Ex Parte Rollins

Patent Trial and Appeal BoardNov 13, 2012

09993495 (P.T.A.B. Nov. 13, 2012)

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. 09/993,495 11/27/2001 Doug Rollins M4065.0486/P486 8165 24998 7590 11/14/2012 DICKSTEIN SHAPIRO LLP 1825 EYE STREET NW Washington, DC 20006-5403 EXAMINER GELAGAY, SHEWAYE ART UNIT PAPER NUMBER 2437 MAIL DATE DELIVERY MODE 11/14/2012 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 DOUG ROLLINS ________________ Appeal 2011-003825 Application 09/993,495 Technology Center 2400 ________________ Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and ANDREW CALDWELL, Administrative Patent Judges. CALDWELL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-003825 Application 09/993,495 2 SUMMARY Appellant appeals under 35 U.S.C. §§ 6(b) and 134(a) from the Examiner’s final rejection of claims 1-12 and 14-26. Claim 13 is cancelled. We affirm. STATEMENT OF CASE Appellant describes the present invention as directed to the updating of encryption keys in a wireless network. A wireless station includes a removable network communications device that stores an updateable encryption key used in wireless communication. A management station randomly generates a new encryption key and propagates it to all access points and to a card tray. When an encryption key is to be updated, the wireless network communications device is removed from the wireless station and inserted into a card tray connected to a wired portion of the network. Once the encryption key in the wireless network communications device is updated, the wireless network communications device is removed from the card tray and reinserted into the wireless station. Spec. ¶ 0013. Independent claim 1 is representative 1 of a method of updating a key in a wireless station and is shown below with disputed limitations in italics: 1 Appellant nominally argues independent claims 8, 15, 17, and 20 separately from claim 1. App. Br. 9-11. However, Appellant merely repeats language from the respective claims, states that the language is similar to the corresponding language in claim 1, and asserts that the arguments for claim 1 are equally applicable to the other independent claims. Appellant does not separately argue any of the dependent claims. Accordingly, we treat claims 1, 6-8, 14-20, and 26 as a single claim grouping and select claim 1 as representative of this group. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2011-003825 Application 09/993,495 3 1. A method of updating and using an encryption key used by a wireless station for encrypted communications with a wired 2 portion of the network, said method comprising: physically separating from said wireless station a network communications device; physically connecting said separated network communications device to an encryption key updating device which is connected to a wired portion of said network, said wired portion of said network containing an encryption key generator for providing a new encryption key to said updating device; replacing an existing encryption key in said network communications device with a new encryption key from said generator sent over said wired portion of said network; physically reconnecting said network communications device containing said new encryption key with said wireless station of said network; and accessing said new encryption key on said network communications device during an encrypted communication. THE REJECTIONS 1. The Examiner rejected claims 1, 6-8, 14-20, and 26 under 35 U.S.C. § 103(a) as being unpatentable over Morimoto (US 7,024,553 B1; Apr. 4, 2006; filed Oct. 3, 2000) and Spies (US 6,055,314; Apr. 25, 2000). Ans. 3-8. 3 2 Appellant and the Examiner should consider whether the claim preamble should be amended to refer to a wireless, as opposed to a wired, portion of the network. 3 Rather than repeat the Examiner’s positions and Appellant’s arguments in their entirety, we refer to the following documents for their respective details: the Appeal Brief (App. Br.) filed July 22, 2010; the Examiner’s Answer (Ans.) mailed October 12, 2010; and the Reply Brief (Reply Br.) filed December 13, 2010. Appeal 2011-003825 Application 09/993,495 4 2. The Examiner rejected claims 2, 3, 9, 10, and 21-23 under 35 U.S.C. § 103(a) as being unpatentable over Morimoto, Spies, and Campbell (US 4,369,332; Jan. 18, 1983). Ans. 8-9. 3. The Examiner rejected claims 4, 5, 11, 12, 24, and 25 under 35 U.S.C. § 103(a) as being unpatentable over Morimoto, Spies, and Trieger (US 6,226,750 B1; May 1, 2001; filed Jan. 20, 1998). Ans. 9-10. THE OBVIOUSNESS REJECTION OVER MORIMOTO AND SPIES The Examiner concludes that claim 1 is obvious over Morimoto and Spies. The Examiner states that Morimoto teaches all of the limitations recited in claim 1 except for “physically separating a network communication device and physically connecting said separated network communication device to a key updating device and physically reconnecting said network communication device.” Ans. 13. The Examiner relies upon Spies for teaching a removable network communications device that is connected to a key updating device. Id. at 13-14. The Examiner explains that both Morimoto and Spies teach a method of transferring and protecting cryptographic keys and concludes that it would be obvious to one skilled in the art to substitute the method disclosed in Spies for the method used in Morimoto. Id. at 14. Appellant argues that Morimoto explicitly teaches away from the claimed invention and that combination with Spies would frustrate Morimoto’s purpose. App. Br. 7-10. Appellant also argues that the combination of Morimoto and Spies does not teach or suggest physically separating from a wireless station a network communications device and physically connecting the separated network communications device to an Appeal 2011-003825 Application 09/993,495 5 encryption key updating device. App. Br. 10-11; Reply Br 4-7. Appellant also argues that Spies is unrelated to the claimed invention. Reply Br. 5. ANALYSIS Appellant argues that Morimoto teaches explicitly teaches away from the claimed invention. App. Br. 7-10. In support, Appellant states that the Examiner mischaracterized the teachings of Specification paragraphs 0021 to 0026 by stating that the present Specification is consistent with the teachings of Morimoto. Appellant then explains that “[a]lthough the present application and Morimoto are both directed to updating encryption keys on a corporate network, their methods are quite different.” Id. at 8. Appellant appears to argue that Morimoto and the present invention are not directed to a similar problem since the solutions are different. Since Appellant characterizes the problem too narrowly, we are not persuaded that Morimoto and the present invention are not directed to a similar problem. Appellant then discusses various portions of Morimoto that describe how encryption keys are delivered to wireless stations over the wireless network. Id. Although we agree with Appellant that the cited sections of Morimoto only teach the updating of encryption keys in a wireless station over a wireless network, we see no probative evidence in Morimoto, and Appellant has pointed to none, that criticizes, discredits, or otherwise discourages other methods of updating keys. A reference does not teach away where the reference teaches an alternate solution and where the reference does not address the solution chosen by Appellant. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (If a prior art reference discloses a different solution to a similar problem, it does not teach away Appeal 2011-003825 Application 09/993,495 6 from the claimed subject matter unless the prior art reference also criticizes, discredits or otherwise discourages the solution claimed). We are therefore not persuaded by Appellant’s argument that Morimoto explicitly teaches away from the claimed invention. Appellant also contends that combining Spies with Morimoto would frustrate Morimoto’s purpose, which is to update encryption keys wirelessly. Id. at 9. A reference teaches away when a proposed modification renders the prior art unsatisfactory for its intended purpose. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (finding no suggestion to modify a prior art device where the modification would render the device inoperable for its intended purpose). In this case, Appellant characterizes the purpose of Morimoto too narrowly. The keys distributed in Morimoto are used to encrypt data sent over a wireless network. Abstract. The distribution of encryption keys is merely a means to the end of encrypting data sent over a wireless network. After replacing Morimoto’s automatic encryption key updating system with the key updating mechanism of Spies, the resulting system would still encrypt data sent over a wireless network. We are therefore not persuaded that the Examiner’s proposed modification would frustrate Morimoto’s purpose or result in a system inoperable for its intended purpose. Appellant argues that Spies cannot cure the deficiencies of Morimoto since Spies does not teach physically separating from a wireless station a network communications device and physically connecting the separated network communications device to an encryption key updating device. App. Br. 10-11; Reply Br. 5-7. Appellant’s argument is based upon three contentions: (1) the removable smart card of Spies is not a network communications device; (2) Spies does not teach a removable network Appeal 2011-003825 Application 09/993,495 7 communications device that provides encryption keys used by a wireless station; (3) Spies only teaches decryption and not encryption. App. Br. 10- 11; Reply Br. 5-7. As to Appellant’s contention that the removable smart card of Spies is not a network communications device, we are not persuaded that Appellant has identified error in the rejection. Appellant’s Specification does not define the term “network communications device.” The Specification merely states that a wireless communication device can be a wireless network interface card. Spec. ¶ 0006. An example is not a definition. Appellant also argues that a person of ordinary skill would understand the term “network communications device” and how it relates to network communication. Reply Br. 6. Beyond alleging that the removable smart card of Spies is not a network communications device, Appellant has not, however, pointed to evidence of record defining the term. Absent a definition in the specification or evidence of an accepted meaning in the art, we are not persuaded that the Examiner erred by giving the term “network communications device” its broadest reasonable interpretation. Although Appellant states that Spies merely teaches distributing decryption keys on removable IC cards to enable a video player to decode video content stored on a DVD or some other medium, (Reply Br. 5), the removable smart card of Spies does more. Spies teaches that encrypted video content may be delivered to a purchaser’s home computing unit over a network. Fig. 3; Col. 8, l. 60 to col. 9, l. 3. The smart card is interactively interfaced with a viewing computing unit to cooperatively decrypt a video data stream transmitted by a video content provider over a network. Col. 9, ll. 17-20. If none of the card’s capabilities are offloaded to the viewer Appeal 2011-003825 Application 09/993,495 8 computing unit, the card is solely responsible for decrypting the video data stream. See Col. 9, ll. 20-24. Since the removable card of Spies decrypts communication received over a network, we are not persuaded that the Examiner erred by concluding that the smart card of Spies is a network communications device. Appellant contends that Spies does not teach a removable network communications device that provides encryption keys used by a wireless station. App. Br. 10; Reply Br. 5. The Examiner, however, relies upon Morimoto to teach the wireless station that uses an updated encryption key. Ans. 4. The Examiner relies upon Spies to teach a removable network device that is used to update encryption keys. Id. at 5, 14. Since the Examiner relies upon both references to teach the claim language, we are not persuaded that Appellant has identified error in the rejection by only arguing Spies. Appellant also contends that Spies only teaches decryption and “simply does not relate to network encryption.” App. Br. 10; Reply Br. 6. We are not persuaded that Appellant is correct since Appellant’s position appears to be based upon an incomplete reading of Spies. Spies teaches that the removable smart card performs both encryption and decryption services. Col. 11, ll. 47-63. The smart card encrypts communications sent to a headend server. Col. 15, ll. 51-58. Since Spies does describe the smart card generating encrypted network communications, we are not convinced that Appellant has identified error in the rejection. Appellant also argues that when the claims are correctly interpreted in light of the Specification, Spies is unrelated to the claimed invention. Reply Br. 5. In support, Appellant explains that the encryption key updating Appeal 2011-003825 Application 09/993,495 9 device is the wireless network communication device card. Id. In other words, Appellant argues that the encryption key updating device and the network communication device are the same device, and that the Examiner erred by considering them to be different devices. We note, however, that Appellant’s position is inconsistent with the Appeal Brief’s Summary of Claimed Subject Matter. The Summary points to the card tray 400 of Figure 4 as the encryption key updating device and element 103 as the wireless network communications device. App. Br. 4. Since Appellant’s argument in the Reply Brief is not consistent with the position taken in the Appeal Brief, we are not persuaded that Appellant’s claim interpretation is correct; nor are we persuaded that Spies is unrelated to the claimed invention. We are therefore not persuaded that the Examiner erred in rejecting representative claim 1, and claims 6-8, 14-20, and 26 not separately argued with particularity. THE OTHER OBVIOUSNESS REJECTIONS We likewise sustain the Examiner's obviousness rejection of claims 2, 3, 9, 10, and 21-23 over Morimoto, Spies, and Campbell. Appellant has not particularly pointed out errors in the Examiner’s reasoning regarding the additional teachings of Campbell. Id. at 11. Appellant merely states that the claims are allowable for the reasons discussed above with reference to claims 1, 8, and 20. Id. We therefore sustain the rejection for the reasons given above. We likewise sustain the Examiner's obviousness rejection of claims 4, 5, 11, 12, 24, and 25 over Morimoto, Spies, and Trieger. Appellant has not particularly pointed out errors in the Examiner’s reasoning regarding the Appeal 2011-003825 Application 09/993,495 10 additional teachings of Trieger. Id. at 12. Appellant merely states that the claims are allowable for the reasons discussed above with reference to claims 1, 8, and 20. Id. We therefore sustain the rejection for the reasons given above. CONCLUSION Appellant has not shown that the Examiner erred in rejecting claims 1-12 and 14-26 under 35 U.S.C. § 103. DECISION The Examiner’s decision rejecting claims 1-12 and 14-26 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv) (2010). AFFIRMED kis