Yukari IshizukaDownload PDFPatent Trials and Appeals BoardDec 2, 201914344030 - (D) (P.T.A.B. Dec. 2, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/344,030 03/10/2014 24395 7590 12/03/2019 WILMERHALE/DC 1875 PENNSYLVANIA AVE., NW WASHINGTON, DC 20006 FIRST NAMED INVENTOR Yukari Ishizuka 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2209735.00146US1 4272 EXAMINER BROWN, CHRISTOPHER J ART UNIT PAPER NUMBER 2439 NOTIFICATION DATE DELIVERY MODE 12/03/2019 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): whipusptopairs@wilmerhale.com scott.barrett@wilmerhale.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YUKARI ISHIZUKA Appeal 2018-003 340 Application 14/344,030 1 Technology Center 2400 Before THU A. DANG, ELENI MANTIS MERCADER, and HUNG H. BUI, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1, 3, 4, and 6-12 (App. Br. 1), which constitute all the claims pending in this application. Claims 2 and 5 were previously cancelled. Id. at 15. We have jurisdiction under 35 U.S.C. § 6(b ). We heard Oral Arguments on September 25, 2019. We reverse. 1 We use the word "Appellant" to refer to "applicant" as defined in 37 C.F .R. § 1.42. According to Appellant, the real party in interest is NEC Corporation. App. Br. 1. Appeal2018-003340 Application 14/344,030 A. INVENTION According to Appellant, the invention relates to "an electronic device and a security control method." Spec. ,r 1. B. ILLUSTRATIVE CLAIM Claim 1 is exemplary and is reproduced below: 1. An electronic device comprising: circuitry comprising a processor and a memory configured to: communicate with another electronic device; store setting information of security for communication corresponding to each application; start up and execute one application among a plurality of applications used to communicate with the other electronic device and recruit a participant of a community; and read the setting information corresponding to the application which has been started up and control security for communication based on the read setting information when the application is started, wherein the processor is configured to return a setting of security for the communication to a setting before the application is started up when a predetermined condition that the number of participants of the community reaches a predetermined number is satisfied after the application is started up, when a message for participation in the community is received from the other electronic device, a user of the other electronic device is set as the participant of the community, personal information of the user participating in the community and information about the other electronic device are written to the electronic device, the setting of security returned to the setting before the application is started up is a security setting common to the plurality of applications, and when the predetermined condition is satisfied, the personal information and the information about the other electronic device are deleted from the electronic device. App. Br. 14 (Claims Appendix). 2 Appeal2018-003340 Application 14/344,030 C. REJECTIONS Claims 1, 11, and 12 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Sovio (US 2005/00593 79 A 1; published March 17, 2005) ("Sovio"), Strandell (US 2010/0287605 Al; published November 11, 2010) ("Strandell"), Ozugur (US 2010/0175021 Al; published August 11, 2005) ("Ozugur"), and Smetters et al. (US 2005/0100166 Al; published May 12, 2005) ("Smetters"). Claims 3, 4, and 6 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Sovio, Strandell, Ozugur, Smetters, and Jain et al. (US 2012/0287290 Al; published November 15, 2012) ("Jain"). Claims 7, and 8 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Sovio, Strandell, Ozugur , Smetters, and Lin et al. (US 2006/0199605 Al; published September 7, 2006) ("Lin"). Claim 9 stands rejected under 35 U.S.C. § I03(a) as being unpatentable over Sovio, Strandell, Ozugur , Smetters, and Khan et al. (US 2007/0061460 Al; published March 15, 2007) ("Khan"). Claim 10 stands rejected under 35 U.S.C. § I03(a) as being unpatentable over Sovio, Strandell, Ozugur , Smetters, and Amacker et al. (US 8,966,595 Bl; published February 24, 2015) ("Amacker"). II. ISSUE The dispositive issue before us is whether the Examiner has erred in finding the combination of Sovio, Strandell, Ozugur, and Smetters teaches or suggests a "processor" that is "configured to return a setting of security for the communication to a setting before the application is started up when a predetermined condition that the number of participants of the community 3 Appeal2018-003340 Application 14/344,030 reaches a predetermined number is satisfied after the application is started up." Claim 1 (emphasis added). III. ANALYSIS Appellant contends that the cited references, "either alone or in combination, do not disclose all of the features of claim 1." App. Br. 9. In particular, Appellant contends that, although the Examiner relies on Smetters to cure the deficiencies of Sovio, Strandell, and Ozugur, Smetters fails to disclose or even suggest the processor is further configured to "return a setting of security for the communication to a setting before the application is started up when a predetermined condition that the number of participants of the community reaches a predetermined number is satisfied after the application is started up." Id. at 9--10. According to Appellant, instead, in Smetters, "if the number of data entries stored on a location- limited physical token channel does not match the count of expected participants," then "it is determined that an attacker added the attacker's own pre-authentication data to a set of participants' data." Id. at 10-11. We have considered all of Appellant's arguments and evidence presented. We agree with Appellant that the preponderance of evidence on this record does not support the Examiner's legal conclusion that claim 1 would have been obvious over Sovio, Strandell, Ozugur, and Smetters. As Appellant argues, in Smetters, when attackers attempt to add the data to the set of participants' data stored in a token channel, the added data "can be detected as the count of expected participants will not match the number of data entries stored." App. Br. 10; see Smetters ,r 93. In particular Smetters merely discloses the detection of a mismatched number of data 4 Appeal2018-003340 Application 14/344,030 entries, and thus, the possible determination that the predetermined number of participants is not as expected. Smetters ,r 93. However, Smetters does not determine how many attackers in addition to the count of expected participants, but instead, just determines whether there is extra data added by attackers. Id. In fact, in Smetters, there is no set number of participants to be "reached" to activate a return to a previous security setting as claimed. Id. Accordingly, although the Examiner finds that, in Smetters, "a predetermined number of parties/participants (seven)" is expected, a preponderance of the evidence does not support the Examiner's finding that "Smetters teaches that an extra participant may be detected," wherein "the predetermined number of participants reaching a predetermined number to be satisfied is eight." Ans. 2 (emphasis added). That is, contrary to the Examiner's findings, Smetters does not disclose or even suggest that there is only one additional attacker determined, and thus, Smetters does not disclose or suggest that the predetermined number of participants that is "reached" is definitively seven participants plus one attacker (i.e., eight total). Ans. 2; see Smetters ,r 93 .. In such case, we would have to engage in some degree of speculation regarding the Examiner's finding and conclusion that"[ o ]nee this [predetermined] number [eight] is satisfied, Smetters teaches the system returns a setting of security to a setting before the application was started up, because the authentication information is erased and the process starts from the beginning." Id. 2-3. We decline to engage in speculation. Accordingly, we are persuaded by Appellant's contentions that Sovio, Strandell, Ozugur, and Smetters fail to teach or suggest returning a setting of 5 Appeal2018-003340 Application 14/344,030 security for the communication "to a setting before the application is started up" when "a predetermined condition that the number of participants of the community reaches a predetermined number is satisfied after the application is started up," as recited in claim 1. Because we find at least these errors with respect to the Examiner's rejections, we need not and do not make any findings with respect to the other contested limitations. Rather, we confine our findings to these argued features, which are dispositive of this appeal. Consequently, we are constrained by the record before us to find that the Examiner erred in finding the combination of Sovio, Strandell, Ozugur, and Smetters teaches or suggests Appellant's claim 1. Independent claims 11 and 12 include limitations of commensurate scope. Accordingly, we do not sustain the Examiner's obviousness rejection of claims 1, 11, and 12 over Sovio, Strandell, Ozugur, and Smetters. For similar reasons, we also reverse the Examiner's rejections of: 1) claims 3, 4, and 6 depending from claim 1 over Sovio, Strandell, Ozugur, Smetters, in further view of Jain; 2) claims 7 and 8 depending from claim 1 over Sovio, Strandell, Ozugur, Smetters, in further view of Lin; 3) claim 9 depending from claim 1 over Sovio, Strandell, Ozugur, Smetters, in further view of Khan; and 4) claim 10 depending from claim 1 over Sovio, Strandell, Ozugur, Smetters, in further view of Amacker, because the Examiner has not shown that the additionally cited Jain, Lin, Khan, and Amacker references overcome the aforementioned deficiencies of the base combination of Sovio, Strandell, Ozugur, and Smetters. 6 Appeal2018-003340 Application 14/344,030 IV. CONCLUSION AND DECISION The Examiner's rejections of claims 1, 3, 4, and 6-12 under 35 U.S.C. § 103(a) are reversed. 1, 11, 12 § 103 Sovio, Strandell, 1, 11, 12 Ozugur, Smetters 3,4, 6 § 103 Sovio, Strandell, 3,4,6 Ozugur, Smetters, Jain 7, 8 § 103 Sovio, Strandell, 7, 8 Ozugur, Smetters, Lin 9 § 103 Sovio, Strandell, 9 Ozugur, Smetters, Kahn 10 § 103 Sovio, 10 Strandell, Ozugur, Smetters, Amacker Overall 1,3,4,6- Outcome 12 REVERSED 7 Copy with citationCopy as parenthetical citation