Gang Xu et al.

Patent Trials and Appeals BoardDec 12, 2019

12842279 - (D) (P.T.A.B. Dec. 12, 2019)

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. 12/842,279 07/23/2010 Gang Xu 2009-1215 (40147/16301) 3740 83719 7590 12/12/2019 AT & T Legal Department - FKM AT & T LEGAL DEPARTMENT, One AT&T Way ATTN: PATENT DOCKETING ROOM 2A-212 BEDMINSTER, NJ 07921 EXAMINER TRAN, ELLEN C ART UNIT PAPER NUMBER 2433 NOTIFICATION DATE DELIVERY MODE 12/12/2019 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): eOfficeActionDocs@att.com mmarcin@fkmiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GANG XU, CRISTIAN BORCEA, and LIVIU IFTODE ____________________ Appeal 2018-002081 Application 12/842,2791 Technology Center 2400 ____________________ Before ROBERT E. NAPPI, ERIC S. FRAHM, and NATHAN A. ENGELS, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–4, 6, 7, 9–15, 17, 18, 20, 21, 23, and 1 The instant application on appeal was the subject of a prior appeal, Appeal No. 2014-001609, decided February 9, 2016. In the prior appeal, the Board affirmed the Examiner’s obviousness rejections of claims 1–20 under 35 U.S.C. § 103(a) over the base combination of Wallentin et al. (US 2008/0261580 A1; published Oct. 23, 2008) (hereinafter, “Wallentin”) and Lindström et al. (US 2009/0168696 A1; published July 2, 2009) (hereinafter, “Lindström”) (see Decision 1, 4). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the Appeal 2018-002081 Application 12/842,279 2 24, which constitute all the claims pending in this application. Claims 5, 8, 16, 19, and 22 have been canceled (see Appeal Br. 11–14). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Disclosed Invention and Exemplary Claim Appellant’s disclosed invention relates to the security of nodes in mobile ad hoc networks that lack standard choke points like firewalls or proxies (see Title; Spec. ¶ 1; Abstract). The computer-readable storage medium (claim 1) and device (20) for performing the policy enforcement method (claim 12) operate to authenticate a node to join the ad hoc network by verifying the node will comply with a security policy of the network by “verifying the system commitment, the enforcement commitment and the boot attestation against its local trust policy before determining that [the] node [] may join” (Spec. ¶ 23; see also Fig. 2, 270). Exemplary independent claim 1 under appeal, with emphases and bracketed lettering added to key portions of the claim at issue, reads as follows: 1. A non-transitory computer readable storage medium storing a set of instructions executable by a processor, the set of instructions performing a method comprising: receiving, by a first node, a request from a second node to join a trusted ad hoc network; inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as AT&T Intellectual Property I, L.P. (Appeal Br. 2). Appeal 2018-002081 Application 12/842,279 3 authenticating the second node to join the trusted ad hoc network, the authentication performed based on a verification that the second node will comply with a security policy of the trusted ad hoc network, [A] wherein the verification comprises [A1] verifying a system commitment of the second node to the security policy, [A2] verifying an enforcer commitment of the second node to the security policy, and [A3] verifying a boot status of the second node; [B] sending, to the second node, a first report indicating that the first node complies with the security policy; adding the second node to the trusted ad hoc network; sending, to the second node, a key corresponding to the trusted ad hoc network; receiving a module from the second node; upon detection of an attempt to disable the security policy from the module, clearing the key corresponding to the trusted ad hoc network and removing the module. Appeal Br. 11, Claims Appendix (emphases and bracketed lettering added). Remaining independent claims 12 and 20 recite a private network method having limitations commensurate in scope with limitations [A] and [A1]– [A3] of claim 1. Limitation [B] in claim 1 above is similar to the disputed limitation in the prior appeal of this application decided by the Board February 9, 2016 (affirmed for obviousness over Wallentin and Lindström). Limitations [A] and [A1]–[A3] were added by Appellant’s amendment filed January 19, 2017 (see p. 2), and limitations [A] and [A3] will be dispositive of the instant application on appeal. The Examiner’s Rejection Claims 1–4, 6, 7, 9–15, 17, 18, 20, 21, 23, and 24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Wallentin, Touboul (US 2007/0199060 A1; published Aug. 23, 2007), Lindström, Fukuzawa et al. (US 2005/0215234 A1; published Sept. 29, 2005) (hereinafter, Appeal 2018-002081 Application 12/842,279 4 “Fukuzawa”), and Garcia Morchon et al. (US 2010/0290622 A1; published Nov. 18, 2010 and filed Jan. 16, 2009) (hereinafter, “Garcia Morchon”). Final Act. 7–11; Ans. 2–8. Appellant’s Contentions Appellant primarily contends (Appeal Br. 4–8; Reply Br. 2–4) that the Examiner erred in rejecting claims 1–4, 6, 7, 9–15, 17, 18, 20, 21, 23, and 24 under 35 U.S.C. § 103(a) because Wallentin and Touboul, taken individually or in combination, fail to teach or suggest limitations [A] and [A1]–[A3] recited in claim 1, and as commensurately recited in claims 12 and 20. More specifically, Appellant contends Touboul, and thus the combination of applied references, does not teach or suggest verifying a boot status of a node as recited in limitations [A] and [A3] of claim 1, and as commensurately recited in remaining independent claims 12 and 20 (see Appeal Br. 6; Reply Br. 4). Principal Issue on Appeal Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 4– 10) and Reply Brief (Reply Br. 2–5), the following principal issue is presented on appeal: Has Appellant shown the Examiner erred in rejecting claims 1–4, 6, 7, 9–15, 17, 18, 20, 21, 23, and 24 under 35 U.S.C. § 103(a) because Touboul, and thus the combination of Wallentin, Touboul, Lindström, Fukuzawa, and Garcia Morchon, fails to teach or suggest limitations [A] and [A3], as recited in claim 1, and as commensurately recited in claims 12 and 20? Appeal 2018-002081 Application 12/842,279 5 ANALYSIS We have reviewed Appellant’s arguments in the Briefs (Appeal Br. 4– 10; Reply Br. 2–5), the Examiner’s rejection (Final Act. 7–11; Ans. 2–8), and the Examiner’s response (Ans. 6–10) to Appellant’s arguments in the Appeal Brief. The USPTO “must examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made.” Motor Vehicle Mfrs. Ass’n v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal quotation marks and citation omitted); see Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an administrative agency, the PTAB “must articulate logical and rational reasons for [its] decisions” (internal quotation marks and citation omitted)). We will not resort to speculation or assumptions to cure the deficiencies in the Examiner’s fact finding. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). The Examiner (Final Act. 7–8; Ans. 2–3) relies on paragraphs 11 through 13 of Touboul as teaching verifying a boot status of a node based on Touboul’s description of a preboot memory storing a copy of an operating system that can be recalled by a wizard should the mobile device become compromised. Although Touboul discloses a preboot memory (see Touboul, ¶ 11), Touboul is silent as to verifying a boot status. At best, the Examiner’s proposed combination leaves us to speculate as to how or why one of ordinary skill in the art would modify Touboul to meet the disputed boot status verification limitation recited in claims 1, 12, and 20. See In re Warner, 379 F.2d at 1017; Ex parte Braeken, 54 USPQ2d Appeal 2018-002081 Application 12/842,279 6 1110, 1112 (BPAI 1999) (unpublished) (“The review authorized by 35 U.S.C. [§] 134 is not a process whereby the examiner . . . invite[s] the [B]oard to examine the application and resolve patentability in the first instance.”). In view of the foregoing, we agree with Appellant’s contentions (Appeal Br. 6; Reply Br. 4) that the Examiner has not adequately shown that Touboul, and thus the combination of Wallentin and Touboul, teaches or suggests limitations [A] and [A3] of claim 1 (“wherein the verification comprises . . . verifying a boot status of the second node”), and the commensurate limitations recited in claims 12 and 20. Based on the record before us, we find that the Examiner (i) improperly relies upon Touboul to teach or suggest limitation [A3] in claim 1, and the commensurate limitations recited in claims 12 and 20; and thus, (ii) has not properly established factual determinations and articulated reasoning with a rational underpinning to support the legal conclusion of obviousness for claims 1, 12, and 20, resulting in a failure to establish a prima facie of obviousness. The Examiner has not shown Touboul, and thus the combination, teaches or suggests authenticating a node to join a trusted ad hoc network based on verification of compliance with a security policy of the network which includes verification of the boot status of the node as recited in claim 1, and as commensurately recited in claims 12 and 20. As a result, based on the record before us, Appellant has shown the Examiner erred in rejecting independent claims 1, 12, and 20, and thus claims 2–4, 6, 7, 9–11, 13–15, 17, 18, 21, 23, and 24 depending therefrom, under 35 U.S.C. § 103(a), and we cannot sustain the Examiner’s obviousness rejection of claims 1–4, 6, 7, 9–15, 17, 18, 20, 21, 23, and 24 over the Appeal 2018-002081 Application 12/842,279 7 combination of Wallentin, Touboul, Lindström, Fukuzawa, and Garcia Morchon.3 For all of the reasons above, we hold as follows: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 6, 7, 9– 15, 17, 18, 20, 21, 23, 24 103(a) Wallentin, Touboul, Lindström, Fukuzawa, Garcia Morchon 1–4, 6, 7, 9– 15, 17, 18, 20, 21, 23, 24 REVERSED 3 We recognize that Appellant’s arguments concerning the obviousness rejection presents additional issues (see, e.g., Appeal Br. 4–9; Reply Br. 2– 5). Because we were persuaded of error by the issue regarding limitations [A] and [A3], as recited in claim 1 and similarly recited in claims 12 and 20, we do not reach the additional issues (e.g., such as to limitations [A1] and [A2] in claim 1, and the commensurate limitations recited in claims 12 and 20), as the issue as to limitations [A] and [A3] is dispositive of the appeal.