” between the
WED and the access point (Ans. 4)
Appellant argues that no motivation existed to combine the teachings
of Fascenda and Ji. The Examiner’s combination of these references was the
result of impermissible hindsight (App. Br. 5-7).
The issues before us, then, are:
(1) Does the prior art’s alleged failure to disclose the method of
transferring data directly between an access point and WEDs preclude an
obviousness rejection of apparatus claims, notwithstanding that the prior art
discloses an access point and WEDs that are capable of having data
transferred by the method recited for using the claimed apparatus?

2 We refer to (1) the Appeal Brief filed March 17, 2008; (2) the Examiner’s
Answer mailed March 22, 2007; and (3) the Reply Brief filed May 9, 2007
throughout this opinion.
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(2) Where the prior art discloses a method of transferring data directly
between a wireless electronic device and an access point as claimed, does
the prior art’s alleged failure to further teach a direct contact render method
claims nonobvious, notwithstanding that the method claims do not contain
any language regarding a direct contact?

FINDING OF FACTS
The record supports the following Findings of Fact (FF) by a
preponderance of the evidence:
1. Appellant argues five grounds of rejection to be reviewed on appeal:
(1) the rejection of apparatus claims 1-5, 9, 10, 17, 18, 23-25, 27 and method
claims 32-34 and 36 over Fascenda and Ji; (2) the rejection of apparatus
claims 14-16, 29-30 and method claims 38-39 over Fascenda, Ji and Melick;
(3) the rejection of apparatus claims 19 and 20 over Fascenda, Ji and Pool;
(4) the rejection of apparatus claims 21 and 31 and method claim 41 [sic: 40]
over Fascenda, Ji and Takusagawa; and (5) the rejection of apparatus claim
22 over Fascenda, Ji and Engler (App. Br. 3-11).
2. Regarding the first ground of rejection, Appellant’s only arguments
are (1) Fascenda does not teach data is transferred directly between the
WED and AP; and (2) Ji fails to provide motivation to modify Fascenda so
as to further include, prior to an authentication procedure, a data transfer
directly between a WED and the access point via a physical access between
the access point and the WED (App. Br. 3-7; Reply Br. 3-7).
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3. Appellant does not dispute that Fascenda teaches all of the limitations
of claims 1, 23 and 32 other than the limitation of the data being transferred
directly.
4. Regarding the second through fifth grounds of rejection, Appellant
only argues that none of the additionally cited prior-art references teaches
the direct data transfer either. Therefore, none of these additional references
cures the deficiencies with respect to the first ground of rejection based
solely over Fascenda and Ji. Restated, Appellant only argues that the claims
in the last four grounds of rejection are dependent claims, and these
dependent claims are allowable based upon their dependency from the
claims cited in the first ground of rejection. (App. Br. 8-12).
5. Two of the protocols for practicing the invention include: (1) a first,
physical contact protocol wherein direct or indirect contact is made between
the WED and the access point by an authorized user having physical access
to these components (e.g., Spec. ¶¶ 0012-0014; Fig 2, step 110); and (2) a
second, authentication protocol wherein an access scheme defines an
authentication procedure (e.g., Spec. ¶¶ 0015-0019; Fig 2, step 120).
6. Appellant’s Specification indicates that the physical contact protocol
and the authentication protocol occur sequentially. “Once the user has
established [direct or indirect physical] contact between the WED and the
AP 30, then an access scheme is activated” (¶ 0015). See also Figure 2
which depicts a first block 110 (a step of establishing physical access
between the WED and the AP) and a subsequent, second block 120 (a step
of activating the access scheme or authentication procedure).
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7. Appellant’s Specification indicates that electronic signals associated
with the first, physical-contact protocol may be separate and distinct from
the electronic signals/data associated with the second, authentication
protocol. “Such a direct physical contact [between the WED and the AP]
may be accomplished in several manners. . . . [such as by] using a wire that
plugs into a communication port…” or by including a slot or contact pad (¶¶
0012-0013). Indirect contact may be made using a portable memory card
such as a compact flash “as an intermediary to establish the contact between
the WED and the AP 30” (¶ 0014).
The Specification goes on to state that after the physical contact has
taken place, various types of wireless signals may be employed for the
second, authentication protocol. “The access scheme may as a [sic: may be
as?] simple as having a unique identifier which is capable of uniquely
identifying the … WED to the AP…” (¶ 0015). “[T]he identifier may be
stored in the form of a barcode. Such a barcode may be read by the AP 30,
or the AP 30 may have a barcode scanner. Furthermore, the unique
identifier may be stored in an RFID tag and is capable of being read by the
AP 30” (¶ 0016).
Also, page 7 of the Specification states:
[0018] Once uploaded to or read by the AP 30 and/or the WED,
the data (e.g., the unique identifier, the predefined procedure
data) may be stored in a corresponding memory (step 130). For
example, a database of authorized unique identifiers may be
created and stored in the memory of the AP 30. Furthermore,
the data may be encrypted when transmitted between the WED
and the AP 30. The encryption system may be a conventional
system, such as a PGP system. (emphasis added)
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8. Each of amended claims 1, 23 and 32 states that “the data is
transferred directly between the device and the access point…” (emphasis
added).
9. None of the appealed claims requires that the physical contact of the
WED to the AP be direct.
10. Appellant’s written Specification never uses the term, “directly” in
conjunction with data transfer. The Specification only uses “direct” to
describe one type of physical contact between the WED and AP (e.g., ¶¶
0012-0013). As such, the Specification does not define what is meant by the
amended claim language, “transferring data directly.” The Specification
does not set forth any distinction between transferring data “directly” versus
“indirectly.”
11. Fascenda discloses WEDs and an AP that have data transferred
directly between them. For example, Figure 2 of Fascenda depicts wireless
electronic devices 210A-N and a wireless AP 220. RF signals are
transferred “directly” between the WEDs and the AP.
12. Fascenda depicts that the WEDs and the AP each include USB ports
for receiving physical keys 240A-N and 250, respectively (e.g., Fig, 2).

PRINCIPLES OF LAW
1. “Before considering the rejections…, we must first [determine the
scope of the] claims….” In re Geerdes, 491 F.2d 1260, 1262 (CCPA 1974).
2. “[The claims] are part of ‘a fully integrated written instrument,’ …
consisting principally of a specification that concludes with the claims. For
that reason, claims ‘must be read in view of the specification…. [T]he
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specification ‘is always highly relevant to the claim construction analysis.
Usually, it is dispositive; it is the single best guide to the meaning of a
disputed term.’” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir.
2005)(en banc) (internal cites omitted).
3. During examination, the claims must be interpreted as broadly as their
terms reasonably allow. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
4. While features of an apparatus may be recited either structurally or
functionally, claims directed to an apparatus must be distinguished from the
prior art in terms of structure rather than function. In re Schreiber, 128 F.3d
1473, 1477-78 (Fed. Cir. 1997) (The absence of a disclosure in a prior art
reference relating to function did not defeat the Board’s finding of
anticipation of claimed apparatus because the limitations at issue were found
to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d
210, 212-13 (CCPA 1971); In re Danly, 263 F.2d 844, 847 (CCPA 1959).
“[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990) (emphasis added).
5. Obviousness rejections can be based on references that happen to
anticipate the claimed subject matter. In re Meyer, 599 F.2d 1026, 1031,
(CCPA 1979).

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ANALYSIS
(i) Apparatus claims 1-5, 9, 10, 17, 18, 23-25 and 27:
“Before considering the rejections…, we must first [determine the
scope of the] claims….” In re Geerdes, 491 F.2d 1260, 1262 (CCPA 1974).
Independent claims 1 and 23 are representative of the apparatus claims
included within the first ground of rejection. Claim 1 is directed to an access
point (AP) alone; the wireless electronic device is only recited inferentially.
Claim 23 is narrower in that it is directed to a system that includes an AP
and also a wireless electronic device. Both of these apparatus claims
includes the language, “a memory storing an access scheme which defines
an authentication procedure…, the authentication procedure utilizing data as
defined by the access scheme,… wherein before the authentication
procedure, the data is transferred directly between the [WED and AP] via a
physical access between the access point and the device” (emphasis added).
We note initially, it is not reasonably clear what data is being
described by this claim language. Use of the antecedent-basis article “the”
for “the data is transferred directly...” indicates that “the data” is the same as
that data set forth earlier in the claim: “data as defined by the access
scheme” (emphasis added). But the access scheme defines the
authentication procedure (Spec. ¶ 0004), and the claims each state “the
data” is directly transferred before the authentication procedure. This seems
to indicate that the claim language is attempting to alternatively describe the
data or electronic signals associated with the physical contact scheme.
The meaning afforded the word “via” also affects the interpretation of
claims 1 and 23, specifically in the phrase, “via a physical access between
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the access point and the device.” The word “via” includes the following two
dictionary definitions: (1) by a route that touches or passes through; by way
of: to fly to Japan via the North Pole; (2) by the agency or instrumentality
of: a solution via an inquiry (http://www.dictionary.com).
We look to Appellant’s Specification to determine which meaning
was intended (Phillips v. AWH Corp., at 1315). Appellant’s Specification
discloses that “[t]he access point is situated in a location accessible to an
authorized user…” (Spec. ¶ 0004), and “[b]efore the authentication
procedure the data is transferred between the device and the access point via
a physical access to at least one of the access point and the electronic
device” (Spec. ¶ 0005, emphasis added).
In light of paragraph 0004 and other portions of the Specification
regarding how the authentication data may be transferred wirelessly (see
e.g., FF 5-7), we interpret paragraph 0005 of the Specification to mean “the
[authentication] data is transferred between the device and the access point
[by the instrumentality of an authorized user having] a physical access to at
least one of the access point and the electronic device.” We therefore
interpret the language of claims 1 and 23, “data is transferred directly …via
a physical access between the access point and the device,” to mean “data is
transferred [by the instrumentality of an authorized user having] physical
access between the access point and the device.”3 As such, the claims do not

3 This interpretation moots another claim construction issue that would be
raised by an alternative potential interpretation. If the claim language were
to be alternatively interpreted to mean that the AP and WEDs have physical
access to each other, claim 32 may be rendered indefinite under 35 U.S.C. §
112, 2nd paragraph. The word “access,” in turn, is defined to be the ability,
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require that the data be communicated through any electrical pathway
established by a physical contact.
Appellant does not allege Fascenda lacks any structural elements
recited in either of independent claims 1 and 23 as they have been
interpreted above. For example, Appellant does not dispute that Fascenda
discloses an AP possessing data of the kind required for a subsequent
authentication procedure. Appellant only argues the manner in which the
data was transmitted from the WED to the AP (FF 1-4).
However, it is well settled that “apparatus claims cover what a device
is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc.,
909 F.2d at 1468 (emphasis added). Accordingly, the last limitation of
apparatus claims 1 and 23 only requires, (1) that the AP possesses the
relevant data before the authentication procedure starts; and (2) that the AP
be constructed so as to be capable of having data “directly” transferred
before the authentication procedure. Whether Fascenda actually used, or
even envisioned, such a method of direct data transfer is immaterial to
answering whether Fascenda reads on the apparatus as claimed.

right, or permission to approach, enter, speak with, or use
(http://www.dictionary.com). So one of ordinary skill in the art could
reasonably understand what is meant by “a user having permission to
approach or use an access point.” It is not reasonably clear what would be
meant by “a wireless electronic device having permission to approach,
communicate with or use an access point.” What constitutes “permission”
would be unclear in the present context because the WED does not have the
ability or permission to communicate with the AP until after the
authentication procedure.

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Moreover, Fascenda does, in fact, disclose structures capable of
transferring data in the manner claimed. This is so irrespective of which
interpretation of “data,” discussed above, is applied to the claims.
If “the data” is interpreted to mean the data of the authentication
scheme, Fascenda actually discloses WEDs and an AP that have data
transferred directly between them. For example, Figure 2 of Fascenda
depicts wireless electronic devices 210A-N and a wireless AP 220 (FF 10-
11). After indirect physical contact is made with physical keys 240A-N,
250, RF signals are transferred “directly” between the WEDs and the AP.
Alternatively, if “the data” is interpreted to mean data transferred
prior to the authentication scheme, Fascenda still discloses all structural
elements required by the apparatus claims. Figure 2 of Fascenda also
depicts that the WEDs and the AP each include USB ports for receiving
physical keys 240A-N and 250, respectively (FF 12). These USB ports
make the WEDs capable of transmitting data through an electrical path that
could be established by a direct physical contact to the AP. For example, the
respective USB ports make the WEDs and AP capable of being in direct and
physical contact with each other by means of USB cables and/or hubs.
As such, Appellant’s arguments regarding the apparatus claims are not
persuasive. Accordingly, we sustain the Examiner’s obviousness rejection
of claims 1-5, 9, 10, 14-25, 27 and 29-31. See In re Meyer, 599 F.2d 1026,
1031 (CCPA 1979) (noting that obviousness rejections can be based on
references that happen to anticipate the claimed subject matter).

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(ii) Method claims 32-34 and 36:
Independent claim 32 is representative of the method claims included
within the first ground of rejection. “Before considering the rejections…,
we must first [determine the scope of the] claims….” In re Geerdes, 491
F.2d at 1262. Like claims 1 and 23, amended method claim 32 also recites,
“transferring data directly between a [WED and AP] via a physical access
between the access point and the device.” For the reasons set forth above,
we interpret this language of claim 32 to also mean “transferring data [by the
instrumentality of an authorized user having] physical access between the
access point and the device.”
Moreover, claim 32 recites “transferring data…” (c. 32, l. 2) and “the
authentication procedure utilizing the data as defined by the access
scheme…” (c. 32, l. 6, emphasis added). The recitation of “the data” in line
6 indicates that “transferring data” in line 2 is referencing the access scheme
(or authentication) data. Claim 32 does not include any limitations
regarding physical contact, nor require that the authentication data be
transmitted through an electrical pathway created by physically contacting
the WED to the AP.
As such, claim 32 currently reads on, in relevant part, transferring
authentication-procedure data by wireless communication by the
instrumentality of an authorized user having physical access between the AP
and a WED. Therefore, claim 32 is currently written broadly enough to read
on a wireless authentication method disclosed by Fascenda alone (FF 8-12).
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 1-5, 9, 10, 14-25, 27 and 29-31. See In re Meyer, 599 F.2d at 1031
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(noting that obviousness rejections can be based on references that happen to
anticipate the claimed subject matter).

(iii) Claims 14-16, 19-22, 29-31 and 38-40:
Claims 14-16, 19-22, 29-31, and 38-40 are included in the second
through fifth grounds of rejection. The reasons for sustaining the first
ground of rejection apply to these grounds of rejection as well. Moreover,
Appellant has not alleged nor separately argued any additional errors for
these claim groups (FF 4). Accordingly, the Examiner’s grounds of
rejections of these claims are sustained.

DECISION
We have sustained the Examiner's rejections with respect to all claims
on appeal. Therefore, the Examiner’s decision rejecting claims 1-5, 9, 10,
14-25, 27, 29-34, 36 and 38-40 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

KIS

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