Apple Inc.

Patent Trials and Appeals Board

Mar 30, 2022

2021001157 (P.T.A.B. Mar. 30, 2022)

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. 15/275,203 09/23/2016 Wade Benson 122202-5812 (P31208US2) 6490 142248 7590 03/30/2022 Baker & Hostetler LLP (Apple) 600 Anton Boulevard Suite 900 Costa Mesa, CA 92626 EXAMINER LIN, AMIE CHINYU ART UNIT PAPER NUMBER 2436 NOTIFICATION DATE DELIVERY MODE 03/30/2022 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): Eofficemonitor@bakerlaw.com OCIPDocketing@bakerlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WADE BENSON, MARC J. KROCHMAL, ALEXANDER R. LEDWITH, JOHN IAROCCI, JERROLD V. HAUCK, MICHAEL BROUWER, MITCHELL D. ADLER, and YANNICK L. SIERRA Appeal 2021-001157 Application 15/275,203 Technology Center 2400 Before JEAN R. HOMERE, JASON V. MORGAN, and DAVID J. CUTITTA II, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF THE CASE1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1-17 and 33-47. Appeal Br. 5. Claims 18-32 are cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We refer to the Specification, filed Sep. 23, 2016 (“Spec.”); Final Office Action, mailed Dec. 12, 2019 (“Final Act.”); Appeal Brief, filed June 22, 2020 (“Appeal Br.”); Examiner’s Answer, mailed Oct. 5, 2020 (“Ans.”); and Reply Brief, filed Dec. 7, 2020 (“Reply Br.”). 2 “Appellant” refers to “Applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Apple Inc., Appeal Br. 3. Appeal 2021-001157 Application 15/275,203 2 II. CLAIMED SUBJECT MATTER According to Appellant, the claimed subject matter relates to a method and system for “using a trusted device to modify a security state at a target device (e.g., unlocking the device).” Spec. 2:1-2. Figure 2, reproduced below, is useful for understanding the claimed subject matter: Figure 2 above depicts a system using securing ranging with trusted device 210 to modify the security state of target device 220. Spec. 18:19-23. In particular, upon receiving unlock request 250 from target device 220, and upon determining that a sample measured distance meets a predetermined threshold (i.e., the devices are within a predetermined distance from each other), trusted device 210 transmits to target device 220 a security token including unlock key 260, which trusted device 210 had previously received Appeal 2021-001157 Application 15/275,203 3 from target device 220 to thereby unlock target device 220. Id. at 10:14-18, 18:23-19:12, 25:26-28. Claims 1, 34, and 47 are independent. Claim 1, with disputed limitations emphasized, is illustrative: 1. A method comprising: performing, by a first device a plurality of ranging operations to compute a plurality of sample distance measurements between the first device and a second device; determining, by the first device, whether the plurality of sample distance measurements meets a set of criteria; and when the plurality of sample distance measurements meets the set of criteria, transmitting a security token to the second device to modify a security state at the second device, the security token having been previously received by the first device from the second device. Appeal Br. 26 (emphasis added). III. REFERENCES The Examiner relies upon the following references as evidence:3 Name Reference Date McCorkle US 2004/0203600 A1 Oct. 14, 2004 Agrawal US 2007/0287386 A1 Dec. 13, 2007 Poiesz US 2014/0373100 A1 Dec. 18, 2014 Weksler UA 2017/0164190 A1 Jun. 8, 2017 Prakash US 2017/020528 A1 Sep. 21, 2017 IV. REJECTIONS The Examiner rejects claims 1-17 and 33-47 as follows: 3 All reference citations are to the first named inventor only. Appeal 2021-001157 Application 15/275,203 4 Claims 1-7, 9, 11-15, 33-40, 42, and 44-47 stand rejected under 35 U.S.C. § 103 as unpatentable over the combined teachings of Agrawal and McCorkle. Final Act. 5-21. Claims 8 and 41 stand rejected under 35 U.S.C. § 103 as unpatentable over the combined teachings of Agrawal, McCorkle, and Poiesz. Final Act. 21-22. Claims 10 and 43 stand rejected under 35 U.S.C. § 103 as unpatentable over the combined teachings of Agrawal, McCorkle, and Prakash. Final Act. 23-24. Claims 16 and 17 stand rejected under 35 U.S.C. § 103 as unpatentable over the combined teachings of Agrawal, McCorkle, and Weksler. Final Act. 25. V. ANALYSIS We consider Appellant’s arguments seriatim, as they are presented in the Appeal Brief, pages 10-22 and the Reply Brief, pages 3-5.4 We are unpersuaded by Appellant’s contentions. Except as otherwise indicated herein below, we adopt as our own the findings and reasons set forth in the Final Action, and the Examiner’s Answer in response to Appellant’s Appeal Brief.5 Final Act. 5-25; Ans. 3-23. However, we highlight and address specific arguments and findings for emphasis as follows. 4 We have considered in this Decision only those arguments Appellant actually raised in the Briefs. 5 See ICON Health and Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1042 (Fed. Cir. 2017) (“As an initial matter, the PTAB was authorized to incorporate the Examiner’s findings.”); see also In re Brana, 51 F.3d 1560, Appeal 2021-001157 Application 15/275,203 5 Appellant argues that the Examiner errs in finding that the combination of Agrawal and McCorkle teaches or suggests a first device transmitting to a second device a security token previously received from the second device to thereby modify the state of the second device, as recited in claim 1. Appeal Br. 10. In particular, Appellant argues that McCorkle’s disclosure of an authentication device using a temporary public key previously received for encryption from a new device, along with the disclosure of the authentication device sending an authentication token to the new device when the two devices are within a predetermined distance from each other do not teach the disputed limitations. Id. at 11 (citing McCorkle ¶¶ 186, 195). According to Appellant, although the authentication device received the temporary public key from the new device, the authentication device does not send the public key along with the authentication token to the new device. Id. Furthermore, Appellant, argues that the authentication token that the authentication device sent to the new device was not previously received therefrom. Id. Therefore, Appellant submits that McCorkle does not cure the admitted deficiencies of Agrawal. Id. Appellant’s arguments are not persuasive of reversible Examiner error because they are tantamount to separate attacks against the references individually, and not as the combination proposed by the Examiner. One cannot show non-obviousness by attacking the references individually where the rejections are based on combinations of references. In re Merck & Co., 1564 n.13 (Fed. Cir. 1995) (upholding the PTAB’s findings, although it “did not expressly make any independent factual determinations or legal conclusions,” because it had expressly adopted the examiner’s findings). Appeal 2021-001157 Application 15/275,203 6 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner finds, and Appellant does not dispute, that Agrawal discloses a second device transmitting a security token to a first device. Final Act. 6-7, Ans. 3 (citing Agrawal ¶¶ 75, 76, 84, 85). Further, the Examiner finds that McCorkle discloses, upon detecting that the two devices are within a predetermined distance of each other, the first/authentication device sends to the second device an authentication token (including the temporary public key previously received from the second device). Final Act. 7-8, Ans. 3-6 (citing McCorkle ¶¶ 192, 195). Furthermore, the Examiner reasons that: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings described by McCorkle into the invention of Agrawal. The motivation for such an implementation would be for the purpose of sending a security message to a user indicating that authentication data has been compromised when it is determined that an authentication failed (McCorkle ¶ 200), and providing secure communications by avoiding unencrypted data being sent during authentication and private keys being exchanged over open air (McCorkle ¶ 188). Final Act. 8. As an initial matter, we note Appellant’s Appeal Brief fails to address the Examiner’s findings with respect to the proposed application of Agrawal to claim 1. Accordingly, Appellant’s belated arguments in the Reply Brief regarding the proposed application of Agrawal to claim 1 are forfeited.6 We 6 Arguments not made are forfeited. See 37 C.F.R. § 41.37(c)(1)(iv). Belated arguments are waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to make Appeal 2021-001157 Application 15/275,203 7 further note that McCorkle does not explicitly teach the authentication token (sent from the authentication device to the new device) includes the temporary public key. McCorkle ¶¶ 192, 195. What is clear from McCorkle’s disclosure, as argued by Appellant, is that the first device previously received from the second device the temporary public key, which is used to encrypt data; and that the first device sends the authentication token to the second device. Id. Nonetheless, we find Agrawal’s disclosure of a second device sending to a first device an authentication token in combination with McCorkle’s disclosure of the first device sending the authentication token to the second device is no more than a simple arrangement of old elements with each performing the same function it had been known to perform, yielding no more than what one would expect from such an arrangement. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Therefore, the ordinarily skilled artisan, being “a person of ordinary creativity, not an automaton,” would have been able to fit the teachings of the cited references together like pieces of a puzzle to predictably result in an authentication device sending to a new device an authentication token previously received from the new device when the two devices are within a predetermined distance from each other to thereby unlock the second device. Id. at 420-21. Because Appellant has not demonstrated that the Examiner’s proffered combination would have been “uniquely challenging or difficult for one of ordinary skill in the art,” we agree with the Examiner that the proposed modification would have been within the purview of the ordinarily arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not.”) Appeal 2021-001157 Application 15/275,203 8 skilled artisan. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Consequently, we are satisfied that, on the record before us, the Examiner has established by a preponderance of the evidence that the combination of Agrawal and McCorkle teaches the disputed claim limitations. Because we are not persuaded of Examiner error, we sustain the Examiner’s rejection of claim 1 as being unpatentable over the combination of Agrawal and McCorkle. Regarding the rejection of claim 12, Appellant argues that Agrawal does not teach “the first device receives the security token from the second device during the authorization process.” Appeal Br. 12. According to Appellant, Agrawal’s mere disclosure of exchanging security credentials does not teach or suggest any information regarding how security credentials were established. Id. (citing Agrawal ¶ 85). Appellant’s arguments are not persuasive of reversible Examiner error. We agree with the Examiner that Agrawal’s disclosure of an association procedure during which an authentication/authorization process is performed by allowing a first device to receive security credentials from a second device teaches the first device receiving a security token from the second device during an authorization process. Ans. 7-8 (citing Agrawal ¶¶ 84, 85). Regarding the rejections of claims 2-11 and 33-47, to the extent that Appellant has not presented separate patentability arguments or has reiterated substantially the same arguments as those previously discussed for the patentability of claims 1 and 12, claims 2-11, and 33-47 fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv). To the extent that Appellant argues 2-11, Appeal 2021-001157 Application 15/275,203 9 and 33-47 separately, we find that the Examiner’s responses in the Answer rebut by a preponderance of the evidence Appellant’s corresponding arguments, which we deem thereby to be unpersuasive. Ans. 8-23. Because we are not persuaded of reversible Examiner error in the rejections of claims 2-11, and 33-47, we sustain the Examiner rejections of the cited claims. On this record, we affirm the Examiner’s rejections of claims 1-17 and 33-47. VII. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-7, 9, 11-15, 33-40, 42, 44-47 103 Agrawal, McCorkle 1-7, 9, 11-15, 33- 40, 42, 44-47 8, 41 103 Agrawal, McCorkle, Poiesz 8, 41 10, 43 103 Agrawal, McCorkle, Prakash 10, 43 16, 17 103 Agrawal, McCorkle, Weksler 16, 17 Overall Outcome 1-17, 33-47 VIII. TIME PERIOD FOR RESPONSE 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED