Najeeb M. Abdulrahiman et al.

Patent Trials and Appeals Board

Jun 22, 2020

2019000043 (P.T.A.B. Jun. 22, 2020)

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.
15/220,614 07/27/2016 Najeeb M. ABDULRAHIMAN 30134/17807(P21642USC1) 4269
114746 7590 06/22/2020
Apple Inc. -- FKM
150 Broadway
Suite 702
New York, NY 10038
EXAMINER
MUSHAMBO, MARTIN
ART UNIT PAPER NUMBER
2674
NOTIFICATION DATE DELIVERY MODE
06/22/2020 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):
fhall@fkmiplaw.com
mmarcin@fkmiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NAJEEB M. ABDULRAHIMAN, THOMAS F. PAULY, and
VIKRAM B. YERRABOMMANAHALLI
________________

Appeal 2019-000043
Application 15/220,614
Technology Center 2600
____________

Before ERIC S. FRAHM, JOYCE CRAIG, and MATTHEW J. McNEILL,
Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 20‒39, which are all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Apple Inc.
Appeal Br. 2.
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STATEMENT OF THE CASE
Introduction
Appellant’s application relates to a client device using login
credentials from another client device to access a network. Spec. ¶¶ 3‒6.
Claims 20 and 31 illustrate the appealed subject matter and read as follows:
20. A method, comprising:
at a client station:
transmitting an identification request, received from
a network to which the client station is attempting to
connect, to a further client station, the further client station
including credential information for the network;
receiving an identification response from the further
client station including the credential information;
transmitting the identification response to the
network; and
establishing a connection between the client station
and the network using the credential information of the
further client station.
31. A method, comprising:
at a client station:
transmitting an association request to a network;
receiving an identification request from the
network;
transmitting an identification response to the
network, wherein the identification response includes
credential information for a further client station and
wherein the client station and the further client station are
associated with a same account and the association with
the same account authorizes the client station to use the
credential information of the further client station; and
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establishing a connection between the client station
and the network using the credential information of the
further client station.
The Examiner’s Rejections
Claims 20‒25 and 29‒38 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Grebovich (US 2010/0161969 A1; June 24, 2010)
and Zohar (US 2009/0298467 A1; Dec. 3, 2009). Final Act. 3‒10.
Claims 26‒28 and 39 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Grebovich, Zohar, and Malinen (US 2003/0028763 A1;
Feb. 6, 2003). Final Act. 10‒11.
ANALYSIS
Independent Claim 20
The Examiner finds the combination of Grebovich and Zohar teaches
or suggests “transmitting an identification request, received from a network
to which the client station is attempting to connect, to a further client
station,” as recited in claim 20. See Final Act. 4; Ans. 13‒14.
In particular, the Examiner finds an ordinarily skilled artisan would
understand that GSM networks, like the network taught in Zohar, include an
authentication process that sends an identification request from a network
service to a client device. See Ans. 13. The Examiner finds the
authentication process is always preceded by an attempt by the client device
to access the network. See id. The Examiner finds Zohar teaches a laptop
(the claimed “client station”) attempts to access the network and an
ordinarily skilled artisan would understand the laptop would be prompted to
enter authentication credentials. See id. at 14 (citing Zohar ¶¶ 45‒46). The
Examiner finds Zohar, therefore, teaches “transmitting an identification
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request, received from a network to which the client station is attempting to
connect, to a further client station,” as recited in claim 20. See Ans. 13‒14.
Appellant argues the Examiner erred because the combination of
Grebovich and Zohar does not teach or suggest these limitations. Appeal
Br. 3‒7; Reply Br. 2‒6. In particular, Appellant argues Zohar does not teach
the laptop transmitting an identification request to a SIM-enabled device,
such as a cell phone and, therefore, does not teach transmitting an
identification request to a further client station. See Appeal Br. 4 (citing
Zohar ¶¶ 13‒14, 45).
Appellant has persuaded us of Examiner error. The Examiner’s
findings fail to adequately establish that the combination of Grebovich and
Zohar teaches or suggests the “transmitting” step. In particular, the
Examiner’s findings at most establish that an ordinarily skilled artisan would
have understood that the network sends an identification request to the
laptop. The Examiner’s findings do not consider whether the laptop would
transmit the identification request to the SIM-enabled device, as claimed.
Zohar teaches the SIM-enabled device transmits its credentials to the
laptop so that the laptop may access the network, but does not address the
timing of such a transmission, suggesting this may occur prior to the request
sent from the network to the laptop. See Zohar ¶¶ 45‒46. Also, nothing in
Zohar addresses whether the laptop sends to the SIM-enabled device the
identification request received from the laptop or some other message
requesting the necessary credentials. The Examiner has not made any factual
findings regarding these issues and, therefore, has failed to sufficiently
establish that Grebovich and Zohar, alone or in combination, teach or
suggest “transmitting an identification request, received from a network to
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which the client station is attempting to connect, to a further client station,”
as recited in claim 20.2
For these reasons, we do not sustain the Examiner’s obviousness
rejection of independent claim 20. We also do not sustain the obviousness
rejection of claims 21‒25, 29, and 30, which depend from claim 20 and
stand rejected as unpatentable over Grebovich and Zohar.
Claims 26‒28 depend from claim 20 and stand rejected as
unpatentable over Grebovich, Zohar, and Malinen. See Final Act. 10‒11.
The Examiner does not find Malinen teaches or suggests the disputed
limitations. See id. Accordingly, we also do not sustain the obviousness
rejection of dependent claims 26‒28.
Independent Claim 31
The Examiner finds the combination of Grebovich and Zohar teaches
or suggests “wherein the client station and the further client station are
associated with a same account and the association with the same account
authorizes the client station to use the credential information of the further
client station,” as recited in claim 31. See Final Act. 7‒8; Ans. 14.
In particular, the Examiner finds an ordinarily skilled artisan would
have understood that the SIM card taught by Zohar is associated with an
account and the SIM-enabled and non-SIM-enabled devices are associated

2 Should there be further prosecution of this application, the Examiner may
wish to consider whether claim 20 would have been obvious in light of the
teachings of Grebovich, Zohar, and an additional reference. Although the
Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference
should be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) § 1213.02.
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with the same account because a user may have both devices. See Ans. 14
(citing Zohar ¶ 13).
Appellant argues the Examiner erred because the combination of
references does not teach or suggest these limitations. Appeal Br. 7‒10;
Reply Br. 6‒7. In particular, Appellant argues that the mere fact that a user
may have access to both a laptop (a non-SIM-enabled device) and a
cellphone (a SIM-enabled device) does not suggest that both devices are
associated with the same account. See Appeal Br. 8.
Appellant has persuaded us of Examiner error. The Examiner has
failed to adequately establish that the combination of Grebovich and Zohar
teaches or suggests the disputed “wherein” clause. In particular, the
Examiner’s findings at most establish that a user may have two devices that
are associated with the same account. However, the Examiner has failed to
explain how the mere existence of some kind of association between a
device and an account also teaches or suggests the remainder of the claim,
specifically that “the association with the same account authorizes the client
station to use the credential information of the further client station.”
For these reasons, the Examiner has failed to sufficiently establish that
Grebovich and Zohar, alone or in combination, teach or suggest “wherein
the client station and the further client station are associated with a same
account and the association with the same account authorizes the client
station to use the credential information of the further client station,” as
recited in claim 31.3 Accordingly, we do not sustain the Examiner’s

3 Should there be further prosecution of this application, the Examiner may
wish to consider whether claim 31 would have been obvious in light of the
teachings of Grebovich, Zohar, and an additional reference. Although the
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obviousness rejection of independent claim 31. We also do not sustain the
obviousness rejection of independent claim 35, which recites commensurate
subject matter. We also do not sustain the rejection of claims 32‒34, which
depend from claim 31 and stand rejected as unpatentable over Grebovich
and Zohar. We also do not sustain the rejection of claims 36‒38, which
depend from claim 35 and stand rejected as unpatentable over Grebovich
and Zohar.
Claim 39 depends from claim 35 and stands rejected as unpatentable
over Grebovich, Zohar, and Malinen. See Final Act. 11. The Examiner does
not find Malinen teaches or suggests the disputed limitations. See id.
Accordingly, we also do not sustain the obviousness rejection of dependent
claim 39.

DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
20‒25, 29‒38 103 Grebovich, Zohar 20‒25, 29‒38
26‒28, 39 103 Grebovich, Zohar,
Malinen
26‒28, 39
Overall
Outcome
20‒39

REVERSED

Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference
should be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) § 1213.02.