Carrier Corporation

Patent Trials and Appeals Board

Jan 12, 2022

2020004817 (P.T.A.B. Jan. 12, 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. 15/528,820 05/23/2017 Adam Kuenzi 80096US02(14-411-2) 6175 169907 7590 01/12/2022 Bachman & LaPointe, PC (Carrier) 900 Chapel St, Suite 1201 New Haven, CT 06510 EXAMINER PYZOCHA, MICHAEL J ART UNIT PAPER NUMBER 2419 MAIL DATE DELIVERY MODE 01/12/2022 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ADAM KUENZI Appeal 2020-004817 Application 15/528,820 Technology Center 2400 Before CAROLYN D. THOMAS, PHILLIP A. BENNETT, and SCOTT RAEVSKY, Administrative Patent Judges. RAEVSKY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2020-004817 Application 15/528,820 2 INTRODUCTION Appellant filed a Request for Rehearing (“Req.”) of the Patent Trial and Appeal Board’s (“Board”) Decision mailed October 14, 2021 (“Decision” or “Dec.”), in which we affirmed the rejection of claims 1-4, 7- 18, 20, and 21 under 35 U.S.C. § 103. ANALYSIS In our Decision, we noted that Appellant appeared to make a non- analogous art argument by contending that “there is simply no motivation to combine Scoggins-which is not concerned with decryption and is operable at a different security level-with Conrad as proposed.” Dec. 5 (citing Appeal Br. 10-11). We noted that two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. Id. (citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). And we found that Appellant, at most, suggested that Conrad and Scoggins are from different fields of endeavor but did not analyze whether Scoggins is still reasonably pertinent to the particular problem with which the inventor is involved. Id. We also found unpersuasive Appellant’s argument that the Examiner applied improper hindsight. Dec. 5-6. Accordingly, we affirmed the Examiner. Id. Appellant now argues that we misapprehended its Appeal Brief argument by considering it to be “an argument based on non-analogous art,” which Appellant asserts it was not. Req. 1. Appellant contends that its actual argument was: Appeal 2020-004817 Application 15/528,820 3 because Scoggins fails to teach any manner of decryption of the credentials, and the term “decrypt” is not even present in Scoggins, that a person having ordinary skill in the art would understand that Scoggins discloses only a validation using the unique user identifier disclosed therein. Because there is no decryption taking place in Scoggins, and Scoggins is directed only to guest level security to access a guest room, it is respectfully submitted that a person having ordinary skill in the art would not combine the features from these two references as is done in the Office action. Id. at 2. Appellant’s argument in the Appeal Brief was unclear. Upon further review, however, we agree with Appellant that it did not make a non- analogous art argument, i.e., Appellant’s argument was misapprehended. Nevertheless, we do not find Appellant’s argument against the combination persuasive. It appears that Appellant is arguing that “Scoggins fails to teach . . . decryption.” Appeal Br. 10. However, the Examiner cites Conrad, not Scoggins, for decrypting. Final Act. 4 (citing Conrad ¶ 56). Appellant therefore improperly argues the references individually, or in other words, argues the wrong reference for the wrong feature. Then Appellant asserts that “[t]he only motivation to make this combination is the teachings within Appellant’s invention,” which Appellant argues “is hindsight.” Appeal Br. 11. But this assertion does not follow from Appellant’s improper argument against the references individually. Furthermore, “[a]ny judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from [Appellant’s] disclosure, such a reconstruction is proper.” Appeal 2020-004817 Application 15/528,820 4 In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here, the Examiner has shown that Conrad teaches decrypting. As such, the Examiner took into consideration knowledge from Conrad and not knowledge only gleaned from Appellant’s disclosure. Thus, we find Appellant’s hindsight argument unavailing. Accordingly, we have granted Appellant’s Request to the extent that we have reconsidered the original Decision in light of the misapprehended arguments, but have DENIED it with respect to making any changes to the Decision. We, therefore, deny Appellant’s Request for Rehearing. Appeal 2020-004817 Application 15/528,820 5 CONCLUSION Outcome of Decision on Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Denied Granted 1-3, 7-14, 16, 17 103 Conrad, Scoggins 1-3, 7- 14, 16, 17 4, 15 103 Conrad, Scoggins, Hanson 4, 15 18, 21 103 Conrad, Scoggins, Gerhardt 18, 21 20 103 Conrad, Scoggins, Gerhardt, Hanson 20 Overall Outcome 1-4, 7- 18, 20, 21 Final Outcome of Appeal after Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 7-14, 16, 17 103 Conrad, Scoggins 1-3, 7-14, 16, 17 4, 15 103 Conrad, Scoggins, Hanson 4, 15 18, 21 103 Conrad, Scoggins, Gerhardt 18, 21 20 103 Conrad, Scoggins, Gerhardt, Hanson 20 Overall Outcome 1-4, 7-18, 20, 21 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). DENIED