Ex Parte Wright et al

Patent Trial and Appeal Board

May 24, 2016

12639192 (P.T.A.B. May. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/639, 192 12/16/2009 Timothy J. Wright
124181 7590 05/26/2016
GOOGLE!fechnology Holdings LLC
Lerner, David, Littenberg, Krumholz & Mentlik, LLP
600 South Avenue West
Westfield, NJ 07090
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.
GOOGLE 3.0-1617 6430
EXAMINER
WONG, XAVIER S
ART UNIT PAPER NUMBER
2413
NOTIFICATION DATE DELIVERY MODE
05/26/2016 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):
eOfficeAction@ldlkm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY J. WRIGHT, DEAN H. VOGLER, and JOEL D. VOSS
Appeal2014-001941
Application 12/639,192
Technology Center 2400
Before CAROLYN D. THOMAS, BETH Z. SHAW, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1, 3-5, 7-10, 12, 14, 15 and 17-20,
which are all the claims pending in this application. Claims 2, 6, 11, 13, and
16 are canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention is for managing data communication between a
communication device and another device in a communication network. See
Spec. 1 :7-9.
Appeal2014-001941
Application 12/639, 192
Claims 1 and 3 are representative and are reproduced below:
1. A method for managing data communication
between a communication device and another device in a
communication network, comprising:
providing data for transmission by the communication
device;
controlling by at least one secure management element
operating in a secure environment
in the communication device, separate from a main
operation of the communication device, the transmission of the
provided data by the communication device so as to manage
data transmitted by the communication device, and so that data
and program elements running in the secure environment
cannot be accessed by the main operation of the communication
device including a main operating system of the communication
device, wherein controlling includes controlling an amount of
data transmitted, controlling a time of transmission of data or
controlling a periodicity for transmission of data; thereby
preventing by the at least one secure management element
further transmissions of data controlled by the at least one
secure management element when the data transmitted by the
communication device reaches a limit.
3. A method for managing data communication
between a communication device and another device in a
communication network, comprising:
providing data for transmission by the communication
device;
controlling by at least one secure management element
operating in a secure environment in the communication device,
separate from a main operation of the communication device,
the transmission of the provided data by the communication
device so as to manage data transmitted by the communication
device, wherein the at least one secure management element
includes a secure code element operating in the secure
environment and wherein controlling comprises:
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Appeal2014-001941
Application 12/639, 192
providing to the secure code element in the secure
environment a secure code;
and wherein the method further comprises in the
communication device, operating on the provided data using the
secure code to provide modified data representing valid data to
another device; and
transmitting by the communication device modified data
to the another device so as to manage data transmissions by the
communication device using the secure code.
REJECTIONS
The Examiner rejected claims 1, 7, 8, 12, 17, and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Vialen (US 2008/0013729 Al,
published Jan. 17, 2008), Wicklund (US 5,014,260 Al, issued May 7, 1991),
and Ben-Zur (2003/0007643 Al, published Jan. 9, 2003). Final Act. 2-5.
The Examiner rejected claims 3-5, 10, 14, and 15 under 35 U.S.C.
§ 103(a) as being unpatentable over Vialen, Ben-Zur, and Rager (US
2007 /0050622 A 1, published Mar. 1, 2007). Final Act. 5-7.
The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as being
unpatentable over Vialen, Wicklund, Ben-Zur, and Goto (US 2010/0332828
Al, published Dec. 30, 2010). Final Act. 7.
The Examiner rejected claims 19 and 20 under 35 U.S.C. § 103(a) as
being unpatentable over Vialen, Wicklund, Ben-Zur, and Barron (US
2008/0148400 Al, published June 19, 2008). Final Act. 8.
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Appeal2014-001941
Application 12/639, 192
ISSUES
The dispositive issues presented by Appellants' contentions are as
follows:
1 . Did the Examiner err in finding one skilled in the art would
have recognized the combination of Vialen, Wicklund, and
Ben-Zur teaches or suggests the disputed limitation of
"controlling by at least one secure management element
operating in a secure environment in the communication device,
separate from a main operation of the communication device,
the transmission of the provided data by the communication
device so as to manage data transmitted by the communication
device," as recited in claim 1?
2. Did the Examiner err in finding one skilled in the art would
have recognized the combination of Vialen, Rager, and Ben-Zur
teaches or suggests "operating on the provided data using the
secure code to provide modified data representing valid data,"
as recited in claim 3?
ANALYSIS
We conclude the Examiner did not err in finding one skilled in the art
would have recognized the combination of references teaches or suggests the
disputed limitations of claims 1, 3-5, 7-10, 12, 14, 15 and 17-20. We refer
to, rely on, and adopt the Examiner's findings and conclusions set forth in
the Final Rejection (Final Act. 2-8) and Answer (Ans. 3-7). Our
discussions here will be limited to the following points of emphasis.
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Appeal2014-001941
Application 12/639, 192
Claim 1
Appellants argue "the teaching highlighted from Ben-Zur et al., '643,
concerns itself with an environment for decrypting working keys, which is
not the same as an environment separate from the main operation of the
communication device for managing the data being transmitted by the
communication device." App. Br. 7. We are not persuaded by this
argument. We agree with the Examiner's finding that Vialen teaches
transmitting ciphered data. Ans. 3--4 (citing Vialen i-f 33). We also agree
with the Examiner's finding that Ben-Zur teaches a secure environment (i.e.,
a decoder) separate from a main operation of the communication device. Id.
at 4 (citing Ben-Zur i-fi-187, 85, 27, Fig. 3).
Appellants also argue that Ben-Zur is "described for use with a
contextually different type of functionality." App. Br. 8. Appellants argue
that Ben-Zur does not teach the transmission of data in a secure
environment. Reply Br. 3 (emphasis in original). We are not persuaded by
these arguments because the Examiner relies on Vialen, and not Ben-Zur
alone, as teaching transmission of data in a secure environment. The
Examiner rejects claim 1 over the combined teachings of Vialen, Wicklund,
and Ben-Zur, and what the combined teachings would have suggested to one
of ordinary skill in the art. One cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). Accordingly, we sustain the Examiner's rejection of claim 1.
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Appeal2014-001941
Application 12/639, 192
Claims 3-5, 10, 14, and 15
We are not persuaded by Appellants' argument that Rager's secure
environment is for "one time receipt of information to be stored within the
device," which is not the same as using the secure environment as a place to
manage the data to be transmitted by the device. App. Br. 9; Reply Br. 4.
As discussed above with respect to claim 1, the Examiner relied on Vialen to
teach transmitting ciphered data. Final Act. 3---6; Ans. 4. The Examiner
rejects claim 3 over the combined teachings of Vialen, Rager, and Ben-Zur,
and what the combined teachings would have suggested to one of ordinary
skill in the art. Appellants cannot show nonobviousness by attacking Rager
individually where the rejection is based on a combination of references.
Accordingly, we sustain the Examiner's rejection of claim 3, and of
claims 4, 5, 10, 14, and 15, which were argued together with claim 3.
Remaining Pending Claims
Because Appellants have not presented separate patentability
arguments or have reiterated substantially the same patentability arguments
as those previously discussed for the above claims, we also sustain the
rejections of the remaining pending claims. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
Weaffirmtherejectionsofclaims 1,3-5, 7-10, 12, 14, 15and 17-20.
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).
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Appeal2014-001941
Application 12/639, 192
AFFIRMED
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