Ex Parte Ngo et al

Patent Trial and Appeal Board

Jan 30, 2017

12755350 (P.T.A.B. Jan. 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.
12/755,350 04/06/2010 Huey Jiun Ngo P3515US01 8444
30671 7590 02/01/2017
DITTHAVONG & STEINER, P.C.
Keth Ditthavong
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
EXAMINER
LANIER, BENJAMIN E
ART UNIT PAPER NUMBER
2437
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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):
docket@dcpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUEY JIUN NGO and NATHAN JOEL McNEILL
Appeal 2016-005943
Application 12/755,350
Technology Center 2400
Before ERIC S. FRAHM, JENNIFER L. McKEOWN, and TERRENCE W.
McMILLIN, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3—9, 11—17, and 19—23. Claims 2, 10, and 18 have been canceled.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse the Examiner’s
rejections under (i) 35 U.S.C. § 112(a); (ii) 35 U.S.C. § 112(b); and (iii) 35
U.S.C. § 103(a).
Appeal 2016-005943
Application 12/755,350
Exemplary Claim
Exemplary claim 1 under appeal, with emphases added to disputed
portions of the claim, read as follows:
1. A method comprising:
detecting an attempt to establish a remote support session
hosted on a remote support appliance that is configured to
establish the remote support session between a first
device associated with a support representative and a second
device associated with a user, wherein the remote support
appliance is under the physical and virtual computing control
of the user;
retrieving a credential that provides restricted access
privileges in response to the detection; providing the credential
to the first device for use in the establishment of the remote
support session;
establishing the remote support session; and
during the remote support session, retrieving, from a
third device associated with an access sponsor system, via the
remote support appliance, an elevated credential that
provides elevated access privileges to the first device in an ad-
hoc manner, wherein the elevated credential is not provided to
the support representative.
The Examiner’s Rejections
(1) The Examiner rejected claim 23 under 35 U.S.C. § 112(a), for
failing to comply with the written description requirement. Final Act. 4.
(2) The Examiner rejected claims 1, 3—9, 11—16, and 20-23 under 35
U.S.C. § 112(b), as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
Final Act. 5.
(3) The Examiner rejected claims 1, 3—9, 11—17, and 19—22 under 35
U.S.C. § 103(a) over the combination of Mohammed et al. (US
2003/0065731 Al; published Apr. 3, 2003), Smith (US 2005/0190769 Al;
2
Appeal 2016-005943
Application 12/755,350
published Sept. 1, 2005), and Yadav et al. (US 2007/0180501 Al; published
Aug. 2, 2007). Final Act. 6—8.
Principal Issues on Appeal
Based on Appellants’ arguments in the Appeal Brief (App. Br. 5—18)
and the Reply Brief (Reply Br. 2—7), as well as the Examiner’s findings,
conclusions, and response to Appellants’ arguments (Final Act. 4—8; Ans. 2—
8), the following principal issues are presented on appeal:
(1) Did the Examiner err in rejecting claim 23 under 35 U.S.C. §
112(a), for failing to comply with the written description requirements?
(2) Did the Examiner err in rejecting claims 1, 3—9, 11—16, and 20—23
under 35 U.S.C. §112(b) because independent claims 1, 9, and 17 do not
particularly point out how a session can be created and hosted at the same
time?
(3) Did the Examiner err in rejecting claims 1, 3—9, 11—17, and 19—22
as being obvious because Mohammed fails to teach or suggest that an “the
elevated credential is not provided to the support representative,” as recited
in independent claim 1, and as similarly recited in remaining independent
claims 9 and 17?
ANALYSIS
We have reviewed the Examiner’s rejections (Final Act. 4—8) in light
of Appellants’ arguments in the briefs (App. Br. 5—18; Reply Br. 2—7) that
the Examiner has erred, as well as the Examiner’s response to Appellants’
arguments in the Appeal Brief (Final Act. 4—8; Ans. 2—8). We agree with
Appellants’ arguments and conclusions as to the (i) written description
rejection; (ii) indefiniteness rejection; and (iii) obviousness rejection.
3
Appeal 2016-005943
Application 12/755,350
Rejection Under 35 U.S.C. § 1 12(a)
Claim 23 depends from claim 1, and further states that “the elevated
credential is provided only to the second device” (claim 23) (emphasis
added), as opposed to merely not providing the elevated credential to the
support representative as recited in claim 1. The Examiner finds that
paragraph 41 of Appellants’ Specification only supports that the
representative system 103b (the support representative which is
located/associated with the second device recited in claim 23) is provided
with the elevated privileges (Final 4), and that one of ordinary skill in the art
would understand that the credentials can be transmitted to an entity without
exposing the credentials to the entity receiving them (i.e., the credentials
could be encrypted and no key would be sent with the transmission of the
credentials). Ans. 2—3. Paragraph 41 describes the embodiment shown in
Figure 5 A of Appellants’ Drawings, and is not relied on by Appellants to
support the invention recited in claim 1 (see App. Br. 2—3).
There is no requirement that the disclosure contain “either examples
or an actual reduction to practice;” rather, the critical inquiry is whether the
patentee has provided a description that “in a definite way identifies the
claimed invention” in sufficient detail that a person of ordinary skill would
understand that the inventor was in possession of it at the time of filing.
AriadPharm., Inc. v. EliLilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010);
KoitoMfg. Co. v. Turn-Key-Tech., LLC, 381 F.3d 1142, 1154 (Fed. Cir.
2004). That assessment “requires an objective inquiry into the four comers
of the specification.” Ariad, 598 F.3d at 1351.
4
Appeal 2016-005943
Application 12/755,350
The following four portions of the Specification support the recited
feature recited in dependent claim 23 of only providing the elevated
credential to the second device:
(1) Paragraph 21 describes a mechanism that “isolates the need for the
representative to know the actual credentials.”
(2) Paragraph 25 describes that “the access sponsor can choose to
enter the proper elevated credentials (without exposing the credentials to the
support representative).”
(3) Paragraph 33 describes that agent 301 (Fig. 3A) can obtain the
“elevated credentials that can be used (without exposing the actual
credentials) for a pre-configured set of support representatives who are
allowed to use this agent.”
(4) Paragraph 46 describes step 517 of Figure 5B, where a requesting
representative “gains elevated privileges without actually learning of the
credential information to perform the support tasks at hand.”
Appellants disclose and claim a first device located/associated with a
support representative, a second device located/associated with a user (the
second device of claim 23), and a third device located/associated with an
access sponsor system (App. Br. 2—3; claim 1 from which claim 23 depends;
see Figs. IB, 3A, 5B, 6B, 7B, 8A, and 8B).
In light of our review of the originally filed Specification portions and
Drawings just highlighted above, we concur with Appellants’ contentions
(App. Br. 6—9; Reply Br. 2—3) that claim 23 is fully supported and enabled
by the Specification as originally filed, and in particular by paragraphs 21,
25, 33, and 46. We find that paragraphs 21, 25, 33, and 46, taken with the
remainder of the Specification as originally filed, including the Drawings
5
Appeal 2016-005943
Application 12/755,350
and embodiments relied on by Appellants’ in the “Summary of the Claimed
Subject Matter” in the Appeal Brief (App. Br. 2—3), convey with reasonable
clarity to those skilled in the art that, as of the filing data sought, he or she
was in possession of the invention. See Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1563-64 (Fed. Cir. 1991) (emphasis omitted.)
Accordingly, we do not sustain the Examiner’s rejection of claim 23
under 35 U.S.C. § 112(a).
Rejection Under 35 U.S.C. § 1 12(b)
The test for definiteness under 35 U.S.C. § 112(b) is whether “those
skilled in the art would understand what is claimed when the claim is read in
light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). Claims must
“particularly point[] out and distinctly claim[] the subject matter which the
applicant regards as his invention.” 35 U.S.C. § 112(b).
Independent claims 1 and 9 each recite detecting “an attempt to
establish a remote support session hosted on a remote support appliance.”
The Examiner finds that because the remote support session is recited as
“hosted on a remote support appliance” (claims 1 and 9) (emphasis added),
instead of “to be hosted on a remote support appliance,” the proceeding
recitation in the claims of “establishing the remote support session” causes
indefmiteness (because the session has not yet been established). See Final
5; Ans. 3. However, in our view, the claims merely recite an attempt to
establish a session, and one of ordinary skill in the art would understand this
to mean the session has not yet been established.
In view of the foregoing, we are persuaded by Appellants’ arguments
(App. Br. 10; Reply Br. 3^4) that claims 1, 3—9, 11—16, and 20-23 are
6
Appeal 2016-005943
Application 12/755,350
definite in light of the Specification (as originally filed) with respect to
defining the timing of the establishment of the remote support session.
Accordingly, Appellants have established that the Examiner erred in
rejecting claims 1, 3—9, 11—16, and 20—23 under § 112(b) as being
indefinite. Accordingly, we do not sustain the § 112(b) rejection of claims
1,3-9, 11-16, and 20-23.
Rejection Under 35 U.S.C. § 103(a)
Because we find that paragraph 51, and any other cited portion of
Mohammed, fails to teach or suggest that “the elevated credential is not
provided to the support representative” as recited in claims 1, 9, and 17, the
Examiner has not established a prima facie case of obviousness with respect
to claims 1, 3—9, 11—17, and 19—22. Paragraph 51 of Mohammed describes
a remote support session (see Fig. 4) that begins by user initiation. Then, a
ticket is created (Fig. 4, step 402) including (i) the internet address of the
user, and (ii) the credentials or encrypted password to the remote assistance
account along with (iii) a key K1. Finally, Mohammed describes step 403,
where the ticket including the key is “transmitted to an expert” (151). Thus,
paragraph 51 fails to disclose that the key is withheld from the expert as
recited in claims 1,9, and 17.
In light of Mohammed’s silence as to withholding the key from the
expert, we find Appellants’ arguments (App. Br. 12—13) that Mohammed
fails to disclose such a feature persuasive. Additionally, one of ordinary
skill in the art would not understand or expect that a teaching of sending the
encrypted password and key to the expert/support representative (as in
Mohammed) would disallow the expert access to the elevated credentials. In
fact, quite the opposite would be expected. We are, therefore, constrained
7
Appeal 2016-005943
Application 12/755,350
by the record to find the Examiner erred in rejecting independent claims 1, 9,
and 17, as well as claims 3—9, 11—17, and 19—22 depending therefrom as
being obvious over the combination of Mohammed, Smith, and Yadav.
CONCLUSIONS
The Examiner erred in rejecting (i) claim 23 under U.S.C. § 112(a) for
failing to comply with the written description and enablement requirements;
(ii) claims 1, 3—9, 11—16, and 20-23 under U.S.C. § 112(b) for being
indefinite; and (iii) claims 1, 3—9, 11—17, and 19—22 as being obvious under
35 U.S.C. § 103(a) over the combination Mohammed, Smith, and Yadav
because Mohammed because Mohammed fails to teach or suggest that “the
elevated credential is not provided to the support representative,” as recited
in independent claim 1, and as similarly recited in remaining independent
claims 9 and 17.
DECISION
The Examiner’s written description, indefmiteness, and obviousness
rejections are all reversed.
REVERSE
8