LISNR, Inc.

Patent Trials and Appeals Board

Jan 11, 2022

2021000687 (P.T.A.B. Jan. 11, 2022)

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. 15/864,797 01/08/2018 William Knauer LISNR 10US 4204 26875 7590 01/11/2022 WOOD, HERRON & EVANS, LLP 2700 CAREW TOWER 441 VINE STREET CINCINNATI, OH 45202 EXAMINER WON, MICHAEL YOUNG ART UNIT PAPER NUMBER 2449 NOTIFICATION DATE DELIVERY MODE 01/11/2022 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): usptodock@whe-law.com wjacobs@whe-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte WILLIAM KNAUER, IAN ANDREW BIRNAM, AUSTIN ANDREW TEAMES, JOSHUA MATTHEW GLICK, and RODNEY B. WILLIAMS ____________________ Appeal 2021-000687 Application 15/864,797 Technology Center 2400 ____________________ Before JAMES R. HUGHES, ERIC S. FRAHM, and BETH Z. SHAW, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2021-000687 Application 15/864,797 2 STATEMENT OF THE CASE Appellant1 has filed a Request for Rehearing under 37 C.F.R. § 41.52 on December 22, 2021 (hereinafter, “Request”), from our Decision on Appeal mailed October 22, 2021 (hereinafter, “Decision”), wherein we affirmed the Examiner’s rejection of claims 1-18, 20-24, and 26 (all of the pending claims) under 35 U.S.C. § 103 over the combination of Paulson and Gupta (see Decision 1, 2, 10). We grant the Rehearing Request to the extent that we consider the Appellant’s arguments, but DENY the request to modify our Decision, because Appellant has neither shown any error of reasoning, or facts overlooked or misapprehended, in the Decision’s affirmance of representative claim 1 (see Decision 4 (selecting claim 1 as representative of claims 1-18, 20-24, and 26 rejected over the combination of Paulson and Gupta)). We maintain the affirmance of the obviousness rejection of claims 1-18, 20-24, and 26 for the reasons stated below. STANDARD OF REVIEW A request for rehearing “must state with particularity the points believed to have been misapprehended or overlooked by the Board” and “must specifically recite ‘the points of law or fact which appellant feels were overlooked or misapprehended by the Board.’” Ex Parte Quist, 95 USPQ2d 1 Appellant refers to “applicant” as defined in 37 C.F.R. §1.42(a). (“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.”). Appellant refers to “applicant” as defined in 37 C.F.R. §1.42(a). Appellant identifies LISNR, Inc. as the real party in interest. Appeal Brief 2. Appeal 2021-000687 Application 15/864,797 3 1140, 1141 (BPAI 2010) (precedential) (quoting Manual of Patent Examining Procedure (MPEP) § 1214.03); see also 37 C.F.R. § 41.52(a)(1). A request for rehearing is limited to matters overlooked or misapprehended by the Panel in rendering the original decision. See 37 C.F.R. § 41.52; see also Quist, 95 USPQ2d at 1141 (quoting MPEP § 1214.03), and may not rehash arguments originally made in the Briefs, nor is it an opportunity to merely express disagreement with a decision. The proper course for an Appellant dissatisfied with a Board’s decision is to seek judicial review, not to file a request for rehearing to reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145. An argument presented for the first time in a Request but not advanced in the Appeal Brief or appropriately furnished in a Reply Brief (when one has been submitted) is not properly before the Board, at least in part, because the Examiner is not afforded a timely opportunity to respond and the Board is deprived of any such response that may have been supplied by the Examiner to the belatedly presented new argument. See In re Kroekel, 803 F.2d 705, 709 (Fed. Cir. 1986). “A party cannot wait until after the Board has rendered an adverse decision and then present new arguments in a request for reconsideration.” Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed. Cir. 1998) (citing Moller v. Harding, 214 USPQ 730, 731 (Bd. Pat. Int. 1982)). “Arguments not raised [in the briefs before the Board] . . . are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section.” 37 C.F.R. § 41.52(a)(1). Appeal 2021-000687 Application 15/864,797 4 ANALYSIS In the instant case, Appellant has not specifically pointed out any points overlooked or misapprehended by the Board in its Decision, other than to argue that a link key (as taught by Paulson), is not the same as the “password, shared key or PIN” (hereafter the “shared key”) (Request 1), such as recited in claim 1. We agree with Appellant’s thorough descriptions of a link key as it applies to Bluetooth technology (Oral Hearing Transcript 10:22-11:20; Request 1-3). A link key is not the same as a shared key or PIN. As Appellant’s representative stated at Oral Hearing, “in order to get the link to work and actually authenticate all of [ ] that, you then have to supply the PIN; okay? So when [Paulson] says the link key [is] transmitted in addition to the wireless identifier it’s still not talking about the PIN” (Oral Hearing Transcript 10:8-12). In addition, Appellant’s representative further stated at Oral Hearing that “[i]f what the [E]xaminer was doing here is trying to analogize a Bluetooth link key to a shared key well it just isn’t, because it’s not shared” (Oral Hearing Transcript 11:14-16). Again, we agree on all counts. Where we disagree with Appellant is on the issue of whether a password, shared key or PIN are equivalent to an authentication key (taught by Paulson), which is used to authenticate connecting devices in a Wi-Fi setup (as disclosed by Appellant (see Spec. ¶ 41; see also Decision 3, and Gupta (see Gupta Abstract; ¶¶ 3, 6, 30, 34, 37, 48))). Notably, Appellant recognizes that devices may be “authenticated to each other using a ‘shared key’ (typically a PIN)” (Request 2), and points out that a shared key and PIN are equivalent (see Request 2). Appeal 2021-000687 Application 15/864,797 5 In the Examiner’s Answer, the Examiner relied on new findings with regard to Paulson, as discussed during the Oral Hearing (see Oral Hearing Transcript 9:11-16). Specifically, the Examiner relied on an embodiment of Paulson for additional support, which was different from that originally relied upon, namely Paulson’s Figures 9 and 12 (see col. 22, l. 18-col. 30, l. 19 (describing Figures 9 and 12) and portions of Paulson’s columns 22, 23, 27, and 28, all of which concern the additional broadcast of an authentication key, in addition to a link key. Specifically, this was pointed out in our Decision on page 6: Paulson (i) suggests sending “other predetermined parameters” along with the wireless identifier (see col. 23, ll. 7-8); (ii) discloses transmitting “a wireless identifier and the authentication key in a[n] sonic Bluetooth code over the sonic carrier signal” (col. 24, ll. 39-41); (iii) discloses “incorporate[ing] the authentication key as part of the sonic Bluetooth code transmitted . . . over the sonic carrier signal” (col. 27, ll. 61-63); and (iv) discloses that “an alternate implementation of the present invention may include the wireless identifier and authentication key in the sonic Bluetooth code transmitted” (col. 28, ll. 36-39) in the sonic carrier signal 1212 (see col. 28, l. 43). Decision 6, fn. 3 (emphases added). Although Appellant’s representative contended at Oral Hearing that a link key is the same as an authentication key (see Oral Hearing Transcript 10:13-17), we determined in our Decision that this contention was not persuasive, not supported by record evidence, and in fact was contradicted by record evidence, such as Paulson (see Decision 8-9). Even Appellant recognizes that a shared key or PIN is used to authenticate a connecting device (see Oral Hearing Transcript 10:8-12; Request 2). The plain and ordinary meaning of the term authentication key (in Paulson) encompasses Appeal 2021-000687 Application 15/864,797 6 any key that serves to authenticate. It is the Board’s (and the Office’s) practice to interpret references using the ordinary meaning of terminology. Indeed, as we have explained, the “ordinary meaning of a claim term is not ‘the meaning of the term in the abstract.’ . . . Instead, ‘the “ordinary meaning”’ of a claim term is its meaning to the ordinary artisan after reading the entire patent.’” Eon Corp. IP Holdings LLC v. Silver Spring Networks, Inc., 815 F.3d 1314, 1320 (Fed. Cir. 2016) (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (en banc)); see also Trustee of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016) (“The only meaning that matters in claim construction is the meaning in the context of the patent.”). This precedent is instructive here. In the instant case, because (i) Paulson’s authentication key serves to authenticate; and (ii) one of ordinary skill in the art would understand that a shared key, or PIN serve to authenticate, as supported by Appellant’s recognition that a shared key or PIN is used to authenticate a connecting device (see Oral Hearing Transcript 10:8-12; Request 2), the “password, shared key or PIN” recited in claim 1 on appeal encompasses Paulson’s authentication key. Thus, Paulson’s authentication key at least would have suggested to one of ordinary skill in the art the shared key or PIN recited in claim 1. As a result, Appellant has not sufficiently shown that Paulson’s authentication key does not teach or suggest the recited password, shared key, or PIN. Therefore, we did not overlook or misapprehend the difference between a link key (disclosed by Paulson) and a shared key (taught by Paulson’s authentication key and recited in Appellant’s claim 1) or PIN (taught by Gupta and recited in Appellant’s claim 1). As a result, Appellant’s Request for Rehearing has not shown that the Board’s Decision Appeal 2021-000687 Application 15/864,797 7 overlooked or misapprehended any points of law or fact, and Appellant’s Request is denied. In the interest of compact prosecution, however, we will add the following. Appellant, in the Request for Rehearing, misstates the issue at hand: “The issue at hand is whether any of the prior art cited shows the sonic delivery of credentials of both categories (both ‘Network ID’ and ‘shared key’) to a device” (Request 1). As already discussed, Paulson teaches and suggests sending two credentials sonically. Rather, the issue, as we stated in our Decision, is: Has Appellant shown that the Examiner erred in rejecting claims 1-18, 20-24, and 26 as being unpatentable under § 103 over the combination of Paulson and Gupta, because the resultant combination fails to teach or suggest broadcasting a sonic tone, used for connecting to a wireless network, including both (1) a network identifier, SSID, or MAC, and (2) a password, shared key, or PIN, as recited in representative claim 1? Decision 5 (emphasis added). Paulson discloses transmitting a network ID, wireless identifier, or MAC (see Paulson Abstract; col. 23, l. 49; col. 25, ll. 10-12) and “other predetermined parameters” (Paulson col. 23, ll. 6-8), such as a link key and/or an authentication key (see Paulson Figs. 9-13), in a sonic signal to a device (see Paulson col. 5, ll. 3-6; col. 6, ll. 16-22; col. 12, l. 66-col. 13, l. 2; col. 30, ll. 12-19). Thus, Paulson teaches sonically sending a network ID along with at least one other piece of information in one sonic signal (see e.g., Paulson col. 24, ll. 38-42; col. 30, ll. 12-19). More specifically, Paulson teaches the “other predetermined parameters” (see Paulson col. 23, l. 7-8) can be an authentication key used for authenticating the connection of the device (see generally Fig. 12, steps 1210, 1214, 1212; col. 24, ll. 39-41 (transmitting “[a] wireless identifier and Appeal 2021-000687 Application 15/864,797 8 the authentication key in an sonic Bluetooth code over the sonic carrier signal”); col. 27, ll. 61-63 (“incorporate[ing] the authentication key as part of the sonic Bluetooth code transmitted . . . over the sonic carrier signal”); col. 28, ll. 36-43 (“an alternate implementation of the present invention may include the wireless identifier and authentication key in the sonic Bluetooth code transmitted” in the sonic carrier signal 1212). Gupta, though not needed in combination with Paulson to teach or suggest all of the claimed features of claim 1, also teaches authenticating a connection using a pairing code or PIN (see Gupta ¶¶ 6, 34, 37), or shared key or network key (see Gupta ¶¶ 6, 30), along with a network ID such as a network name or “service set identifier (SSID)” (Gupta ¶ 30) or “device identification” (see Gupta ¶ 34). And, as noted in our Decision, “Appellant does not dispute that Gupta teaches creating a wireless connection a wireless identifier SSID and PIN” (Decision 9, fn. 6). Accordingly, Appellant has not sufficiently shown, on this record, that the combination of Paulson and Gupta (or Paulson alone) fails to teach or suggest broadcasting a sonic tone, used for connecting to a wireless network, including both (1) a network identifier, SSID, or MAC, and (2) a password, shared key, or PIN. Although we have considered the arguments raised by Appellant in the Request for Rehearing, Appellant has not identified that the Board has misapplied the relevant law or misapprehended Appellant’s arguments. Accordingly, Appellant’s request for rehearing has been granted to the extent that our decision has been reconsidered, but such request is denied with respect to making any modifications to the decision. Appeal 2021-000687 Application 15/864,797 9 DECISION In view of the foregoing discussion, we deny Appellants’ Request for Rehearing. 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)(v). CONCLUSION Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 1-18, 20-24, 26 103 Paulson, Gupta 1-18, 20-24, 26 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-18, 20-24, 26 103 Paulson, Gupta 1-18, 20-24, 26 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). REQUEST FOR REHEARING DENIED