Ex Parte Covington et al

Patent Trial and Appeal BoardNov 20, 2014

11317879 (P.T.A.B. Nov. 20, 2014)

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. 11/317,879 12/21/2005 Michael J. Covington ITL.2265P1US (P21001X) 2631 47795 7590 11/21/2014 TROP, PRUNER & HU, P.C. 1616 S. VOSS RD., SUITE 750 HOUSTON, TX 77057-2631 EXAMINER SCHWARTZ, DARREN B ART UNIT PAPER NUMBER 2435 MAIL DATE DELIVERY MODE 11/21/2014 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 MICHAEL J. COVINGTION and MANOJ R. SASTRY ____________ Appeal 2012-008264 Application 11/317,879 Technology Center 2400 ____________ Before JEFFREY S. SMITH, DANIEL N. FISHMAN, and CATHERINE SHIANG, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 24, 28–32, 34–41, and 43–47. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. In reaching the decision, we have considered only the arguments Appellants actually raised. Arguments Appellants did not make are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appeal 2012-008264 Application 11/317,879 2 STATEMENT OF THE CASE The present invention relates to computer security. See generally Spec. 1. Claim 24 is exemplary: 24. A method comprising: receiving, in an authentication module of a server, a request from a wireless client device for access to a protected resource, the request including contextual attributes associated with the wireless client device, including a geographic location of the wireless client device and user purchase information for a purchased good or service different from the protected resource by a user of the wireless client device at an establishment located at the geographic location, the user purchase information indicative of the purchase and received in the wireless client device from an electronic system of the establishment responsive to a data communication by the wireless client device to the electronic system representing electronic cash, the establishment and a provider of the server being different entities, and the contextual attributes do not include identity information of the user; comparing, in the server, the contextual attributes against a policy database; and granting the wireless client device access to the protected resource if the contextual attributes are valid according to a policy in the policy database. THE REJECTIONS Claims 24 and 44–47 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Chan (US 7,512,973 B1; Mar. 31, 2009), Williams (US 2005/0124319 A1; June 9, 2005), ZyAIR (“ZyAIR B-4000, Hot Spot in a Box Wireless Service Gateway,” ZyXEL Communications Corporation, 2003), Nakajima (US 2002/0108062 A1; Aug. 8, 2002), and as evidenced by Ellis (US 2003/0221112 A1; Nov. 27, 2003). Appeal 2012-008264 Application 11/317,879 3 Claim 28 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Chan, Williams, ZyAIR (as evidenced by Ellis), Nakajima, and Wong (US 2004/0162981 A1; Aug. 19, 2004). Claims 29–32 and 36–39 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Chan, Williams, and ZyAIR (as evidenced by Ellis). Claim 34 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Chan, Williams, ZyAIR (as evidenced by Ellis), and Camp (US 6,076,078; June 13, 2000). Claims 35, 40, and 41 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Chan, Williams, ZyAIR (as evidenced by Ellis), and Menezes (Alfred J. Menezes et al., “Handbook of Applied Cryptography,” CRC Press, 1997). Claim 43 is rejected under 35 U.S.C. 103(a) as being unpatentable over Chan, Williams, ZyAIR (as evidenced by Ellis), Menezes, and Wong. ISSUE Under 35 U.S.C. § 103, has the Examiner erred by rejecting claim 24? ANALYSIS THE OBVIOUSNESS REJECTIONS On this record, we find the Examiner did not err in rejecting claim 24. We disagree with Appellants’ arguments (App. Br. 11–14; Reply Br. 1–3), and agree with and adopt the Examiner’s findings and conclusions on pages 5–8 and 25–44 of the Answer as our own. Therefore, we limit our discussion to the following points for emphasis. Appeal 2012-008264 Application 11/317,879 4 It is well settled that: [The USPTO] satisfies its initial burden of production by adequately explain[ing] the shortcomings it perceives so that the applicant is properly notified and able to respond. In other words, the PTO carries its procedural burden of establishing a prima facie case when its rejection satisfies 35 U.S.C. § 132, in notify[ing] the applicant . . . [by] stating the reasons for [its] rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application. In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (internal citations and quotation marks omitted). The Examiner has satisfied the initial burden of production by providing detailed mapping of the claim limitations (Ans. 5–8), and combining Chan, Williams, ZyAIR (as evidenced by Ellis), and Nakajima to establish a case of obviousness. See Ans. 5–8. The burden then shifts to Appellants to rebut the Examiner’s case. But Appellants have not met their burden. First, Appellants assert the references do not teach three different communications, but fail to provide persuasive analysis of the cited portions of the references. 1 See App. Br. 11–12; Reply Br. 2. Indeed, Appellants’ assertion in the Appeal Brief amounts to about 4 lines of attorney arguments—without citing any support—as to what Chan, Williams, ZyAIR, Nakajima, and Ellis generally teach. See App. Br. 12. Such general and conclusory attorney argument—without any factual evidence support—does not persuade us of error. 1 Appellants summarize claims in their own language instead of citing claim language, which may lead to confusion. Appeal 2012-008264 Application 11/317,879 5 Second, Appellants contend the references fail to teach “user purchase information for a purchased good or service different from the protected resource,” as recited in claim 1. See App. Br. 12–13. Appellants argue ZyAIR does not teach a purchased good or service different from the protected resource because ZyAIR states “business can attract new customers and charge for access as a way of defraying . . . costs” and “allowing . . . cashiers to easily print receipts with billing and password information.” See App. Br. 12; Reply Br. 3; ZyAIR, p. 1. Appellants contend Ellis’ happy meal has nothing to do with the disputed claim limitation, and Ellis fails to teach communication of user purchase information in a happy meal. See App. Br. 13; see also Reply Br. 3. We disagree. As pointed out by the Examiner, ZyAIR states “business can attract new customers and charge for access[.]” See Ans. 35; ZyAIR, p. 1 (emphasis added). Contrary to Appellants’ assertion, that sentence does not state ZyAIR’s “transaction” must be for purchasing Internet access. See Ans. 35. For example, one skilled in the art may interpret the sentence to mean that ZyAIR grants a customer limited access (such as 10 minutes) to the Internet as a result of purchasing coffee, but if the customer wants to continue the access for another 2 hours, then the customer needs to pay for the access charge for the 2 hours. Nor does ZyAIR’s sentence of “allowing . . . cashiers to easily print receipts with billing and password information” support Appellants’ argument, because the “billing” can be the billing for purchasing coffee. As a result, the Examiner provides reasonable and detailed analysis as to why “a purchased good or service different from the protected resource” is taught or at least obvious in light of ZyAIR’s findings, especially in light of Ellis’s Appeal 2012-008264 Application 11/317,879 6 disclosures. See Ans. 32–38. Further, as pointed out by the Examiner, Ellis teaches “[a] merchant may purchase content from, or partner with, a content provider to provide content to the merchant's customers. For example, a special offer key may be given in a ‘happy meal’ or its equivalent that allows content to be accessed for a period of time.” Ellis 39; see Ans. 36. The Examiner then finds: Based on this “Happy Meal” embodiment of Ellis, a merchant can charge for one item, a “happy meal,” and provide access to a second item, digital content, where the “happy meal” and digital content are different from one another. The Examiner provided Ellis as evidence showing that purchasing one item and receiving access to a second item, wherein the first item and second item are different, is a plausible and thus a possible embodiment of the ZyAIR reference (e.g. purchasing coffee and then receiving access for the Wi-Fi / Internet). The Examiner maintains that such rationale of Ellis demonstrates that “a transaction” of ZyAIR can be different from the granting of access to Internet and is thus a reasonable interpretation of the teachings of ZyAIR.” Ans. 37. Appellants fail to adequately rebut the Examiner’s above findings. As a result, we find the Examiner provides reasonable and detailed analysis as to why “a purchased good or service different from the protected resource” is taught or at least obvious in light of ZyAIR’s teachings (especially in light of Ellis’s disclosures) (Ans. 32–38), and Appellants fail to adequately rebut the Examiner’s findings. Third, Appellants contend “[n]or is there any reason to combine this WiFi hotspot for commercial establishments with the DRM systems of Chan and Williams, one of which is for mobile terminals and the other for home network systems.” App. Br. 13. Appeal 2012-008264 Application 11/317,879 7 Appellants fail to persuade us of error because it is well settled that “a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citations omitted). Nor is the test for obviousness whether a secondary reference’s features can be bodily incorporated into the structure of the primary reference. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner provides detailed explanation as to why one skilled in the art would consider the cited references and the invention are in the same field (Ans. 28–30), and Appellants fail to rebut such explanation. Further, under KSR, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (emphasis added). Fourth, Appellants argue “the recited data communication contended to be taught in Nakajima is not present” because “Nakajima fails to anywhere address that electronic purchase information be provided to the user.” Appellants contend “nowhere addresses the subject matter of the recited user purchase information that is received responsive to this data communication.” See App. Br. 13. Appellants also contend Williams does not teach the “request for access further includes the geographic location of the wireless client device, and which also corresponds to the establishment at which the good or service (different from the protected resource) was purchased,” because William’s teachings have nothing to do with “this Appeal 2012-008264 Application 11/317,879 8 location be at an establishment at which a user has purchased a good or service different from a protected resource.” See App. Br. 13–14. Appellants’ assertion is unpersuasive because the Examiner relies on the cited references collectively to teach claim 1, neither Nakajima nor William needs to teach every single claim limitation by itself. Appellants cannot establish nonobviousness by attacking the references individually. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We note the Examiner relies on Nakajima to teach “responsive to a data communication by the wireless client device to the electronic system representing electronic cash.” See Ans. 8. And the Examiner relies on Williams to teach the request including a geographic location of the wireless client device (see Ans. 6). Fifth, Appellants assert “Chan nowhere teaches or suggests that a wireless client device make a purchase at an establishment located at a geographic location.” See App. Br. 14; see also Reply Br. 2–3. Appellants do not provide any analysis of Chan’s column 6 section, which the Examiner cites in the Final Rejection. See Final Rej. 13–14. The Examiner provides further detailed explanation (Ans. 44), citing Figures 1 and 3, and columns 2 and 6. Appellants again fail to provide adequate analysis of the cited portions to rebut the Examiner’s findings. As a result, the Examiner’s findings based on those figures and columns are undisputed. See In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court [or this Board] to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”). Appeal 2012-008264 Application 11/317,879 9 In the Reply Brief and for the first time, Appellants belatedly argue “the Examiner incorrectly applies Chan on both of these bases [identified on page 27 of the Answer].” See Reply Br. 3–4. Since the Examiner previously presented such findings in the Final Rejection (Final Rej. 13–14), Appellants have waived such arguments because they are untimely. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”). We further note Appellants’ belated arguments fail to persuade us of error. Other than citing 11 lines of Chan, the remaining Appellants’ arguments are attorney conclusory remarks—without citing support—as to what Chan teaches. See Reply. Br. 2–3. Further, Appellants fail to provide adequate analysis of the Chan portions cited by the Examiner to reach the findings. See Ans. 5–6. As a result, the Examiner’s findings based on those Chan portions are undisputed. See In re Baxter Travenol Labs., 952 at 391. Accordingly, we sustain the Examiner’s rejection of claim 24, and corresponding claims Appellants do not separately argue or Appellants argue should be allowed for same or similar reasons. Separately Argued Claims We disagree with Appellants’ assertion (App. Br. 14–18; Reply Br. 3), and agree with and adopt the Examiner’s findings and conclusions on pages 45–66 of the Answer as our own. Therefore, we limit our discussion to the following points for emphasis. Appeal 2012-008264 Application 11/317,879 10 Regarding claim 46, Appellants’ attorney conclusory remarks— without citing any support and without providing any evidence or analysis of the Chan portions cited by the Examiner—fail to persuade us of error. Regarding claim 47, the Examiner has provided detailed findings explaining why Appellants’ challenge to the Examiner’s citing Official Notice is untimely and unpersuasive (Ans. 47–55), and Appellants fail to rebut such findings. Further, the Examiner has satisfied the initial burden of production by (1) taking official notice, and (2) combining that official notice with cited references to establish a case of obviousness. See Jung, 637 F.3d at 1362. Then the burden shifts to Appellants to rebut the Examiner’s case. But Appellants have not carried the burden. Because Appellants generally argue taking official notice is improper, but fail to explain why the noticed fact is not well known in the art, Appellants have not persuasively rebutted the Examiner’s case. See 37 C.F.R. § 1.111(b). Regarding claim 28, contrary to Appellants’ assertion, Nakajima is included in the rejection. See Final Rej. 18. If Appellants meant Ellis instead of Nakajima, Appellants’ assertion is unpersuasive for the reasons stated by the Examiner (Ans. 56–57). The Examiner has satisfied the Jung requirement by providing detailed mappings and findings to establish a case of obviousness. See Jung, 637 F.3d at 1362. Regarding claims 34, 35, and 43, Appellants’ assertion is unpersuasive for the reasons stated by the Examiner (Ans. 58–62, 65–66). The Examiner has satisfied the Jung requirement by providing detailed mappings and findings to establish a case of obviousness. See Jung, 637 F.3d at 1362. Appeal 2012-008264 Application 11/317,879 11 Regarding claim 40–41, Appellants’ assertion is unpersuasive for the reasons stated by the Examiner (Ans. 64). Further, as discussed above, because the Examiner relies on multiple references to reach the obviousness conclusion, Appellants cannot establish nonobviousness by attacking the references individually. See Merck, 800 F.2d at 1097. DECISION The Examiner’s decision rejecting claims 24, 28–32, 34–41, and 43– 47 is affirmed. 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 ELD