Ex Parte Alicherry et al

Patent Trial and Appeal Board

May 2, 2013

11668800 (P.T.A.B. May. 2, 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.
11/668,800 01/30/2007 Monsoor Ali Khan Alicherry Alicherry
23-3-5-12-7-15
4433
46363 7590 05/02/2013
WALL & TONG, LLP/
ALCATEL-LUCENT USA INC.
25 James Way
Eatontown, NJ 07724
EXAMINER
TIV, BACKHEAN
ART UNIT PAPER NUMBER
2451
MAIL DATE DELIVERY MODE
05/02/2013 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 APPEAL BOARD
____________________

Ex parte MONSOOR ALI KHAN ALICHERRY, MARY S.
CHAN, SANJAY D. KAMAT, PRAMOD V.N. KOPPOL,
SUNDER RATHNAVELU RAJ, and DIMITRIOS STILIADIS
____________________

Appeal 2010-011149
Application 11/668,800
Technology Center 2400
____________________

Before BRUCE R. WINSOR, BARBARA A. BENOIT, and
DANIEL N. FISHMAN, Administrative Patent Judges.

FISHMAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
17 and 21-29. App. Br. 5.1 Claims 18-20 are cancelled. Id.2 We have
jurisdiction under 35 U.S.C. § 6(b).

1 Throughout this opinion, we refer to (1) the Appeal Brief filed March 17,
2010 (“App. Br.”); (2) the Examiner’s Answer mailed June 25, 2010
(“Ans.”); and (3) the Reply Brief filed August 3, 2010 (“Reply Br.”).
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We affirm-in-part.
The invention is directed to methods and apparatus for notification
and delivery of messages to mobile device users. See generally Abstract.
Claims 1 and 8, reproduced below, are illustrative of the claimed subject
matter:
1. A secure client for use with a user device, comprising:
a power module for powering the secure client independent of a
power state of the user device;
a communication module for receiving a wake-up message
adapted for triggering the secure client to switch from an inactive state
to an active state without changing the power state of the user device,
the communication module adapted for initiating a secure connection
with a secure gateway in response to receiving the wake-up message,
the communication module adapted for requesting and receiving a
message from a messaging application using the secure connection;
a storage module for storing the received message; and
an alert module for activating an alert to indicate that the
message is available.

8. A method for use by a secure client associated with a user
device, comprising:
in response to receiving a wake-up message associated with a
user message, initiating a request to establish a secure connection
between the secure client and a secure gateway;
initiating a request to retrieve the user message;
receiving the user message over the secure connection;
storing the received user message on the secure client; and
activating an alert indicating that the user message is available;

2 Appellants note that all claims (1-17 and 21-29) stand provisionally
rejected under 35 U.S.C. § 102(e) as anticipated by commonly-owned, co-
pending application 11/293,843—published as US 2007/0130457 A1—now
issued as US 8,286,002 B2. App. Br. 12. Despite the lack of an express
withdrawal of the provisional anticipation rejection, the Examiner has not
reproduced it in the Examiner’s Answer and the provisional anticipation
rejection therefore is not before us. See Ans. 3-12.
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wherein the secure client operates independent of a power state
of the user device.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Grob US 6,894,994 B1 May 17, 2005
Segre US 2006/0069742 A1 Mar. 30, 2006

REJECTIONS
The Examiner made the following rejections:
Claims 1-9, 13, 15-17,3 and 21-29 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Segre and Grob. Ans. 3-10.
Claims 10-12 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Segre, Grob, and Official Notice. Ans. 10-12.

REJECTION OF CLAIMS 1-7, 15-17, 21-24, AND 29
In rejecting claim 1, the Examiner finds that Segre teaches the
limitations except use of a secure connection with a secure gateway. Ans. 3-
4. The Examiner also finds that Grob shows use of a secure connection and
the Examiner provides a reason for the combination of Segre and Grob. Ans.
4. The Examiner cites Segre Figure 4 and ¶¶ 0035 and 0043 as showing a
communication module for: triggering the secure client to switch from
inactive to active state; initiating a secure connection; and receiving a

3 The Examiner does not include claims 16 and 17 in the summary list of
claims rejected as unpatentable over Segre and Grob. Ans. 3. However, we
note that the Examiner included discussion of these claims in the body of the
rejections. Ans. 8. We recognize this as harmless error and review claims 16
and 17 as rejected along with their base claim 15.
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message as recited in claim 1. Ans. 3-4. Appellants argue that Segre (alone
or in combination with Grob) fails to teach (emphasis added) “a
communication module for receiving a wake-up message adapted for
triggering the secure client to switch from an inactive state to an active state
without changing the power state of the user device.” App. Br. 14-20.

ISSUE
Does Segre show a communication module for receiving a wake-up
message adapted for triggering the secure client to switch from an inactive
state to an active state without changing the power state of the user device?4

ANALYSIS
Regarding claim 1, Appellants argue “Segre is devoid of any teaching
or suggestion of a wake-up message, much less a wake-up message for
triggering a secure client to switch from an inactive state to an active state
without changing the power state of a user device.” App. Br. 15-19
(emphases omitted). We agree that Segre fails to teach or suggest a
communication module for receiving a wake-up message adapted for
triggering the secure client to switch from an inactive state to an active state
without changing the power state of the user device.
Segre shows a cellular device serving as a cache memory for sync
data received over a Wide Area Network (“WAN”) to be provided to mobile
devices. Segre ¶¶ 0034-0045. The cellular device is coupled to receive sync

4 Appellants’ contentions regarding these claims present additional issues.
Because we are persuaded of error with regard to the identified issue, which
is dispositive as to claims 1-7, 15-17, 21-24, and 29, we do not reach the
additional issues.
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data (e.g., from appropriate servers) through the WAN and coupled to
transmit cached sync data to the mobile device through a Personal Area
Network (“PAN”). Segre ¶¶ 0034-0035. In one embodiment, cached sync
data is “synced to a mobile device 18 in response to the powering on of the
mobile device.” Segre ¶ 0036. In other words, the sync data may be stored in
a cache memory of the cellular device such that the sync data is saved and
transferred to a mobile device when that mobile device is powered on. Segre
¶ 0042. Segre also shows that the cellular device may be configured to
immediately alert a user if particular sync data of interest is received and
available in the cache memory of the cellular device (e.g., receipt of a
particular email message). Segre ¶ 0043. Specifically regarding the alert,
Segre teaches:
The alert may comprise the ringing or vibration of the cellular
device 64, etc. The user can then immediately access and view
information regarding the email in question directly on the
cellular device 64 using the cached sync data. . . . Once alerted,
the user can also turn on the mobile device 18 to which the
email is directed, perform a sync, and then access and read the
email. Many other alert scenarios are also possible.
Id.
The Examiner maps the alert of Segre to the recited wake-up message.
Ans. 4, 12-13. The Examiner further explains that “[o]nce alerted, the user
can also turn on the mobile device (after receiving the alert, this triggers the
user to switch from an inactive state to an active state) to which the email is
directed . . . .” Ans. 12-13 (emphases added). However, we conclude that the
recited “message adapted for triggering” received by the communication
module triggers the switch of the secure client (of which the communication
module is a part) from inactive to active state. In other words, we conclude
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that the communication module, a structural element of the claimed
apparatus and not a human user, triggers the change of state of the secure
client responsive to receipt of the wake-up message. We conclude the
Examiner’s interpretation of the claim language is unreasonable and
inconsistent with the claim as a whole.
In view of the above discussion we find no teaching or suggestion in
Segre of a communication module for receiving a wake-up message adapted
for triggering the secure client to switch from an inactive state to an active
state without changing the power state of the user device.
We are therefore persuaded that the Examiner erred in rejecting claim
1. Independent claims 15 and 29 include a similar limitation relating to a
message adapted for triggering a switch of the secure client from an inactive
state to an active state and are rejected applying similar reasoning. Ans. 6-7,
9-10. Appellants present similar arguments with respect to claims 15 and 29.
App. Br. 34-38. We are therefore persuaded that the Examiner erred in
rejecting claims 15 and 29 for the same reasons as claim 1. Claims 2-7 and
21-24 depend from claim 1 and claims 16 and 17 depend from claim 15.
Thus, we find error in the Examiner’s rejection of claims 1-7, 15-17, 21-24,
and 29.

REJECTION OF CLAIMS 8, 9, 13, AND 25-28
The Examiner rejected independent claim 8 as unpatentable over
Segre and Grob for essentially the same reasons as in rejecting claim 1
(citing Segre Figure 4 and paragraphs 0036, 0043, and 0045 and citing Grob
Figure 13D). Ans. 5-6. The dispositive error we find in the rejection of
independent claims 1, 15, and 29 turned on the limitation of those claims
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relating to switching of the secure client from an inactive state to an active
state. Claim 8 includes no such limitation and thus we decline to reverse the
rejection of independent claim 8 on the same basis as claims 1, 15, and 29.
Claim 8 includes the recitation (emphasis added) “in response to
receiving a wake-up message associated with a user message, initiating a
request to establish a secure connection between the secure client and a
secure gateway.” As in rejecting claim 1, the Examiner finds that Segre
shows all the features of claim 8 except for establishment of a secure
connection and finds that Grob shows establishment of a secure connection
and provides a reason for the combination of Segre and Grob. Ans. 5-6.
Appellants generally argue that the combination of Segre and Grob fails to
teach initiating a request to establish a secure connection responsive to
receipt of the wake-up message. App. Br. 32-34 (referring also to
“applicable reasons” argued with respect to claim 1).

ISSUE
Does the combination of Segre and Grob show, in response to
receiving a wake-up message associated with a user message, initiating a
request to establish a secure connection between the secure client and a
secure gateway?

ANALYSIS
Claim construction is an issue of law that we review de novo. Cordis
Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1331 (Fed. Cir. 2009). The
preamble of claim 8 recites “[a] method for use by a secure client associated
with a user device” (emphasis added). “Generally,” [the Federal Circuit has]
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said, “the preamble does not limit the claims.” Allen Eng'g Corp. v. Bartell
Indus., Inc., 299 F.3d 1336, 1346 (Fed.Cir. 2002). Nonetheless, the preamble
may be construed as limiting “if it recites essential structure or steps, or if it
is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina
Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed.Cir.2002),
quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305
(Fed.Cir.1999). We conclude that the preamble of claim 1 does give life and
meaning to the steps of the claim and will construe “for use by a secure
client.”
We do not construe “for use by a secure client” to require that the
steps of the recited method to be performed by the secure client. In other
words, we construe claim 8 to encompass the steps of the recited method
being performed wholly or partially manually by a human user of the user
device. In particular we conclude that the claim does not preclude a human
user performing or participating in the step of “in response to receiving a
wake-up message associated with a user message, initiating a request to
establish a secure connection between the secure client and a secure
gateway.”
Consistent with our construction, the Examiner explains (with respect
to claim 1) that Segre shows a user of the mobile device receiving an alert
(i.e., a wake-up message) and, in response, initiating a request to establish a
secure connection (i.e., powering on the mobile device which, in turn,
establishes a connection with the cellular device to sync data). Ans. 13-14.
Appellants generally argue that Segre and Grob do not teach or
suggest the steps of claim 8 for essentially the same reasons as a similar
limitation in claim 1. See generally App. Br. 20-27, 32-34. Appellants
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specifically acknowledge (with respect to claim 1) that it is the user in Segre
that is initiating the secure connection rather than the mobile device and that
the user is not a secure client or communication module of a secure client.
Reply Br. 9. In view of our above construction of claim 8, we agree and
conclude that, within the scope of claim 8 as properly construed, Segre
teaches performing the step of “in response to receiving a wake-up message
associated with a user message, initiating a request to establish a secure
connection between the secure client and a secure gateway.”
Thus, we are not persuaded of error in the Examiner’s finding that
Segre and Grob collectively teach or suggest “in response to receiving a
wake-up message associated with a user message, initiating a request to
establish a secure connection between the secure client and a secure
gateway,” as recited in claim 8.
In view of the above discussion we are unpersuaded of error in the
rejection of claim 8 and its dependent claims 9, 13, and 25-28 not separately
argued with particularity. App. Br 34.

REJECTION OF CLAIMS 10-12 AND 14
Claims 10-12 and 14 all depend from claim 8 (either directly or
indirectly). The Examiner relied on Official Notice that using encryption and
decryption of messages for security (claim 10) and SMS messaging (claim
12) is well-known. Appellants argue that claims 10-12 and 14 are allowable
for the same reasons as claim 8 and further argue that the Examiner’s
Official Notice is improper. App. Br. 38-39. Appellants have not specifically
pointed out the supposed errors in the Examiner’s action of taking Official
Notice (see id.), including stating why the noticed facts are not considered to
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be common knowledge or well-known in the art. See MPEP § 2144.03(C);
see also 37 C.F.R. § 1.111(b). Thus, Appellants have not argued the
rejection separately from claim 8 with particularity and have failed to point
out the error in the Examiner’s Official Notice. We are therefore
unpersuaded of error in the Examiner’s rejection of claims 10-12 and 14.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-7, 15-17,
21-24, and 29 is reversed and the Examiner’s rejection of claims 8-14 and
25-28 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED-IN-PART

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