Ex Parte Newsome

Patent Trial and Appeal BoardMar 30, 2017

13803431 (P.T.A.B. Mar. 30, 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. 1576-0766 8786 EXAMINER TERRELL, EMILY C ART UNIT PAPER NUMBER 2689 MAIL DATE DELIVERY MODE 13/803,431 03/14/2013 10800 7590 03/30/2017 Maginot, Moore & Beck LLP One Indiana Square, Suite 2200 Indianapolis, IN 46204 James Duran Newsome JR. 03/30/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES DURAN NEWSOME JR. Appeal 2016-006594 Application 13/803,43 U Technology Center 2600 Before HUNG H. BUI, MICHAEL M. BARRY, and DAVID J. CUTITTAII, Administrative Patent Judges. CUTITTA, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1—20, which constitute all of the pending claims in the application on appeal. Appeal Br. 1. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellant, the real party in interest is Robert Bosch GmbH. See Appeal Br. 2. Appeal 2016-006594 Application 13/803,431 STATEMENT OF THE CASE According to Appellant, the application relates to authentication of communications between computing devices. Spec. 11.2 CLAIMED SUBJECT MATTER Claims 1 and 10 are independent. Claim 1 is illustrative and is reproduced below with disputed limitations italicized: 1. A first computing device, comprising: a transmitter; a receiver; a user interface configured to emit a human perceptible stimulus; a memory in which command instructions are stored; and a processor operably connected to the transmitter, receiver, user interface, and memory, and configured to execute the command instructions to: form an association with a second computing device using the transmitter and the receiver, compute a fingerprint of a common key derived during the association formation with the second computing device, and control the user interface to emit a first audio stimulus, the first audio stimulus based upon the computed fingerprint, wherein the first audio stimulus is at least one octave number apart from a second audio stimulus emitted by the second computing device based upon the common key. 2 Throughout this Opinion, we refer to the following documents for their respective details: (1) Appellant’s Specification filed Mar. 14, 2013 (“Spec.”); (2) the Final Office Action (“Final Act.”) mailed June 11, 2015; (3) the Appeal Brief (“Appeal Br.”) filed December 10, 2015; (4) the Examiner’s Answer (Ans. ”) mailed April 20, 2016; and (5) the Reply Brief (“Reply Br.”) filed June 20, 2016. 2 Appeal 2016-006594 Application 13/803,431 Appeal Br. 20 (Claims App’x). REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal includes: Lenihan et al. (“Lenihan”) Farrett Iwamoto Willey Kindberg et al. (“Kindberg”) Levy et al. (“Levy”) Winograd et al. (“Winograd”) US 5,127,004 June 30, 1992 US 5,636,325 June 3, 1997 US 2001/0037196 Al Nov. 1, 2001 US 2003/0065918 Al Apr. 3, 2003 US 7,370,200 B2 May 6, 2008 US 7,711,564 B2 May 4, 2010 US 2012/0072730 Al Mar, 22, 2012 REJECTIONS Claims 1, 2, 8, 9, 10, 11, 17, 18 and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kindberg, Levy, and Iwamoto. Final Act. 3-9. Claims 3, 7, 12 16, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kindberg, Levy, Iwamoto, and Willey. Final Act. 9-17. Claims 4 and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kindberg, Levy, Iwamoto, and Farrett. Final Act. 17—19. Claims 5 and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kindberg, Levy, Iwamoto, and Lenihan. Final Act. 19— 21. 3 Appeal 2016-006594 Application 13/803,431 Claims 6 and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kindberg, Levy, Iwamoto, and Winograd. Final Act. 22— 25. Our review in this appeal is limited only to the above rejections and issues raised by Appellant. We have not considered other possible issues that have not been raised by Appellant and which are, therefore, not before us. See 37 C.F.R. § 41.37(c)(l)(iv) (2014). ISSUE Based on Appellant’s arguments, the dispositive issue presented on appeal is whether the Examiner errs in finding that the combination of Kindberg, Levy, and Iwamoto teaches or suggests “control the user interface to emit a first audio stimulus, the first audio stimulus based upon the computed fingerprint,” as recited in claim 1. ANALYSIS In support of the rejection of claim 1, the Examiner finds Kindberg teaches the disputed limitation: “control the user interface to emit a first audio stimulus, the first audio stimulus based upon the computed fingerprint,” wherein the computed fingerprint is of a common key. Final Act. 3^4; Ans. 3 (citing Kindberg 4:11—16, 6:4—24). The Examiner finds Levy teaches the fingerprint. Final Act. 4 (citing Levy 9:59—10:35). Kindberg discusses a method of validating an association between first (Device A) and second (Device B) computing devices using a succession of human-perceptible stimuli, which may include a succession of musical tones. Kindberg 3:1—6, 4:11—16, 6:26—32. After the devices 4 Appeal 2016-006594 Application 13/803,431 exchange network addresses and encryption keys, an operator validates the association by operating one of the devices (an “initiator”) to send commands to the other device (the “responder”) to generate the succession of human-perceptible stimuli. Kindberg 3:45—65, 4:10—22. The association is validated if the operator perceives the correct succession of stimuli is received at the responder. Kindberg 4:14—16. Appellant argues In contrast to the Examiner’s position, when Device A of Kindberg is operated as an initiator, the human-perceptible stimuli emitted from Device A is not generated based upon the common key. According to Kindberg, the human-perceptible stimuli to be rendered by the initiator (Device A) are either (i) selected by the human operator of the initiator (Device A) (id. at column 4, lines 23-26) or (ii) pre-stored in the memory of the initiator (Device A) (id. at column 4, lines 55-56). Therefore, the selected stimuli are not dependent upon the common key in any way. Appeal Br. 6. The Examiner responds by finding that, in Kindberg, “the human- perceptible stimuli emitted by Device A (when operated as the initiator) assists in generation of and secure association of the key.” Ans. 10 (citing Kindberg 6:4—25). The Examiner therefore concludes that under the broadest reasonable interpretation of “based upon,” Kindberg “does indeed disclose that the human-perceptible stimuli emitted by Device A are ‘based upon’ the common key.” Ans. 10. We do not agree with the Examiner. That is, even assuming the Examiner’s interpretation of “based upon” is reasonable, we disagree with the Examiner’s finding that because the human-perceptible stimuli emitted 5 Appeal 2016-006594 Application 13/803,431 by Device A assist in generation of the key, Kindberg teaches generating the stimuli based upon the key. Rather, we agree with Appellant that the Examiner has not demonstrated that these findings are supported by Kindberg’s disclosure because “[ujsing a human-perceptible stimulus to assist in generation and association of a common key as taught by Kindberg is not and cannot be considered the same as using a fingerprint/common key to assist in generation of a first audio stimulus as required in claim 1.” Reply Br. 4. Accordingly, we concur with Appellant that the Examiner has failed to establish Kindberg teaches, suggests, or renders obvious the disputed limitation of claim 1. Because we agree with at least one of the dispositive arguments advanced by Appellant for claim 1, we need not reach the merits of Appellant’s other contentions. We, therefore, reverse the Examiner’s 35 U.S.C. § 103(a) rejection of claim 1. We also reverse the rejections of independent claim 10, which recites commensurate limitations, and of dependent claims 2—9 and 11—20, which stand with their respective independent claims. DECISION On the record before us, we conclude that the Examiner has erred in rejecting claims 1—20 under 35 U.S.C. § 103(a). REVERSED 6