Ex Parte Laffey

Patent Trial and Appeal Board

May 31, 2017

13978784 (P.T.A.B. May. 31, 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.
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
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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
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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
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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,
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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
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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
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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.
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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
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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.
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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
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