Ex Parte Cudak et al

Patent Trial and Appeal Board

Nov 7, 2017

14301663 (P.T.A.B. Nov. 7, 2017)

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.
14/301,663 06/11/2014 Gary D. Cudak RPS920140031US2 2604
63638 7590 11/07/2017
STREETS & STEELE - IBM CORPORATION (ROC)
13100 WORTHAM CENTER DRIVE, SUITE 245
Suite 245
HOUSTON, TX 77065
EXAMINER
MOTT, GENNA M
ART UNIT PAPER NUMBER
3662
MAIL DATE DELIVERY MODE
11/07/2017 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 GARY D. CUDAK, CHRISTOPHER J. HARDEE, and
ADAM ROBERTS
Appeal 2017-003595
Application 14/301,6631
Technology Center 3600
Before ERIC S. FRAHM, MICHAEL J. STRAUSS, and
AARON W. MOORE, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
1 This application is a continuation of U.S. Patent Application No.
14/300,717, which is before the Patent Trial and Appeal Board as Appeal
No. 2017-003592. See App. Br. 2; Spec. 11. The instant application
concerns a method, and related application 14/300,717 concerns a computer
program product to perform the method. Both applications are assigned to
International Business Machines Corporation. App. Br. 2; see also Appeal
No. 2017-003592, App. Br. 2.
Appeal 2017-003595
Application 14/301,663
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—12, 15—18, and 20. During prosecution and after the final
rejection, claims 6 and 12—20 have been canceled.2 Thus, only the final
rejection of claims 1—5 and 7—11 is before us on appeal. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Disclosed Invention and Exemplary Claim
Appellants’ disclosed invention relates to a method of preventing
login attempts on an electronic device based on a stored itinerary of
destinations and a monitored location of the device (Spec. Tflf 2, 5, Abs., Fig.
3, claim 1).
Representative independent claim 1, with emphases on disputed
portions of the claim, reads as follows:
1. A method, comprising:
storing an itinerary in memory of an electronic device,
wherein the itinerary includes a plurality of destinations and a
time period associated with each destination;
monitoring the location of the electronic device,
including receiving signals from a global positioning system;
comparing the location of the electronic device to the
itinerary;
2 Claims 13, 14, and 19 were canceled in the amendment filed February 25,
2016. Claims 6, 12, 15—18, and 20 were canceled in the after final
amendment filed June 9, 2016 (see pp. 3—5, 10-12), which was entered by
the Advisory Action mailed June 21, 2016 (see p. 2, box 7).
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Application 14/301,663
preventing login attempts on the electronic device in
response to determining that the location of the electronic
device at the current time does not match the destination
specified in the itinerary for the time period that includes the
current time; and
after preventing login attempts, allowing login attempts
on the electronic device in response to the location of the
electronic device matching a predetermined home location.
Examiner’s Rejections3
(1) The Examiner rejected claims 1—4, 7, and 8 as being unpatentable
under 35 U.S.C. § 103(a) over Ozeki (US 2003/0073448 Al, published Apr.
3 We consider the Examiner’s following rejections, made in the Final Office
Action, to be withdrawn: the rejections of (i) claims 1—5, 7—12, and 15—18
under 35 U.S.C. § 101 (see Final Act. 4—6); (ii) claim 6 under 35 U.S.C.
§103 over the combination of Ozeki and Bade (Final Act. 8); (iii) claim 12
under 35 U.S.C. § 103 over the combination of Ozeki, Bade, and Mahajan
(US 2010/0216429 Al, published Aug. 26, 2010) (see Final Act. 12-13);
(iv) claim 16 under 35 U.S.C. § 103 over the combination of Ozeki, Bade,
and Meir (US 2015/0074796 Al, filed Sept 6, 2013) (see Final Act. 13); and
(v) claim 20 under 35 U.S.C. § 103 over the combination of Ozeki and
Ferren (US 2008/0034224 Al, published Feb. 7, 2008) (see Final Act. 13—
14).
Although the Examiner states that every ground of rejection set forth
in the Final Office Action is being maintained (Ans. 3), we take this to be
harmless error in view of the cancellation of claims 6 and 12—20 (see Adv.
Act. 1 (boxes 7 and 15)). In other words, the cancellation of claims 6 and
12—20 clearly obviates the obviousness rejections of those claims. In
addition, we agree with the Examiner (see Ans. 3) and Appellants (see App.
Br. 4) that only the obviousness rejections of claims 1—5 and 7—11 are at
issue on appeal. Further, in light of the Examiner’s statement at page 1, box
15 of the Advisory Action that claim 6 is not rejected and Appellants’
cancellation of claim 6, contrary the statements of both Appellants (App. Br.
4) and the Examiner (Ans. 3) that claim 6 is rejected and ready for review on
appeal, we consider canceled claim 6 not to be before us.
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Application 14/301,663
17, 2003) and Bade (US 2002/0137524 Al, published Sept. 26, 2002).4
Final Act. 6—10.
(2) The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Ozeki, Bade, and Cooper (US
6,757,362 Bl, issued June 29, 2004). Final Act. 10-11.
(3) The Examiner rejected claims 9-11 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Ozeki, Bade, and Horstemeyer
(US 2004/0243664 Al, published Dec. 2, 2004). Final Act. 11-12.
Principal Issue on Appeal
Based on Appellants’ arguments (App. Br. 5—14; Reply Br. 3), the
following principal issue is presented:
Did the Examiner err in rejecting claims 1—5 and 7—11 as being
obvious because the base combination of Ozeki and Bade is not properly
combinable to teach or suggest a method of preventing login attempts on an
electronic device based on a stored itinerary of destinations and a monitored
location of the device, as set forth in representative claim 1?
4 Appellants present arguments primarily as to the patentability of claim 1
(App. Br. 5—13), and rely on those arguments as to remaining dependent
claims 2—11 (App. Br. 13). We select independent claim 1 as representative
of the group of claims rejected under § 103(a) over Ozeki and Bade (claims
1—4, 7, and 8), pursuant to our authority under 37 C.F.R. § 41.37(c)(l)(iv).
Accordingly, our analysis herein will only address representative claim 1.
We will decide the outcome of (i) claim 5 rejected over the combination of
Ozeki, Bade, and Cooper, and (ii) claims 9-11 rejected over the combination
of Ozeki, Bade, and Horstemeyer, based on the outcome for claim 1.
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Application 14/301,663
ANALYSIS
We have reviewed the Examiner’s rejection (Final Act. 6—12) in light
of Appellants’ contentions in the Appeal Brief (App. Br. 5—13) and the
Reply Brief (Reply Br. 3) that the Examiner has erred, as well as the
Examiner’s response to Appellants’ arguments in the Appeal Brief (Ans. 3—
6). We disagree with Appellants’ contentions. With regard to representative
claim 1, we adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (Final Act. 6—7); (2)
the additional findings and reasoning set forth in the Advisory Action mailed
June 21, 2016 (p. 2); and (3) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellants’ Appeal Brief (see Ans. 3—6).
Reason to Combine
The Examiner has provided a factual basis and articulated reasoning
with a rational underpinning to support the conclusion of obviousness with
regard to claim 1 (see Final Act. 6—7; Adv. Act. 2; Ans. 3—6). See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We agree with the Examiner
(Final Act. 7; Ans. 4—7) that it would have been obvious to modify Ozeki’s
login prevention method with Bade’s geographical information criterion
used to allow login attempts after the device enters a predetermined location.
We also agree with the Examiner’s conclusion that such a modification
would have been obvious “in order to prevent unauthorized access to the
device based on locations where access is not likely to occur in case of theft
or misplacement of the device (Bade [0008])” (Final Act. 7). We also agree
with the Examiner’s reliance on Bade’s paragraphs 9, 10, and 25 as teaching
or suggesting waiting for a change in conditions to allow a login, and note
Appellants’ failure to rebut these findings with evidence or argument in the
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Reply Brief. Finally, we agree with the Examiner that both references (i)
involve login processes, and (ii) ensure device security (Final Act. 7; Ans.
3—4).
Accordingly, we disagree with Appellants’ assertions (App. Br. 6—8)
that there is no proper reason to combine Ozeki and Bade.
Teaching Away
Appellants’ arguments (App. Br. 7—8) that Ozeki teaches away from
allowing login attempts after preventing login attempts as recited in claim 1
are unpersuasive. “A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994).
We agree with the Examiner’s response to Appellants’ arguments
(Ans. 3—4), which Appellants do not rebut by way of evidence or argument,
that Ozeki merely sets forth one type of criterion for allowing login attempts
after having previously prevented login attempts, and does not discourage or
prevent the use of other criteria. See DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference
does not teach away ... if it merely expresses a general preference for an
alternative invention but does not ‘criticize, discredit, or otherwise
discourage’ investigation into the invention claimed.”); In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004) (a prior-art reference that discloses
alternatives does not, simply by preferring some alternatives, “teach away”
from the non-preferred alternatives); see also Syntex (U.S.A.) LLC v. Apotex,
Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (a particular reference’s mere
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Application 14/301,663
silence about a particular feature does not tend to teach away from it,
especially if it is disclosed elsewhere in the prior art); In re Gurley, 27 F.3d
at 553; Para-OrdinanceMfg., Inc. v. SGSImporters Inti, Inc., 73 F.3d
1085, 1090 (Fed. Cir. 1995).
Accordingly, we disagree with Appellants’ assertions (App. Br. 6—8)
that Ozeki teaches away from the invention recited in claim 1.
Hindsight
Appellants contend (App. Br. 8) the Examiner’s obviousness
determination is hinged upon impermissible hindsight and is thus
conclusory. To support their hindsight argument, Appellants present
conclusory statements that the combination of Ozeki and Bade, and
specifically Bade, fails to teach waiting for a change in conditions to
overcome a locked condition (App. Br. 8). Appellants’ conclusory
statements are unsupported by factual evidence. In addition, arguments of
counsel cannot take the place of factually supported objective evidence. See,
e.g., In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974); Icon Health &
Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017).
Therefore, we accord very little probative value to Appellants’ conclusory
statements that the combination fails to teach waiting for a change in
conditions to overcome a locked condition. In fact, the Examiner cites
Bade’s paragraphs 8—10, 25, and 28, as well as Figure 3 (login is granted in
step 322 in response to determining if the device is in a certain area in step
318) as teaching or suggesting waiting for a change in conditions to allow a
login. Appellants have not provided evidence or argument to rebut the
Examiner’s findings in this regard.
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Accordingly, Appellants’ contentions (App. Br. 8) that it would not
have been obvious to combine Ozeki and Bade because the Examiner’s
reasoning is conclusory and involves hindsight are unconvincing.
Bade
With regard to Appellants’ contention (App. Br. 8—10) that Bade fails
to disclose “a subsequent iteration” as recited in claim 1, we agree with the
Examiner (Ans. 4) that Bade’s paragraph 11 and Figure 3 (steps 320 and
322) teach or suggest this feature. Appellants have not responded to the
Examiner’s reliance on paragraph 11 with either evidence or argument.
With regard to Appellants’ contention (App. Br. 11—12) that Bade
fails to disclose “preventing login attempts” as recited in claim 1, we agree
with the Examiner (Ans. 5) that Bade’s step 320 in Figure 3 explicitly
teaches denying access, which is encompassed by the recitation in claim 1 of
“preventing login attempts.” We also agree with the Examiner (Ans. 5) that
paragraphs 25 and 28 additionally support this understanding.
With regard to Appellants’ contention (App. Br. 12—13) that Bade
fails to disclose “a predetermined home location” as recited in claim 1, we
agree with the Examiner (Ans. 5—6) that Bade’s paragraph 25 describes, and
Figure 3 shows, allowing a login attempt in at least steps 312, 316, 318, and
322 based on a location matching an allowed access area such as a user’s
office or places a user regularly travels. Bade also discloses allowing a user
102 to “define which locations are allowed access or are restricted access
areas” (125; see also Fig. 3, step 310), determining if a device 104 is in the
designated area (128, Fig. 3, step 318), and granting access when the device
104 is within the designated area (128. Fig. 3, step 322). One of ordinary
skill in the art reading the disclosure of Bade flflf 8, 25, 28, Fig. 3) would
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Application 14/301,663
understand that it would be desirable to designate alocation (home, office, or
place the user most often uses the device 104) as an area where access
should be granted — i.e., a predetermined home location. Therefore, we
agree with the Examiner (Final Act. 7; Ans. 5—6) that Bade teaches or
suggests “a predetermined home location” as recited in claim 1.
Summary
In view of the foregoing, we sustain the Examiner’s obviousness
rejection of independent claim 1. For similar reasons, and because (i) claims
2—5 and 7—11 each depend directly from sole independent claim 1 and
therefore contain all of the salient limitations, and (ii) Appellants argue
claims 2—5 and 7—11 are patentable for the same reasons as claim 1 (see
App. Br. 13), we also sustain the Examiner’s obviousness rejections of
dependent claims 2—5 and 7—11.
CONCLUSIONS
Ozeki and Bade are properly combinable, and the combination teaches
or suggests a method of preventing login attempts on an electronic device
based on a stored itinerary of destinations and a monitored location of the
device, as set forth in representative claim 1. Appellants have not
sufficiently shown that the Examiner erred in rejecting sole independent
claim 1, as well as remaining claims 2—5 and 7—11, depending therefrom,
under 35 U.S.C. § 103(a). Thus, we sustain the rejections before us.
DECISION
The Examiner’s rejections of claims 1—5 and 7—11 under
35 U.S.C. § 103(a) are affirmed.
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Application 14/301,663
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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