Mao, Yinian et al.

Patent Trials and Appeals Board

Mar 5, 2020

12730124 - (D) (P.T.A.B. Mar. 5, 2020)

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.
12/730,124 03/23/2010 Yinian Mao 091584 8510
112246 7590 03/05/2020
Loza & Loza, LLP/Qualcomm
305 N. Second Ave., #127
Upland, CA 91786
EXAMINER
LANIER, BENJAMIN E
ART UNIT PAPER NUMBER
2437
NOTIFICATION DATE DELIVERY MODE
03/05/2020 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):
ocpat_uspto@qualcomm.com
qualcomm-pto@lozaip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte YINIAN MAO, SAUMITRA M. DAS,
RANJITH S. JAYARAM, and VIDYA NARAYANAN
________________

Appeal 2019-000916
Application 12/730,124
Technology Center 2400
________________

Before JOHNNY A. KUMAR, JOHN P. PINKERTON, and
JAMES W. DEJMEK, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Introduction
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 1–6, 8–15, 17–24, 26–33, 35, and 36. Appellant has canceled
claims 7, 16, 25, 34, and 37–53. Appeal Br. 21–25. We have jurisdiction
over the remaining pending claims under 35 U.S.C. § 6(b).
We reverse.

Exemplary Claim

Exemplary claim 1 under appeal reads as follows (emphases added):

1. A method for user identity authentication of a peer device joining a
peer-to-peer overlay network, comprising:

receiving, by a credential server of the overlay network, a
registered user identity from a joining peer device, wherein the
registered user identity from the joining peer device is a
globally unique identifier;
connecting, by the credential server, to a third party identity
provider for verification of the registered user identity; and
upon receiving, at the credential server, successful verification
of the registered user identity from the third party identity provider,
the credential server issuing to the joining peer device a signed
certificate for use by an authenticated peer device in the overlay
network to authenticate the registered user identity of the joining peer
device, wherein:
the signed certificate is signed by a private key of the credential
server; and
the signed certificate comprises the verified registered user
identity, a node identity, and a public key of the joining peer device.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2017). According to Appellant, QUALCOMM
Incorporated is the real party in interest. Appeal Br. 2.
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REJECTIONS
Claims 1–6, 8–15, 17–24, 26–33, 35, and 36 are rejected on the
grounds of res judicata based on a prior adjudication against the inventor on
patentably non-distinct claims involving the same issues. Final Act. 5–7.
Claims 1–3, 5, 6, 8–12, 14, 15, 17–21, 23, 24, 26–30, 32, 33, 35, and
36 are rejected under 35 U.S.C. § 103(a) as being unpatentable over
Narayanan et al. (US 2008/0072037 A1; Mar. 20, 2008) (“Narayanan”);
Allen et al. (US 2009/0103702 A1; Apr. 23, 2009) (“Allen”); Andy Powell
and David Recordon, OpenID: Decentralised Single Sign-on/or the Web,
Ariadne, Issue 51 (April 2007) (“Powell”); and Sonderegger et al. (US
7,640,187 B1; Dec. 29, 2009) (“Sonderegger”). Final Act. 7–10.
Claims 4, 13, 22, and 31 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Narayanan, Allen, Powell, Sonderegger, and Zhang
et al. (US 2010/0031025 A1; Feb. 4, 2010) (“Zhang”). Final Act. 10–11.

ANALYSIS
We have only considered those arguments that Appellant actually
raised in the Briefs. 2 Arguments Appellant could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv).

2 Claims 2, 3, 5, 6, 8–15, 17–24, 26–33, 35, and 36 are not argued separately
from claim 1 in either of Appellant’s briefs (Appeal Br. 10–18; Reply Br. 2–
6), and will not be separately addressed.
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A. Procedural History
This is the second time the claimed invention is before us.3 In Ex
parte Mao et al., Appeal No. 2015-004826, slip op. (PTAB June 28, 2017),4
we affirmed the Examiner’s rejections of then-pending claims 1–36. Mao I
Decision 6. In particular, we affirmed the Examiner’s rejection under pre-
AIA 35 U.S.C. § 103(a) of then-pending (i) claims 1–3, 6, 8, 10–12, 15, 17,
19–21, 24, 26, 28–30, 33, and 35 over Narayanan, Allen, and Powell;
(ii) claims 4, 5, 13, 14, 22, 23, 31, and 32 over Narayanan, Allen, Powell,
and Zhang; and (iii) claims 7, 9, 16, 18, 25, 27, 34, and 36 over Narayanan,
Allen, Powell, and Sonderegger. See Mao I Decision.
In the prior appeal (Mao I), Appellant provided arguments with
respect to claim 1, challenging the Examiner’s findings with respect to
Narayanan, Powell and Allen. See Mao I Decision 3–4 (citing Appeal
Br. 10–13, filed November 18, 2014, “Mao I Appeal Br.”). Appellant also
presented untimely arguments with respect to claims 3, 9, 12, 18, 21, 27, 30,

3 Appellant did not identify any related proceedings, including the earlier
appeal, Appeal No. 2015-004826. Appellant and Appellant’s counsel are
reminded of the obligation to comply with the requirements of 37 C.F.R.
§ 41.37(c)(ii), which requires, inter alia, “[a] statement identifying by
application, patent, appeal, interference, or trial number all other prior and
pending appeals, interferences, trials before the Board, or judicial
proceedings (collectively, ‘related cases’) which satisfy all of the following
conditions: involve an application or patent owned by the appellant or
assignee, are known to appellant, the appellant’s legal representative, or
assignee, and may be related to, directly affect or be directly affected by or
have a bearing on the Board’s decision in the pending appeal.” (emphases
added).
4 We hereinafter refer to the prior appeal as “Mao I,” and our decision in that
prior appeal as “Mao I Decision.”
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and 36, which, absent a showing of good cause, were deemed waived. See
Mao I Decision 5.
Reproduced below are then-pending claims 1, 4, 5, and 7 from Mao I:
1. A method for user identity authentication of a peer device joining a
peer-to-peer overlay network, comprising:
receiving, by a credential server of the overlay network, a
registered user identity from a joining peer device;
connecting, by the credential server, to a third party identity
provider for verification of the registered user identity; and
upon receiving, at the credential server, successful verification of
the registered user identity from the third party identity provider, the
credential server issuing to the joining peer device a signed
certificate for use by an authenticated peer device in the overlay
network to authenticate the registered user identity of the joining
peer device, wherein the signed certificate is signed by a private key
of the credential server.

4. A method for user identity authentication as defined in claim 1,
wherein the signed certificate comprises the verified registered
user identity, a public key of the joining peer device, and a public key
of the credential server.
5. A method for user identity authentication as defined in claim 4,
wherein the signed certificate further comprises a node identity
assigned by the credential server for network operations.
7. A method for user identity authentication as defined in claim 1,
wherein the registered user identity of the joining peer device is
a globally unique identifier.
(Emphases added.)
Appellant subsequently filed a Request for Continued Examination,
and Appellant amended claim 1 to include the emphasized portions of then-
pending claims 4, 5, and 7. Compare then-pending claims 1, 4, 5, and 7,
with now-pending claim 1.
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B. Res Judicata
The Examiner rejects claims 1–6, 8–15, 17–24, 26–33, 35, and 36 on
the grounds of res judicata, explaining that then-pending claims 1–36 were
affirmed on appeal to the Board and that the now-pending claims are
patentably non-distinct from those in the earlier appeal. Final Act. 5–7.
More specifically, the Examiner notes that now-pending claim 1 recites
verbatim claim language from then-pending claims 1, 4, 5, and 7. Final
Act. 5–7.
Appellant disputes that res judicata is applicable because the scope of
now-pending claim 1 is narrower than what had been previously adjudicated.
Appeal Br. 10–13. We agree.
“[R]es judicata rejections should be applied only when the earlier
decision was a decision of the Patent Trial and Appeal Board (or its
predecessor Board) or any one of the reviewing courts and when there is no
opportunity for further court review of the earlier decision.” Manual of
Patent Examining Procedure (“MPEP”) § 706.03(w) (9th ed. Rev. 08.2017,
Jan. 2018). In addition, our reviewing court “has previously held that res
judicata requires a showing of an identity of the issues presented for
adjudication and the issues previously decided.” In re Katz, 467 F.2d 939,
942 (CCPA 1970); see also In re Hellbaum, 371 F.2d 1022 (CCPA 1967), In
re Fried, 312 F.2d 930 (CCPA 1963).
Here, now-pending claim 1 includes additional limitations (albeit
limitations that had been recited in other dependent claims of the earlier
appeal) that were not expressly adjudicated in Mao I. Accordingly, res
judicata is not a proper ground of rejection, and we reverse the Examiner’s
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rejection of claims 1–6, 8–15, 17–24, 26–33, 35, and 36 on the ground of res
judicata.

C. Law of the Case Doctrine
“The doctrine of law of the case generally bars retrial of issues that
were previously resolved.” Intergraph Corp. v. Intel Corp., 253 F.3d 695,
697 (Fed. Cir. 2001). Distinct from res judicata, the law of the case doctrine
applies only to issues that were actually decided, rather than all questions in
the case that might have been decided, but were not. Morrow v. Dillard, 580
F.2d 1284, 1290 (5th Cir. 1978). More particularly, the doctrine applies to
both explicit determinations as well as all “necessary inferences from the
disposition.” Kori. Corp. v. Wilco Marsh Buggies & Draglines, Inc., 761
F.2d 649, 657 (Fed. Cir. 1985).
“[A] Board decision in an application is the ‘law of the case,’ and is
thus controlling in that application and any subsequent, related application.”
MPEP § 706.07(h)(XI)(A). Accordingly, the Board has routinely applied
the “law of the case” and found that all conclusions and decisions in a first
decision by the Board, whether express or implicit, are accorded issue-
preclusive effect and are not revisited during subsequent prosecution of the
same application. See Ex parte Fisher, Appeal No. 2013-000665, 2015 WL
5782991, at *4 (PTAB Sept. 16, 2015); Ex parte Keggenhoff, Appeal No.
2012-001720, 2014 WL 3950403, at *4–5 (PTAB Aug. 11, 2014); Ex parte
Wood, Appeal No. 2010-006834, 2012 WL 2929626, at *3 (BPAI July 12,
2012); PTAB Standard Operating Procedure 2, Rev. 10, § III5 (“A routine

5 https://www.uspto.gov/sites/default/files/documents/SOP2%20R10%20
FINAL.pdf (last accessed Feb. 27, 2020).
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decision is binding in the case in which it is made, even if it is not
designated as precedential or informative, . . . .”).
Under the doctrine of law of the case, the Board will generally adhere
to a decision in a prior appeal in the same case unless one of three
exceptions exist: (i) the evidence in a subsequent appeal contains new and
different material evidence; (ii) there has been an intervening change of
controlling legal authority; or (iii) the earlier ruling was clearly erroneous
and would work a manifest injustice. See Intergraph, 253 F.3d at 698;
Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007);
Gould, Inc. v. United States, 67 F.3d 925, 930 (Fed. Cir. 1995).
To the extent we apply the law of case doctrine, we determine that
none of these exceptions exist. In other words, rather than relying on
different prior art (or even different sections from the prior art), with respect
to now-pending claim 1, the Examiner makes the same findings with respect
to Narayanan, Allen and Powell as were made with respect to then-pending
claim 1. Compare Final Act. 7–9 with, Mao I Final Act. 3–5, mailed
May 19, 2014. Further, there has not been an intervening change of
controlling legal authority, nor do we determine the earlier ruling was
clearly erroneous. See Northern Helex Co. v. United States, 634 F.2d 557,
562 (Fed. Cir. 1980) (explaining that “[a] mere suspicion of error, no matter
how well supported, does not warrant reopening an already decided point”).
Accordingly, under the law of the case doctrine, the Examiner’s findings of
Narayanan, Allen, and Powell related to then-pending claim 1—as well as
the proffered combination of the references—are binding in the instant
appeal as it relates to now-pending claim 1.
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Claim 1 (now-pending) is reproduced below with limitations that were
not explicitly addressed in Mao I emphasized in italics:
1. A method for user identity authentication of a peer device joining
a peer-to-peer overlay network, comprising:
receiving, by a credential server of the overlay network, a
registered user identity from a joining peer device, wherein the
registered user identity from the joining peer device is a globally
unique identifier;
connecting, by the credential server, to a third party identity
provider for verification of the registered user identity; and
upon receiving, at the credential server, successful verification
of the registered user identity from the third party identity provider,
the credential server issuing to the joining peer device a signed
certificate for use by an authenticated peer device in the overlay
network to authenticate the registered user identity of the joining peer
device, wherein:
the signed certificate is signed by a private key of the credential
server; and
the signed certificate comprises the verified registered user
identity, a node identity, and a public key of the joining peer device.

With respect to the italicized limitations above, the Examiner relies on
Narayanan to teach, inter alia, the signed certificate comprises the verified
registered user identity and a node identity. Final Act. 8 (citing Narayanan
¶ 51). The Examiner relies on Allen to teach, inter alia, the signed
certificate comprises a public key of the joining peer device. Final Act. 8
(citing Allen ¶ 139). Further, the Examiner relies on Sonderegger to teach
the registered user identity from the joining peer device could be a globally
unique identifier (GUID). Final Act. 6 (citing Sonderegger, col. 3, l. 66–
col. 4, l. 3). Because the correctness of these particular findings were not
actually decided in Mao I, or the Examiner’s combination of Sonderegger
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with Narayanan, Allen, and Powell, the law of the case doctrine does not
preclude Appellant from presenting arguments related to these particular
findings. Accordingly, we consider below only Appellant’s arguments made
related to these findings (see Appeal Br. 15–18).

D. Obviousness
Appellant challenges the Examiner’s finding that Narayanan teaches
the signed certificate comprises the verified registered user identity and a
node identity. Appeal Br. 15. In particular, Appellant argues the Examiner
improperly relies on Narayanan’s node information to teach both the verified
registered user identity and a node identity. Appeal Br. 15. We agree.
Our reviewing court dictates that we assume two different terms in a
claim have two different meanings. See Applied Med. Res. Corp. v. U.S.
Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (“[T]he use of two
terms in a claim requires that they connote different meanings . . . .”); see
also CAE Screenplates Inc. v. Heinrich Fiedler GmbH, 224 F.3d 1308, 1317
(Fed. Cir. 2000) (“In the absence of evidence to the contrary, we must
presume that the use of these different terms in the claims connotes different
meanings.”). We should presume, then, in the absence of contrary evidence,
that the language of claim 1, which requires that “the signed certification
comprises the verified registered user [identity and] a node identity,”
demands a verified registered user identity that has a different meaning than
a node identity.
The Examiner finds that Narayanan discloses a certificate that
includes node identification information (Final Act. 4, citing Narayanan
¶ 51), and further that the node identification information can be assigned to
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the nodes. Id. In particular, the Examiner finds that “Narayanan discloses
that the node identification information is placed in the certificate ([0051]),
which meets the limitation of the [signed] certificate comprises the verified
registered user identity” (Ans. 5-6). The Examiner further finds “the
limitation of “a node identity” is taught by Narayanan. Specifically,
Narayanan discloses that the node identification information can be assigned
to the nodes ([0051]), which meets the limitation of the certificate further
comprises a node identity.” Id. at 6.
The Examiner thus concludes that “the node identification information
of Narayanan can be considered the user identity and the node identity.”
Final Act. 4.
Appellant argues, however:
Claim 1 recites that “the signed certificate comprises the verified
registered user identity, a node identity, and a public key of the
joining peer device,” (emphasis added). Thus, the signed certificate of
claim 1 comprises two different identities: 1) the verified registered
user identity, and 2) a node identity…. [The Examiner’s]
interpretations…fail to give weight to the differences between the
registered user identity and the node identity, and fails to recognize
the fact that the registered user identity and the node identifier are
two separate and distinct aspects recited in claim 1.

Reply Br. 4 (emphases added by Appellant).
In other words, if Appellant had intended “verified registered user
identity” and “node identity” to have the same meaning, then Appellant
would have used the same term for both.
We find that the Examiner has construed the node identification
information of Narayanan to be both the registered user identity and the
node identity. The Examiner’s interpretation of Narayanan as disclosing
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both the registered user identity and the node identity under the blanket of
“node identification information” gives two different terms the same
meaning. As such, the Examiner’s finding is contrary to the intent of
Appellant and the language of claim 1, the latter of which requires both a
registered user identity and a separate node identity.
Accordingly, we find that the Examiner has failed to show that
Narayan teaches the signed certificate comprises the verified registered user
identity and, a node identity as required by claim 1.
Because this determination resolves the appeal with respect to claim
1, we need not address Appellant’s other arguments regarding Examiner
error.
Independent claims 10, 19, and 28 include limitations commensurate
to the disputed limitation of independent claim 1. Accordingly, based on the
record before us, we do not sustain the obviousness rejections of
independent claims 1, 10, 19, and 28 and their respective dependent claims.

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CONCLUSION
In summary:

REVERSED

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Bas
is
Affirmed Reversed
1–6, 8–15,
17–24, 26–
33, 35, 36
Res judicata 1–6, 8–15,
17–24, 26–
33, 35, 36
1–3, 5, 6,
8–12, 14,
15, 17–21,
23, 24, 26–
30, 32, 33,
35, 36
103 Narayanan,
Allen, Powell,
Sonderegger
1–3, 5, 6,
8–12, 14,
15, 17–21,
23, 24, 26–
30, 32, 33,
35, 36
4, 13, 22,
31
103 Narayanan,
Allen, Powell,
Sonderegger,
Zhang
4, 13, 22,
31
Overall
Outcome
1–6, 8–15,
17–24, 26–
33, 35, 36