Yukari Ishizuka

Patent Trials and Appeals Board

Dec 2, 2019

14344030 - (D) (P.T.A.B. Dec. 2, 2019)

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).
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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
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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
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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
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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.
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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
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