International Business Machines Corporation

Patent Trials and Appeals Board

Aug 2, 2021

2020000445 (P.T.A.B. Aug. 2, 2021)

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.
14/818,495 08/05/2015 Baiju D. Mandalia END920150041US1 2607
104079 7590 08/02/2021
IBM CORPORATION - Patent Center
1701 North Street
B/256-3
Endicott, NY 13760
EXAMINER
SAADOUN, HASSAN
ART UNIT PAPER NUMBER
2435
NOTIFICATION DATE DELIVERY MODE
08/02/2021 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):
fdciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BAIJU D. MANDALIA and TUNG OUYANG
____________________

Appeal 2020-000445
Application 14/818,4951
Technology Center 2400
____________________

Before CARL W. WHITEHEAD JR., ERIC S. FRAHM, and
JOYCE CRAIG, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–13 and 15–21. Claim 14 has been cancelled (see Appeal Br. 22,

1 Throughout this Opinion, we refer to: (1) the Final Office Action mailed
November 5, 2018 (“Final Act.”); (2) the Advisory Action mailed January
29, 2019 (“Advisory Act.”); (3) the Pre-Appeal Brief filed February 5, 2019
(“Pre-Appeal Br.”); (4) the Appeal Brief filed June 3, 2019 (“Appeal Br.”);
(5) the Examiner’s Answer mailed August 2, 2019 (“Ans.”); and (6) the
Reply Brief filed October 1, 2019 (“Reply Br.”).

2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2019). “The word ‘applicant’ when used in this title refers
to the inventor or all of the joint inventors, or to the person applying for a
patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
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Claims Appendix). We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

DISCLOSED AND CLAIMED INVENTION
According to Appellant, the disclosed invention, entitled “Security
Control For An Enterprise Network” (Title), pertains to security control for a
computing device (see Fig. 1, 120) in an enterprise network (see Fig. 1, 130)
that connects to another device (see Fig. 1, 110) for administering security
over the network (see Spec. 1:1–2, 4:3–5:20). Independent claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for administering security for a network,
comprising the steps of:
detecting, by one or more processors of a device for
administering security for the network, that a computing
device has connected to a network in an area;
determining, by the one or more processors of the
device for administering security for the network, whether
the computing device is valid, wherein determining
whether the computing device is valid further comprises
comparing a MAC address associated with the computing
device with a database containing one or more MAC
addresses associated with one or more valid devices;
based on determining that the computing device is
valid, determining, by the one or more processors of the
device for administering security for the network, whether
the computing device is being utilized for one or more
suspicious activities;
based on determining that the computing device is
being utilized for one or more suspicious activities:

identifies the real party in interest as International Business Machines
Corporation (Appeal Br. 1).
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determining, by the one or more processors
of the device for administering security for the
network, a location of the computing device;
determining, by the one or more processors
of the device for administering security for the
network, whether [A1] a user of the computing
device can be identified by cameras for monitoring
the area based on visual recognition; and
based on determining that [A2] the user of the
computing device cannot be identified as authorized to be
present in the area, [B] disabling the computing device and
[C] transmitting an alert to security personnel.

Appeal Br. 19, Claims Appendix (bracketed lettering and emphases added).

EXAMINER’S REJECTIONS and APPELLANT’S CONTENTIONS
Examiner’s Rejections
The Examiner made the following rejections:
(1) Claims 1–3, 8–10, and 15–17 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Larue et al. (US 2014/0161027 A1;
published June 12, 2014) (hereinafter, “Larue”), and Anderson et al. (US
2010/0205667 A1; published August 12, 2010) (hereinafter, “Anderson”).
Final Act. 4–10.
(2) Claims 4, 11, and 18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Larue, Anderson, and Cherian et al. (US 2013/0231130
A1; published September 5, 2013) (hereinafter, “Cherian”). Final Act. 10–
11.
(3) Claims 5, 6, 12, 13, 19, and 20 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Larue, Anderson, and Grier (US
2014/0208427 A1; published July 24, 2014). Final Act. 11–14.
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(4) Claim 7 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Larue, Anderson, and Pecen et al. (US 9,497,688 B2;
issued Nov. 15, 2016) (hereinafter, “Pecen”). Final Act. 14.
(5) Claim 21 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Larue, Anderson, and Aonuma et al. (US 2011/0282662
A1; published Nov. 17, 2011) (hereinafter, “Aonuma”). Final Act. 15.
Appellant’s Contentions
Appellant presents arguments as to claim 1, and relies on those
arguments for the patentability of remaining claims 2–13 and 15–21 (see
Appeal Br. 13–16). With regard to claim 1, Appellant contends (see Appeal
Br. 9–13; Reply Br. 2–5), inter alia, the Examiner erred in reaching the
conclusion of obviousness because (i) Anderson generally fails to disclose or
suggest limitation A1, A2, B, and C of claim 1 (see Pre-Appeal Br. 8–11;
Appeal Br. 11–13); (ii) Anderson, in particular, fails to disclose or suggest
limitation “disabling the computing device” (claim 1, limitation B) of claim
1 (see Appeal Br. 12–13); and (iii) the Examiner incorrectly interprets the
term “user of the computing device” (claim 1, limitations A1, A2) of claim 1
(see Appeal Br. 11–12; Reply Br. 3–5).
Based on Appellant’s arguments, we (i) select claim 1 as
representative of claims 1–3, 8–11, and 15–17; and (ii) decide the outcome
of claims 4–7, 11–13, and 18–21 on the same basis as claim 1. See 37
C.F.R. § 41.37(c)(1)(iv).

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ISSUE
Based on Appellant’s arguments in the Pre-Appeal Brief (Pre-Appeal
Br. 8–11), Appeal Brief (Appeal Br. 9–13) and the Reply Brief (Reply Br.
2–5), the following principal issue is presented on appeal:
Has Appellant shown the Examiner erred in rejecting claims 1–13 and
15–21 under 35 U.S.C. § 103 because the collective teachings and
suggestions of Larue and Anderson, taken with the knowledge of a person
having ordinary skill in the art of security control for a computing device, do
not support the conclusion of obviousness as to the subject matter of claim
1?

ANALYSIS
We have reviewed the Examiner’s rejections (Final Act. 2–15; Ans.
3–17) in light of Appellant’s arguments (Pre-Appeal Br. 8–11; Appeal Br.
9–16; Reply Br. 2–5) that the Examiner has erred, as well as the Examiner’s
response to Appellant’s arguments in the Appeal Brief (Ans. 15–17). With
regard to representative claim 1, we agree with and adopt as our own the
Examiner’s findings of facts and conclusions as set forth in the Final
Rejection (Final Act. 4–7), Advisory Action (Advisory Act. 2), and Answer
(Ans. 3–6, 15–17). Based on the record before us, we agree with the
Examiner’s conclusion of obviousness as to claim 1. We provide the
following explanation for emphasis only.
Claim Interpretation: “Disabling the Computing Device,” “User of the
Computing Device,” and “Security Personnel”

Under the broadest reasonable interpretation standard, and absent any
special definition, claim terms are given their ordinary and customary
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meaning, as would be understood by a person of ordinary skill in the art in
the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d
1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must
be set forth with reasonable clarity, deliberateness, and precision. In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). “When the specification
explains and defines a term used in the claims, without ambiguity or
incompleteness, there is no need to search further for the meaning of the
term.” Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1478
(Fed. Cir. 1998); Bradium Technologies LLC v. Iancu, 923 F.3d 1032, (Fed.
Cir. 2019) (IPR at PTAB affirmed) (finding no unambiguous definition of a
claim term, Federal Circuit applies plain meaning to disputed PTAB
construction). Thus, a clear and unambiguous definition of a claim term is
required to redefine the term to mean something other than its plain and
ordinary meaning.
The Examiner, in the Final Office Action, determines that Anderson
teaches “disabling the computing device” in paragraphs 16 and 79, and in
Figures 8A and 8B (Final Act. 6). “The security processor is configured to
at least partially control the operation of the data input device and the data
output device . . .” (Final Act. 6 citing to Anderson ¶ 16) (emphasis added).
“[P]rivacy mode is activated according to the security policy of this
example, and the sensitive text (8120) and graphic data (8130) being
displayed are obscured” (Final Act. 6–7 citing to Anderson ¶ 79). The
limitation of “disabling the computing device” in claim 1 is not further
defined or explained in any other dependent claim except for claim 7. Claim
7 recites disabling of the computing device “by way of the network” (Appeal
Br. 20, Claims Appendix). Furthermore, no part of the originally filed
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Specification provides a clear and unambiguous definition of the claim term
“disable” or “disabling” to redefine the term to mean something other than
its plain and ordinary meaning (see Spec. ¶¶ 21–23) (describing the
disabling operation).
Based on the ordinary and customary meaning of the term “disable,”
we reasonably conclude that “privacy mode” and obscuring of data are
“disabling” of the computing device. Furthermore, Anderson’s teaching of
“control” in paragraph 16 is encompassed by claim 1’s “disabling” based on
the background knowledge of the artisan that control of computer devices
includes disabling part or all of the device. Paragraph 94 of Anderson also
teaches “disabling the computing device,” as recited in claim 1:
. . . to restrict . . . device access . . . is also used to selectively
disable particular devices . . . the configuration settings can
indicate that web camera inputs be blocked, or that other data, . .
. be substituted for actual camera input data. . . . For example, a
DVD player application can be made to pause playback when the
user looks away from the display device, or a video recorder
application can be paused when the user is not facing the camera.
Other actions can be taken . . . microphone inputs can be muted
as well.

Anderson ¶ 94 (emphases added). Therefore, in this light, Appellant’s
contention that, in Anderson, “there is no mention of locking down the user
from the system based on the facial recognition data in paragraph [0016]”
(Appeal Br. 11), is not persuasive of Examiner error inasmuch as claim 1
does not require “locking down” a user, just disabling the computing device
or part of the computing device. Therefore, Anderson’s descriptions of (1)
controlling the computing device (Anderson ¶ 16), and (2) disabling the
device or parts thereof (Anderson ¶ 94), teach or suggest the disabling set
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forth in limitation B of claim 1, especially to the extent “disabling” is
described in Appellant’s Specification.
Given the above discussion, the Examiner reasonably determines that
Anderson disables a computing device by controlling applications and
elements of the computing device as set forth in claim 1. Appellant’s
contention that Anderson fails to “disable the computing device” (Appeal
Br. 13) are unpersuasive of Examiner error in view of the teachings of
Anderson discussed above in this regard (see Anderson ¶¶ 16, 94).
Furthermore, we disagree with Appellant’s argument that “[w]hen the
[Anderson] reference is read as a whole, the meaning to the cited portion
[paragraph 79] of the reference is clear; the system looks for people
eavesdropping, and notifies the user of the system that someone is
eavesdropping” (Appeal Br. 13). Appellant ignores the further teachings of
Anderson in (1) paragraph 79 that a “privacy mode is activated according to
the security policy of this example, and the sensitive text (8120) and graphic
data (8130) being displayed are obscured,” and (2) paragraph 94 that the
computing device or components of the device are disabled (see Anderson
¶¶ 79, 94).
Appellant contends, in the Reply Brief, that “[t]he Examiner’s
argument, in essence, is that the additional face-like object, or facial
recognition data [taught by Anderson], is a ‘user of the computing device’”
(Reply Br. 3). Appellant further argues:
User is defined as “a person who uses or operates something” or
“one that uses.” Use is defined as . . . “to put into action or
service : avail oneself of : employ.” . . . Based on the above, the
broadest reasonable interpretation in this instance is the standard
dictionary definition. . . .
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. . . In both provided definitions, the term use requires
something (a person or agent) to actively interact with an object
to make use of said object.

Reply Br. 3–4. We disagree with Appellant’s assertion that Anderson does
not teach the limitation “user of the computing device” as recited in claim 1.
As recognized by Appellant, a user is one that puts into action or service or
avails oneself of the computing device (see Reply Br. 3–4). As indicated in
the Examiner’s Answer, Anderson in paragraph 79 teaches “the additional
face-like object has an attention point on the display (8110) (i.e., is facing
the display, is close enough to see the display, and optionally has it’s gaze
direction pointed at the display)” (Ans. 15–16) and, thus, the user is availing
themselves of the computing device display.
Furthermore, Appellant’s argument that “Anderson makes no
determination that the unrecognized object, discussed in paragraph [0079], is
actually using the computing device (or even that the unrecognized object is
a person)” (Appeal Br. 12) is unpersuasive of Examiner error, because the
Examiner relies upon Larue (see Final Act. 5 citing Larue ¶ 31) as teaching
detecting if a rogue computing device (e.g., a wireless access point) is
“active” (see Larue ¶ 31). As such, Appellant’s argument addressing the
individual shortcomings of Anderson, is conclusory, and do not address the
collective teachings and suggestions of the references.3 Therefore,

3 We note that each reference cited by the Examiner must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(finding one cannot show non-obviousness by attacking references
individually where the rejections are based on combinations of references).
We emphasize that the Examiner’s ultimate legal conclusion of obviousness
is based upon the combined teachings of the cited references. Moreover,
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Appellant has not shown that the Examiner erred in rejecting claim 1 over
the base combination of Larue and Anderson.
Appellant’s argument that “when read as a whole, Anderson cannot
disclose ‘disabl[ing] the computing device’ based on identification of the
user of the computing device” (Appeal Br. 12), is not persuasive inasmuch
as these arguments are not commensurate in scope with the language of
claim 1. See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998)
(“[The] proffered facts . . . are not commensurate with the claim scope and
are therefore unpersuasive.”). Appellant’s arguments are not persuasive of
Examiner error because they are not responsive to the Examiner’s rejection
and are not commensurate in scope to the language of claim 1 (which only
requires “based on determining that the user of the computing device cannot
be identified . . . , disabling the computing device” (Appeal Br. 19, Claims
Appendix)). See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations
not appearing in the claims cannot be relied upon for patentability).
Appellant contends in their Pre-Appeal Brief that “Larue in
combination with Anderson does not disclose or suggest at least ‘. . . based
on determining that the user of the computing device cannot be identified as
authorized to be present in the area, program instructions to . . . transmit an
alert to security personnel’” (Pre-Appeal Br. 8, emphasis added). The
Examiner in the Final Office Action and Examiner’s Answer make the

“‘the question under 35 USC 103 is not merely what the references
expressly teach but what they would have suggested to one of ordinary skill
in the art at the time the invention was made.’” Merck & Co. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545
F.2d 747, 750 (CCPA 1976)) (emphasis added); see also MPEP § 2123.

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following finding with regard to the limitation of “transmit an alert to
security personnel” by citing to Anderson’s Figures 8A and 8B and
paragraph 79:
The current user is also alerted to the presence of the
unauthorized individual by a pop-up video window (8140)
that shows the video input device feed with the unauthorized
face-like object (8150) indicated by a contrasting color box
(8160) placed around it (transmitting an alert) EN: the
generated alert can be transmitt[ed] to a security employee).

(Final Act. 7; Ans. 6) (underlining and bolding added). Based on the above
teachings of Anderson, we agree with the Examiner’s finding that the user
(8020) receiving an alert by a pop-up window teaches the limitation of claim
1 “transmitting an alert to security personnel” in which the user (8020) is the
security personnel.
In view of the foregoing, we sustain the rejection of representative
claim 1 as being obvious over the combination of Larue and Anderson.

CONCLUSION
For the foregoing reasons, Appellant has not demonstrated any error
in the rejections of (i) representative claim 1, and claims 2, 3, 8–10, and 15–
17 grouped therewith, over the base combination of Larue and Anderson;
and/or (ii) claims 4–7, 11–13, and 18–21 over the same base combination
taken with various other references. See Appeal Br. 9 (“For convenience of
the Honorable Board in addressing the rejections, claims 8 and 15 stand or
fall together with independent claim 1.”). Accordingly, all of the
obviousness rejections over the base combination of Larue and Anderson are
sustained.
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In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–3, 8–10,
15–17
103 Larue, Anderson 1–3, 8–10,
15–17

4, 11, 18 103 Larue, Anderson,
Cherian
4, 11, 18
5, 6, 12,
13, 19, 20
103 Larue, Anderson,
Grier
5, 6, 12, 13,
19, 20

7 103 Larue, Anderson,
Pecen
7
21 103 Larue, Anderson,
Aonuma
21
Overall
Outcome
1–13, 15–21

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). See 37 C.F.R.
§§ 41.50(f), 41.52(b).

AFFIRMED