Ex Parte Bittles et al

Patent Trial and Appeal Board

May 22, 2017

14093246 (P.T.A.B. May. 22, 2017)

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