Ex Parte Falk et alDownload PDFPatent Trial and Appeal BoardMay 6, 201512310198 (P.T.A.B. May. 6, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RAINER FALK, GUNTHER HORN, and DIRK KRÖSELBERG ____________ Appeal 2012-000335 Application 12/310,198 Technology Center 2400 ____________ Before CAROLYN D. THOMAS, BRUCE R. WINSOR, and CHARLES J. BOUDREAU, Administrative Patent Judges. Opinion for the Board filed by, Administrative Patent Judge WINSOR. Opinion dissenting-in-part filed by Administrative Patent Judge THOMAS WINSOR Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection of claims 27–32 and 37–52, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing 1 The real party in interest identified by Appellants is SIEMENS AKTIENGESELLSCHAFT. (App. Br. 1.) Appeal 2013-000335 Application 12/310,198 2 was held April 23, 2015. A transcript of the hearing will be placed in the record in due course. We affirm-in-part. STATEMENT OF THE CASE Appellants’ disclosed invention relates to “providing an access- specific key for securing a data transfer between a mobile terminal and a node of an access network.” (Spec. ¶ 2.) 2 Claim 27, which is illustrative, reads as follows: 27. A method for providing an access-network-specific key for securing a data transfer between a mobile terminal and a node of an access network, comprising: generating, during authentication of the mobile terminal by an authentication server, a session key from which a base key is derived; transferring the base key from the authentication server to an interworking proxy server; deriving the access-network-specific key from the base key by the interworking proxy server; and providing the access-network-specific key from the interworking proxy server to the node of the access network. Claims 37–42 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. (See Final Act. 4.) Claims 27–32 and 39–52 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Faccin et al. (US 2002/0120844 A1; Aug. 28, 2002; 2 References herein to the Specification (“Spec.”) are to the “Marked-up Substitute Specification,” filed February 17, 2009. Appeal 2013-000335 Application 12/310,198 3 hereinafter “Faccin”) and Patel et al. (US 7,475,241 B2; Jan. 6, 2009; hereinafter “Patel”). (See Final Act. 5–12.) Claims 37 and 38 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Faccin, Patel, and Official Notice. (See Final Act. 12–13.) Rather than repeat the arguments here, we refer to the Briefs (“App. Br.” filed June 19, 2012; “Reply Br.” filed Sept. 21, 2012 3 ) for the positions of Appellants and the Final Office Action (“Final Act.” mailed Jan. 19, 2012) and Answer (“Ans.” mailed July 26, 2012) for the positions of the Examiner. ISSUES The issues presented by Appellants’ contentions are as follows: Did the Examiner err in rejecting claims 37–42 as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention? Did the Examiner err in finding the combination of Faccin and Patel teaches or suggests “transferring [a] base key from [an] authentication server to an interworking proxy server[,] deriving [an] access-network-specific key from the base key by the interworking proxy server[,] and providing the access-network-specific key from the interworking proxy server to [a] node of the access network” (emphases added), as recited in claim 27? 3 Exhibit A to the Reply Brief, bearing the designation “3GPP TS 29.161 V6.0.0 (2004–09),” is evidence first submitted after the filing of the Notice of Appeal, and was not before the Examiner during prosecution. Accordingly, its submission is untimely and it will not be considered. See 37 C.F.R. § 41.33(d)(2) (2013), see also id. § 41.30. Appeal 2013-000335 Application 12/310,198 4 ANALYSIS REJECTION FOR INDEFINITENESS The Examiner finds claims 37–42 are indefinite because each claim recites a protocol and “it is unclear which elements of the protocol are required or which version of the protocol is contemplated.” (Final Act 4:16– 17.) The Examiner explains “as protocols evolve they typically change or add features, without the specification of a particular version of a protocol, the claim would be indefinite for not having a static definition.” (Final Act. 4:18–20.) Appellants contend claims 37–42 are not indefinite because they should be construed to refer to versions of the standards defining the recited protocols that were in effect at the time Appellants’ priority application was filed. (App. Br. 3–4, citing Ex parte McClary, Appeal No. 2009-001300 (BPAI May 17, 2010); Ex parte Ly, Appeal No. 2009-000357 (BPAI June 16, 2009); Ex parte Smith, Appeal No. 2008-4702 (BPAI Mar. 10, 2009); Ex parte Fiala, Appeal No. 98-0024 (BPAI Sept. 4, 1998).) We agree with Appellants. Compliance with the provisions of 35 U.S.C. § 112 is determined as of the filing date of the application. W.L. Gore Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1556 (Fed. Cir. 1983). “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (emphasis added) (quoted at MPEP § 2111.01.III (9th ed. 2014)); Appeal 2013-000335 Application 12/310,198 5 see also MPEP § 2173.02.II (“Examiners should note that Office policy is not to employ per se rules to make technical rejections.”). Although the Examiner is correct that standards that define protocols may change over time, just as the meaning of other terms used in claims may change over time, we do not agree that this renders a claim reciting the protocol indefinite. The meaning of such a claim, as understood by one of ordinary skill in the art at the time of the invention, is tied to the version of the protocol-defining standard in effect at the time of the invention, and is, therefore, not indefinite. Accordingly, we do not sustain the rejection of claims 37–42 under 35 U.S.C. § 112, second paragraph. REJECTION OVER FACCIN AND PATEL Claims 27–32, 37–44, 51, and 52 The Examiner maps the recited “interworking proxy server” to the “home agent[s]” taught by both Patel and Faccin. (See Final Act. 6–8; citing Faccin ¶¶ 36, 89, 92; Patel col. 2, l. 4 et seq.; col. 4, l. 40 et seq.; col. 5, l. 10 et seq.; col. 7, l. 45 et seq., l. 60 et seq.; col. 8, l. 30 et seq., l. 38.) The Examiner explains as follows: An ‘interworking proxy server’ is not a term of art nor is it explicitly defined in Applicant’s specification. The mapping of the interworking proxy server to Patel’s ‘home agent’ is therefore not only within a broadest reasonable interpretation of the claims but necessary as the Applicant has furnished no competing definition. (Final Act. 3:21–4:3; see also Ans. 16.) The Examiner further explains that: [p]roxy servers are generally understood to be a system [sic] that acts as an intermediary for requests between a client and a server. The addition of the word interworking in this context is merely redundant because all proxy servers are by their nature ‘interworking’ between a client and a server. Appeal 2013-000335 Application 12/310,198 6 (Ans. 16.) Appellants contend “[t]he ‘interworking proxy server’ recited in claim 27 is a specific type of proxy server and one of ordinary skill in the art would not find ‘an interworking proxy server to be equivalent to the ‘Home Agent 604’ (e.g., Patel et al., column 6, line 47).” (App. Br. 6.) Appellants further contend: the terms “interworking” and “proxy server” are both commonly used terms in the art . . ., and one of ordinary skill in the art, even without reference to the specification, would understand from the common definition of these terms, that an “interworking proxy server” is not equivalent to a “home agent” as that term is used in Patel et al. (Reply Br. 3–4.) More particularly, Appellants contend “the term ‘interworking’ is commonly used to refer not to communication ‘between a client and a server’, but rather to communication between networks of different types.” (Reply Br. 4.) A pertinent definition of “interworking” from a technical dictionary is: “interworking The ability to seamless[ly] communicate between devices supporting dissimilar protocols, such as frame relay and ATM, by translating between the protocols, not through encapsulation.” Harry Newton, NEWTON’S TELECOM DICTIONARY 366 (17th ed. 2001). Another technical dictionary is consistent with this definition: “interworking unit (IWU) A unit that provides the functions needed to allow interworking between a PSN and another network, e.g., interworking between a PSN and an ITU-T X.25 packet-switched public data network (PSPDN).” IEEE 100- 2000 — THE AUTHORITATIVE DICTIONARY OF IEEE STANDARDS TERMS 585 (7th ed. 2000). These definitions are both consistent with how the term “interworking” is used in Appellants’ Specification. (See, e.g., Spec. ¶¶ 34– Appeal 2013-000335 Application 12/310,198 7 36.) Accordingly, we conclude the broadest reasonable interpretation of “interworking proxy server” is a proxy server that provides the capability to communicate between devices supporting dissimilar protocols. It is well settled that “[a]ll words in a claim must be considered in judging the patentability of that claim against the prior art.” In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). The Examiner’s claim construction, which effectively reads “interworking” out of the claim, is erroneous. The Examiner has made no showing, nor do we find any evidence in the record, that the home agent taught by either Patel or Faccin provides the capability to communicate between devices supporting different protocols, i.e., that either Patel or Faccin teaches an “interworking proxy server.” Appellants’ arguments persuade us of error in the rejection of claim 27. Accordingly, we are constrained by this record to not sustain the rejection of (1) independent claim 27; (2) independent claim 51, which, similar to claim 27, recites limitations including the term “interworking” (see App. Br. 6–7) and were rejected on substantially the same basis as claim 27 (see Final Act. 5–8); and (3) claims 28–32, 37–44, and 52 which variously depend, directly or indirectly, from claims 27 and 51. Claims 45–50 Appellants rely on the arguments presented for claim 27 to argue the patentability of claims 45–50, and do not argue claims 45–50 separately with particularity. (See App. Br. 6–7.) Appellants’ arguments regarding claim 27, discussed supra, do not persuade us of error in the rejection of claims 45–50 over Faccin and Patel. Regarding independent claim 45, the “interworking proxy server” is not an element of the “authentication server” to which independent claim 45 Appeal 2013-000335 Application 12/310,198 8 is directed, and claim 45 does not recite any structural or functional feature of the “programmed processor” that provides a “base key” to an “interworking proxy server,” as distinguished from providing the “base key” to any other proxy server. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477–78 (Fed. Cir. 1997). See also In re Casey, 370 F.2d 576 (CCPA 1967) (“[T]he manner or method in which such machine is to be utilized is not germane to the issue of patentability of the machine itself.”); In re Otto, 312 F.2d 937, 940 (CCPA 1963) (“Inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.”); Ex parte Wyatt, Appeal No. 2009-014267, slip op. at 9–10 (BPAI 2011) (“Unlike claim 1, which is a method, [the] apparatus [of claim 15] is defined structurally, and thus the actual steps performed are not part of the claim boundaries.”) Accordingly, we sustain the rejection of claim 45, and claims 46 and 47, which depend from claim 45 and were not separately argued. Regarding independent claim 48, the phrase “interworking proxy” is only recited in the preamble of claim 48, and does not add anything to the limitations set forth in the body of the claim. If . . . the body of the claim fully and intrinsically sets forth the complete invention, including all of its limitations, and the preamble offers no distinct definition of any of the claimed invention’s limitations, but rather merely states, for example, the purpose or intended use of the invention, then the preamble is of no significance to claim construction because it cannot be said to constitute or explain a claim limitation. Appeal 2013-000335 Application 12/310,198 9 Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). See IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000) (“The phrase ‘control apparatus’ in the preamble merely gives a descriptive name to the set of limitations in the body of the claim that completely set forth the invention.”). Accordingly, we sustain the rejection of claim 48 and claims 49 and 50, which depend from claim 48 and were not separately argued. CONCLUSION We do not sustain the Examiner’s rejection of claims 37–42 under 35 U.S.C. § 112, second paragraph. We do not sustain the Examiner’s rejection of claims 27–32, 37–44, 51, and 52 under 35 U.S.C. § 103(a). We sustain the Examiner’s rejection of claims 45–50 under 35 U.S.C. § 103(a). DECISION 4 The decision of the Examiner to reject claims 45–50 is affirmed. The decision of the Examiner to reject claims 27–32, 37–44, 51, and 52 is reversed. 4 In the event of further prosecution, including any review for allowance, the Examiner may wish to consider whether claims 45–52 are indefinite under 35 U.S.C. § 112, second paragraph, by virtue of reciting process steps in a claim ostensibly directed to a machine. See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005), citing Ex Parte Lyell, 17 USPQ2d 1548 (BPAI 1990); see also MPEP § 2173.05(p)(II). Appeal 2013-000335 Application 12/310,198 10 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-IN-PART UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RAINER FALK, GUNTHER HORN, and DIRK KRÖSELBERG ____________ Appeal 2012-000335 Application 12/310,198 Technology Center 2400 ____________ Before CAROLYN D. THOMAS, BRUCE R. WINSOR, and CHARLES J. BOUDREAU, Administrative Patent Judges. THOMAS, Administrative Patent Judge, Dissenting-In-Part I respectfully dissent from the Majority’s decision to reverse the obviousness rejection of claims 27–32, 37–44, 51, and 52. However, I concur in their reversal of the § 112, second paragraph rejection of claims 37–42 and concur in their affirmance of the 103(a) rejection of claims 45– 50. Regarding the reversal of claims 27–32, 37–44, 51, and 52, I do not share the view of my colleagues supra that the Examiner’s claim construction, which effectively reads “interworking” out of the claim, is erroneous. During prosecution, the claims are given their broadest reasonable interpretation consistent with the specification, and limitations appearing in the specification are not to be read into the claims. In re Etter, Appeal 2013-000335 Application 12/310,198 2 756 F.2d 852, 858 (Fed. Cir. 1985). Here, I believe the majority is reading limitations appearing in the specification into the claims, i.e., dissimilar protocols. As identified by the Examiner, the Specification does not explicitly define “interworking proxy server” (Ans. 16). Furthermore, I believe the intrinsic evidence fails to support Appellants’ contention that claim 27, for example, requires “support[ing] mobility management” (App. Br. 5–6). In fact, the plain language of claim 27 does not specify that the claimed networks, i.e., access network and authentication server, necessarily support dissimilar protocols, and the Specification only discloses utilizing different networks as preferred embodiments, instead of requirements to realizing the claimed invention. I decline to read such networks with dissimilar protocols from the specification into the claim. Limitations appearing in the specification, but not recited in the claim, are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the specification” without importing limitations from the specification into the claims unnecessarily (citation omitted)). In other words, I believe Appellants’ argument is based on an additional element not recited or required by the claims, i.e., the capability to communicate between devices supporting dissimilar protocols, as the claimed devices are not noted as having dissimilar protocols. As such, I believe the absence of any “dissimilar protocols” in the claim broadens the scope of the recited “interworking proxy server” to be consistent with Patel’s “home agent” as identified by the Examiner (Ans. 16), as these functionalities are not recited nor required in claim 27. See Phillips v. AWH Corp., 415 F.3d 1303, 1326–27 (Fed. Cir. 2005) (“The fact that the written Appeal 2013-000335 Application 12/310,198 3 description of the '798 patent sets forth multiple objectives to be served by the baffles recited in the claims confirms that the term ‘baffles’ should not be read restrictively to require that the baffles in each case serve all of the recited functions.”). Here, although Appellants and the Majority contend that the objective of the claimed “interworking proxy server” is to support dissimilar protocols, in this case it seems inappropriate to restrict the claimed interworking proxy server to serve unrecited functions. Those functions actually recited in the claim, i.e., generating and transferring a key, are indeed shown in the cited art. It is an unrecited feature, i.e., dissimilar protocols that the Majority is basing their reversal on. I am not inclined to read this functionality into the claim, which calls for supporting dissimilar protocols. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.”) Here, the claim language is quite broader than the preferred embodiments in the Specification. It is the Appellants' burden to precisely define the invention, not the PTO’s. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Appellants always have the opportunity to amend the claims during prosecution, and broad interpretation by the Examiner reduces the possibility that the claim, once issued, will be interpreted more broadly than is justified. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Appeal 2013-000335 Application 12/310,198 4 A claim under examination is given its broadest reasonable interpretation consistent with the underlying specification. In re American Acad. of Science Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In the absence of an express definition of a claim term in the specification or a clear disclaimer of scope, the claim term is interpreted as broadly as the ordinary usage of the term by one of ordinary skill in the art would permit. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Properties of preferred embodiments described in the specification which are not recited in a claim do not limit the reasonable scope of the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). I believe elements recited in a claim presented for examination are not limited to those components capable of performing particular unrecited functions or achieving particular results merely because the underlying specification describes those functions or results as desirable. In other words, in the absence of the claimed necessity to work with dissimilar protocols, I believe the Examiner interpreted the claim term, i.e., interworking, as broadly as the ordinary usage of the term by one of ordinary skill in the art would permit. I therefore, respectfully dissent from the Majority Decision reversing the rejection of claims 27–32, 37–44, 51, and 52. ELD Copy with citationCopy as parenthetical citation