Ex Parte LaffeyDownload PDFPatent Trial and Appeal BoardMay 31, 201713978784 (P.T.A.B. May. 31, 2017) Copy Citation 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. 13/978,784 07/09/2013 Thomas M Laffey 83425388 9123 56436 7590 06/02/2017 Hewlett Packard Enterprise 3404 E. Harmony Road Mail Stop 79 Fort Collins, CO 80528 EXAMINER LANIER, BENJAMIN E ART UNIT PAPER NUMBER 2437 NOTIFICATION DATE DELIVERY MODE 06/02/2017 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): hpe.ip.mail@hpe.com chris. mania @ hpe. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS M LAFFEY Appeal 2016-004288 Application 13/978,784 Technology Center 2400 Before: DEBRA K. STEPHENS, JEFFREY S. SMITH, and PHILLIP A. BENNETT, Administrative Patent Judges. Per Curiam. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. CLAIMED SUBJECT MATTER According to Appellant, the claims are directed to a systems, methods, and apparatus to authenticate communications modules which are interchangeable intermediaries for communications links (Abstract; Spec. Appeal 2016-004288 Application 13/978,784 1001—1002). Claims 1. 9, and 14, reproduced below, are illustrative of the claimed subject matter: 1. A communications module, comprising: a host interface; a communications link interface; a memory including a signature based on a data set and a private key of a key pair; and a processor to provide the data set and the signature via the host interface, the processor operatively coupled to the host interface, to the communications link interface, and to the memory. 9. A communications module host, comprising: a plurality of communications module interfaces; and an authentication module operatively coupled to the plurality of communications module interfaces to provide an authentication request via each communications module interface from the plurality of communications module interfaces, the authentication module configured to: receive a signature via each communications module interface, receive a data set via each communications module interface, and authenticate a communications module operatively coupled to each communications module interface based on the data set and the signature received via that communications module interface, wherein the communications module host is to communicate with a remote network device via the communication module, wherein the signature received via 2 Appeal 2016-004288 Application 13/978,784 each communications module interface is based on the data set received via that communications module interface and a private key of a key pair. 14. A communications system, comprising: a communications module host including a plurality of communications module interfaces; and a plurality of communications modules, each communications module from the plurality of communications modules removably coupled to a communications module interface from the plurality of communications module interfaces, wherein the communications module host is to communicate with one or more remote network devices via the plurality of communications modules, the communications module host operable to request a signature and a data set at each communications module via the communications module interface to which that communications module is removably coupled, each communications module operable to provide the signature and the data set requested at that communications module to the communications module host, the signature provided from each communications module based on the data set requested at that communications module and a private key of a key pair associated with that communications module. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Hippetal. US 6,747,878 B1 Kim et al. US 2002/0003645 A1 Shahindoust et al. US 2005/0216906 Al Margolin US 2005/0258456 Al June. 8, 2004 Jan. 10, 2002 Sept. 29, 2005 Nov. 24, 2005 3 Appeal 2016-004288 Application 13/978,784 Lumsden et al. US 2006/0294378 A1 Dec. 28, 2006 REJECTIONS Claims 18 and 20 are rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (Final Act. 3). Claims 1, 2, 7, 9, 12, and 14—16 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Lumsden (id. at 4—5). Claims 3, 5, 6, 10, and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lumsden (id. at 6—7). Claims 4 and 18—20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lumsden and Kim (id. at 7—8). Claim 8 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Lumsden and Margolin (id. at 8). Claim 11 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Lumsden and Hipp (id. at 9). Claim 13 stands rejected under 35 U.S.C. §103(a) as being unpatentable over Lumsden and Shahindoust (id. at 9). 35 U.S.C. § 112(b): Claims 18 and20 The Examiner rejects claims 18 and 20 because each claim recites “a remote network device” and each claim depends on an independent claim which also recites “a remote network device” (Final Act. 3). Therefore, the Examiner determines the claims are indefinite due to the ambiguity as to whether the “remote network device” recited in the dependent claims is the 4 Appeal 2016-004288 Application 13/978,784 same or different from the “remote network device” recited in the independent claims (id.). Appellant does not proffer any arguments; therefore, we summarily sustain the Examiner’s rejection. 35 U.S.C. § 102(b): Claims 1, 2, 7, 9, 12, and 14—16 Appellant contends their invention as recited in claims 1, 2, 7, 9, 12, and 14—16, is not anticipated by Lumsden (App. Br. 7—11). The issues presented by the arguments are: Issue 1: Has the Appellant shown the Examiner erred in finding Lumsden discloses “[a] communication module” and “a communications link interface” operatively coupled to the host interface, as recited in claim 1? Issue 2: Has the Appellant shown the Examiner erred in finding Lumsden discloses “a communication module host” and “the authentication module configured to . . . authenticate a communications module,” as recited in claim 9? ANALYSIS Issue 1: Claims 1, 2, and 7 Initially, as a matter of claim construction, Appellant contends the Examiner has not adopted a broadest reasonable interpretation as would have been understood by an ordinarily skilled artisan, in view of the Specification (App. Br. 8; Reply Br. 2—3). Specifically, Appellant points to the Specification which states [communications modules are devices via which network devices such as switch devices (e.g., network switches, routers, gateways, 5 Appeal 2016-004288 Application 13/978,784 bridges, and hubs), computing devices (e.g., computer servers such as file, web, database or applications servers), and data stores (i.e., data storage devices and/or services) are operatively coupled one to another (Spec. 11014). We agree with Appellant that the Specification provides a definition for the term “communications modules.” Nonetheless, because this term is in the preamble, we are not persuaded by this argument, that Lumsden fails to disclose the invention. “Generally,” we have said, “the preamble does not limit the claims.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed.Cir. 2002). Nonetheless, the preamble may be construed as limiting “if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed.Cir.2002), quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed.Cir. 1999). A preamble is not regarded as limiting, however, “when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.” Catalina, 289 F.3d at 809 {American Medical Systems, Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358—9 (Fed. Cir. 2010)). Here, the preamble merely recites “[a] communications module, comprising” and thus, does not recite any essential structure or steps. Nor do we find “a communications module” is necessary to give life, meaning, and vitality” to the claim. Indeed, the recited body does not refer back to the phrase “communications module” as recited in the preamble and thus, the preamble phrase does not affect the structure of claim 1. Rather, the claim body describes a structurally complete invention. Accordingly, we do not accord the preamble patentable weight. Appellant next argues Lumsden’s card reader fails to disclose the 6 Appeal 2016-004288 Application 13/978,784 recited “communications link interface” (App. Br. 10). Specifically, Appellant contends the broadest reasonable interpretation of “communication link interface” to an ordinarily skilled artisan, in view of the Specification, is “an interface to a communications link” and not “an interface that communicated information” as interpreted by the Examiner (id.; Reply Br. 5 (citing Ans. 4)). Thus, Appellant asserts, the ATM card reader of Lumsden does not describe an interface to a communications link, but instead, an input device enabling the ATM to read magnetic strips encoded on a credit card” (App. Br. 11). Furthermore, Appellant argues, an ‘“input mechanism’ such as a keypad or card reader” is not a “communication link interface” in light of the Specification (Reply Br. 5). Initially, we note Appellant’s Specification does not define explicitly the term “communication link interface.” The Specification does define, however, the term “interface” as “a component or group of components via which two or more devices (e.g., communications links, network device, or communications modules) can be coupled one to another” (Spec. 1 1030). Appellant’s Specification, although not defining a communications link, describes the types of communications links — a twisted pair cable, a coaxial cable, a single-mode optical fiber, a multi-mode optical fiber, and/or a group of such communications links” (id. 1016, 1028). Appellant’s Specification give a further example of a communication link interface, included in a communications module, coupling to a communication link (id.). In light of the Specification, taking a broad, but reasonable interpretation, we construe “communication link interface” as “a component or group of components via which a link that allows communication, and 7 Appeal 2016-004288 Application 13/978,784 one or more devices, communicates information via which the link and one or more devices, can be coupled one to another.” In other words, a “communication link interface” couples a link and one or more devices to allow communication of information between the link and the one or more devices. In light of this interpretation, we agree with Appellant that the Examiner has not shown Lumsden discloses “[a] communication module” having “a communications link interface” and “a host interface,” as recited in claim 1.1 Indeed, the Examiner has not set forth with sufficient specificity where Lumsden describes the recited communications link interface and the recited host interface. Accordingly, Appellant has persuaded us the Examiner has failed to show Lumsden discloses the invention as recited in independent claim 1. Claims 2 and 7 which depend from claim 1, thus stand 1 Should there be further prosecution, we draw the Examiner’s attention to Appellant’s admission , in the Background Section of Appellant’s Specification, that a communication module including a host interface and a communications link interface are known in the prior art. Appellant’s assertion that the claimed “communications link interface” is novel over the prior art is inconsistent with Appellant’s Admitted Prior Art. However, because a rejection under §103 is not before us on appeal, we do not reach an opinion as to whether combining the communication module of Appellant’s Admitted Prior Art with the key loading system of the Lumsden reference, renders claim 1 obvious. We further draw the Examiner’s attention to the corresponding PCT application which contains a written opinion expressing the unpatentability of claim 1. The Examiner did not rely on the references cited in the written opinion, so we do not reach an opinion as to whether claim 1 is patentable over the references cited in the written opinion. In the event of further prosecution of this application, we leave such considerations to the Examiner. Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02. 8 Appeal 2016-004288 Application 13/978,784 with independent claim 1. Issue 2: Claims 9, 12, and 14—16 Appellant contends Lumsden does not disclose the “key manager” is configured to authenticate the I/O module (App. Br. 13). Specifically, Appellant asserts, the Examiner relies on the I/O module to disclose the recited communications module and the key manager to disclose the authentication module (id.). According to Appellant, the key manager authenticates the financial transaction terminal, which the Examiner relies on as describing the recited remote network device, but the key manager does not authenticate the I/O module (id.). Therefore, Appellant asserts, Lumsden fails to disclose the recited “authentication module configured to . . . authenticate a communications module” (id.). We agree with Appellant that the Examiner has not set forth with specificity where Lumsden discloses the recited limitation. Specifically, the Examiner appears to rely on the terminal as the communications module but also appears to rely on the terminal as the remote device (Final Act. 5). In the Answer, the Examiner relies on Lumsden’s I/O module as describing the communications module (Ans. 5), whereas in the Final Action, the Examiner appears to rely on Lumsden’s I/O module as describing the communications module interfaces (Final Act. 5). We do not readily find where Lumsden discloses the recited limitations based on either of the Examiner’s mappings. Appellant further argues Lumsden’s server does not teach a communication module host as recited in the claim (App. Br. 13). Specifically, Appellant contends “a communication module host” would be interpreted by an ordinarily skilled artisan as “a host for communication 9 Appeal 2016-004288 Application 13/978,784 modules” as consistently used in Appellant’s Specification (id.). Appellant identifies paragraph 1019 of their Specification as supporting their interpretation (id.). Paragraph 1019 provides a description of one example shown in Figure 1 in which communications module hosts 111 and 121 are components or elements of switch devices 110 and 120, respectively, and include communications module interfaces (Spec. H 1017, 1019). Paragraph 1019 further states: “[t]hat is, a communications module host is a component of [a] device that hosts (e.g., provides operational power and/or control and/or data signals to) one or more communication modules (id. 11019). In light of Appellant’s Specification, we broadly, but reasonably construe “a communications module host” as “a component of a device that hosts one or more communication modules.” As set forth above, the term “communication module” is defined in Appellants’ Specification. Thus, in view of these interpretations, we are persuaded by Appellant’s that the Examiner has failed to show Lumsden’s server describes a communications module host. Accordingly, we are persuaded the Examiner has not shown Lumsden discloses the invention as recited in independent claim 9. Independent claim 14 has commensurate limitations and thus, stands with claim 9. Dependent claims 12, 15, and 16 thus stand with their respective independent claim. Therefore, we cannot sustain the rejection of claims 1, 2, 7, 9, 12, and 14—16 under 35 U.S.C. § 102(b) for anticipation by Lumsden. 10 Appeal 2016-004288 Application 13/978,784 35 U.S.C. § 103(a): Claims 3-6, 8, 10, 11, 13, 17-20 Since we agree with at least one of the arguments advanced by Appellant with respects to independent claim 1 and with respect to independent claims 9 and 14, and the Examiner has not shown the disputed limitations would have been obvious or the additional cited references cure the deficiencies of Lumsden, claims 3—6, 8, 10, 11, 13, and 17—20 stand with their respective independent claims. Therefore, we cannot sustain the rejection of claims 3—6, 8, 10, 11, 13, 17—20 under 35 U.S.C. § 103(a) as being unpatentable. DECISION The Examiner’s rejection of claims 18 and 20 under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, is affirmed. The Examiner’s rejection of claims 1, 2, 7, 9, 12, and 14—16 under 35 U.S.C. § 102(b) as being anticipated by Lumsden is reversed. The Examiner’s rejection of claims 3—6, 8, 10, 11, 13, 17—20 under 35 U.S.C. § 103(a) as being unpatentable is reversed. AFFIRMED-IN-PART 11 Copy with citationCopy as parenthetical citation