Unify GmbH & Co. KG

Patent Trials and Appeals Board

Mar 18, 2020

15398019 - (D) (P.T.A.B. Mar. 18, 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.
15/398,019 01/04/2017 Rainer Falk 2007P02879US02-985 1069
88087 7590 03/18/2020
Fritzsche Patent
c/o Buchanan Ingersoll & Rooney PC (SEN)
P. O. Box 1404
Alexandria, VA 22313-1404
EXAMINER
JOHNSON, CARLTON
ART UNIT PAPER NUMBER
2436
NOTIFICATION DATE DELIVERY MODE
03/18/2020 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):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte RANIER FALK
and FLORIAN KOHLMAYER

Appeal 2018-009022
Application 15/398,019
Technology Center 2400

Before JAMES R. HUGHES, STEVEN M. AMUNDSON, and
MICHAEL T. CYGAN, Administrative Patent Judges.

CYGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 16–35. Appeal Br. 33–40 (Claims
App.). We have jurisdiction under 35 U.S.C. § 6(b). On February 25, 2020,
Appellant’s counsel presented arguments at an oral hearing.
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Unify
GmbH & Co. KG, which is an affiliate of Atos SE. Appeal Br. 1.
Appeal 2018-009022
Application 15/398,019

2
CLAIMED SUBJECT MATTER
The claimed invention generally relates to assigning an authenticator
role to a communication device in a local area network. Independent claim
16 is illustrative (indicators 16[a]–[f] have been added to aid identification
of individual clauses):
16. A method for providing a local area network comprising
a plurality of communication devices, the method comprising:
16[a] attempting to establish a first link from a first
communication device of the communication devices to a
second communication device of the communication devices, at
least one of the first and second communication devices having
a connection to at least one authentication communication
device;
16[b] testing at least one property correlating to connections
that the first and second communication devices have to any of
the at least one authentication communication device for
fulfillment of at least one criterion for assigning an
authenticator role to be assigned as part of authentication to one
of the first communication device and the second
communication device by a process comprising:
16[c] upon a determination that there is no authentication
communication device that has a connection with each of the
first and second communication devices:
16[d] the first communication device comparing the at
least one authentication communication device to which the
second communication device is connected with the at least one
authentication communication device connected to the first
communication device, the at least one authentication
communication device to which the second communication
device is connected being made known to the first
communication device prior to the comparing of the at least one
authentication communication device performed by the first
communication device; and
16[e] the second communication device comparing the at
least one authentication communication device to which the
Appeal 2018-009022
Application 15/398,019

3
first communication device is connected to the at least one
authentication communication device connected to the second
communication device, the at least one authentication
communication device to which the first communication device
is connected being made known to the second communication
device prior to the comparing of the at least one authentication
communication device performed by the second communication
device; and
16[f] assigning the authenticator role to the first
communication device or the second communication device
based upon which of (i) a first connection of the first
communication device to one of the at least one authentication
communication device and (ii) a second connection of the
second communication device to a different one of the at least
one authentication communication device that has the at least
one property that best fulfills the at least one criterion.
Appeal Br. 33–34 (Claims App.).
Independent claim 32 recites a communication apparatus, and claim
35 a network, similar in scope to claim 16. Appeal Br. 37–39 (Claims App.)
Dependent claims 17–31 and 33–34 each incorporate the limitations of their
respective independent claims. Id. at 33–39.

REFERENCES
Name Reference Date
Morrow et al.
(Morrow)
US 2002/0124196 A1 Sept. 5, 2002
Takeda et al.
(Takeda)
US 2003/0125067 A1 July 3, 2003
Ono et al.
(Ono)
US 2004/0172527 A1 Sept. 2, 2004
Yamada et al.
(Yamada)
US 2006/0200678 A1 Sept. 7, 2006
Cam-Winget et al.
(Cam-Winget)
US 2008/0034207 A1 Feb. 7, 2008
Appeal 2018-009022
Application 15/398,019

4
Swain US 2008/0155126 A1 June 26, 2008
Annic et al.
(Annic)
US 7,823,188 B2 Oct. 26, 2010

REJECTIONS
Claims 16, 18, 19, 21, 25, 27, 29, and 31–35 are rejected under pre-
AIA 35 U.S.C. § 103(a) as being obvious over the combined teachings and
suggestions of Yamada and Annic.
Claims 17 and 20 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of Yamada,
Annic, and Takeda.
Claim 23 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Yamada, Annic,
and Ono.
Claims 26 and 28 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of Yamada,
Annic, and Swain.
Claim 30 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Yamada, Annic,
and Cam-Winget.

OPINION
Appellant argues that the combination of Yamada and Annic is
erroneous because it does not teach every limitation of claims 16–31, and
because the Examiner has not presented an appropriate reason to combine
the references. We find these arguments persuasive.
Appeal 2018-009022
Application 15/398,019

5
With respect to claim 16, the Examiner finds Yamada teaches clauses
16[a], 16[b], and 16[f], and Annic teaches the remaining clauses 16[c]–[e].
Final Act. 9–14. Specifically, the Examiner relies upon Yamada’s pair of
access points in a mesh network, in which the distance (in terms of number
of links) from each point to an authentication device is used to determine
which of the access points will be the authenticator and which will be the
supplicant. Id. at 9–10, 13–14; Ans. 4–9. The Examiner finds Yamada
lacks authentication devices connected to the access points (but not in
common to both access points), wherein the connections between access
points and their respective authentication devices are compared to each other
as per 16[c]–[e]. Final Act. 13. The Examiner finds Annic teaches
limitations 16[c]–[e] through Annic’s network of a plurality of service
providers, including an authentication server selected by comparing lists 34
and 56, in which there may be no common servers to both lists, and in which
the server interrogates the user to identify and authenticate the user with
desired authentication server and level. Final Act. 12–13; Ans. 9–11.
Appellant argues, inter alia, that Annic does not teach any comparison
of different authentication devices upon determining that communication
devices are not each connected to the same authentication device. Appeal
Br. 18–19. The Examiner, although pointing out that Annic envisions a
situation in which two lists may have no common servers, does not
specifically find that Annic provides a comparison of different
authentication devices in response to that situation. The Examiner merely
notes that an “incompatibility notification [is] transmitted” in such a
situation. Ans. 9. However, the Examiner relies on Yamada, not Annic, for
the comparison of authentication devices to the access points to determine
Appeal 2018-009022
Application 15/398,019

6
which of two access points is to serve as an authenticator role. Id. at 10.
Consequently, Appellant’s argument against Annic is not persuasive because
the Examiner has relied upon the combination of Annic and Yamada for this
disputed limitation of claim 16.
We turn next to the issue of the rationale for combining Annic with
Yamada. The Examiner’s rationale for combining Annic is to obtain the
benefits achieved from a system with the convenience of SSO [single sign-
on] and an implementation in which the server modifications are minor and
the load processing consequences are minor. Final Act. 13 (citing Annic
1:65–2:3).
As noted above, the Examiner is relying on Annic for “search[ing] a
listing [lists 34 and 56] of authentication devices to determine that there is
no authentication communication device that has a connection with each of
the first and second communication devices.” Ans. 10. The Examiner relies
solely on Yamada for the other claim limitations, pertaining to determining
which communication device should bear the authenticator role because of
its proximity to an authentication device. Id. at 10, 13 (“Annic is not used to
disclose a selection of an authentication role or a supplicant role”).
Appellant argues that the single sign-on process is user-specific, not
communication device-specific, and is unrelated to assessment of
connections to different authentication devices. Appeal Br. 24. Appellant
further argues that Annic fails to disclose first and second communication
terminals seeking to establish an authenticated connection, in which neither
is connected to a common authentication device. Reply Br. 8. Appellant
further argues that the incompatibility message, relied upon by the Examiner
to teach a determination of no common authentication device, is used by
Appeal 2018-009022
Application 15/398,019

7
Annic for indicating that a single sign on feature is not usable for a user at a
particular service provider, and has “nothing to do with selection of an
authenticator role for establishment of a link.” Id. at 8–9.
Obviousness can be established by combining or modifying the
teachings of the prior art to produce the claimed invention where there is
some teaching, suggestion, or motivation to do so. In re Kahn, 441 F.3d
977, 986 (Fed. Cir. 2006). “[R]ejections on obviousness cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” Id. at 988.
The relied-upon teaching of Annic does not appear to provide the
advantages that the Examiner relies upon for the motivation to combine
Annic with Yamada. The Examiner relies on Annic solely for determining
that authentication devices are not common to two communication devices,
as part of Annic’s single sign-on process. Final Act. 11–13. The Examiner
has not provided any rationale for combining this determining into the
process taught by Yamada except for the purported advantages of SSO
[single sign-on]. Id. at 13. In order to retain those advantages of SSO,
Annic’s determination that authentication devices are not common to two
communication devices would need to remain part of an SSO process. Yet
the Examiner would instead use that determination as part of Yamada’s
method of assigning an authenticator role and a supplicant role. The
Examiner has not articulated reasoning to explain how such would
predictably result in a combination that uses the determination of non-
common authentication devices for both (1) an unclaimed single sign-on
process being incorporated from Annic to gain its desired advantages, and at
Appeal 2018-009022
Application 15/398,019

8
the same time, (2) the claimed determination of which communication
device should be given the authentication role as taught by Yamada. The
Examiner’s mere conclusory statements as to the proposed modification are
insufficient to show obviousness of the claimed invention over the teachings
of Annic and Yamada.
All of the Examiner’s rejections rely on the flawed combination of
Yamada and Annic, and the Examiner has not made any findings that would
show the other applied references to teach or suggest those limitations
missing from Yamada and Annic. Accordingly, we reverse the Examiner’s
rejections of claims 16–35.

CONCLUSION
For the above-described reasons, we reverse the Examiner’s rejection
of claims 16–35 as being obvious under pre-AIA 35 U.S.C. § 103(a).

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References/Grounds Affirmed Reversed
16, 18,
19, 21,
25, 27,
29, 31–35
103(a) Yamada, Annic 16, 18,
19, 21,
25, 27,
29, 31–35
17, 20 103(a) Yamada, Annic,
Takeda
17, 20
22, 24 103(a) Yamada, Annic,
Morrow
22, 24
23 103(a) Yamada, Annic, Ono 23
26, 28 103(a) Yamada, Annic,
Swain
26, 28
Appeal 2018-009022
Application 15/398,019

9
30 103(a) Yamada, Annic,
Cam-Winget
30
Overall
Outcome
16–35

REVERSED