Ex Parte Bittles et alDownload PDFPatent Trial and Appeal BoardMay 22, 201714093246 (P.T.A.B. May. 22, 2017) Copy Citation 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. 14/093,246 11/29/2013 William Bittles GB920120133US1 7055 116550 7590 05/24/2017 'Zehrer Patent Serviees; EXAMINER Matthew Zehrer LEWIS, LISA C 610 Kingsview Ln N Plymouth, MN 55447 ART UNIT PAPER NUMBER 2495 NOTIFICATION DATE DELIVERY MODE 05/24/2017 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): matt@zpats.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM BITTLES, GORDON J. COCKBURN, TIM F. MCCARTHY, JON PARKES, and STEVEN G. WHITE Appeal 2016-008711 Application 14/093,2461 Technology Center 2400 Before KRISTEN L. DROESCH, LINZY T. McCARTNEY, and MATTHEW J. McNEILL, Administrative Patent Judges. McNEILL, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-20, which are all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is International Business Machines Corporation. App. Br. 1. Appeal 2016-008711 Application 14/093,246 STATEMENT OF THE CASE Introduction Appellants’ application relates to controlling modification of cabling in an electronic device, such as a storage area network device. Spec. 11. Claim 1 is illustrative of the appealed subject matter and reads as follows: 1. An electronic device that controls modification of electronic device cabling with physical locks, comprising: a central processing unit configured to process a cable modification request from an administration system and configured to generate a control signal based on the result of processing the cable modification request; and a communication unit port that communicates the control signal to an electronic device component, wherein the control signal is configured to control a physical lock associated with the electronic device component to permit or prevent modification of the electronic device cabling. The Examiner’s Rejections Claims 1, 2, 6-11, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lockyer (GB 2337840 A; Dec. 1, 1999), Denz et al. (US 6,170,595 Bl; Jan. 9, 2001), and Kaji (US 2006/0036822 Al; Feb. 16, 2006). Final Act. 4-7. Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lockyer and Denz. Final Act. 7—9. Claims 3, 4, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lockyer, Denz, Kaji, and Girouard et al. (US 2005/0246762 Al; Nov. 3, 2005). Final Act. 9-10. Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lockyer, Denz, and Girouard. Final Act. 10. 2 Appeal 2016-008711 Application 14/093,246 Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Lockyer, Denz, Chu et al. (US 8,139,840 Bl; Mar. 20, 2012). Final Act. 11. Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Lockyer, Denz, and Kaji. Final Act. 11-12. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions that the Examiner has erred. We disagree with Appellants’ contentions. Except as noted below, we adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. We concur with the conclusions reached by the Examiner. We highlight the following additional points. Appellants argue the Examiner erred because Lockyer, Denz, and Kaji do not teach or suggest “a physical lock associated with the electronic device component to permit or prevent modification of the electronic device cabling,” as recited in claim 1. App. Br. 6-9. In particular, Appellants argue Lockyer teaches an alarm or monitoring system that raises an alarm if a device is removed from a network, but does not teach a physical lock that prevents a device from being removed from the network. App. Br. 6-7. Appellants argue Denz teaches a physical lock that protects a control unit in an automobile, but does not teach a physical lock put onto cabling. App. Br. 8 (citing Denz 1:34-36, 3:54-59). Appellants have not persuaded us the Examiner erred. The Examiner finds, and we agree, Lockyer teaches networking devices are locked onto a network such that an alarm is raised if a device is removed from the network 3 Appeal 2016-008711 Application 14/093,246 by detaching its cabling. Ans. 3 (citing Lockyer, Abstract, Fig. 2, 10:lb- 27). The Examiner further finds, and we agree, Denz teaches a physical lock that is controlled by a signal to secure a control unit in a vehicle. Ans. 3. The proposed combination would utilize Denz’s physical lock that is controlled by a signal with Lockyer’s network, in particular securing the devices in Lockyer’s network with the signal-controlled physical lock. Appellants’ arguments focus on the individual disclosures of the references instead of the combined teachings. One cannot show nonobviousness by attacking references individually when the rejection is based on a combination of references. In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner explained that the combination of Lockyer and Denz, not either reference alone, discloses this limitation. Ans. 3. Accordingly, Appellants have not persuasively argued that the proposed combination fails to teach, or at least suggest, the disputed limitation. Appellants further argue combining Lockyer and Denz is improper because it changes the principle of operation of Lockyer. App. Br. 9-11. In particular, Appellants argue the principle of Lockyer is to decentralize control and security of network devices. App. Br. 9. Appellants argue “the addition of Denz’s mechanical catch would result in a bizarre situation where the network device user would need to go through multiple security precautions to properly disengage the user’s network device.” App. Br. 10. Appellants further argue implementing Denz’s physical lock “would destroy the connectivity of the network device” if the user forgot to disengage the mechanical catch. Id. 4 Appeal 2016-008711 Application 14/093,246 Appellants’ arguments are unpersuasive. First, adding Denz’s mechanical catch to Lockyer would result in a security measure to prevent undesired modifications to electronic cabling—the same purpose as Appellants’ claims and Lockyer. Second, Appellants’ argument regarding incorporating Denz’s lock causing destruction of network connectivity assumes a bodily incorporation of Denz into Lockyer. “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.” In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). Further, Appellants have not asserted that the proposed modification would have been beyond the capabilities of a person of ordinary skill in the art. Absent such an assertion, we “take account of the inferences and creative steps that a person of ordinary skill in the art would employ,” and find a person of ordinary skill in the art would overcome those difficulties within their level of skill. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also id. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). In addition, Appellants argue adding Kaji’s administrative control to Lockyer would change the principle of operation of Lockyer. App. Br. 11- 12. Specifically, Appellants argue Kaji teaches a system administrator controls the security of network devices, while Lockyer is intended to provide a device user with control instead of a system administrator. Id. Appellants’ argument is unpersuasive because allowing an administrator to control security for a device does not preclude the device user from also being able to control security. The proposed combination could allow both 5 Appeal 2016-008711 Application 14/093,246 parties to control the security of the device, giving the benefits of both references. Finally, Appellants argue Lockyer teaches away from the claimed invention because Lockyer proposes user control to maximize user convenience instead of centralized control. App. Br. 12-13. We disagree for two reasons. First, claim 1 does not recite remote administration control. Claim 1 recites “a central processing unit configured to process a cable modification request from an administration system . . . .” Claim 1 does not limit the “administration system” to remote devices. Under the broadest reasonable interpretation of the term, the “administration system” may be a device that is locally connected to the claimed “electronic device.” Second, even accepting Appellants’ premise that the claims require remote administrative control, the “mere disclosure of alternative designs does not teach away.” In reMouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (citations omitted). Indeed, “just because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.” Id. A teaching away requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.”). In this case, Lockyer teaches a device user controlling security of the device. See, e.g., Lockyer 4:3-7. However, Lockyer does not criticize or disparage remote security control. To the contrary, Lockyer teaches that “users may be able to send indications concerning whether other network 6 Appeal 2016-008711 Application 14/093,246 devices, in particular ones which do not have a user interface, should be monitored.” Lockyer 4:12-14. Accordingly, we are not persuaded Lockyer teaches way from the recited claims. For these reasons, Appellants have not persuaded us the Examiner erred in rejecting independent claim 1. We, therefore, sustain the rejection of claim 1, independent claims 10 and 16, which Appellants argue are patentable for the same reasons (App. Br. 5-6), and dependent claims 2-9, 11-15, and 17-20, which are not argued separately. DECISION We affirm the decision of the Examiner to reject claims 1-20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation