Najeeb M. Abdulrahiman et al.

Patent Trials and Appeals BoardJun 22, 2020

2019000043 (P.T.A.B. Jun. 22, 2020)

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. 15/220,614 07/27/2016 Najeeb M. ABDULRAHIMAN 30134/17807(P21642USC1) 4269 114746 7590 06/22/2020 Apple Inc. -- FKM 150 Broadway Suite 702 New York, NY 10038 EXAMINER MUSHAMBO, MARTIN ART UNIT PAPER NUMBER 2674 NOTIFICATION DATE DELIVERY MODE 06/22/2020 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): fhall@fkmiplaw.com mmarcin@fkmiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NAJEEB M. ABDULRAHIMAN, THOMAS F. PAULY, and VIKRAM B. YERRABOMMANAHALLI ________________ Appeal 2019-000043 Application 15/220,614 Technology Center 2600 ____________ Before ERIC S. FRAHM, JOYCE CRAIG, and MATTHEW J. McNEILL, Administrative Patent Judges. McNEILL, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 20‒39, which are all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Apple Inc. Appeal Br. 2. Appeal 2019-000043 Application 15/220,614 2 STATEMENT OF THE CASE Introduction Appellant’s application relates to a client device using login credentials from another client device to access a network. Spec. ¶¶ 3‒6. Claims 20 and 31 illustrate the appealed subject matter and read as follows: 20. A method, comprising: at a client station: transmitting an identification request, received from a network to which the client station is attempting to connect, to a further client station, the further client station including credential information for the network; receiving an identification response from the further client station including the credential information; transmitting the identification response to the network; and establishing a connection between the client station and the network using the credential information of the further client station. 31. A method, comprising: at a client station: transmitting an association request to a network; receiving an identification request from the network; transmitting an identification response to the network, wherein the identification response includes credential information for a further client station and wherein the client station and the further client station are associated with a same account and the association with the same account authorizes the client station to use the credential information of the further client station; and Appeal 2019-000043 Application 15/220,614 3 establishing a connection between the client station and the network using the credential information of the further client station. The Examiner’s Rejections Claims 20‒25 and 29‒38 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Grebovich (US 2010/0161969 A1; June 24, 2010) and Zohar (US 2009/0298467 A1; Dec. 3, 2009). Final Act. 3‒10. Claims 26‒28 and 39 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Grebovich, Zohar, and Malinen (US 2003/0028763 A1; Feb. 6, 2003). Final Act. 10‒11. ANALYSIS Independent Claim 20 The Examiner finds the combination of Grebovich and Zohar teaches or suggests “transmitting an identification request, received from a network to which the client station is attempting to connect, to a further client station,” as recited in claim 20. See Final Act. 4; Ans. 13‒14. In particular, the Examiner finds an ordinarily skilled artisan would understand that GSM networks, like the network taught in Zohar, include an authentication process that sends an identification request from a network service to a client device. See Ans. 13. The Examiner finds the authentication process is always preceded by an attempt by the client device to access the network. See id. The Examiner finds Zohar teaches a laptop (the claimed “client station”) attempts to access the network and an ordinarily skilled artisan would understand the laptop would be prompted to enter authentication credentials. See id. at 14 (citing Zohar ¶¶ 45‒46). The Examiner finds Zohar, therefore, teaches “transmitting an identification Appeal 2019-000043 Application 15/220,614 4 request, received from a network to which the client station is attempting to connect, to a further client station,” as recited in claim 20. See Ans. 13‒14. Appellant argues the Examiner erred because the combination of Grebovich and Zohar does not teach or suggest these limitations. Appeal Br. 3‒7; Reply Br. 2‒6. In particular, Appellant argues Zohar does not teach the laptop transmitting an identification request to a SIM-enabled device, such as a cell phone and, therefore, does not teach transmitting an identification request to a further client station. See Appeal Br. 4 (citing Zohar ¶¶ 13‒14, 45). Appellant has persuaded us of Examiner error. The Examiner’s findings fail to adequately establish that the combination of Grebovich and Zohar teaches or suggests the “transmitting” step. In particular, the Examiner’s findings at most establish that an ordinarily skilled artisan would have understood that the network sends an identification request to the laptop. The Examiner’s findings do not consider whether the laptop would transmit the identification request to the SIM-enabled device, as claimed. Zohar teaches the SIM-enabled device transmits its credentials to the laptop so that the laptop may access the network, but does not address the timing of such a transmission, suggesting this may occur prior to the request sent from the network to the laptop. See Zohar ¶¶ 45‒46. Also, nothing in Zohar addresses whether the laptop sends to the SIM-enabled device the identification request received from the laptop or some other message requesting the necessary credentials. The Examiner has not made any factual findings regarding these issues and, therefore, has failed to sufficiently establish that Grebovich and Zohar, alone or in combination, teach or suggest “transmitting an identification request, received from a network to Appeal 2019-000043 Application 15/220,614 5 which the client station is attempting to connect, to a further client station,” as recited in claim 20.2 For these reasons, we do not sustain the Examiner’s obviousness rejection of independent claim 20. We also do not sustain the obviousness rejection of claims 21‒25, 29, and 30, which depend from claim 20 and stand rejected as unpatentable over Grebovich and Zohar. Claims 26‒28 depend from claim 20 and stand rejected as unpatentable over Grebovich, Zohar, and Malinen. See Final Act. 10‒11. The Examiner does not find Malinen teaches or suggests the disputed limitations. See id. Accordingly, we also do not sustain the obviousness rejection of dependent claims 26‒28. Independent Claim 31 The Examiner finds the combination of Grebovich and Zohar teaches or suggests “wherein the client station and the further client station are associated with a same account and the association with the same account authorizes the client station to use the credential information of the further client station,” as recited in claim 31. See Final Act. 7‒8; Ans. 14. In particular, the Examiner finds an ordinarily skilled artisan would have understood that the SIM card taught by Zohar is associated with an account and the SIM-enabled and non-SIM-enabled devices are associated 2 Should there be further prosecution of this application, the Examiner may wish to consider whether claim 20 would have been obvious in light of the teachings of Grebovich, Zohar, and an additional reference. Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02. Appeal 2019-000043 Application 15/220,614 6 with the same account because a user may have both devices. See Ans. 14 (citing Zohar ¶ 13). Appellant argues the Examiner erred because the combination of references does not teach or suggest these limitations. Appeal Br. 7‒10; Reply Br. 6‒7. In particular, Appellant argues that the mere fact that a user may have access to both a laptop (a non-SIM-enabled device) and a cellphone (a SIM-enabled device) does not suggest that both devices are associated with the same account. See Appeal Br. 8. Appellant has persuaded us of Examiner error. The Examiner has failed to adequately establish that the combination of Grebovich and Zohar teaches or suggests the disputed “wherein” clause. In particular, the Examiner’s findings at most establish that a user may have two devices that are associated with the same account. However, the Examiner has failed to explain how the mere existence of some kind of association between a device and an account also teaches or suggests the remainder of the claim, specifically that “the association with the same account authorizes the client station to use the credential information of the further client station.” For these reasons, the Examiner has failed to sufficiently establish that Grebovich and Zohar, alone or in combination, teach or suggest “wherein the client station and the further client station are associated with a same account and the association with the same account authorizes the client station to use the credential information of the further client station,” as recited in claim 31.3 Accordingly, we do not sustain the Examiner’s 3 Should there be further prosecution of this application, the Examiner may wish to consider whether claim 31 would have been obvious in light of the teachings of Grebovich, Zohar, and an additional reference. Although the Appeal 2019-000043 Application 15/220,614 7 obviousness rejection of independent claim 31. We also do not sustain the obviousness rejection of independent claim 35, which recites commensurate subject matter. We also do not sustain the rejection of claims 32‒34, which depend from claim 31 and stand rejected as unpatentable over Grebovich and Zohar. We also do not sustain the rejection of claims 36‒38, which depend from claim 35 and stand rejected as unpatentable over Grebovich and Zohar. Claim 39 depends from claim 35 and stands rejected as unpatentable over Grebovich, Zohar, and Malinen. See Final Act. 11. The Examiner does not find Malinen teaches or suggests the disputed limitations. See id. Accordingly, we also do not sustain the obviousness rejection of dependent claim 39. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 20‒25, 29‒38 103 Grebovich, Zohar 20‒25, 29‒38 26‒28, 39 103 Grebovich, Zohar, Malinen 26‒28, 39 Overall Outcome 20‒39 REVERSED Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02.