Ex Parte Huque et alDownload PDFPatent Trial and Appeal BoardJun 27, 201813583166 (P.T.A.B. Jun. 27, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/583, 166 11/19/2012 38106 7590 06/29/2018 Seed IP Law Group LLP/ST (EP ORIGINATING) 701 FIFTH AVENUE, SUITE 5400 SEATTLE, WA 98104-7092 Thierry Huque 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 09ZV2524US01/813063.433US 6068 EXAMINER DU,HUNGK ART UNIT PAPER NUMBER 2645 NOTIFICATION DATE DELIVERY MODE 06/29/2018 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): USPTOeAction@SeedIP.com pairlinkdktg@seedip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THIERRY HUQUE and OLIVIER VAN NIEUWENHUYZE Appeal 2017-011488 Application 13/583,166 Technology Center 2600 Before CARL W. WHITEHEAD JR, JON M. JURGOV AN and ADAM J. PYONIN, Administrative Patent Judges. WHITEHEAD JR., Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants are appealing the final rejection of claims 1-5 and 10-3 3 under 35 U.S.C. § 134(a). Appeal Brief 2. We have jurisdiction under 35 U.S.C. § 6(b) (2012). We affirm. Introduction "Embodiments of the invention are generally related to mobile electronic devices such as smartphones that include a central processing unit (CPU) for executing programs, one or more secure memory devices such as a subscriber identity module (SIM) or a security module (SSE), and a Appeal 2017-011488 Application 13/583,166 wireless interface module such as a contactless front end (CLP), which may be a near field communication (NFC) router, for example." Appeal Brief 3. Illustrative Claim 1. A method, comprising: forming a communication pipe within a near field communication router (NFC) router directly between a physical gate of a security module and a physical gate of the NFC router, the NFC router and the security module present in a telecommunication device; detecting an attempt to divert the communication pipe to an applications processor, the detecting including the acts of: receiving a message in a near field communication format; verifying, with the security module, from which gate of the router the message originates; and preventing the diversion if the verification fails. Rejections on Appeal Claim 18 stands rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Final Action 3_ 1 1 Appellants do not address the merits of the indefiniteness rejection in the Briefs. "No amendments are filed at this time. However, an amendment to 2 Appeal 2017-011488 Application 13/583,166 Claims 1, 2, 4, 13, 14, 16, 17, 21-23, 27-29 and 33 stand rejected under pre-AIA 35 U.S.C. § I03(a) as being over unpatentable over Charrat (US Patent Application Publication 2010/0227553 Al; published September 9, 2010) and Costa (US Patent Application Publication 2006/0031933 Al; published February 9, 2006). Final Action 4-20. Claim 3 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being over unpatentable over Charrat, Costa and Bauch (US Patent Application Publication 2004/0177158 Al; published September 9, 2004). Final Action 21-22. Claims 10-12, 20, 26 and 32 stand rejected under pre-AIA 35 U.S.C. § I03(a) as being over unpatentable over Charrat, Costa and See (US Patent 6,070,243; issued May 30, 2000). Final Action 22-24. Claims 5, 15, 18, 19, 24, 25, 30 and 31 stand rejected under pre-AIA 35 U.S.C. § I03(a) as being over unpatentable over Charrat, Costa and Shimbo (US Patent 6,092,191; issued July 18, 2000). Final Action 25-26. ANALYSIS Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief ( filed March 17, 201 7), the Reply Brief ( filed September 13, 2017), the Answer (mailed July 13, 2017) and the Final Action (mailed October 7, 2016) for the respective details. We have reviewed the Examiner's rejections in light of Appellants' arguments that the Examiner has erred. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this add proper antecedent basis to claim 18 will be provided if permitted." Appeal Brief 2. Accordingly, we summarily sustain the rejection. 3 Appeal 2017-011488 Application 13/583,166 appeal is taken and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief, except where noted. Appellants argue that independent claims 1, 16, 22 and 28 are non- obvious over Charrat and Costa. Appeal Brief 14. Appellants contend that, "'Opening a data path,' as taught in Charrat, is not the same as diverting a data path, as recited in claim 1." We note claim 1 does not recite "diverting a data path. "2 Further, upon review of claim 1, we find that diverting the communication pipe to an applications processor is acceptable means of communication as long as it is verified. The claimed communication pipe appears to be simply a data path such as the one shown in the cited prior art. See Charrat, Figure 6, paragraph 74. Upon further review of claim 1, we find the preventing diversion step is a conditional limitation because it is only enacted if the verification fails. Such conditional limitations need not be carried for the claimed method to be performed by the prior art. See Ex parte Schulhauser, No. 2013-007847, 2016 WL 6277792, at *4 (PTAB Apr. 28, 2016) (precedential) (holding "[t]he Examiner did not need to present evidence of the obviousness of the remaining method steps of claim 1 that are not required to be performed under a broadest reasonable interpretation of the claim"). Accordingly, we sustain the Examiner's obviousness rejection of claim 1. 2 Separately, we find unpersuasive Appellants arguments that the recited "diverting" is distinguishable from the prior art teaching of adding, modifying, or deleting routes. See Answer 2-3; Charrat ,r 92; Specification 6:20-25. 4 Appeal 2017-011488 Application 13/583,166 Appellants argue independent claims 16, 22 and 28 are distinguishable over the prior art because of additional limitations found in each claim. Appeal Brief 23. We do not find Appellants' arguments persuasive and sustain the Examiner's obviousness rejection of claims 16, 22 and 28. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule 41.3 7 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."). Appellants argue the cited prior art does not disclose "wherein an activity of peripherals connected to the router is monitored by a microcontroller of the telecommunication device" as recited in claim 2. Appeal Brief 23-24; Reply Brief 5. We do not find Appellants' arguments persuasive because Charrat discloses various activities between data paths and multiple components such as integrated circuits, processors and controllers. See Charrat, paragraph 72, Final Action 15. Charrat does not employ the term monitoring in association with a specific component; however it is evident that the amount of activity is not occurring undetected. "As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR Int 'l v. Teleflex Inc., 550 U.S. 398,418 (2007). Appellants argue the cited art does not disclose "with the microcontroller, detecting information sent from the microcontroller to the router, wherein a data request to the security module precedes the sending" as recited in claim 14, which depends from claim 2. Appeal Brief 24. 5 Appeal 2017-011488 Application 13/583,166 Appellants contend that "Charrat at FIGS. 6 and 8, along with the teaching at [0074]-[0078] and [0106]-[0113], which correspond to FIGS. 6 and 8" does not identify a microcontroller that detects information sent. Appeal Brief 24. We do not find Appellants' arguments persuasive and agree with the Examiner's findings. See Final Action 16-17. As we stated in regard to claim 2, Charrat does not specify a microcontroller detecting the information sent, it is evident that the information is sent upon request via the various components employed by Charrat. We sustain the Examiner's obviousness rejection of dependent claims 2 and 14, as well as, the obviousness rejections of dependent claims 3-5, 10- 13, 15, 17-21, 23-27 and 29-33 not separately argued. DECISION The Examiner's indefiniteness rejection of claim 18 is affirmed. The Examiner's obviousness rejections of claims 1-5 and 10-33 are 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)(l ). See 37 C.F.R. § 1.136(a)(l)(v). AFFIRMED 6 Copy with citationCopy as parenthetical citation