Ex Parte Petillo

Patent Trial and Appeal Board

Nov 21, 2016

12509794 (P.T.A.B. Nov. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/509,794 0712712009 Richard Petillo
39290 7590 11/22/2016
DUANE MORRIS LLP - DC
505 9th Street
Suite 1000
WASHINGTON, DC 20004-2166
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Y2108-00466 1745
EXAMINER
SALEHI, HELAI
ART UNIT PAPER NUMBER
2433
MAILDATE DELIVERY MODE
11/22/2016 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 Richard PETILLO
Appeal2015-007598
Application 12/509,794
Technology Center 2400
Before THU A. DANG, NORMAN H. BEAMER,
and SCOTT E. BAIN, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-16. 1 We have jurisdiction over the pending
rejected claims under 35 U.S.C. § 6(b).
We reverse.
1 Appellant identifies Vonage Holdings Corporation as the real party in
interest. (App. Br. 1.)
Appeal2015-007598
Application 12/509,794
THE INVENTION
Appellant's disclosed and claimed invention is directed to packet
telephony devices with encryption keys configured to enable authentication,
for increasing the security of online account access and transactions.
(Abstract.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A VoIP packet telephony device, comprising:
a signaling module configured for receiving, processing,
and generating VoIP telephony signaling packets;
a media module interconnected with said signaling module
and configured for receiving, processing, and generating VoIP
telephony media packets;
an encryption module interconnected with said signaling
and media modules and having an encryption key encoded
therein; and
a user actuable authentication trigger, wherein said VoIP
packet telephony device is configured to transmit an
authentication communication generated in part from said
encryption key upon actuation thereof.
REJECTIONS
The Examiner rejected claims 1-8 under 35 U.S.C. § 103(a) as being
unpatentable over Mizrah (US 2008/0098464 Al, pub. Apr. 24, 2008) and
Ikeda et al. (US 7 ,251,485 B2, issued July 31, 2007). (Final Act. 2-8.)
The Examiner rejected claims 9-16 under 35 U.S.C. § 103(a) as being
unpatentable over Mizrah, Ikeda and Toennis et al. (US 7,965,701 Bl,
issued June 21, 2011). (Final Act. 8-18.)
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Appeal2015-007598
Application 12/509,794
ISSUES ON APPEAL
Appellant's arguments in the Appeal Brief present the following
dispositive issues: 2
Whether the Examiner erred in finding the combination of Mizrah and
Ikeda teaches or suggests the "signaling module," "encryption module,"
"authentication trigger," or "second interface" limitations recited in one or
both of independent claims 1 and 5, and whether the Examiner erred in
finding the combination of Mizrah, Ikeda and Toennis teaches or suggests
the "signaling module" and "authentication interface" limitations recited in
independent claim 9. (App. Br. 5-7, 13-14.)
ANALYSIS
For the limitations of claims 1 and 5 at issue, and for the "signaling
module" limitation of claim 9, the Examiner solely relies on the disclosure in
Mizrah of a two-channel challenge-response authentication method using a
mobile phone displaying a one-time authentication challenge message sent
via SMS. (Final Act. 3, 6; Ans. 17-18; Mizrah Figs. 5, 7, 24, i-fi-198, 128,
142.) Appellant argues the cited figures and accompanying description in
Mizrah do not teach or suggest the claim limitations at issue, in that the
disclosure of a one-time challenge, and a general disclosure of the use of
encryption, does not: (i) disclose a signaling module configured for
"receiving, processing, and generating VoIP telephony signaling packets"
2 Rather than reiterate the arguments of Appellant and the findings of the
Examiner, we refer to the Appeal Brief (filed Feb. 23, 2015); the Reply Brief
(filed Aug. 17, 2015); the Final Office Action (mailed Sep. 16, 2014); and
the Examiner's Answer (mailed June 15, 2015) for the respective details.
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Appeal2015-007598
Application 12/509,794
(for claims 1 and 5, and similarly for claim 9), (ii) provide any of the
features of the claimed encryption module, such as having an encoded
encryption key within (for claims 1 and 5), (iii) disclose an authentication
trigger configured to transmit an authentication communication (for
claim 1 ), or (iv) include a second interface for connection to a non-packet
telephone (for claim 5). (App. Br. 6-10.)
At least for the "authentication trigger" limitation of claim 1 and the
"second interface" limitation of claim 5, we agree with Appellant that the
Examiner does not provide prima facie support for the rejections. "[T]he
examiner bears the initial burden, on review of the prior art or on any other
ground, of presenting a prima facie case of unpatentability." In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992). The Examiner admits "Mizrah et al.
does not specifically call out ... an Authentication trigger. ... " (Ans. 18.)
The Examiner's rationale for rejection is:
[T]he telephone is [a] standard phone that to one of ordinary
skill in the art at the time of the invention was made,
sends/receives packets (signals). Mizrah et al. discloses
"conventional security methods preventing credential entropy
leakage, like: ... data encryption while in transit" (0098).
(Id.) We are persuaded this is inadequate support for the rejections. Nor are
the Examiner's findings in the Final Action sufficiently informative. (Final
Act. 3, 6.) For example, the Examiner finds no basis for a teaching or
suggestion of a VoIP packet telephony device configured to "transmit an
authentication communication generated in part from said encryption key,"
or of an interface "adapted for connection to a non-packet telephone." (App.
Br. 9--10; Final Act. 3, 6.)
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Appeal2015-007598
Application 12/509,794
For the "authentication interface" limitation of claim 9, the Examiner
relies on the disclosure in Toennis of an IP telephone connection server that
provides secure communications. (Final Act. 10-11.) However, we agree
with Appellant that there is no teaching or suggestion in the cited
combination of the required interconnection between the authentication
interface and the claimed "authentication module," because, as discussed
above, the Examiner provides no basis for a teaching or suggestion of the
required "transmit[ing] an authentication communication generated in part
from said encryption key." (App. Br. 13-14.)
Therefore, on the record before us, we are constrained to find the
Examiner errs in rejecting independent claims 1, 5, and 9.
CONCLUSIONS
For the reasons stated above, we do not sustain the obviousness
rejections of independent claims 1 and 5 over Mizrah and Ikeda, and of
independent claim 9 over Mizrah, Ikeda and Toennis. We also do not
sustain the obviousness rejections of claims 2--4 and 6-8 over Mizrah and
Ikeda, and of claims 10-16 over Mizrah, Ikeda and Toennis, which claims
are dependent from claims 1, 5, or 9.
DECISION
We reverse the Examiner's rejections of claims 1-16.
REVERSED
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