Ex Parte Fitzgerald et al

Patent Trial and Appeal Board

Aug 23, 2017

12203845 (P.T.A.B. Aug. 23, 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.
12/203,845 09/03/2008 William Fitzgerald 101908.00010 3925
23619 7590 08/25/2017
Squire Patton Boggs (US) LLP
PHX-IP&T-S PB
8000 Towers Crescent Drive
14 th Floor
Tysons Corner, VA 22182
EXAMINER
ELHAG, MAGDI
ART UNIT PAPER NUMBER
2641
NOTIFICATION DATE DELIVERY MODE
08/25/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PHXIPDOCKET @ SquirePB .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM FITZGERALD, PETER BERMINGHAM,
FRANK HANNIGAN, and PAUL PRENDERGAST
Appeal 2017-004341
Application 12/203,845
Technology Center 2600
Before CAROLYN D. THOMAS, JEFFREY S. SMITH, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-004341
Application 12/203,845
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1—21 and 23—75, which are all the claims pending in the application.
Claim 22 has been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Representative Claim
1. A tracking and loss mitigation system comprising:
a mobile device, the device comprising:
a user interface including a display and a data entry
interface; and
a communications interface to a security authority;
wherein the mobile device is configured to:
provide instructions regarding how to return the
mobile device to an authorized user;
detect that a security compromise event has
occurred by
receiving a message from the security
authority, the security authority initiating the
communication of the message at the request of the
authorized user of the mobile device, the message
comprising information indicating that a security
compromise event has occurred;
authenticating validity of the message
received by the mobile device; and
analyzing the message from the security
authority to determine that information therein
indicates the security compromise event has
occurred; and
alter the function of the mobile device in response
to said security compromise event to mitigate loss of
control by the authorized user.
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Application 12/203,845
Youngs
Prior Art
US 5,781,616 July 14, 1998
Shibuya US 2002/0154750 A1 Oct. 24, 2002
Dikmen US 2003/0078041 A1 Apr. 24, 2003
McElveen US 2004/0185900 A1 Sept. 23, 2004
Chiu US 2004/0198313 A1 Oct. 7, 2004
Henrie US 6,804,699 B1 Oct. 12, 2004
Rydgren US 2006/0276172 A1 Dec. 7, 2006
Cocita US 2006/0281450 A1 Dec. 14, 2006
Chen US 2007/0032227 A1 Feb. 8, 2007
Ackley US 7,302,272 B2 Nov. 27, 2007
Snow US 2008/0132245 A1 June 5, 2008
Kashi US 2009/0049544 A1 Feb. 19, 2009
Kuo US 2009/0096620 A1 Apr. 16, 2009
Anti-Thief User’s Guide, Symbian Brains Inc.,
http://www.symbianbrainsco.uk (accessed Jan. 13, 2007) (hereinafter
“Symbian Brains”).
Examiner’s Rejections
Claims 1, 16—18, 55, 57, and 62 stand provisionally rejected on the
ground of nonstatutory double patenting as being unpatentable over claims
1, 2, and 4—9 of copending Application No. 12/203,8357
Claims 1, 2-4, 6, 9—15, 51, 54—65, 67, and 68 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Henrie and Symbian Brains.
Claims 27, 29, 30, 34—36, 41—44, 49, and 50 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Henrie, Symbian Brains, and
Snow.
Claim 66 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Henrie, Symbian Brains, and Rydgren.
1 The statement of rejection lists corresponding claims of the copending
application as 1,2, 4, 5, 6, 78, and 9, rather than 1, 2, and 4—9. Final Act. 8—
9. However, we view this as harmless error.
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Application 12/203,845
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Henrie, Symbian Brains, and Chen.
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Henrie, Symbian Brains, and Cocita.
Claims 16, 18—20, 52, 53, and 69—75 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Henrie, Symbian Brains, and Ackley.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Henrie, Symbian Brains, Ackley, and Kashi.
Claims 21 and 23—25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Henrie, Symbian Brains, and Youngs.
Claim 26 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Henrie, Symbian Brains, and Dikmen.
Claim 28 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Henrie, Symbian Brains, and Shibuya.
Claims 33, 37, 40, 45, and 48 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Henrie, Symbian Brains, Snow, and Kuo.
Claims 31, 38, and 46 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Henrie, Symbian Brains, Snow, and Chiu.
Claims 32, 39, and 47 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Henrie, Symbian Brains, Snow, and McElveen.
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Appeal 2017-004341
Application 12/203,845
ANALYSIS
Obviousness-type double patenting rejection of claims 1, 16—18, 55,
57, and 62
Appellants do not address the obviousness-type double patenting
rejection of claims 1, 16—18, 55, 57, and 62, which we summarily affirm.
Section 103 rejections of claims 1—21 and 23—75
Independent claim 1 recites “authenticating validity of the message
received by the mobile device.” The Examiner finds Symbian Brains
teaches “a user input[s] the text that the phone will recognize as the message
to activate the ‘Anti-Thief remotely, the text is stored in the Phone, and the
phone will receive a text message containing the stored text.” Final Act. 12.
The Examiner also finds that the user can set this text to be a password or
code. Ans. 10—11. According to the Examiner, when the user sets the text
to be a password or code, the received message is authenticated by
comparing the content of the received message with the user-input text
stored in the mobile device. Id.
Appellants contend Symbian Brains merely teaches the comparison of
two text strings, which, in light of Appellants’ Specification, one of ordinary
skill in the art would not equate to “authenticating the validity of the
message.” Reply Br. 4—5. Appellants also contend that the user-input text
taught by Symbian Brains teaches away from authenticating, because
Symbian Brains recommends the user set the text to any simple, easy word
or phrase that the user can remember. Reply Br. 7. According to
Appellants, any person using the same simple text could command the
device to lock, regardless of where the command came from. Id.
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Application 12/203,845
Both Appellants and the Examiner agree that Symbian Brains teaches
comparing a text message received by the mobile device with a user-defined
text stored in the mobile device. The issue is whether the Examiner is
correct in finding that the user-defined text taught by Symbian Brains can be
used as a password for “authenticating validity of the message,” given
Symbian Brain’s teaching that the user-defined text should be simple and
easy to remember.
To answer this question, we must determine the meaning that the
claim term “authenticating validity of the message” would have to a person
of ordinary skill in the art at the time of the invention. Phillips v. A WH
Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). We look to those sources
available to the public that show what a person of skill in the art would have
understood the disputed claim language to mean, including the Specification
and extrinsic evidence concerning the technical and ordinary meanings of
terms, and the state of the art. Id. at 1314.
Appellants’ Specification provides several non-limiting examples for
the claimed “authenticating validity of the message received by the mobile
device” sent “from the security authority,” which all use a form of
encryption to authenticate the message. For example, Paragraph 47
discloses “comparing the digest value to a previously stored authorization
digest value . . . produced by providing the received message to a hashing
algorithm.” Paragraph 49 discloses using two-way public encryption to
authenticate the sender.
As a technical term, authentication is defined as the “process whereby
a user or information source proves they are who they claim to be.”
Newton’s Telecom Dictionary, 2004. The ordinary and usual meaning of the
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Application 12/203,845
term “authenticate” means “to prove or serve to prove to be real, true, or
genuine.” Merriam-Webster.com, Merriam-Webster. The state of the art, as
evidence by Arun,2 describes including an authentication identifier when
transmitting signals to a mobile station by encrypting the signals, such that a
hash value can be used to authenticate the received signals.
Here, the technical definition of the term “authenticate” is consistent
with the term “authenticate” as used in Appellants’ Specification, the state of
the art, and the ordinary and usual meaning. We highlight that the state of
the art and Appellants’ Specification, which authenticate using encryption
algorithms, show that one of ordinary skill expects the degree of proof to be
almost certain. Therefore, we find that a person of ordinary skill in the art
would have understood “authenticating validity of the message received by
the mobile device” to mean the process whereby the information source of
the received message proves they are who they claim to be.
The Examiner is correct in finding that Symbian Brains teaches the
user defines the attack command message, and that the content of the
received text message is compared to the stored, user-defined command
message. Ans. 10—11 (citing Symbian Brains 2, 4). However, the Examiner
is incorrect in finding that the user-defined message serves as a password,
such that comparing the received message with the stored user-defined
message authenticates the message. Id. Rather, the comparison is
performed as a way for the phone to determine whether the text message
itself contains the attack command. Symbian Brains 2.
2 US 2009/0143057 Al, published June 4, 2009, and cited by the Examiner
on page 14 of the Final Action.
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Further, Appellants correctly show that Symbian Brains teaches that
the user-defined message should be set to any simple and easy word or
phrase that the user can remember. Reply Br. 7. The Examiner has not
persuasively explained how the simple, easy to remember word taught by
Symbian Brains can be used to prove the information source is who they
claim to be, instead of anyone using the simple word. Therefore, the
Examiner has not persuasively shown that Symbian Brains teaches the user-
defined message serves as a password for authenticating the received
message.3 See Ans. 10-11.
We do not sustain the Examiner’s § 103(a) rejections of claim 1. We
also do not sustain the rejections of claims 2—21 and 23—75, which depend
either directly or indirectly from claim 1.
DECISION
The Examiner’s provisional rejections of claims 1, 16—18, 55, 57, and
62 on the ground of nonstatutory double patenting as being unpatentable
over claims 1, 2, and 4—9 of copending Application No. 12/203,835 is
affirmed.
3 In the event of further prosecution, the Examiner should consider whether
Aran (US 2009/0143057 Al, published June 4, 2009, cited by the Examiner
on page 14 of the Final Rejection), either alone or in combination, teaches
“authenticating validity of the message received by the mobile device,” as
recited in claim 1. See Aran 123 (“Similarly, to prevent the implementation
of unauthorized control signals otherwise received at mobile station 101,
application server 105 .. . may include an authentication identifier when
transmitting control signals to mobile station 101. For instance, control
signals may be encrypted . . . such that a hash value can be utilized to
authenticate received control signals, as well as ensure that those control
signals have not been [altered] in transit”).
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Application 12/203,845
The Examiner’s rejections of claims 1—21 and 23—75 under 35 U.S.C.
§ 103(a) are reversed.
AFFIRMED-IN-PART
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