Sensormatic Electronics, LLC

Patent Trials and Appeals BoardSep 30, 2021

2020003681 (P.T.A.B. Sep. 30, 2021)

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. 15/278,814 09/28/2016 James Trani 0270.0080US1/ S-ACV00032US 9823 103122 7590 09/30/2021 HoustonHogle LLP Joseph Houston, HoustonHogle LLP 1666 Massachusetts Avenue, Suite 12 Lexington, MA 02420 EXAMINER HU, RUI MENG ART UNIT PAPER NUMBER 2643 NOTIFICATION DATE DELIVERY MODE 09/30/2021 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): docketing@houstonllp.com gerald.bluhm@jci.com grant.houston@houstonllp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES TRANI Appeal 2020-003681 Application 15/278,814 Technology Center 2600 Before JAMES R. HUGHES, JOYCE CRAIG, and MATTHEW J. McNEILL, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–19, 21, and 23–25. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Sensormatic Electronics, LLC as the real party in interest. Appeal Br. 1. Appeal 2020-003681 Application 15/278,814 2 CLAIMED SUBJECT MATTER The claims are “directed to a frictionless access control and tracking system.” Spec. ¶ 3. In particular, “[a] frictionless system uses wireless technology that enables a more transparent method for identifying and tracking individuals while providing similar access control and tracking as traditional systems and methods,” but “without requiring the individuals to swipe or wave keycards, for example, at card readers, and can more continuously track those users in and around buildings.” Id. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An ancillary user device for interacting with access control systems, the device comprising: a wireless interface for transmitting user information to the access control systems; and a controller for storing the user information, which was received from a mobile computing device, wherein updated user information is received from the mobile computing device after a predetermined period of time. Appeal Br. 23 (Claims App.). Appeal 2020-003681 Application 15/278,814 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Hardt US 2005/0283614 A1 Dec. 22, 2005 Culbert et al. US 2009/0170567 A1 July 2, 2009 Norair US 2012/0224590 A1 Sept. 6, 2012 Sheilendra US 2013/0005354 A1 Jan. 3, 2013 Neafsey et al. US 2013/0207778 A1 Aug. 15, 2013 Suffling US 2013/0227292 A1 Aug. 29, 2013 Dumas et al. US 2013/0237193 A1 Sept. 12, 2013 Van Till et al. US 2014/0282993 A1 Sept. 18, 2014 Yang et al. US 2014/0351911 A1 Nov. 27, 2014 REJECTIONS Claims 1–4, 6, 9, 12–15, and 17 are rejected under 35 U.S.C. § 103 as unpatentable over Dumas, Neafsey, and Sheilendra. Final Act. 3–7. Claims 5, 10, 16, and 21 are rejected under 35 U.S.C. § 103 as unpatentable over Dumas, Neafsey, Sheilendra, and Van Till. Final Act. 7–9. Claims 7 and 18 are rejected under 35 U.S.C. § 103 as unpatentable over Dumas, Neafsey, Sheilendra, and Hardt. Final Act. 9–10. Claims 8 and 19 are rejected under 35 U.S.C. § 103 as unpatentable over Dumas, Neafsey, Sheilendra, and Norair. Final Act. 10–11. Claims 11 and 24 are rejected under 35 U.S.C. § 103 as unpatentable over Dumas, Neafsey, Sheilendra, and Culbert. Final Act. 11–15. Claim 25 is rejected under 35 U.S.C. § 103 as unpatentable over Dumas, Neafsey, Sheilendra, Culbert, and Suffling. Final Act. 15–16. Claim 23 is rejected under 35 U.S.C. § 103 as unpatentable over Neafsey, Yang, Culbert, and Sheilendra. Final Act. 16–18. Appeal 2020-003681 Application 15/278,814 4 OPINION Claims 1–6, 9, 12–16, and 17 The Examiner finds that “Dumas fails to disclose an ancillary user device storing information received from a mobile computing device.” Final Act. 3. The Examiner then finds that Neafsey discloses “an ancillary user device (accessory 104) ([0009]) where the ancillary device stores information received from a mobile computing device (The Bluetooth system 106 receives data 124 such as a credential, from the Bluetooth system 112 of the mobile device 102 . . . store the data 124 in the chip 120) ([0013]).” Id. In addition, the Examiner finds that “Dumas and Neafsey fail to disclose updating user information after a predetermined period of time,” but that “Sheilendra (figure 1, [0040], [0041] and [0060]) discloses this feature.” Id. at 4. Appellant contends that “it is not clear how the Neafsey accessory could even be applied to the access control system of Dumas.” Appeal Br. 9. Appellant further contends that “there would be no motivation to combine Dumas and Neafsey as claimed.” Id. at 10. Additionally, Appellant contends that “there is no appreciation in the combination of Dumas and Neafsey for a need to update information stored on an accessory,” and “nothing taught by Sheilendra would inspire one skilled in the art to realize such a need.” Id. at 12. In the Answer, the Examiner clarifies that “it would have been obvious to adapt NFC [Near Field Communication], the ancillary device 104 and the mobile device 102 [of Neafsey] to replace the remote access device 15 [of Dumas] for at least easy carrying on hand and improved security of NFC protocol.” Ans. 20–21. Moreover, the Examiner finds that “[t]he Appeal 2020-003681 Application 15/278,814 5 embodiment of Neafsey is also an alternative to Dumas.” Id. at 21. The Examiner further clarifies that Sheilendra discloses “updating user information from a mobile phone 1 to an ancillary device 4” in the context of allowing “the user certain abilities or privileges, such as access to his car or access to a building.” Id. at 21 (citing Sheilendra ¶ 24; quoting Sheilendra ¶ 17). We are not persuaded that the Examiner erred. First, regarding the combination of Neafsey with Dumas, we note the Examiner’s reliance on Dumas as cumulative to the teachings of Neafsey. See Ans. 21. Moreover, the Examiner finds that Neafsey teaches “an ancillary user device (accessory 104) ([0009]) where the ancillary device stores information received from a mobile computing device.” Final Act. 3. Appellant does not specifically dispute that Neafsey fails to teach any particular limitations of the claimed “ancillary user device,” aside from the limitation “wherein updated user information is received from the mobile computing device after a predetermined period of time” (see Appeal Br. 9–10; Reply Br. 2–4), for which the Examiner relies upon Sheilendra (see Final Act. 4; Ans. 21–22). Rather, Appellant argues against the combination of Dumas and Neafsey. See Appeal Br. 9–10; Reply Br. 2–4. As Neafsey is an alternative to Dumas (see Ans. 21), however, we need not consider whether one of ordinary skill in the art would have combined the two. Nevertheless, the Examiner has presented a sufficient reason to combine Neafsey with Dumas. Dumas discloses a wireless access system 10 with a lock 11 having “a controller 21 or processor and wireless communication circuitry 22 for wireless communication which . . . enable remote access device 15 to operate lock 11.” Dumas ¶ 25. The Examiner Appeal 2020-003681 Application 15/278,814 6 proposes replacing Dumas’s remote access device 15 with Neafsey’s accessory 104 and mobile device 102, where accessory 104 would use the NFC protocol. See Ans. 20–21 (citing Neafsey ¶¶ 10–16). The Examiner reasons that “it’s easier to carry the key fob/the ancillary device 104 on hand to reach closer to the reader device 110 for stronger signal communication and it’s secure to use NFC protocol for very close distance communication.” Ans. 20. Appellant has not persuasively argued that these advantages of Neafsey’s accessory 104—ease of carrying on hand to get a stronger signal when accessory 104 is close to the reader, and security of the NFC protocol—are inapplicable to Dumas’s wireless access system. See Appeal Br. 10; Reply Br. 4. In particular, Appellant argues that “[t]here is no improvement provided by the accessory of Neafsey that is not already provided by simply using the fob as disclosed in Dumas.” Appeal Br. 10. But as stated above, Neafsey’s accessory 104 uses the NFC protocol, which the Examiner asserts has a security benefit. See Ans. 20. Dumas in fact suggests implementing the NFC protocol in the wireless access system (see Dumas ¶ 90), and Appellant admits as much (see Reply Br. 4) (“The remote access device of Dumas could simply be modified to use the NFC protocol.”). Appellant also argues that “the NFC system of Neafsey does not render it obvious to modify Dumas to, instead of using a single fob, use an accessory in addition to a mobile device.” Reply Br. 4. Indeed, Neafsey teaches a technique for access control using the NFC protocol that uses two devices—accessory 104 and mobile device 102. But we are unaware of any principle that holds a combination is not obvious if it introduces any additional complexity. Rather, “if a technique has been used to improve one Appeal 2020-003681 Application 15/278,814 7 device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). We find it would have been obvious to apply Neafsey’s technique that uses accessory 104 and mobile device 102 for implementing the NFC protocol in Dumas’s wireless access system, even if Neafsey’s technique uses an additional device. Dumas’s suggestion of using “near field communication (NFC), and other wireless protocols” (Dumas ¶ 90) is evidence that it would not have been beyond the skill in the art to use the NFC protocol, as taught in Neafsey, to communicate with lock 11 in Dumas. Second, regarding the combination of Sheilendra with Neafsey, the Examiner has provided a sufficient reason to combine the references. The Examiner relies on Sheilendra for teaching the claim 1 limitation “wherein updated user information is received from the mobile computing device after a predetermined period of time.” We note that claim 1 relates to “[a]n ancillary user device”—i.e., an apparatus—and whether the device receives updated user information does not limit the structure of the device. See Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (“[A]pparatus claims cover what a device is, not what a device does.”). Accordingly, the “updated user information” limitation is not due patentable weight in considering the prior art vis-à-vis claim 1. Claim 12, on the other hand, is a method that recites the affirmative step of “the ancillary user device receiving updated user information from the mobile computing device after a predetermined period of time.” As Appellant argues claim 12 together with claim 1 (see Appeal Br. 6–12), however, claim 12 falls with Appeal 2020-003681 Application 15/278,814 8 claim 1. Nevertheless, we consider the combination of Sheilendra with Neafsey, or Dumas and Neafsey, for completeness. Sheilendra discloses various embodiments for keeping track of electronic devices “to reduce the likelihood of losing an electronic device, to increase the chances of finding a lost electronic device, and/or to mitigate the consequences if an electronic device actually is lost.” Sheilendra ¶¶ 17– 18. In particular, Sheilendra discloses that “one device may periodically send data backups to another device. For example, a mobile phone may periodically send to a tag any data that has changed on the mobile phone. The tag may store such new data.” Id. ¶ 60. As the Examiner points out (Ans. 21), Sheilendra’s electronic devices may “allow the user certain abilities or privileges, such as access to his car or access to a building.” Sheilendra ¶ 17. Here, one of ordinary skill in the art would recognize an advantage of backing up mobile phone data to a tag in the context of an access control system—namely, that even if the mobile phone was out of the user’s possession, the user could access a building or other restricted area with the tag having the backed up data. Accordingly, we find it would have been obvious to apply Sheilendra’s periodic data backup technique to mobile device 102 and accessory 104 in the access control system of Neafsey, or the combined system of Dumas and Neafsey. Appellant’s argument that “nothing taught by Sheilendra would inspire one skilled in the art to realize such a need” as updating access control credentials (Appeal Br. 12; see also Reply Br. 5), is not persuasive. As noted above, Sheilendra suggests performing periodic data backup in the context of an access control system. See Sheilendra ¶ 17. In the Reply Brief, Appellant argues that the Examiner proposes inconsistent and arbitrary Appeal 2020-003681 Application 15/278,814 9 motivations for combining Sheilendra with Dumas and Neafsey, namely, “updated improved authentication security” and “improved information security.” Reply Br. 6. But Appellant fails to specifically explain why one of ordinary skill in the art would not have understood there to be a security improvement in periodically updating the access control credential in Neafsey’s accessory 104, in view of Sheilendra’s periodic data backup. And in any case, as mentioned, the Examiner points to the suggestion in Sheilendra to employ the data backup technique in an access control system. Accordingly, we affirm the Examiner’s § 103 rejection of independent claim 1, as well as the Examiner’s § 103 rejection of independent claim 12 and dependent claims 2–6, 9, 13–16, and 17, which are not specifically argued separately, and therefore fall with claim 1. Claims 7 and 18 Claims 7 and 18 recite “wherein updated user information is received from the mobile computing device when the user information stored on the ancillary user device becomes stale, which occurs after a predetermined period of time.” Appellant contends “it is not clear how the teachings of Hardt . . . could even be theoretically applied to an access control system based on the Dumas-Neafsey-Sheilendra combination.” Appeal Br. 15. Further, Appellant contends “Hardt says nothing about how an ancillary user device should interact with a mobile computing device and how user information should be stored to such an ancillary user device.” Id. at 16. Appellant also contends the Examiner has not properly explained the motivation to combine Hardt with the other references. Id. We are not persuaded that the Examiner erred. Claim 7 recites that updated user information is received when “the user information stored on Appeal 2020-003681 Application 15/278,814 10 the ancillary user device becomes stale, which occurs after a predetermined period of time.” Here, claim 7 defines “stale” based on the passing of a “predetermined period of time.” But claim 1, from which claim 7 ultimately depends, already recites that updated user information is received “after a predetermined period of time.” So, it is unclear what the “stale” limitation adds, if anything, to claim 7. As stated above, the combination of Neafsey and Sheilendra teaches updating user information “after a predetermined period of time.” In any case, the Examiner bolsters the teachings of the base combination with Hardt (see Final Act. 9–10; Ans. 22–23), which discloses the “updating of a stale assertion” regarding user information in a user identity management system. Hardt ¶ 48. Appellant’s argument that it is not clear how Hardt’s teaching could be applied to the combination of Neafsey and Sheilendra because “Hardt says nothing about how an ancillary user device should interact with a mobile computing device and how user information should be stored to such an ancillary user device” (Appeal Br. 15–16) is not persuasive. Claim 7 does not require any specific way of receiving and storing updated data at the ancillary user device. One of ordinary skill in the art would generally understand any number of techniques for receiving and storing data that would apply to any electronic device, and could thus incorporate Hardt’s teaching of updating stale data into the combination of Neafsey and Sheilendra. And as mentioned above, there is no discernible difference between updating stale data and updating data after a predetermined period of time, which Sheilendra teaches and which is therefore already part of the base combination. See Sheilendra ¶ 60. Appeal 2020-003681 Application 15/278,814 11 Appellant’s argument that the Examiner has not properly explained the motivation to combine Hardt with the other references (Appeal Br. 16; Reply Br. 7) is also not persuasive. The Examiner asserts that Hardt’s teaching would provide “improved authentication security” (Final Act. 10). We agree that one of ordinary skill in the art would have recognized a security improvement in updating stale user information in the combination of Neafsey and Sheilendra, for example, by ensuring a user is still authorized before granting access. See Hardt ¶ 51 (“obtain[ing] an updated assertion that the user is a student in good standing”). Accordingly, we affirm the Examiner’s § 103 rejection of dependent claims 7 and 18. Claims 8 and 19 Claims 8 and 19 recite “wherein an origin flag is set on the user information by the ancillary user device before the user information is transmitted to the access control systems.” Appellant contends “Norair is silent as to what information is indicated by the origin ID flag,” and, moreover, “one skilled in the art would not even look to Norair, which concerns networking at the link layer and says nothing about how ancillary user devices should communicate with an access control system.” Appeal Br. 17. We are not persuaded that the Examiner erred. Appellant’s argument that Norair is silent as to the information in the origin ID flag (Appeal Br. 17) is not persuasive because claim 8 does not specify what information is required by “an origin flag.” Appellant’s argument that one would not have looked to Norair (id.) is also not persuasive. Claim 8 recites “wherein an origin flag is set on the user information,” and thus the problem facing the Appeal 2020-003681 Application 15/278,814 12 inventor was that of signaling some information about the user information sent from the ancillary user device to the access control systems. Norair addresses a similar problem because it discloses communicating devices that send data packets that include signaling information pertaining to the data, such as an origin ID flag. Norair ¶ 116. Accordingly, Norair is reasonably pertinent to the problem with which the inventor was faced, and is therefore within the scope of prior art one of ordinary skill in the art would have considered. See In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (holding prior art to be analogous to the claimed invention even if it is not in the same field of endeavor when “the reference still is reasonably pertinent to the particular problem with which the inventor is involved.”). Accordingly, we affirm the Examiner’s § 103 rejection of dependent claims 8 and 19. Claims 10 and 21 Claims 10 and 21 recite “wherein the user information is hashed by the ancillary user device before it is transmitted to the access control systems.” Appellant contends that “in Van Till, tokens are hashed by a server,” and that “Van Till does not discuss the possibility of even the user computer or mobile communication device creating the encrypted hash of the token.” Appeal Br. 14. In the Answer, the Examiner clarifies that the “hashing technique is well known in the art, hashing usually is applied to a credential data (e.g. token, password, or other secure data) for improved security purpose.” Ans. 22 (citing Van Till for evidence of the well-known hashing technique). Accordingly, the Examiner concludes that “it would have been obvious to Appeal 2020-003681 Application 15/278,814 13 apply hash to the transmit credential at the transmitter of the ancillary device 104 for improved secure transmission to the reader device 110.” Id. We are not persuaded that the Examiner erred. The Examiner has provided a sufficient rationale for modifying Neafsey in view of Van Till, namely, the improved security offered by hashing a credential according to a well-known technique. Whether Van Till discloses hashing by a server (see Appeal Br. 14) is beside the point. One of ordinary skill in the art would understand that hashing a credential would provide improved security no matter which device was transmitting the credential. Accordingly, we affirm the Examiner’s § 103 rejection of dependent claims 10 and 21. Claims 11, 24, and 25 Claims 11 and 24 recite “wherein the ancillary user device is worn by a user via an attachment mechanism.” Claim 24 additionally recites the ancillary user device is “in a position between components of the access control system and the mobile computing device.” Appellant contends the Examiner “provides no clearly articulated reasoning with a rational underpinning for why one skilled in the art would find the invention obvious in view of the cited references.” Appeal Br. 19. We are not persuaded that the Examiner erred. In the Answer, the Examiner clarifies that Culbert discloses that “accessory device 220 may be clipped or attached to a user’s . . . watch,” and that it would have been obvious to apply Culbert’s teaching such that Neafsey’s accessory 104 would be “worn on wrist or attached to a watch” for “easy and convenient carrying on user.” Ans. 23. In this combination, the Examiner finds, Neafsey’s accessory 104 would be “in a position between components of the Appeal 2020-003681 Application 15/278,814 14 access control system and the mobile computing device,” as recited in claim 24, because Neafsey’s mobile device 102 “can be carried in a bag/pocket.” Id. Appellant does not specifically explain why the Examiner’s rationale is insufficient. See Reply Br. 9. Accordingly, we affirm the Examiner’s § 103 rejection of dependent claim 11 and independent claim 24, and the Examiner’s § 103 rejection of dependent claim 25, which is not specifically argued separately, and therefore falls with claim 24. Claim 23 Claim 23 recites an ancillary device with “a wireless interface for transmitting user information including a token hash to the access control systems.” Appellant contends “Yang merely discloses a client device generating new tokens every 30 seconds, for example,” and “[t]here is no discussion in Yang as to whether the newly generated tokens should be sent by the client device to any other devices after a predetermined period of time.” Appeal Br. 21. Appellant further contends “Yang says nothing about how an ancillary user device should interact with a mobile computing device and how user information should be stored to such an ancillary user device and thereafter updated via wireless interfaces.” Id. We are not persuaded that the Examiner erred. Appellant’s argument that Yang does not disclose sending new tokens “after a predetermined period of time” (Appeal Br. 21) is not persuasive because the Examiner relies on Sheilendra for teaching updated user information received “after a predetermined period of time.” See Final Act. 18; Ans. 24. Appellant’s argument that Yang is silent on interaction between an ancillary use device and mobile computing device and storage of user information (Appeal Br. Appeal 2020-003681 Application 15/278,814 15 21) is also not persuasive. The Examiner relies upon Neafsey for teaching an ancillary device and mobile computing device. Further, claim 23 does not require any specific way of receiving and storing updated data at the ancillary user device. In other words, Appellant’s argument is not responsive to the Examiner’s proposed rejection, and is not commensurate with the scope of the claim. Accordingly, we affirm the Examiner’s § 103 rejection of independent claim 23. CONCLUSION The Examiner’s decision rejecting claims 1–19, 21, and 23–25 is affirmed. Appeal 2020-003681 Application 15/278,814 16 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 6, 9, 12–15, 17 103 Dumas, Neafsey, Sheilendra 1–4, 6, 9, 12–15, 17 5, 10, 16, 21 103 Dumas, Neafsey, Sheilendra, Van Till 5, 10, 16, 21 7, 18 103 Dumas, Neafsey, Sheilendra, Hardt 7, 18 8, 19 103 Dumas, Neafsey, Sheilendra, Norair 8, 19 11, 24 103 Dumas, Neafsey, Sheilendra, Culbert 11, 24 25 103 Dumas, Neafsey, Sheilendra, Culbert, Suffling 25 23 103 Neafsey, Yang, Culbert, Sheilendra 23 Overall Outcome 1–19, 21, 23–25 RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED