Rainer Falk et al.

Patent Trials and Appeals Board

Apr 14, 2021

2019006478 (P.T.A.B. Apr. 14, 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.
13/877,263 04/01/2013 Rainer Falk 2010P20328 1833
27350 7590 04/14/2021
LERNER GREENBERG STEMER LLP
Box SA
P.O. BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
DHRUV, DARSHAN I
ART UNIT PAPER NUMBER
2498
NOTIFICATION DATE DELIVERY MODE
04/14/2021 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):
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office@patentusa.com
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RAINER FALK and STEFFEN FRIES

Appeal 2019-006478
Application 13/877,263
Technology Center 2400
____________

Before JOHN A. EVANS, MICHAEL T. CYGAN, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final decision to reject Claims 7–20. Appeal Br. 1. We have jurisdiction
under 35 U.S.C. § 6.
We REVERSE.2

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Siemens Aktiengesellschaft of
Muenchen, Germany, as the real party in interest. Appeal Br. 1.
2 Throughout this Decision, we refer to the Appeal Brief filed February 11,
2019 (“Brief,” “Appeal Br.”); the Final Office Action mailed May 18, 2018
(“Final Act.”); the Examiner’s Answer mailed June 12, 2019 (“Ans.”); and
the Specification filed April 1, 2013 (“Spec.”).
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STATEMENT OF THE CASE
CLAIMED SUBJECT MATTER
The claims relate to a method for using a VPN box to form a
cryptographically-protected communications link. See Abstract.
CLAIMS
Claims 7, 10, 11, and 12 are independent. Claim 7 is illustrative and
reproduced below:
7. A method for secure data transmission between a first
communication device and a second communication device, the
method which comprises:
assigning a box, for setting up and operating a Virtual
Private Network (VPN) link between the first and second
communication devices, to at least one assigned communication
device selected from the group consisting of the first
communication device and the second communication device,
wherein the box is located in the link between the first and
second communication devices;
determining, by the box, a secret key of the assigned
communication device during the setup of the VPN link,
wherein the secret key is stored on the assigned communication
device and is used by the box for the setup of the VPN link; and
setting up, by the box, a session key for the VPN link
based on the secret key, and securely transmitting data via the
VPN link.

REFERENCES

Name3 Reference Date
Giniger US 6,751,729 B1 June 15, 2004
Boubez US 2005/0086197 A1 Apr. 21, 2005

3 All citations herein to the references are by reference to the first named
inventor/author only.
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Matoba US 2006/0090074 A1 Apr. 27, 2006
Fascenda US 7,725,933 B2 May 25, 2010
Teruyama US 8,837,725 B2 Sep. 16, 2014

REJECTIONS4 AT ISSUE
1. Claims 7, 8, 10–12, 14, and 16 stand rejected under pre-AIA 35
U.S.C. § 103(a) as obvious over Giniger and Fascenda. Final
Act. 7–12.
2. Claim 9 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Giniger, Fascenda, and Teruyama. Final Act. 13–
14.
3. Claims 13 and 15 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as obvious over Giniger, Fascenda, and Boubez. Final
Act. 14–15.
4. Claims 17–20 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as obvious over Giniger, Fascenda, and Matoba. Final Act. 16–
19.

ANALYSIS
We have reviewed the rejections of Claims 7–20 in light of
Appellant’s arguments that the Examiner erred. We are persuaded of error.
We provide the following explanation to highlight and address specific
arguments and findings primarily for emphasis. We consider Appellant’s
arguments as they are presented in the Appeal Brief and the Reply Brief.

4 Present application is being examined under the pre-AIA first to invent
provisions. Final Act. 2.
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CLAIMS 7, 8, 10–12, 14, AND 16: OBVIOUSNESS OVER
GINIGER AND FASCENDA.
Appellant argues these claims as a group specifically over the
recitations of Claim 7. Appeal Br. 11–12 (“[Independent] Claims 10–12
include limitations that are analogous to those of claim 7 which have been
discussed above.”). Therefore, we decide the appeal of the § 103 rejections
on the basis of Claim 7 and refer to the rejected claims collectively herein as
“the claims.” See 37 C.F.R. § 41.37(c)(1)(iv); In re King, 801 F.2d 1324,
1325 (Fed. Cir. 1986).
Determining a secret key.
Claim 7 recites, inter alia, “determining, by the box, a secret key of
the assigned communication device during the setup of the VPN link,
wherein the secret key is stored on the assigned communication device and
is used by the box for the setup of the VPN link” and “setting up, by the box,
a session key for the VPN link based on the secret key, and securely
transmitting data via the VPN link.”
The Examiner finds the recitations attributed to Fascenda are not
taught by Giniger. Final Act. 8. The Examiner finds Fascenda teaches:
“determining by the box, a secret key of the assigned communication device
during the setup of the VPN link,” as claimed. Id. (citing nonspecifically
Fascenda, col. 7, l. 53 through col. 8, l. 13) (i.e., the “secret cryptographic
key (440) of the assigned communication device is determined”).
Examiner finds Fascenda teaches: “wherein the secret key is stored on the
assigned communication device,” as claimed. Final Act. 8. (citing Fascenda,
(Fig. 1, numeral 125), col. 4, ll. 16–35; Fig. 4, numerals 125, 440, col. 6, ll.
13–22) (explaining “secret cryptography key (440) is stored in a client token
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that is an integral part of the client via usb connection indicates that secret
cryptography key is stored in client (assigned communication device)”).
Appellant disputes the Examiner’s finding that one of ordinary skill in
the art would have been motivated to modify the architecture of Giniger with
the secret key storage of Fascenda. Appeal Br. 8. Appellant contends
Fascenda addresses a need to establish simultaneous, secure connections
without running additional VPN applications. Id. (citing Fascenda, col. 2, ll.
14–16) (“A user desiring a second simultaneous connection would have to
run a second VPN application to connect to a second location.”).
Appellant reads the Examiner as equating the claimed first and second
communication devices with Giniger’s various edge devices 110 and finding
it obvious to store Fascenda’s secret key in one of Giniger’s edge devices in
order to automatically establish remote secure client connections. Appeal
Br. 8. Appellant disagrees with the Examiner’s statement of motivation
because this functionality of establishing secure connections to one or more
locations is already present in the method and system taught by Giniger.
Appellant argues Giniger specifically teaches that each edge device
maintains a secure communication tunnel with generally one or more other
edge devices over which the edge devices securely transfer communications.
Appeal Br. 8 (citing Giniger, col. 7, ll. 38–41).
The Examiner finds:
Fascenda discloses an edge device (Subnet Box) having a smart
card and database having a cryptographic key that enables
multiple secure VPN links while Giniger shows the edge
devices are capable of establishing multiple VPN links.
Therefore, one of ordinary skill in the art would have been
clearly motivated to replace the edge device(s) of Giniger with
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smart card enabled edge device(s) (i.e., Subnet Box) of the
Fascenda in order to establish multiple secure VPN links.
Ans. 8. Thus, the Examiner finds each of the systems of Giniger and
Fascenda possess the functionality of establishing multiple, secure VPN
links.
But having so found, the Examiner fails to adequately explain the
motivation for forming a redundant combination for the purpose of forming
VPN links. Specifically, the Examiner does not explain why, if Giniger
teaches establishing multiple secure VPN links, one of ordinary skill in the
art would look to a separate reference for that same teaching. Nor has the
Examiner provided any separate rationale for the combination. See TRW
Automotive U.S. LLC v. Magna Electronics, Inc., IPR2015-00972, Paper 9,
slip op. at 12 (PTAB September 16, 2015) (finding no reason to combine
where “the camera in [the ’094 patent] already is mounted to the windshield
using a bracket and does not require the direct optical coupling provided by
the fastening device in [the ’633 patent]”); see also Stryker Corp. v. Karl
Storz Endoscopy America, Inc., IPR2015-00764, Paper 13, slip op. at 13
(PTAB September 2, 2015) (“[W]e fail to see, and Petitioner does not
adequately explain, why it would be obvious to add a translator to
redundantly perform the function that Petitioner maintains is performed by
the interconnect devices and network computer located within the surgical
network.”); see also Ex parte Tessier, Appeal 2012-006616, slip op. at 12
(PTAB October 2, 2014) (“Furthermore, we note that Kolk’s system is
already remotely controlled. . . . We thus find the Examiner’s rejection
insufficient to explain what in the prior art would have prompted a person
having ordinary skill in the art to include Petite’s remote system into Kolk’s
remote temperature regulating system. The Examiner has not provided any
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findings that either Kolk or Petite recognized a problem with the remote
technique used in Kolk.”).
We find the Examiner fails to adequately explain the motivation for
forming a redundant combination. In view of the foregoing, we decline to
sustain the rejection of Claims 7, 8, 10–12, 14, and 16.
CLAIM 9: OBVIOUSNESS OVER GINIGER, FASCENDA, AND TERUYAMA.
Appellant re-alleges the argument over Giniger and Fascenda and
states Teruyama fails to make up for the deficiencies thereof. Appeal Br. 12.
The Examiner does not apply Teruyama to teach the disputed
limitations. See Ans. 14.
In view of the foregoing, we decline to sustain the rejection of Claim
9.
CLAIMS 13 AND 15: OBVIOUSNESS OVER GINIGER, FASCENDA, AND BOUBEZ.
Appellant re-alleges the argument over Giniger and Fascenda and
states Boubez fails to make up for the deficiencies thereof. Appeal Br. 12.
The Examiner does not apply Boubez to teach the disputed
limitations. See Ans. 14.
In view of the foregoing, we decline to sustain the rejection of Claims
13 and 15.
CLAIMS 17–20: OBVIOUSNESS OVER GINIGER, FASCENDA, AND MATOBA.
Appellant re-alleges the argument over Giniger and Fascenda and
states Matoba fails to make up for the deficiencies thereof. Appeal Br. 12–
13.
The Examiner does not apply Matoba to teach the disputed
limitations. See Ans. 15.
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In view of the foregoing, we decline to sustain the rejection of Claims
17–20.

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
7, 8, 10–12,
14, 16
103 Giniger, Fascenda 7, 8, 10–12, 14, 16
9
103 Giniger,
Fascenda,
Teruyama
9
13, 15 103 Giniger, Fascenda, Boubez 13, 15
17–20 103 Giniger, Fascenda, Matoba 17–20
Overall
Outcome 7–20

REVERSED