Ex Parte Carter et al

Patent Trial and Appeal Board

May 6, 2013

11208275 (P.T.A.B. May. 6, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte EDWARD CARTER, MANOJ THAWANI, and MANAS DEB
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Appeal 2011-007131
Application 11/208,275
Technology Center 2400
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Before BRUCE R. WINSOR, LYNNE E. PETTIGREW,
and MIRIAM L. QUINN, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-30, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse and institute a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b) (2010).

RELATED APPEALS
The present application and application 11/207,661 both claim
priority from provisional patent applications 60/602,396 and 60/671,120.
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Application 11/207,661 is the subject of co-pending appeal 2010-004208,
notice of appeal filed January 29, 2009. Although not identified as such by
Appellants, App. Br. 2, or the Examiner, Ans. 2, we conclude that appeal
2010-004208 is related to the present appeal, notice of appeal filed August
30, 2010.

STATEMENT OF THE CASE
Appellants’ invention relates to wireless network communication, and
more specifically, to an architecture for supporting secure communication
network setup in a wireless local area network (WLAN). See Spec. ¶ [04].
Claim 1, which is illustrative of the invention, reads as follows:
1. A method for enabling communication of
information in a secure communication system, the method
comprising:
generating at least one encrypted configuration message
within a configurator timing window when at least one
configuration start signal is asserted; and
transferring said generated at least one encrypted
configuration message to a client station to enable secure
communication between a configurator station and said client
station.
The Examiner relies on the following prior art in rejecting the claims:
Buer US 2004/0019789 Al Jan. 29, 2004
(filed July 29, 2002)
Funnell ’466 1 US 2005/0086466 Al Apr. 21, 2005
(filed Aug. 12, 2004)
Zimmer US 2005/0114682 Al May 26, 2005
(filed Nov. 26, 2003)

1 Also referred to in the record as Funnell or Funnell_1.
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Funnell ’417 2 US 2005/0276417 Al Dec. 15, 2005
(filed June 9, 2004)
Claims 1, 3-11, 13-21, and 23-30 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Zimmer and Funnell ’466. Ans. 3-12.
Claims 2, 12, and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Zimmer, Funnell ’417, and Buer. Ans. 12-13.
Rather than repeat the arguments here, we refer to the Briefs and the
Answer for the respective positions of Appellants and the Examiner. Only
those arguments actually made by Appellants have been considered in this
decision. Arguments that Appellants did not make in the Briefs have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUE
The pivotal issue raised by Appellants’ contentions is as follows:3
Does the combination of Zimmer and Funnell ’466 teach or suggest
“generating at least one encrypted configuration message within a
configurator timing window when at least one configuration start signal is
asserted” (hereinafter the “generating step”) as recited in claim 1?

2 Also referred to in the record as Funnell or Funnell_2.
3 Appellants’ contentions raise additional issues. We are persuaded of error
with regard to the identified issue, which is dispositive of the appeal.
Therefore we do not reach the additional issues.
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ANALYSIS
Claim1
The Examiner finds that Zimmer teaches “generating at least one
encrypted configuration message.” Ans. 4 (citing Zimmer, ¶¶ [0020]-
[0021]). The Examiner further finds that that Funnell ’466, combined with
Zimmer, teaches or suggests that the message is generated “within a
configurator timing window when at least one configuration start signal is
asserted.” Ans. 4-5 (citing Funnell ’466, ¶¶ [0009]-[0010], [0033], 0047]-
[0048]). Appellants contend that the combination of Zimmer and Funnell
’466 does not teach or suggest the generating step. See App. Br. 13-14;
Reply Br. 5. Appellants explain, inter alia:
[T]he combination of Zimmer and Funnell [’466] discloses a
timer activation (as opposed to a configurator timing
window) during which a number of data packets sent on each
radio bearer (as opposed to configurators) is measured,
providing and encrypting a configuration update (as opposed to
encrypted configuration message), but does not disclose or
suggest a configurator timing window during which at least
one encrypted configuration message is generated, as
claimed by the Appellant in independent claim 1.
Reply Br. 7. We agree with Appellants.
As pointed out by Appellants, id., Funnell ’466 describes activation of
a timer. The cited passages of Funnell ’466 do not teach that the starting of
the timer is the beginning of a time period (i.e., a “timing window”) in which
a configuration message is generated. The timer is used to ascertain a period
of time (“uplink ciphering activation time”) for a number of data packets to
be sent on each radio bearer; however, that period of time is used to
“determin[e] the time at which a new ciphering configuration is to be
implemented.” Funnell ’466, ¶ [0009] (emphasis added). The configuration
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message for the new ciphering configuration necessarily must be generated
and transferred before it is implemented. Accordingly, although the
activation time may be used to define the end of a timing window during
which a configuration message is generated, the activation of Funnell ’466’s
timer does not define the beginning of such a time window. Accordingly,
we find that the cited passages of Funnell ’466 do not teach or suggest a time
window within which a configuration message is generated, but rather a way
of calculating a point in time for transitioning from one ciphering
configuration to another. Accordingly, we find that the Examiner has not
established that the combination of Zimmer and Funnell ’466 teaches or
suggests the generating step.
Appellants have persuaded us of error in the rejection of claim 1.
Accordingly, we do not sustain the rejection of (1) claim 1; (2) independent
claims 11 and 21, which include a limitation substantially similar to the
generating step; and (3) claims 3-10, 13-20, and 23-30, which depend,
directly or indirectly, from claims 1, 11, and 21, respectively.
Claim 2
Claim 2 depends from claim 1, which was rejected over Zimmer and
Funnell ’466. See Ans. 3-5. However, the Examiner’s statement of the
grounds of rejection for claim 2 refers to Funnell ’417 rather than Funnell
’466. Ans. 12-13 (citing Funnell ’417, ¶¶ [0036]-[0038], [0040], [0047]-
[0048]). It is unclear whether the omission of Funnell ’466, or the
substitution of Funnell ’417 for Funnell ’466 in the statement of the ground
of rejection of claim of 2 was inadvertent or intended. See, for example, the
Examiner’s statement of the evidence relied upon, which omits Funnell
’417. Ans. 3. If it was inadvertent, we deem the omission to be harmless
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error. Nevertheless, we find that the passages of Funnell ’417 cited by the
Examiner, like those cited from Funnell ’466 regarding claim 1, relate to
activation times for configuration changes rather than “generating [a] . . .
configuration message within a configurator timing window when [a] . . .
configuration start signal is asserted” as recited in claim 2 by reference to
claim. Accordingly, the cited passages of Funnell ’417 do not remedy the
deficiencies in the teachings of Funnell ’466 discussed above. Accordingly,
we do not sustain the rejection of claim 2, or claims 12 and 22, which recite
limitations substantially similar to claim 2.

NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b)
Claim 1 is rejected on a new ground of rejection under 35 U.S.C.
§ 103(a) as unpatentable over Funnell ’417 and Zimmer.
Funnell ’417 teaches a method for enabling communication of
information in a secure communication system. Funnell ’417, ¶ [0002]
(“This application relates to . . . [a] method for applying ciphering in
universal mobile telecommunications system user equipment and
network.”). Funnell ’417 teaches generating at least one configuration
message, Funnell, ’417, ¶ [0011] (“the new configuration”), within a
configurator timing window, id. (the period of time between when the
UTRAN [(Universal Telephone Radio Access Network)] decides to change
the timing configuration and before the new configuration is used), when at
least one configuration start signal is asserted, id. (“the UTRAN has decided
to change the ciphering configuration”). Funnell ’417 teaches transferring
said generated at least one configuration message to a client station, Funnel
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’417, ¶ [0056], Fig. 3, to enable secure communication between a
configurator station and said client station, Funnell ’417, ¶ [0002].
Funnell ’417 teaches all of the elements of claim 1 except that Funnell
’417 does not explicitly teach that the configuration message is encrypted.
However, one of ordinary skill in the art would have understood that since
Funnell ’417 teaches ciphered, i.e., encrypted, communication, Funnell
’417’s configuration messages would also be encrypted. Zimmer (see
Zimmer, Abstract)  like Funnell ’417 (see Funnell ’417, Abstract) and
Appellants’ claimed invention  is directed to the problem of
communicating configuration messages to a device to be configured.
Accordingly, we find Zimmer is reasonably pertinent to the problem faced
by Appellants and is, therefore, analogous art. Compare App. Br. 8-9; Reply
Br. 4-5. To the extent that Funnell ’417 does not teach encrypted
configuration messages, Zimmer teaches encrypting a configuration
message. Zimmer, ¶ [0020]. It would have been obvious to one of ordinary
skill in the art to combine Zimmer’s encryption of a configuration message
to improve the communication security of Funnell ’417’s configuration
message, as it would predictably improve Funnell ’417’s system in the same
way that it improves Zimmer’s. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007).
The Patent Trial and Appeal Board is a review body, rather than a
place of initial examination. We have entered new grounds of rejection of
claim 1. However, we have not reviewed claims 2-30 to the extent
necessary to determine whether these claims are unpatentable under 35
U.S.C. § 103(a) over Funnell ’417, Zimmer, Funnell ’466, Buer, or any other
prior art, in view of our findings and conclusions herein regarding claim 1.
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In the event of further prosecution we leave it to the Examiner to determine
the patentability of claims 2-30 in view of our findings and conclusions
herein.4 Our decision not to enter a new ground of rejection for all claims
should not be considered as an indication regarding the appropriateness of
further rejection or allowance of the non-rejected claims.

ORDER
The decision of the Examiner to reject claims 1-30 is reversed.
We enter a new ground of rejection for claim 1 under 35 U.S.C.
§ 103(a) as being unpatentable over Funnell ’417 and Zimmer.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground 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 examiner, in which event the proceeding
will be remanded to the examiner. . . .

4 In addition, in the event of further prosecution of claims 11-20, or claims in
similar form, we leave to the Examiner to ascertain whether such claims are
directed to statutory subject matter under 35 U.S.C. § 101. See In re Nuijten,
500 F.3d 1346, 1357 (Fed. Cir. 2007); MPEP § 2106(I) (8th ed. 2001, rev.
2012); David J. Kappos, Subject Matter Eligibility of Computer Readable
Media, 1351 OFF. GAZ. PAT. OFFICE 212 (Feb. 23, 2010).
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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.
37 C.F.R. § 41.50(b).
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).

REVERSED
37 C.F.R. § 41.50(b)

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