Ex Parte MardirossianDownload PDFPatent Trial and Appeal BoardMay 13, 201411546560 (P.T.A.B. May. 13, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ARIS MARDIROSSIAN ____________________ Appeal 2011-012061 Application 11/546,560 Technology Center 2400 ____________________ Before: CHARLES N. GREENHUT, JAMES P. CALVE, and JILL D. HILL, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012061 Application 11/546,560 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 9, 11, 13-15, and 17-27. We have jurisdiction under 35 U.S.C. § 6(b). The claims are directed to systems and methods for locating terrorists. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of locating and/or identifying terrorists that use at least one client device to access a server device via a network, the method comprising: storing a software module on the server device; monitoring and/or permitting connections between the server device and the at least one client device; selectively transmitting the software module to one said client device in dependence on a determination of whether the connection between the server device and the client device matches at least one predefined criteria, the at least one predefined criteria suggesting that the client device is being used by a terrorist; and providing an incentive for the terrorist to connect to the server device, the incentive being related to a perceivable configuration aspect of the server device, wherein, when the software module is received by the client device, the software module is configured to cause the client device to broadcast or otherwise transmit a signal comprising location and/or identification information, the method further comprising receiving at a predefined monitored area the signal comprising location and/or identification information so that a user of the client device is locatable and/or apprehendable at the predefined monitored area in the event that the signal suggests that the client device was used by the terrorist to connect to the server device. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Appeal 2011-012061 Application 11/546,560 3 Huff Isenberg Binning Amoroso Dendi Zanotti US 6,408,391 B1 US 2004/0128530 A1 US 2005/0169438 A1 US 2006/0101515 A1 US 2007/0282678 A1 US 2008/0235082 A1 Jun. 18, 2002 Jul. 1, 2004 Aug. 4, 2005 May 11, 2006 Dec. 6, 2007 Sep. 25, 2008 Xuxian Jiang et al., Collapsar: A VM-based honeyfarm and reverse honeyfarm architecture for network attack capture and detention, J. Parallel Distrib. Comput., 1165-80 (Apr. 2006) (hereinafter “Jiang”) REJECTIONS Claims 1-9, 11-13, and 22-23 are rejected under 35 U.S.C. § 112, second paragraph. Ans. 5. Claims 1, 3-7, 9, 14, 17-19, 22, 25, and 27 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Amoroso, Huff, and Binning. Id. at 7. Claims 2, 8, 11, 15, and 20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Amoroso, Huff, Binning, and Isenberg. Id. at 14. Claims 13 and 21 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Amoroso, Huff, Binning, and Dendi. Id. at 16. Claim 23 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Amoroso, Huff, Binning, and Jiang. Id. at 17. Claims 24 and 26 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Amoroso, Huff, Binning1 and Zanotti. Id. at 18. 1 The Examiner appears to have inadvertently omitted Binning from the statement of rejection. Appeal 2011-012061 Application 11/546,560 4 OPINION Claims 1-9, 11, 13, 22, and 23 are rejected under 35 U.S.C. § 112, Second Paragraph. The Examiner concludes that the claim is not clear as to whom or what is a “terrorist.” Ans. 21. The Examiner also concludes that, “a perceivable configuration aspect of the server device,” is abstract and would allow any user who wants to connect to the server to connect to the server. Id. The Examiner further argues that it is unclear how the “perceivable configuration aspect” is an “incentive” for the terrorist, and how a connection to the server related to this incentive confirms the connected user to be a terrorist. Id. Appellant argues the term “terrorist” has a widely known and commonly accepted meaning, and therefore, is not an unclear term. Reply Br. 2. Appellant further argues that there is nothing abstract about “perceivable configuration aspects,” and that there is a clear linkage between “perceivable configuration aspects” and the “incentives” for a terrorist to connect to a server having the “perceivable configuration aspects.” Id. at 3- 4. Appellant also notes that the Examiner’s Answer regarding this rejection contains an abundance of grammatical errors rendering it unintelligible. Id. at 2-4. Claim 1 recites, “[a] method of locating and/or identifying terrorists.” Though we recognize the existence of terrorists and the war on terrorism, the claim is unclear as to who would qualify as a terrorist in the context of this Specification. The Specification provides a few examples but does not provide a specific definition or other disclosure of what features or traits qualify a person as a terrorist. The method in the claim is directed to locating and identifying a particular type of individual (i.e., terrorist), but Appeal 2011-012061 Application 11/546,560 5 without a specific definition, it is unclear how the scope of the claim would be affected by the term “terrorist.” Neither the Specification nor the claim provides any objective standard for determining whether an individual is a terrorist. Appellant argues that the term “terrorist” has a known and accepted meaning. Reply Br. 2. However, Appellant does not support this position with any statement or reference to the Specification or other evidence to demonstrate precisely what that meaning is to a skilled artisan. It is also unclear what would incentivize a “terrorist” to connect to the server. The claim states the incentive is “related to a perceivable configuration aspect of the server device.” However, different individuals, presumably even different terrorists would be incentivized by different things. Claim scope cannot depend solely on the unrestrained, subjective opinion of a particular individual purported to be practicing the invention. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005). While some examples are provided in the Specification, such as the absence of authentication and/or logging, the Specification proclaims these examples to be non-limiting (“etc.”). Spec. 5, para. [0020]. The Specification does not provide any concrete definition for the term “incentive” that would help recognize a configuration aspect as such an incentive. Thus, it is unclear as to when the perceivable configuration aspect of the server would become an incentive for a terrorist to connect to the server. Thus, we agree with the Examiner that this limitation also renders the claim indefinite. In recognition of the grammatical errors in the Examiner’s Answer regarding the § 112, second paragraph, rejection (Reply Br. 2-3), we affirm the rejection but designate it as a new ground of rejection in an abundance of fairness to ensure Appellant has a fair opportunity to respond. Pursuant to Appeal 2011-012061 Application 11/546,560 6 our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection of claims 1-9, 11, 13, 22, and 23 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. We also enter a new ground of rejection of claims 14, 15, 17-21, 26, and 27 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. Claim 14 recites, “the at least one predefined criteria suggesting that the client device is being used by a terrorist.” App. Br. 27. The meaning of the term “terrorist” is unclear for the same reasons set forth in the rejection of claim 1. One skilled in the art is therefore not reasonably apprised of the subject matter encompassed by the recited “predefined criteria.” “[T]he language of the claims must make it clear what subject matter they encompass.” In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970). Claims 1, 3-7, 9, 14, 17-19, 22, 25, and 27 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Amoroso, Huff, and Binning. Appellant argues claims 1, 3-7, 9, 14, 17-19, 22, 25, and 27 as a group (App. Br. 13), and we select independent claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 3-7, 9, 14, 17-19, 22, 25, and 27 stand or fall with claim 1. The Examiner first determined that a computer hacker or any person attempting unauthorized access to a computer is a terrorist. Ans. 24. The Examiner also determined that the term “terrorist” is non-functional descriptive material because a terrorist is a person, and therefore, does not have a distinct function or structural requirement. Id. at 24. Regarding Appeal 2011-012061 Application 11/546,560 7 Binning, the Examiner argues that Binning discloses activating a tracking signal from a device to locate that device. Id. at 26. The Examiner further argues that one of ordinary skill in the art would be able to utilize Binning’s underlying device-location technology on any system that has a need for locating a device, and that the intent or mentality of a user is irrelevant when applying such a technology. Id. at 27. The Examiner also argues that Binning teaches a “predefined monitored area” by storing locations that are associated with an Emergency Locator Profile, and that the locations could not be stored if they were not “predefined.” Id. 28. Appellant argues the term “terrorist” is not a non-functional descriptive material and must be given weight. Reply Br. 4. Appellant argues that “terrorist” has a distinct function and structure because the software module is only transmitted to users with a certain profile instead of all users. App. Br. 14-15. Appellant further argues that the Examiner’s interpretation of “terrorist” as any unauthorized user attempting to connect to the server is unreasonably broad. Id. at 16. Appellant argues that the purpose of the invention should not be ignored, and that the USPTO cannot redefine in an extremely broad manner the problems addressed by the invention to simply reject the claims. Reply Br. 5. Appellant also argues that Binning and the instant application are unrelated because Binning is premised on the notion that the individual wants to be located whereas the instant application is premised on locating terrorists without their knowledge. App. Br. 17-18. Thus, Appellant argues the reasons for locating a person in Binning and the instant application are different and that difference must be considered. Reply Br. 5-6. Appellant further argues that Binning teaches away from the other references and the rationale to combine is flawed because Binning teaches locating an Appeal 2011-012061 Application 11/546,560 8 individual (i.e., emergency caller) that wants to be located while the other references teach locating individuals (i.e., hackers) that wish to remain anonymous. Id. at 17-18. Appellant argues there are no facts to support applying the 911 caller location system in Binning to locate an unauthorized system intrusion by a client device. Id. at 18. Appellant also argues Binning does not teach a “predefined monitored area” because the monitored area in Binning is unknown, and therefore, cannot be “predefined.” Id. at 18-19. We agree with the Examiner that the limitation “terrorist” is a non- functional descriptive material because there is no functional relationship between the function of the claimed method and the terrorist. The claim as a whole is directed to a method for locating and identifying a particular individual, namely a terrorist. However, changing that individual would have no effect on the function of the claim. Regardless of what constitutes a terrorist or what a terrorist may be incentivized by, the incentive resides only in the mind of the subject. Storing particular information on the server is reasonably interpreted as providing an incentive for an individual to connect to the server. The functionality of the server would not change by incentivizing an individual who would be interested in a server storing a particular piece of artwork, literature, banking information, or any other type of information. The distinction only resides in the nature or content of the information and not in its functionality. See Ex parte, Curry 84 USPQ2d 1272, 1274-75 (BPAI 2005) (informative); see also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative). In light of the absence of any definition of the specific activity or traits that make an individual a terrorist, as discussed above, we decline to reach the Examiner’s alternate rationale concluding that a computer hacker may be reasonably interpreted as a terrorist. Regarding Binning, we disagree with the Appellant that the Appeal 2011-012061 Application 11/546,560 9 instant application and Binning are completely unrelated, and that Binning teaches away from the claimed invention. “[T]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed . . . .” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (emphasis added). The instant application, Binning, and the other references are all related to tracking an individual. Even though the instant application and the other references track individuals who may not want to be located, and Binning tracks individuals who do want to be located, the mentality of the individual being located is irrelevant when determining whether Binning’s device has the underlying technology to perform a tracking function to locate and identify a received signal. Thus, it is irrelevant whether that signal was intentionally or unintentionally transmitted when determining whether Binning is able to locate and identify that signal. Furthermore, we agree with the Examiner that Binning teaches a “predefined monitored area.” Binning states that the “Emergency Locator Profile that includes a communications address of the residential communications network 180 and information about locating an associated communications device at an emergency communications address (i.e., a communications device at an emergency site).” Binning, para. 0028. Thus, we agree that Binning teaches storing locations in association with Emergency Locator Profiles. The Appellant has not adequately shown why those stored locations are not equivalent to predefined monitored areas. We affirm the rejection of claims 1, 3-7, 9, 14, 17-19, 22, 25, and 27 under 35 U.S.C. § 103(a) as being unpatentable over Amoroso, Huff, and Binning. Appeal 2011-012061 Application 11/546,560 10 Claims 2, 8, 11, 15, and 20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Amoroso, Huff, Binning, and Isenberg. Appellant argues claims 2, 8, 11, 15, and 20 as a group, and we select dependent claim 2 as representative. App. Br. 19. 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appellant argues that Trojan Horses, worms, viruses, and the like are different in structure, function, and potential result and that they could not be readily substituted for one another. Reply Br. 6-7. The Examiner argues that Trojan Horses and worms are both types of malicious programs placed on a user’s system without the user’s knowledge and that one of ordinary skill in the art would recognize that they are interchangeable in this sense. Ans. 29. We agree with the Examiner. Trojan Horses and worms are merely different types of malicious programs, each having well-known similarities and differences. One of ordinary skill in the art would recognize their differences and would find it obvious to substitute one type for the other to suit their needs. The results would be predictable since each type of program is merely being used for its established function. We affirm the rejection of claims 2, 8, 11, 15, and 20 under 35 U.S.C. § 103(a) as being unpatentable over Amoroso, Huff, Binning, and Isenberg. Claims 13 and 21 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Amoroso, Huff, Binning, and Dendi. Appellant argues claims 13 and 21 as a group, and recites dependent claim 13 as representative. App. Br. 20. 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claim 21 stands or falls with claim 13. Appeal 2011-012061 Application 11/546,560 11 The Examiner rejected claim 13, which depends from claim 1, based on the combination of Amoroso, Huff, and Binning, as applied to claim 1, and further in view of Dendi. Ans. 7. Appellant argues that Amoroso, Huff, and Binning do not teach the subject matter of claim 13 for the same reasons as cited for the rejection of claim 1, and that Dendi does not cure their deficiencies. App. Br. 21. Appellant further argues that the rationale behind the combination is questionable because there is no logical reason a terrorist would knowingly connect a GPS module to its client device. Id. at 21. Appellant argues that terrorists would not be reasonably expected to coordinate to provide a robust location-based robust ecosystem. Id. The Examiner argues Dendi’s technology is combined with the system of Amoroso, Huff, and Binning, not the intention of the user. Ans. 30-31. The Examiner argues that Dendi teaches an implementation of a device broadcasting a GPS signal, which can be received at public environments and commercial settings and used to locate the device. Id. The Examiner concludes that one of ordinary skill in the art would have found it obvious to implement such a system in Binning, which also discloses a system for locating a device based on received signals. Id. at 31. We agree with the Examiner. The intent or knowledge of the user who is being unknowingly located is not dispositive when determining whether it would have been obvious to implement the GPS technology of Dendi in the Amoroso device. GPS has other purposes than allowing a user to be unknowingly tracked. The user may have the GPS on the device for another purpose and this would still yield the claimed method. It is not necessary for the prior art to serve the same purpose as that disclosed in Appellant’s Specification in order to support the conclusion that the claimed Appeal 2011-012061 Application 11/546,560 12 subject matter would have been obvious. See In re Linter, 458 F.2d 1013, 1016 (CCPA 1972). We affirm the rejection of claims 13 and 21 under 35 U.S.C. § 103(a) as being unpatentable over Amoroso, Huff, Binning, and Dendi. Claim 23 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Amoroso, Huff, Binning, and Jiang. The Examiner rejected claim 23, which depends from claim 1, based on the combination of Amoroso, Huff, and Binning as applied to claim 1, in view of Jiang. Ans. 17-18. Appellant argues that Amoroso, Huff, and Binning do not teach the subject matter of claim 23 for the same reasons as cited for the rejection of claim 1, and that Jiang does not cure their deficiencies. App. Br. 22. Because we sustain the rejection of claim 1, there are no deficiencies to be cured by Jiang. We sustain the rejection of claim 23 under 35 U.S.C. § 103(a) as being unpatentable over Amoroso, Huff, Binning, and Jiang. Claims 24 and 26 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Amoroso, Huff, Binning, and Zanotti. Appellant argues claims 24 and 26 as a group, and we select claim 24 as representative. App. Br. 22. 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner rejected claim 24, which depends from claim 1, based on the combination of Amoroso, Huff, and Binning as applied to claim 1 further in view of Zanotti. Ans. 18-19. Appellant argues that Amoroso, Huff, and Binning do not teach the subject matter of claim 24 for the same reasons as cited for the rejection of claim 1, and that Zanotti does not cure their deficiencies. App. Br. 22-23. Appellant further argues Zanotti’s Appeal 2011-012061 Application 11/546,560 13 camouflaged signals would benefit the terrorists, not the party trying to locate the terrorists. App. Br. 23. Appellant also argues that Zanotti does not teach the concept of a homing signal. Id. The Examiner argues that Binning teaches homing signals. Ans. 32. The Examiner further argues that the Appellant is confusing the device user’s intention with the underlying technology. Id. The Examiner argues that Zanotti discloses using background noise to camouflage signals and that one of ordinary skill in the art would find it obvious to utilize that concept in communication signals to reinforce signal transmission security and ensure that only authorized personnel will be able to receive the signal. Id. at 33. We agree with the Examiner. Paragraph 0028 of Binning gives “homing signal” as an example of the type of transmission signal used in the reference. Non-obviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Furthermore, the intent or knowledge of the user is not dispositive when determining whether it would have been obvious to implement the technology of Zanotti as proposed by the Examiner. The particular motivation of Zanotti in transmitting noise along with the background signal does not demonstrate that one skilled in the art would not have appreciated that the inclusion of noise could be used for other purposes. Familiar techniques may have obvious uses beyond their primary, or expressly stated, purposes. In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1380 (Fed. Cir. 2007) (citing KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 402 (2007)). The Appellant has not apprised us of any reason why one skilled in the art would not have understood that Zanotti’s technique of using noise to camouflage tracking signals could not be implemented by whoever Appeal 2011-012061 Application 11/546,560 14 desires the signal to be camouflaged, be it the person being tracked or the person doing the tracking. We affirm the rejection of claims 24 and 26 under 35 U.S.C. § 103(a) as being unpatentable over Amoroso, Huff, Binning, and Zanotti. DECISION The Examiner’s rejections of claims 1-9, 11, 13-15, and 17-27 are AFFIRMED. We designate our affirmance of the rejection of claims 1-9, 11, 13, 22, and 23 under 35 U.S.C. § 112, second paragraph as a “new ground” under 37 C.F.R. § 41.50(b). Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection against claims 14, 15, 17-21, 26, and 27 under 35 U.S.C. § 112, second paragraph. Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides “Appellant may file a single request for rehearing within two months from the date of the original decision of the Board.” In addition to affirming the Examiner’s rejections of one or more claims, this decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Appeal 2011-012061 Application 11/546,560 15 Examiner, in which event the proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Should Appellant elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If Appellant elects prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED; 37 C.F.R. § 41.50(b) hh Copy with citationCopy as parenthetical citation