Telefonaktiebolaget LM Ericsson (publ)

Patent Trials and Appeals Board

Nov 2, 2021

2020005314 (P.T.A.B. Nov. 2, 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.
15/501,717 02/03/2017 Tim Lauterbach 1009-2149 / P43351 US1 7842
102721 7590 11/02/2021
Murphy, Bilak & Homiller/Ericsson
PO BOX 1959
Cary, NC 27572-1959
EXAMINER
CHERY, DADY
ART UNIT PAPER NUMBER
2461
NOTIFICATION DATE DELIVERY MODE
11/02/2021 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):
official@mbhiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIM LAUTERBACH, ALEXANDER FEDERLIN, and
THOMAS WEIDENFELLER
Appeal 2020-005314
Application 15/501,717
Technology Center 2400
Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and
LARRY J. HUME, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s Non-Final decision rejecting claims 17–21, 28–32, and 39.
Claims 22–27 and 33–38 are objected to, but are otherwise indicated by the
Examiner as being drawn to allowable subject matter. Non-Final Act. 9.
Appellant has canceled claims 1–16. See Non-Final Act. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. The Real Party in Interest is Telefonaktiebolaget LM Ericsson. Non-
Final Act. 2.
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STATEMENT OF THE CASE2
The disclosed and claimed subject matter relates to “a method to
process data packets of a vehicle message received by a privacy gateway
from a vehicle via a mobile communications network, and to the privacy
gateway.” See Spec. (Technical Field). Figure 1 of Appellant’s disclosure is
illustrative:

“Fig. 1 is a schematic architectural view of a system in which location
information is transmitted from a vehicle to a service provider via a mobile
communications network, wherein the privacy of the vehicle is maintained.”
Spec. 4:26–28.

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Jan. 16, 2020); Examiner’s Answer (“Ans.,” mailed May 13, 2020);
Appellant’s Reply Brief (“Reply Br.,” filed July 9, 2020); Non-Final Office
Action (“Non-Final Act.,” mailed June 28, 2019); and the original
Specification (“Spec.,” filed February 3, 2017).
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Exemplary Claim
Claim 17, reproduced below, is representative of the subject matter on
appeal (emphases added to contested prior-art limitations):
17. A method of processing data packets of vehicle
messages received by a privacy gateway from vehicles via a
mobile communications network, the method comprising:
receiving a first vehicle message transmitted by a first
vehicle;
identifying a source IP address in data packets of the first
vehicle message;
replacing the source IP address in the data packets of the
first vehicle message with an IP address of a location-collecting
entity of the mobile communications network which collects
location information of a plurality of vehicles, resulting in an
adapted vehicle message with adapted data packets containing
the IP address of the location-collecting entity as source IP
address;
transmitting the adapted vehicle message to a service-
providing entity configured to provide location dependent
services for the plurality of vehicles.
REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Zellner et al. (“Zellner”) US 2012/0034930 A1 Feb. 9, 2012
Rayes et al. (“Rayes”) US 2013/0111596 A1 May 2, 2013
Gruteser et al., Anonymous Usage of Location-Based Services Through
Spatial and Temporal Cloaking, Dept. of Comp. Sci. Univ. of Col. at
Boulder, MobiSys Proceedings of the 1st International Conference on
Mobile Systems pp. 31–42, May 5–8, 2003. (hereinafter “Gruteser”)
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REJECTION
Claims 17–21, 28–32, and 39 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Zellner, Gruteser,
and Rayes. Non-Final Act. 3.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 7–17) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the obviousness
rejection of independent claims 17, 28, and 39 on the basis of representative
claim 17. We address separately argued dependent claims 18–21 and 29–32,
infra.3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We agree with Appellant’s arguments with respect to claims 18, 20,
21, 29, 31, and 32. However, we disagree with Appellant’s arguments with
respect to claims 17, 19, 28, 30, and 39 and, unless otherwise noted, we
incorporate by reference herein and adopt as our own: (1) the findings and

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner’s Answer
in response to Appellant’s arguments. We highlight and address specific
findings and arguments regarding claims 17–21 for emphasis as follows.
1. § 103 Rejection of Independent Claims 17, 28, and 39
Issue 1
Appellant argues (Appeal Br. 8–17) the Examiner’s rejection of
representative independent claim 17 under 35 U.S.C. § 103 as being obvious
over the combination of Zellner, Gruteser, and Rayes is in error. Appellant’s
contentions present us with the following issue:
Regarding claim 17, did the Examiner err in finding the cited prior art
combination teaches or suggests “[a] method of processing data packets of
vehicle messages received by a privacy gateway from vehicles via a mobile
communications network” that includes, inter alia, “replacing the source IP
address in the data packets of the first vehicle message with an IP address of
a location-collecting entity of the mobile communications network which
collects location information of a plurality of vehicles, resulting in an
adapted vehicle message with adapted data packets containing the IP address
of the location-collecting entity as source IP address,” as recited in claim 17?
Principles of Law
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
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words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of [those] references would have
suggested to those of ordinary skill in the art.” Id. at 425.
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one 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. . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
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Analysis
Disputed Limitations in Claim 17 are Taught or Suggested
Appellant designates claim 17 as representative of independent claims
17, 28, and 39. Appeal Br. 8.
The Examiner finds the combination of Zellner, Gruteser, and Rayes
teaches or suggests the contested limitation “replacing the source IP address
in the data packets of the first vehicle message with an IP address of a
location-collecting entity of the mobile communications network which
collects location information of a plurality of vehicles, resulting in an
adapted vehicle message with adapted data packets containing the IP address
of the location-collecting entity as source IP address.” Non-Final Act. 3–6.
Appellant contends, “there is no suggestion in Zellner that the
identifiers at issue are in data packets of a vehicle message.” Appeal Br. 14.
We are not persuaded by Appellant’s argument because Appellant
acknowledges, “it is reasonable to assume that actions performed by
Zellner’s system on messages received from wireless devices in general
would also be applied to messages received from vehicles that include
wireless devices configured to operate in the wireless communication
system.” Appeal Br. 11 n.1
Appellant further argues “there are no IP addresses in Zellner.”
Appeal Br. 14.
We are not persuaded by Appellant’s arguments because Appellant is
arguing the references separately. The Examiner also cites to Gruteser and
Rayes for teaching the disputed limitation. Non-Final Act. 5–6. We find
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Rayes’s step 410, where the privacy manager 130 generates and updates
mapping data to map the sensitive information to dummy data to hide the
actual IP addresses of network devices within a private network, teaches or
at least suggests the disputed limitation. See Reyes ¶ 69. We find
Gruteser’s anonymity server decrypting the message and removing
identifiers such as network addresses also teaches or at least suggests the
disputed limitation. See Gruteser § 5.
Moreover, the Examiner’s finding that Zellner’s location associated
with mobile identification information could be understood by a person of
ordinary skill in the art as a network address, i.e., an IP address, is not
precluded by the language of claim 17 or the corresponding support in
Appellant’s specification. Therefore, we agree with the Examiner’s finding
that Zellner’s description of location information for a wireless device at
least suggests “an IP address” of the mobile device, as claimed.
Appellant further argues Zellner does not teach replacing the source
IP address with an IP address of a location-collecting entity. Appeal Br. 14.
We are not persuaded by Appellant’s argument because Zellner’s
network-based location system 122 providing information on the device
teaches or at least suggests the claimed “location-collecting entity” that
assists the wireless network 110 in replacing the device ID and location with
dummy information. See Zellner, Fig. 2a; Ans. 4–6 (citing Zellner
¶¶ 33–42). Furthermore, in step 254, proxy server 100 generates a dummy
identification and replaces the device identification with the dummy
identification. Zellner, Fig. 2b. Given this evidence, we find the cited
sections of Zellner at least suggest “replacing the source IP address . . . with
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an IP address of a location-collecting entity of the mobile communications
network.” Id. Furthermore, given the teachings in the cited references we
find this to be a predictable result. KSR, 550 U.S. at 416 (“The combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.”). Our reviewing court
provides: “[W]hen the problem is known, the possible approaches to solving
the problem are known and finite, and the solution is predictable through use
of a known option,” a solution that is obvious to try may indeed be obvious.
Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351 (Fed. Cir. 2008) (citing
KSR, 550 U.S. at 421).
This legal guidance is applicable here. We find an artisan would
have been motivated at the time of the invention to replace “the source IP
address . . . with an IP address of a location-collecting entity of the mobile
communications network,” because the possible approaches to solving the
problem are known and finite, and the solution is predictable through use of
a known option.
Furthermore, Appellant does not point to any evidence in the record
that shows combining the teachings of the cited references in the manner
proffered by the Examiner would have been “uniquely challenging or
difficult for one of ordinary skill in the art” or would have “represented an
unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art combination to teach
or suggest the disputed limitations of claim 17, nor do we find error in the
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Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner's obviousness rejection of independent claim 17, and grouped
independent claims 28 and 39, which fall therewith. See Claim Grouping,
supra.
2. § 103 Rejection of Dependent Claims 18 and 29
Issue 2
Appellant argues (Appeal Br. 8–17) the Examiner’s rejection of
dependent claims 18 and 29 under 35 U.S.C. § 103 as being obvious over the
combination of Zellner, Gruteser, and Rayes is in error because the
Examiner’s rejection provides no explanation or reasoning. Appeal Br. 17–
20. Appellant specifically points out that Zellner does not disclose
determining that the destination IP address is known to be “valid,” nor does
it teach the “checking” step. Appeal Br. 20.
Dependent claim 18 recites:
The method of claim 17, further comprising the step of
checking whether a destination IP address of the service-
providing entity contained in the data packets is known to the
privacy gateway as a valid destination IP address for a service-
providing entity, wherein the replacing of the source IP address
and the transmitting of the adapted vehicle message to the
service-providing entity are responsive to determining that the
destination IP address is known as a valid destination IP
address.
Although the Examiner provides a list of citations to sections of
Zellner (Non-Final Act. 6), we do not see the Examiner’s identified mapping
to Zellner as teaching or suggesting the disputed limitations. The
Examiner’s further explanation in the Answer does not address each of
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Appellant’s arguments and we are not persuaded by the provided
explanation. Ans. 7.
Based upon our review of the record, we find a preponderance of the
evidence supports Appellant’s contentions regarding dependent claim 18.
Appeal Br. 19–20.
Because the Examiner has not fully developed the record to establish
how the citations to Zellner teach or suggest the disputed limitations, we find
speculation would be required to affirm the Examiner on this record. We
decline to engage in speculation. “A rejection . . . must rest on a factual
basis . . . .” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent
Office has the initial duty of supplying the factual basis for its rejection. It
may not . . . resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in its factual basis.” Id.
Therefore, we are constrained by the record before us and find the
Examiner erred. Accordingly, we reverse the Examiner’s § 103(a) rejection
of dependent claim 18, and for the same reasons, we also reverse dependent
claim 29, which recites the contested limitation using similar language of
commensurate scope.
3. § 103 Rejection of Dependent Claims 19 and 30
Issue 3
Appellant argues (Appeal Br. 8–17) the Examiner’s rejection of
dependent claims 19 and 30 under 35 U.S.C. § 103 as being obvious over the
combination of Zellner, Gruteser, and Rayes is in error because Appellant
argues “[n]owhere does Zellner mention a certificate, trust, or anything
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suggesting a determination of whether a message is ‘signed with a valid
certificate.’” Appeal Br. 21.
Dependent claim 19 recites:
The method of claim 17, further comprising the step of
determining whether the received first vehicle message is
received from a trusted vehicle, wherein the replacing of the
source IP address and the transmitting of the adapted vehicle
message to the service-providing entity are responsive to
determining that the received vehicle message is received from
a trusted vehicle.
We are not persuaded by Appellant’s argument and agree with the
Examiner’s finding that Zellner’s proxy server 100 is a wireless Application
Protocol (WAP) server, where WAP uses Wireless Transport Layer Security
(WTLS) as a user authentication certificate to verify a trusted user. Ans. 8.
We also agree with the Examiner’s further finding that the messages
received from device 112 are, therefore, received from a trusted user or
vehicle. Id. Although Appellant argues using WAP is not taught by Zellner,
we are not persuaded the Examiner erred because we find a person of
ordinary skill in the art would have understood that WAP would use WTLS
for user authentication.
Therefore, we sustain the Examiner’s rejection of dependent
claims 19, and also claim 30 which recites limitations of commensurate
scope.
4. § 103 Rejection of Dependent Claims 20, 21, 31, and 32
Issue 4
Appellant argues (Appeal Br. 21) the Examiner’s rejection of
dependent claims 20 and 21 (and claims 31 and 32 which recite
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commensurate limitations) should be reversed because Zellner does not
disclose the limitations of these claims, specifically that it does not disclose
“determining whether the received first vehicle message is signed with a
valid certificate” and that “the certificate is transmitted to the location-
collecting entity.” Appeal Br. 21–22.
The Examiner, in rejecting claims 20 and 21, provides a string of
citations to Zellner without any clear mapping, reasoning or explanation.
Non-Final Act. 7.
Based upon our review of the record, we find a preponderance of the
evidence supports Appellant’s contentions regarding claims 20, 21, 31, and
32. Appeal Br. 21–22. Because the Examiner has not fully developed the
record to establish how the citations to Zellner teach or suggest the disputed
limitations, we find speculation would be required to affirm the Examiner on
this record. We decline to engage in speculation. Therefore, we are
constrained by the record before us to find the Examiner erred.
Accordingly, we reverse the Examiner’s § 103(a) rejection of
dependent claims 20 and 21, and for the same reasons, we also reverse
dependent claims 31 and 32, which recite the contested limitations using
similar recitations of commensurate scope.
CONCLUSION
The Examiner erred with respect to the obviousness rejection of
claims 18, 20, 21, 29, 31, and 32, and the Examiner did not err with respect
to the obviousness rejection of claims 17, 19, 28, 30, and 39 under 35 U.S.C.
§ 103 over the cited prior art combination of record, and we sustain the
rejections.
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DECISION SUMMARY
Claims
Rejected
35
U.S.C § References Affirmed Reversed
17–21, 28–32, 39 103
Zellner,
Gruteser,
Rayes
17, 19, 28,
30, 39
18, 20, 21,
29, 31, 32
FINALITY AND 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)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED IN PART