Ex Parte 6,300,863 et al

Patent Trial and Appeal Board

Nov 27, 2013

90011323 (P.T.A.B. Nov. 27, 2013)

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.
90/011,323 12/23/2010 6,300,863 1001/216A 3623
26588 7590 11/27/2013
LIU & LIU
350 S. FIGUEROA STREET SUITE 975
LOS ANGELES, CA 90071
EXAMINER
NGUYEN, MINH DIEU T
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/27/2013 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 APPEALS BOARD
____________________

Ex parte ABSOLUTE SOFTWARE CORPORATION,
Patent Owner and Appellant
____________________

Appeal 2013-009741
Reexamination Control 90/011,323
Patent 6,300,863
Technology Center 3900
____________________

Before JAMES T. MOORE, MAHSHID D. SAADAT, DENISE M. POTHIER,
Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Absolute Software Corporation (hereinafter “Appellant”), the real party in
interest of Patent 6,300,863 (hereinafter the “863 patent”), appeals under 35 U.S.C.
§§ 134(b) and 306 from the final rejection of claims 1-7, 9-11, 15-17, 21-31,
33-35, 43-48, 285, 286, 293, 294, 300-303, and 308-311. The remaining claims
have been canceled, objected to, or confirmed. An oral hearing was conducted on
October 23, 2013. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM.
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This reexamination proceeding arose from a third-party request for ex parte
reexamination filed by Front Door (Supplemental Request for Ex Parte
Reexamination) on December 23, 2010.
The ‘863 patent relates to a technique for tracing smaller lost or stolen
devices (e.g., laptops, cellular telephones, and personal digital assistants). The
‘863 patent, 1:51-55, 2:27-31. No disassembling or physically altering of the
device is required, providing a cloaked security device in which its existence is not
located readily or disabled easily. The ‘863 patent, 1:56-59, 2:60-67. The ‘863
patent achieves its stated goal by hiding an intelligent agent (e.g., A including A1-
A4) in the client device within its software, firmware/hardware, which
communicates with a host monitoring system (e.g., C including host computer 3)
using various telecommunications links (e.g., B including lines L1-L9). The ‘863
patent, 2:34-35, 39-52, 3:5-17, 6:21-49; Fig. 1. The host monitoring system
performs multiple services, including tracing the device, locating the device,
providing identifying indicia (e.g., an electronic serial number (ESN)), and
notifying the end user of the device’s location. The ‘863 patent, 2:35-38.
Representative original claim 1 on appeal reads as follows (with emphasis):
1. A method for tracing an electronic device having an agent initiating
communication and providing identifying indicia to a host system, said
electronic device connectable to said host system through a global network,
said method comprising the steps of:
automatically providing said host system with said identifying indicia
through said global network for determining the identity of said electronic
device; and
providing said host system with one or more global network
communication links used to enable transmission between said electronic
device and said host system, said transmission via said communication links
used for determining the location of said electronic device.

App. Br., Claims Appendix.
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The Examiner presents the following rejections:
Claims 1, 3, 7, 10, 17, 31, 35, 43-48, 285, 286, and 303 are rejected under 35
U.S.C. § 102(b) or (e) by Baran (U.S. Patent No. 5,406,269, patented April 11,
1995 and filed Aug. 13, 1993). Ans. 4-8.1
Claims 2, 9, 11, 15, 16, 33, 34, 293, 294, and 300-302 are rejected under 35
U.S.C. § 103(a) by Baran and Wesinger (U.S. Patent No. 5,778,367, patented July
7, 1998 and filed Dec. 14, 1995). Ans. 8-10.
Claims 4-6 are rejected under 35 U.S.C. § 103(a) by Baran and Severson
(U.S. Patent No. 4,951,029, patented Aug. 21, 1990). Ans. 10-11.
Claims 308-311 are rejected under 35 U.S.C. § 103(a) by Baran, Wesinger,
and Bonnell (U.S. Patent No. 5,655,081, patented Aug. 5, 1997 and filed Mar. 8,
1995). Ans. 11-12.
II. ISSUES ON APPEAL
(1) Under § 102, has the Examiner erred by finding that Baran discloses:
(a) providing the host system with a global network communication link
used to enable transmission between the electronic device and the host system, the
transmission used for determining the electronic device’s location as recited in
claim 1 and
(b) the agent is encoded in one or more forms, including software, firmware,
and hardware as recited in claim 43?
(2) Under § 103, has the Examiner erred in rejecting claim 2 by finding that
Baran and Wesinger collectively would have taught or suggested the global
network includes the Internet?

1 The Examiner has withdrawn the rejection of claims 21-30 as being anticipated
by Baran. Ans. 3. We presume that these claims have been confirmed.
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III. ANALYSIS
A. Anticipation Rejection Over Claims 1, 3, 7, 10, 17, 31, 35,
43-48, 285, 286, and 303
1. Claims 1, 3, 7, 10, 17, 31, 35, 285, 286, and 303
Appellant argues that Baran fails to disclose the step of providing the host
system with a global network communication link. App. Br. 14-19; Reply Br. 5-6.
Contrary to these assertions, we agree with the Examiner that claim 1 does not
require the agent to perform “providing said host system with one or more global
network communication links . . . .” See Ans. 13. We acknowledge that the
preamble of claim 1 recites the intended use of the agent is for “initiating
communication and providing identifying indicia to a host system.” App. Br. 39,
Cl. Appx. However, the step of “providing said host system with one or more
global network communication links” in the body differs from the “providing”
recitation in the preamble, in that this “providing” step in the claim’s body
provides the host system with a global network communication link. See Ans. 13
Additionally, despite Appellant’s urging (App. Br. 14-16; Reply Br. 5-6), we
are not required to adopt a court’s construction for the “providing said host system
with one or more global network communication links” step. See In re Trans Texas
Holdings Corp., 498 F.3d 1290, 1296-98 (Fed. Cir. 2007). Rather, during
reexamination proceedings, claims are to be given their broadest reasonable
construction consistent with the disclosure. See Trans Texas, 498 F.3d at 1298. As
such, we accept that an ordinary meaning for “provide” includes “‘[t]o furnish;
supply” or “[t]o make available; afford.’” App. Br. 16. However, we find that the
limitation of “providing said host system with one or more global network
communication links used to enable transmission between said electronic device
and said host system” in claim 1 does not mean “the agent furnishing, supplying,
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or making available” a global network communication link to the host system.
App. Br. 14, 16-17.
We further turn to Figure 1 of the ‘863 patent to construe the phrase, “one or
more global network communication links.” Figure 1 shows a Telecommunication
Link B located between a Host Monitoring System C (e.g., computer 3) and Client
Device A (e.g., A1). The ‘863 patent, 6:22-30, Fig. 1. Examples of the provided
Telecommunication Link B include Internet B5, Public Switched Telephone
Network (PSTN) B1, Cable Network B2, Radio Tower B3, and Satellite B4. The
‘863 patent, 6:34-7:13; Fig. 1.
Appellant provides the Internet as an example of a global network but does
not state the Internet is a global network telecommunication link. The ‘863 patent,
6:64-65. Moreover, Appellant states that the host system in a “global network or
Internet application” can be simultaneously connected to the Internet B5 through a
modem M which connects client computer A1 to telephone line L1. The ‘863
patent, 7:2-7; Fig. 1. This indicates that the broadest reasonable construction of
links within a global network (i.e., “global network communication links”)
includes modems and a telephone line.
When mapping the recited “global network communication links” to the
disclosure, Appellants states that “these links are routers (or nodes) along the
communication pathway, which are identified by a number known as an ‘IP
[Internet Protocol] address.’” App. Br. 10; see Oral H’g Trans. 8. Notably,
however, the “global network communication links” are not described as “the
identification of the nodes along the global communication transmission path” or
the IP addresses associated with routers as argued by Appellant. See Oral H’g
Trans. 7; see also App. Br. 18.
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We therefore find that the recited “global network communication links”
includes routers, nodes, modems, and telephone lines along the communication
pathway between the host system and the electronic device so as to enable
transmission between the electronic device and the host system as recited.
Turning now to Baran, we disagree that Baran fails to disclose “providing
the host system with one . . . global network communication link[] used to enable
transmission between said electronic device and said host system . . . .” App.
Br. 14-19. The Examiner finds Baran discloses this limitation by using a modem
through a telephone line, a fax machine or a DTMF (Dual-Tone Multi-Frequency)
encoder to communicate between an apparatus and a central site. Ans. 4 (citing
Baran 3:32-37, 6:15-29).
Baran states apparatus 18, which can be a voice mail system, a fax machine,
or a computer with software (e.g., an electronic device), must include or be
connected to “a means for communicating via telephone lines, such as a modem, a
fax machine, or a DTMF encoder” with the central site. Baran 3:25-37; Figs. 1, 3.
Baran also states the Central Site monitors apparatus 18 and communicates with
apparatus 18 over a telephone line. Baran 3:37-42; Fig. 4. Accordingly, Baran
discloses providing the host system (e.g., Central Site) a global network
communication link (e.g., a modem with telephone lines) so as to enable
transmission between the electronic device (e.g., apparatus 18) and the host system
(e.g., the central site) as recited.
Claim 1 further recites the “said transmission via said communication links
used for determining the location of said electronic device.” Appellant asserts that
Baran does not disclose this transmission through the communication link is
provided by the agent or is used for determining the electronic device’s location.
App. Br. 18. As stated above, we disagree with Appellant that claim 1 requires an
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agent to perform the step of providing a global network communication link as
recited. Thus, the argument concerning the agent in Baran failing to provide an
automatic number identification (ANI) is not persuasive. App. Br. 17-18; Reply
Br. 7-9. Also, beyond identifying indicia, claim 1 does not require any particular
information (e.g., an IP address) be forwarded to the host system. App. Br. 18;
Reply Br. 9. Rather, only links in claim 1 are required to be provided to enable a
transmission between the electronic device and the host system.
Regarding “said transmission” limitation in claim 1, the Examiner cites to
Baran, which discusses a transmission to the central site (e.g., the host system) by
the modem includes the electronic device’s (e.g., apparatus 18) telephone number
and serial number. See Ans. 4 (citing Baran 3:51-58, 3:61-4:6). Baran also states
“[b]y imbedding a unique serial number in the software shipped with each system,
it becomes possible to track the current whereabouts of each copy of the software
that has been shipped” (Baran 6:17-21; see Ans. 4). Given that software is shipped
with each system (e.g., each device) and runs on apparatus 18, this information is
used to determine the device’s “whereabouts.” Baran further states the ANI
(automatic number identification) is used to determine an apparatus’ telephone
number and an installation address (Baran 6:11-14; see Ans. 13), which assists in
determining the location of the system or device. Thus, Baran discloses a
“transmission . . . used for determining the location of said electronic device” as
recited in claim 1. Baran 3:54-58, 6:11-21.
Dependent claims 3, 7, 10, 17, 31, 35, 285, 286, and 303 are not separately
argued and group with claim 1. We find that the weight of the evidence taken as a
whole supports the Examiner’s anticipation rejection of claims 1, 3, 7, 10, 17, 31,
35, 285, 286, and 303.

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2. Claims 21-30
Appellant separately argued claims 21-30. App. Br. 19-23. We need not
address these arguments because the Examiner has withdrawn the rejection for
these claims. Ans. 3.
3. Claims 43-48
Claim 43 depends from claim 1 and further recites that the agent is encoded
in one or more forms, including software, firmware, and hardware. The Examiner
finds Baran discloses this limitation. Ans. 6 (citing Baran 2:50-55). Appellant
addresses claims 43-45 together, arguing that Baran is silent concerning encoded
an agent. App. Br. 24. We select claim 43 as representative.
Notably, identity of terminology between Baran and claimed “agent” is not
required. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Baran discloses the
local system (e.g., apparatus 18 or the recited “electronic device”) contains
hardware or software to initiate calls reporting data to the remote monitoring
system (e.g., central site or the recited “host system”). Baran 2:50-55. Thus,
contrary to Appellant’s assertions (App. Br. 24; Reply Br. 11), the electronic
device has an agent, as broadly as recited, that reports data to the host system, and
the agent is either hardware or software. Given that Baran discloses the electronic
device includes hardware or software to call and report data to the host system,
Baran’s agent is “encoded in one or more forms” of either software or hardware to
provide the host system with the reported and transmitted data.
In the Reply Brief, Appellant presents new arguments concerning each of
claims 43-45 for the first time. Reply Br. 11-13. These arguments are untimely
and waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) (“[T]he reply brief [is not] an opportunity to make arguments that
could have been made in the principal brief on appeal to rebut the Examiner's
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rejections, but were not.”). Even so, we refer to our discussion of claim 43 and
how Baran discloses an encoded agent as well as the Examiner’s findings. See
Ans. 6. Additionally, based on Baran’s hardware example (Baran 2:51-52), Baran
further discloses that the hardware includes a microprocessor 102, ROM 110,
RAM 112, and encoder/decoder 108 to generate outgoing signals. Baran 5:1-11.
Thus, the agent must be located and encoded in one of the devices (e.g., a
processor). Moreover, Baran further discloses the device components of the
electronic device has ROM and thus includes an internal non-volatile memory
device in the form of ROM as recited in claim 45. See id.
Claims 46-48 depend indirectly from claim 43 and are not separately argued.
See App. Br. 14-24.
The weight of the evidence taken as a whole supports the Examiner’s
anticipation rejection over claims 43-48.
B. Obviousness Rejection Over Claims 2, 9, 11, 15, 16, 33, 34,
293, 294, and 300-302
Claim 2 depends from claim 1 and further recites the global network
includes the Internet. The Examiner cites to Wesinger to teach employing a known
communication medium (i.e., the Internet) and proposes combining Wesinger’s
teaching with Baran. Ans. 8, 15-16. Appellant argues that Wesinger fails to teach
that the Internet is a popular communication medium as early as the effective date
of Wesinger and that there is no teaching, suggestion, or motivation to combine
Wesinger with Baran. App. Br. 25-28; Reply Br. 13-16. Appellant also asserts
that Wesinger fails to cure the purported deficiency of Baran that an agent provides
the host system with one or more global network communication links. App. Br.
26-28. As to the later argument, we are not persuaded for the reasons discussed
above when addressing claim 1 and Baran.
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Also, the Examiner articulates a reason with some rational underpinning to
combine Wesinger with Baran and to support an obviousness conclusion. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner finds that
Wesinger discloses a global network that uses the Internet and further teaches the
Internet has experienced explosive growth, suggesting use in various applications.
Ans. 8, 15 (citing Wesinger 1:12-14, 3:64-65). The Examiner further notes that
Baran discloses its approach can be used with any system using modems, including
being connected to a network system, such as a local area network (LAN). Ans. 15
(citing Baran 7:54-57).
Contrary to Appellant’s contention (App. Br. 32-33), Baran is not confining
its use to LANs. App. Br. 32-33. Rather, the LAN environment is just an
example. Furthermore, Baran suggests being used with various types of networks,
including those which require remote communication. Baran 3:25-41, 7:54-57,
Fig. 1. Wesinger teaches one such known global network (i.e., the Internet) used
for remote communications that is experiencing explosive growth. Ans. 8, 15-16
(citing Wesinger 1:12-14). Wesinger thus provides a suggestion to one of ordinary
skilled in the art to use a known and growing network, such as the Internet, to
communicate information within Baran’s system. See Ans. 8, 15.
Moreover, accounting for the inferences and creative steps that an ordinarily
skilled person would have employed, we agree with the Examiner’s position (see
Ans. 15) that a known system which uses modems would have included the
Internet to a person of ordinary skill at the time of the invention. See KSR, 550
U.S. at 418. Thus, while Baran discloses using telephone lines and a modem to
provide the global network connecting electrical apparatus 18 with the remote
central site (Baran, Fig. 1), Baran further suggests using any system that involves a
modem. Wesinger teaches one such known and explosively growing system that
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involves the Internet. Ans. 15 (citing Wesinger 1:12-14). Combining Wesinger’s
Internet teaching with Baran therefore would yield a predictable result of no more
than including a global system having the Internet. See KSR, 550 U.S. at 417.
Appellant further contends that Baran does not concern unauthorized
possession of hardware and does not determine whether the hardware has been lost
or stolen. App. Br. 28-31. Appellant also asserts that Wesinger does not track
computing assets. App. Br. 31. Notably, claim 1 fails to recite these limitations,
and such arguments are not commensurate in scope with claim 1.
Lastly, concerning Appellant’s argument that Baran is not enabled for a
LAN environment (App. Br. 32-33; Reply Br. 17, 19), we note the Examiner has
presented a proper prima facie case of obviousness. The burden shifts to Appellant
to submit rebuttal evidence that the discussed LAN environment subject matter is
nonenabling. See In re Antor Media Corp., 689 F3d 1282, 1289 (Fed. Cir. 2012).
Appellant’s mere assertion of nonenablement is insufficient to satisfy this burden.
App. Br. 32-33.
Claims 9, 11, 15, 16, 33, 34, 293, 294, and 300-302 are not separately
argued. See App. Br. 24-35.
The weight of the evidence taken as a whole supports the Examiner’s
conclusion of obviousness for claims 2, 9, 11, 15, 16, 33, 34, 293, 294, and
300-302.
C. Remaining Obviousness Rejections
Regarding claims 4-6 and 308-311, Appellant refers to the arguments
presented for claim 1 and argues that Severson, Wesinger, and Bonnell do not cure
any alleged deficiency. App. Br. 35-36; Reply Br. 16-20. We are not persuaded
for the reasons previously set forth concerning Baran.
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For these claims, Appellant also asserts that there is no teaching, suggestion,
or motivation to combine Baran and Severson or Baran with Wesinger and
Bonnell. App. Br. 35-36; Reply Br. 17, 20. Once again, we are not persuaded. As
explained above, the Examiner provides an articulated reason with some rational
underpinning to combine Baran and Wesinger. See KSR, 550 U.S. at 418.
Additionally, the Examiner has articulated a reason with some rational
underpinning to combine Baran and Severson (see Ans. 10-11, 16) and Baran,
Wesinger, and Bonnell (see Ans. 11-12, 16-17). Appellant has not demonstrated
why these combinations as proposed fail to satisfy the requisite showing to
combine the references and support a conclusion of obviousness. App. Br. 36.
For the first time in the Reply Brief, Appellant also asserts that the Examiner
is engaging in impermissible hindsight when combining Severson with Baran and
Bonnell with Baran and Wesinger. Reply Br. 17-18, 20-21. Such an argument is
untimely and waived. See Borden, 93 USPQ2d at 1474. Nonetheless, as stated
above, the Examiner does not rely on impermissible hindsight and provides reason
with some rational underpinning for combining the references. See Ans. 10-12,
16-17.
The weight of the evidence taken as a whole supports the Examiner’s
conclusion of obviousness under the law for claims 4-6 and 308-311.

IV. CONCLUSION
On the record before us, we affirm the rejections maintained by the
Examiner.
V. TIME PERIOD FOR RESPONSE
Requests for extensions of time in this ex parte reexamination proceeding
are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
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AFFIRMED

FOR PATENT OWNER:

Wen Liu
LIU & LIU
250 S. Figueroa Street, Suite 975
Los Angeles, CA 90071

FOR THIRD PARTY REQUESTER:

PATENT LAW OFFICE OF RICK MARTIN, PC
P.O. BOX 1839
LONGMONT, CO 80502