AirWatch LLC

Patent Trials and Appeals Board

Sep 24, 2020

14961022 - (D) (P.T.A.B. Sep. 24, 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.
14/961,022 12/07/2015 Erich Stuntebeck W004.C1 (500102-1751) 6398
152577 7590 09/24/2020
Thomas | Horstemeyer, LLP (VMW)
3200 Windy Hill Road, SE
Suite 1600E
Atlanta, GA 30339
EXAMINER
LYNCH, SHARON S
ART UNIT PAPER NUMBER
2438
NOTIFICATION DATE DELIVERY MODE
09/24/2020 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):
docketing@thomashorstemeyer.com
ipadmin@vmware.com
uspatents@thomashorstemeyer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ERICH STUNTEBECK and MICHELLE BURNETT
____________________

Appeal 2019-003503
Application 14/961,022
Technology Center 2400
____________________

Before JUSTIN BUSCH, JOHN D. HAMANN, and
MATTHEW J. McNEILL, Administrative Patent Judges.

HAMANN, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 8–11, 13, 15–18, and 21–27. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.2

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Airwatch LLC,
which Appellant identifies as a wholly owned subsidiary of VMware, Inc.
Appeal Br. 2.
2 Our Decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Dec. 10, 2018), Reply Brief (“Reply Br.,” filed Apr. 1, 2019), and
Specification (“Spec.,” filed Dec. 7, 2015), as well as the Examiner’s
Answer (“Ans.,” mailed Jan. 31, 2019) and the Final Office Action (“Final
Act.,” mailed July 6, 2018).
Appeal 2019-003503
Application 14/961,022

2

CLAIMED SUBJECT MATTER
Appellant’s claimed invention “relate[s] generally to data security,
and more particularly, to systems and methods for controlling network
access.” Spec. ¶ 2. Claim 1 is representative of the subject matter on appeal
and is reproduced below.
1. A system, comprising:
a computing device; and
a storage device storing a plurality of computer
instructions executable by the computing device, wherein the
plurality of computer instructions cause the computing device to
at least:
obtain a request from a user device to access a
wireless network beacon;
obtain a device profile for the user device based at
least in part on the request, wherein the device profile
indicates a state of the user device;
determine that the user device satisfies an
authorization rule based on the state of the user device as
indicated by the device profile;
cause the user device to access at least one
resource, the at least one resource corresponding to at
least one resource rule specifying that the at least one
resource is encrypted and that the user device contains at
least one mechanism to decrypt the at least one resource;
authorize the user device to access the wireless
network beacon responsive to determining that the user
device satisfies the authorization rule and the at least one
resource rule;
configure at least one setting on the user device
based at least in part on a management policy and the
wireless network beacon responsive to authorizing the
user device to access the wireless network beacon,
wherein the at least one setting alters at least one
functionality provided by the user device;
determine a stringency of the authorization rule
based on the state of the user device as indicated by the
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device profile subsequent to authorizing the user device to
access the wireless network beacon; and
determine that the user device fails to satisfy the
authorization rule based at least in part on the stringency
subsequent to authorizing the user device to access the
wireless network beacon.
REJECTIONS3
(1) The Examiner rejected claims 1–3, 8–10, 13, and 15–17 under
35 U.S.C. § 103(a) as being unpatentable over McGeehan
(US 2010/0211997 A1; published Aug. 19, 2010) and Fitzgerald
(US 2009/0253410 A1; published Oct. 8, 2009).
(2) The Examiner rejected claims 21–23 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of McGeehan, Fitzgerald, and
Malik (US 2013/0007245 A1; published Jan. 3, 2013).
(3) The Examiner rejected claims 4, 11, and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of McGeehan,
Fitzgerald, and Goyal (US 2008/0134347 A1; published June 5, 2008).
(4) The Examiner rejected claims 24–26 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of McGeehan, Fitzgerald, and
Gum (US 2010/0175116 A1; published July 8, 2010).
(5) The Examiner rejected claim 27 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of McGeehan, Fitzgerald, and
Balwani (US 2007/0117558 A1; published May 24, 2007).

3 The Examiner withdrew the 35 U.S.C. § 101 rejection of claims 1–4, 8–11,
13, 15–18, and 21–27, as well as the non-statutory double patenting
rejection. See Ans. 4; Final Act. 12–20.

Appeal 2019-003503
Application 14/961,022

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner errs. The dispositive issues for this appeal are
(i) whether McGeehan teaches or suggests configuring a setting on a user
device, which alters a functionality provided by the user device, and
(ii) whether the Examiner provided sufficient rationale for combining
Fitzgerald’s teachings for this limitation — the Examiner found that
Fitzgerald also teaches this limitation — with McGeehan. We find
Appellant’s arguments as to these issues persuasive.4
(1) McGeehan’s Teachings
Appellant argues that the combination of McGeehan and Fitzgerald
fails to teach or suggest “configur[ing] at least one setting on the user device
. . ., wherein the at least one setting alters at least one functionality provided
by the user device,” as recited in independent claims 1, 8, and 15. Appeal
Br. 18–19; Reply Br. 4–9. Appellant argues that McGeehan merely teaches
that a remote system (social networking system 115) stores a machine
cookie — what the Examiner finds is the setting — on a user device (client
device 105) to help the remote system authenticate the user device. Appeal
Br. 18 (citing McGeehan ¶ 41). For example, according to Appellant,
McGeehan merely teaches that the cookie may help the remote system
recognize the user device as being at a safe location so that the user device
can log into the remote system with reduced authentication requirements.
Appeal Br. 19 (citing Final Act. 9–10 (citing McGeehan ¶¶ 39–40, 48, 51,
57)). This cookie, however, does not alter a functionality provided by the

4 Because we agree with at least one of the dispositive arguments advanced
by Appellant, we need not reach the merits of Appellant’s other arguments.
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user device, according to Appellant. Appeal Br. 19. More specifically,
Appellant argues that McGeehan’s teachings regarding aiding the user
device’s authentication by the remote system “is not functionality provided
by the” user device (client device 105) of McGeehan. Appeal Br. 19 (citing
McGeehan ¶ 41). Put differently, Appellant argues that “[i]nstead of
altering a functionality provided by the user device, the machine cookie is
merely ‘retrieved by the social networking system 115 to verify the identity
of the client device 105.’” Appeal Br. 19 (quoting McGeehan ¶ 41); Reply
Br. 8 (citing McGeehan ¶ 45, Fig. 1) (arguing that “[t]he functions of
authenticating and establishing an authorized connection . . . [are] functions
of the social networking system 115 and are not provided by the client
device 105”).
The Examiner finds that McGeehan teaches this limitation. Ans. 6–7;
Final Act. 23. More specifically, the Examiner finds that McGeehan teaches
that:
Prior to having a machine cookie configured on [a] client device,
the functions of authenticating and establishing an authorized
connection performed/provided by the client device . . . are
simple as user device with no prior history is not considered
highly suspicious . . . . However, after having been configured
with a machine cookie and having performed prior sessions, the
functions of authenticating and establishing an authorized
connection provided by the client device are changed and require
additional authentication by the client device to perform the
function of establishing the authorized connection . . . .
Therefore, configuring the machine cookie on the client device
in McGeehan changes the methods/functions of authentication
and establishing the session/connection performed by the client
device.
Ans. 6–7 (citing McGeehan ¶¶ 45, 51, 57–58).
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We find that the Examiner errs. We agree with Appellant that
McGeehan teaches that the machine cookie is “retrieved by the social
networking system 115 to verify the identity of the client device 105.”
McGeehan ¶ 41. Moreover, the cited portions of McGeehan relate to the
networking system authenticating the client device based on the cookie,
rather than the client device performing a function. McGeehan ¶¶ 45, 51,
57–58. Nor do we find that these paragraphs support that the client device
(as opposed to the networking system) is required to perform additional
authentication for the function of establishing the authorized connection. Id.
Accordingly, we find that the cited portions of McGeehan do not
teach or suggest the disputed limitation.
(2) Combining McGeehan’s and Fitzgerald’s Relevant Teachings
Appellant argues that the Examiner does not provide sufficient
rationale to combine Fitzgerald’s teachings of configuring a setting on a user
device, which alters a functionality provided by the user device, with
McGeehan’s teachings. Reply Br. 11–12 (citing Final Act. 25). We agree
with Appellant.
The Examiner combines the above teaching from Fitzgerald with
McGeehan’s teachings for the first time in the Answer. Compare Ans. 7–8,
with Final Act. 23. And, when doing so, the Examiner does not provide any
rationale for why one of ordinary skill in the art would have combined
Fitzgerald and McGeehan in this way. Ans. 7–8. Nor is the rationale the
Examiner provided in the Final Action for why one of ordinary skill in the
art would have combined other teachings in Fitzgerald with McGeehan
relevant here. Namely, the Examiner finds that one of ordinary skill in the
art would have found it obvious “to integrate Fitzgerald’s method of
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specifying that the resource is encrypted with the system of McGeehan so
that if the security of the mobile device is compromised, unauthorized
persons with access to the mobile device cannot access protected data on the
mobile device.” Final Act. 25 (citing Fitzgerald, ¶ 91).
Accordingly, we find that the Examiner does not provide sufficient
rationale to combine Fitzgerald’s teachings of configuring a setting on a user
device, which alters a functionality provided by the user device, with
McGeehan’s teachings. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007).
CONCLUSION
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1, 8, and 15. With respect to the Examiner’s rejections
of the dependent claims, the Examiner relies on the above findings and the
additionally cited references do not cure the above deficiencies.
Accordingly, we also do not sustain the Examiner’s rejections of claims 2–4,
9–11, 13, 16–18, 21–27.

Appeal 2019-003503
Application 14/961,022

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference/Basis Affirmed Reversed
1–3, 8–10,
13, 15–17
103(a) McGeehan,
Fitzgerald
1–3, 8–10,
13, 15–17
21–23 103(a) McGeehan,
Fitzgerald, Malik
21–23
4, 11, 18 103(a) McGeehan,
Fitzgerald, Goyal
4, 11, 18
24–26 103(a) McGeehan,
Fitzgerald, Gum
24–26
27 103(a) McGeehan,
Fitzgerald,
Balwani
27
Overall
Outcome
1–4, 8–11,
13, 15–18,
21–27

REVERSED