Ex Parte Nayshtut et al

Patent Trial and Appeal Board

Jan 27, 2017

13527371 (P.T.A.B. Jan. 27, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/527,371 06/19/2012 Alex Nayshtut 884.K46US1 9814
45457 7590 01/31/2017
SPITWFflMAN T T TNDRF.RO Rr WOFNNNFR/Tntel
EXAMINER
P.O. Box 2938 LIPMAN, JACOB
MINNEAPOLIS, MN 55402
ART UNIT PAPER NUMBER
2434
NOTIFICATION DATE DELIVERY MODE
01/31/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEX NAYSHTUT and OMER BEN-SHALOM
Appeal 2015-005862
Application 13/527,371
Technology Center 2400
Before DEBRA K. STEPHENS, AMBER L. HAGY, and
MICHAEL M. BARRY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—9, which are all of the pending claims. We have
jurisdiction over these claims under 35 U.S.C. § 6(b).
We affirm.
Appeal 2015-005862
Application 13/527,371
Introduction
According to Appellants, the invention pertains to “[sjystems,
apparatus and methods for periodically validating the identity of two or more
machines that have established a secure communication connection over a
network.” (Abs.) Appellants further state:
A client may initiate a secure communication session with a
server by providing an identification certificate. Upon
establishing a secure connection with the server, the client may
periodically reaffirm its identity by sending a secure heartbeat
message that includes a timestamp offset and a client identifier
in order to keep the connection open. The server can require
periodic receipt of the secure heartbeat message in order to
maintain the secure communication session. The client identifier
may include a code or value based on a unique physical attribute
of the client. The timestamp offset may be calculated by the
client based on a timestamp provided by the server.
(Id.)
Exemplary Claim
Claim 1, reproduced below with the disputed limitations italicized, is
exemplary of the claimed subject matter:
1. At least one machine readable medium comprising a
plurality of instructions that in response to being executed on a
computing device, can cause the computing device to:
authenticate a communication session over a network
between a first machine and a second machine;
establish both an identity of the first machine with the
second machine, and a session identification for the
communication session; and
periodically validate the identity of the first machine with
the second machine over the network during the communication
session, the validation including an identifying signature
generated by the first machine based at least in part on the
session identification;
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wherein the second machine suspends the communication
session in response to a failure to receive the identifying
signature confirming the identity of the first machine.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Falcoetal. US 2005/0007964 A1 Jan. 13,2005
(“Falco”)
Little et al. US 2008/0016537 A1 Jan. 17,2008
(“Little”)
Treuetal. US 2010/0318578 Al Dec. 16,2010
(“Treu”)
REJECTIONS
Claims 1^4 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Treu and Falco. (Final Act. 2—3.)
Claims 4 and 9 stand, alternatively, rejected 35 U.S.C. § 103(a) as
being unpatentable over Treu, Falco, and Little. (Final Act. 3 4.)
Claims 3—8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Treu, Falco, and Little. (Final Act. 3 4.)
ISSUES
(1) Whether the Examiner erred in finding Treu teaches or suggests
“authenticate a communication session” and “establish both an identity of
the first machine with the second machine, and a session identification for
the communication session,” as recited in claim 1.
(2) Whether the Examiner erred in finding Treu, in combination
with Falco, teaches or suggests “the validation including an identifying
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signature generated by the first machine based at least in part on the session
identification,” as recited in claim 1.
(3) Whether the Examiner improperly combined the teachings and
suggestions of Treu and Falco.
(4) Whether the Examiner erred in finding Treu teaches or suggests
“generate the identity of the first machine from a unique physical attribute of
the first machine,” as recited in dependent claim 2, and “generate the
identity of the first machine from a unique identifier obtained from a
processor of the first machine,” as recited in dependent claim 3.
(5) Whether the Examiner erred in finding the combination of Treu,
Falco, and Little teaches or suggests “wherein the second machine suspends
the communication session in response to the failure to receive the message
confirming the identity of the first machine within a predetermined period of
time,” as recited in dependent claim 7, and “clos[ing] the communication
session upon receipt of a message appearing to be from the second machine
that fails to confirm the identity of the first machine,” as recited in
dependent claim 8.
(6) Whether the Examiner erred in finding the combination of Treu
and Falco, or the combination of Treu, Falco, and Little, teaches or suggests
“establishing] an identity of the second machine at the first machine,” and
“transmitting] a heartbeat message from the second machine to the first
machine, the heartbeat message validating the identity of the second
machine,” as recited in dependent claim 9.
(7) Whether the Examiner improperly combined the teachings and
suggestions of Treu, Falco, and Little.
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner has erred. We disagree with Appellants’
conclusions and 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. 2—
4) and (2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellants’ Appeal Brief. (Ans. 2—6.) We concur with the
conclusions reached by the Examiner, and we highlight the following for
emphasis.1
A. “communication session ” / “session identification ” (claim 1)
Appellants argue the Examiner’s findings are in error because “Treu
does not disclose the identification or authentication of a ‘communication
session’ as recited in claim 1.” (App. Br. 10.) In particular, Appellants
argue a “communication session” is not contemplated by Treu “at least in
part because Treu does not establish a ‘session identification for the
communication session,”’ as recited in claim 1. {Id. at 10—11)
We disagree. As the Examiner finds, and we agree, Treu teaches
pairing a medical device with a remote user interface computer. (See Ans.
4.) In particular, Treu discloses “[t]he medical devices (102-106)
communicate with the remote user interface computers (108-112) via links
107,” and the links may be “wired or wireless connections.” (Treu
1122, 25.) Treu further teaches the wireless links may be via several well-
known wireless communication protocols, including “Wi-Fi, Bluetooth, or
1 Only those arguments made by Appellants have been considered in this
decision. Arguments Appellants did not make in the briefs have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
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cell modem.” (Treu 132.) Treu further discloses “[t]he identification and
pairing sequence . . . can be performed prior to beginning a treatment or
monitoring session. The identification and pairing sequence can also be
performed periodically during a session.'” (Treu 130 (emphasis added).)
Thus, the Examiner’s finding Treu teaches a “communication session”
between a “first machine” (e.g., a medical device) and a “second machine”
(e.g., a remote user interface computer), as recited in claim 1, is supported
by the teachings of Treu.
With regard to the “session identification for the communication
session,” also recited in claim 1, the Examiner finds, and we agree, Treu
teaches “exchang[ing] handshake messages” between the medical device
and the computer to “ensure that the devices remain connected correctly and
the pairing remains intact.” (See Treu 137; Ans. 4.) Appellants argue,
however, the Examiner’s finding is in error because Treu does not expressly
mention “session identifier,” and further argue, in conclusory fashion, that
the Examiner’s finding regarding the medical device exchanging handshake
messages with the computer to ensure they remain connected during a
communication session is “irrelevant.” (Reply Br. 2.)
We disagree. Appellants have not explained why the relied-upon
disclosure does not teach or suggest the claimed feature under its broadest
reasonable interpretation in light of the Specification; rather, Appellants
merely allege that the feature is different because it is described in different
terms. Cf. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (explaining that
the comparison of references to the claimed invention “is not an ‘ipsissimis
verbis’ test”). Appellants in particular do not explain why “handshake
messages” exchanged using, for example, well-known wireless
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communication protocols (such as Wi-Fi), would not include “session
identification,” and, therefore, do not persuade us of Examiner error.
Appellants also argue “Treu does not disclose the establishment of an
identity of a first machine with a second machine, by a computing device, as
recited in claim 1.” (App. Br. 11 (emphasis added).) We are unpersuaded
by Appellants’ argument because it is premised on an overly narrow
characterization of Treu. As the Examiner finds, and we agree, “Treu
discloses that in addition to the input sequence, the device transmits its
identification number to be matched by the remote user interface computer,
which performs the pairing (0039).” (Ans. 4 (emphasis added).) Treu also
discloses “the model and serial number of the new device . . . could be
automatically detected from the data stream . . . .” (Treu 191 (emphasis
added).) Thus, regardless of whether the preamble is a limitation that
requires “by a computing device” as argued by Appellants, one of ordinary
skill understands that computing devices, such as the “remote user interface
computer” disclosed in Treu, which constitutes a type of computing device,
perform the pairing process. Accordingly, we are not persuaded Treu fails
to disclose the disputed limitation.
B. “identifying signature . . . based at least in part on the session
identification” (claim 1)
Appellants argue the Examiner’s findings are in error because neither
Treu nor Falco discloses an “identifying signature,” as recited in claim 1.
(App. Br. 11.) In particular, Appellants argue “[t]he Examiner admits that
‘Treu does not disclose signing the heartbeat message,”’ and “the ‘heartbeat’
message discussed by Falco does not include an identifying signature
generated based on a session identification, as recited in claim 1.” (Id.) To
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the extent Appellants’ challenge is based on Appellants’ argument that Treu
does not disclose a “session identification,” we have addressed that
argument in the previous section and found it to be unpersuasive.
Appellants’ argument is also not persuasive because it argues the Treu
and Falco references individually, when the Examiner’s finding is based on
a combination of these references. It is well established that one cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
F.2d 413, 425 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). In addition, a reference “must be read, not in isolation, but
for what it fairly teaches in combination with the prior art as a whole.” Id.
Therefore, Appellants’ arguments do not persuade us of error in these
findings.
C. Motivation to Combine (claim 1)
Appellants also argue the Examiner has failed to provide “explanation
or articulated reasoning” for combining Treu and Falco. (App. Br. 12.)
Appellants further assert, in conclusory fashion, that Treu and Falco are
“dissimilar” and “any combination of Treu and Falco would require a non­
ob vious modification of each reference’s teachings to obtain the claimed
subject matter.” (Id.)
We recognize the Examiner must articulate “reasoning with some
rational underpinning to support the legal conclusion of obviousness.” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Here, the Examiner has
articulated reasoning with some rationale underpinning, as to why an a
person of ordinary skill in the art would have been motivated to combined
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the teachings and suggestions of Treu and Falco, to achieve the claimed
subject matter. (Final Act. 2; Ans. 3, 5.) Specifically, the Examiner finds it
would have been obvious for one of ordinary skill in the art “to sign the
handshake message of Treu,” as taught by Falco’s signed heartbeat message,
“to ensure and maintain communication in a session” (Ans. 5) and also “to
ensure authenticity.” (Ans. 3.) The Examiner also finds Treu’s handshake
message “has the same stated purpose” as Falco’s signed heartbeat message.
(Ans. 5.) Appellants have not provided persuasive evidence or reasoning
explaining why such rationale is erroneous or why a person of ordinary skill
in the art would not have reached the determination reached by the
Examiner. Rather, Consequently, we are not persuaded that the Examiner
failed to articulate sufficient rationale for combining the teachings of the
cited references.
For the foregoing reasons, we are not persuaded of error in the
Examiner’s 35 U.S.C. § 103(a) rejection of independent claim 1, or of
dependent claims 4—6, which Appellants do not argument separately. We,
therefore, sustain their rejection.
D. “generate the identity of the first machine ’’from a “unique physical
attribute” (claim 2) / “unique identifier obtained from a processor”
(claim 3)
Claims 2 and 3 depend from claim 1, and recite “generate the identity
of the first machine from a unique physical attribute of the first machine,”
and “generate the identity of the first machine from a unique identifier
obtained from a processor of the first machine,” respectively. (App. Br. 18
(Claims App’x) (emphases added).)
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With regard to a “unique physical attribute of the first machine,” as
recited in claim 2, the Examiner finds Treu teaches an “RFID, ID device
(0040), or even the identification number of Treu (0039),” which the
Examiner finds “each read on a physical attribute of the machine.” (Ans. 5.)
We agree. Treu discloses “[w]hen transmitting the verification key
sequence, the medical device 302 could also transmit its identification
number.” (Treu 139 (emphasis added).) Treu additionally discloses
“[ajlong with transmitting the verification key sequence, the medical device
may also transmit device identification information such as device
identification number, network address, serial number, or the like.” (Treu
136 (emphasis added).) Appellants’ argument that these “alleged attributes”
are limited to identifying “a human operator or patient that may be
interacting with a device” (Reply Br. 4—5) is not persuasive because it is
inconsistent with Treu’s disclosure.
With regard to a “unique identifier obtained from a processor,” as
recited in claim 3, the Examiner finds “the ID number of the machine (0039)
reads on this unique physical attribute.” (Ans. 6.) Appellants argue this
finding is in error because “the Examiner has completely failed to even
allege that the ID was obtained from a processor.” (Reply Br. 5.) We
disagree. As Treu discloses, the device may transmit its own device
identification information. (Treu H 36, 39.) Treu also teaches use of a
“microprocessor” in the disclosed system (e.g., Treu H 112—114), and, thus,
we agree with the Examiner Treu teaches the subject matter of claim 3—that
is, a unique identifier obtained from a processor of the device (“first
machine”). Appellants’ assertions do not demonstrate Examiner error, and
in particular do not persuade us that the “device identification information”
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that is transmitted by a microprocessor-based medical device, as taught by
Treu, is not “a unique identifier obtained from a processor” of that device.
For the foregoing reasons, we are not persuaded of error in the
Examiner’s 35 U.S.C. § 103(a) rejection of claims 2 and 3. We, therefore,
sustain their rejection.
E. “suspending ” / “closing ” the “communication session ” upon failure
“to confirm[] the identity of the first machine” (claims 7, 8)
Claim 7 depends from claim 1, and recites “wherein the second
machine suspends the communication session in response to the failure to
receive the message confirming the identity of the first machine within a
predetermined period of time.” (App. Br. 19 (Claims App’x).) Claim 8 also
depends from claim 1, and recites “close the communication session upon
receipt of a message appearing to be from the second machine that fails to
confirm the identity of the first machine.” (Id.)
The Examiner finds “Little discloses using a heartbeat signal to
maintain a pairing of devices (0047)” and also teaches “maintaining the
pairing only as long as a valid heartbeat is received (0047),” and further
finds “[i]t would have been obvious for one of ordinary skill in the art to use
the heartbeat of Little in the system of Treu in view of Falco to monitor the
pairing.” (Final Act. 3 4.)
Appellants argue “[t]he ‘heartbeat’ of Little merely discusses the
maintenance of a pairing ‘so long as the heartbeat is received,’ and does not
contemplate an identity confirmation or the difference between suspending
and closing a communication session.” (App. Br. 14.) In response, the
Examiner finds “once a session of Treu is closed, it can be resumed later
(0030) as long as a new session is not stared with another device (0038),
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thus a closed session is suspended as well.” (Ans. 6.) Appellants then argue
the Examiner’s findings are unsupported by evidence (Reply Br. 6), and
otherwise present a conclusory assertion that Treu does not disclose the
limitations of claims 7 and 8. (Id.)
Appellants’ arguments are not persuasive of Examiner error. First,
Appellants’ assertion that Treu does not disclose suspending a session is
unpersuasive. Treu teaches “the patient verification and device
identification and pairing can be performed when a treatment or monitoring
session stops or starts (e.g., each time a new patient is being treated, or when
a patient needs to stop treatment temporarily and resume treatment later).”
(Treu | 30.) As the Examiner finds, closing a session and then resuming that
session amounts to “suspending” the session. (Ans. 6.) Also, Appellants’
arguments address the Little and Treu references individually and, thus, are
not persuasive as they do not address the Examiner’s findings, which are
premised on a combination of Treu, Falco, and Little. See Keller, 642 F.2d
at 426.
For the foregoing reasons, we are not persuaded of error in the
Examiner’s 35 U.S.C. § 103(a) rejection of claims 7 and 8. We, therefore,
sustain their rejection.
F. “ establish [ingj an identity of the second machine at the first
machine, ” and “transmit[ting] a heartbeat message from the second
machine to the first machine, the heartbeat message validating the
identity of the second machine ” (claim 9)
Claim 9 depends from claim 1 and adds the limitations “establish an
identity of the second machine at the first machine; and transmit a heartbeat
message from the second machine to the first machine, the heartbeat
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message validating the identity of the second machine.” (App. Br. 19
(Claims App’x).)
The Examiner relies on Treu in combination with Falco, and finds
“Treu in view of Falco discloses the medium of claim 1, as outlined above,
[and Treu] further discloses a heartbeat message (automatically generated
signal, 0030).” (Final Act. 3.) The Examiner additionally rejects claim 9
over the combination of Treu, Falco, and Fittle, finding:
Even if [Treu’s] signal was not seen as a heartbeat signal, Fittle
discloses using a heartbeat signal to maintain a pairing of devices
(0047). It would have been obvious for one of ordinary skill in
the art to use the heartbeat of Fittle in the system of Treu in view
of Falco to monitor the pairing, a stated motivation of all
references.
(Id.)
Appellants’ arguments are not persuasive of Examiner error. We
agree with the Examiner that Fittle discloses bidirectional exchange of
authentication and identification information. (E.g., Fittle ^fl[ 46-47.) Thus,
Appellants’ arguments directed at Treu do not address the Examiner’s
finding that the combination of Treu and Fittle teaches the disputed
limitation.
G. Motivation to combine (claim 9)
Appellants’ argument that the Examiner has failed to support
combining Treu, Falco, and Fittle is an untimely argument presented for the
first time in Reply. Further, is conclusory and unpersuasive. Appellants
have not explained why, nor is it apparent that these arguments were
necessitated by a new point in the Answer or any other circumstance
constituting “good cause” for its belated presentation. (See 37 C.F.R.
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§ 41.41(b)(2) (2016)). Nevertheless, the Examiner finds an ordinarily
skilled artisan would have been motivated to combine the references to
“monitor the pairing” of the devices, which the Examiner also finds is “a
stated motivation of all references.” (Final Act. 3.) We are not persuaded
that the Examiner failed to articulate reasoning with a sufficient rationale for
combining the teachings of the cited references. Therefore, we are not
persuaded the Examiner improperly combined the teachings and suggestions
of Treu, Falco, and Little.
For the foregoing reasons, we are not persuaded of error in the
Examiner’s 35 U.S.C. § 103(a) rejection of claim 9. We, therefore, sustain
that rejection.
DECISION
For the above reasons, the Examiner’s rejections of claims 1—9 are
affirmed.2
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
2 Claims 1—9 are directed to a “machine readable medium,” but do not
specify that the medium is non-transitory. Should there be further
prosecution of this application (including any review for allowance), the
Examiner may wish to review claims 1—9 for compliance under 35 U.S.C.
§ 101 in light of the Federal Circuit’s decision in In re Nuijten, 500 F.3d
1346 (Fed. Cir. 2007) and the Board’s decision in Ex parte Mewherter, 107
USPQ2d 1857 (PTAB 2013) (precedential).
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