Ex Parte Ishidoshiro

Board of Patent Appeals and Interferences

Oct 29, 2009

10270231 - (D) (B.P.A.I. Oct. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TAKASHI ISHIDOSHIRO
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Appeal 2009-004131
Application 10/270,231
Technology Center 2400
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Decided: November 2, 2009
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Before JOHN C. MARTIN, KARL D. EASTHOM, and
THOMAS S. HAHN, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals1 under 35 U.S.C. § 134 from the Final Rejection of
claims 1, 2, and 4-7, the only claims pending (App. Br. 5). We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection.
Appellant invented a system to allow computer access to an access-
unlimited area, typically a WAN, and an access-limited area, typically a
LAN. Appellant refers to the WAN as outside a company computer system
(i.e., the internet) and the LAN as in-house company system requiring “a
high degree of secrecy” (Spec. 1:22-23). Appellant’s disclosed system
decides upon the two different access types based on whether or not there is
an effective WEP, allowing connection to the LAN and the WAN if the
WEP is effective, and allowing connection only to the WAN if it is not
effective. Appellant refers to “encryption by WEP” (Spec. 8:20-21),
apparently in reference to a specific type of encryption using a key in a WEP
type of protocol (see Spec. 8:12-22). (See also Spec. 1; Abstract).2
Exemplary claim 1 follows:
Claim 1: A wireless LAN access point to provide network services
through wireless signals, to establish access-limited areas and access-
unlimited areas, and limit access by judging if there is appropriate
encryption, said wireless LAN access point comprising:

1 Appellant’s Brief (filed Dec. 20, 2007) (“App. Br.”) and Reply Brief (filed
June 5, 2008) (“Reply Br.”), and the Examiner’s Answer (mailed Apr. 8,
2008) (“Ans.”), are referenced in this opinion.
2 Our description of Appellant’s disclosed invention constitutes findings of
fact (FF).
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an encryption judging means to judge whether or not there is said
encryption in an access demand; and
an access object limiting means to allow access to access-limited areas
and access-unlimited areas;
wherein when said encryption judging means judges that there is said
appropriate encryption in said access demand, said access object limiting
means allows access to said access-limited areas and said access-unlimited
areas, and when said encryption judging means judges that there is not said
appropriate encryption in said access demand, said access-object limiting
means allows access only to said access-unlimited areas;
wherein said appropriate encryption is WEP.
The Examiner relies on the following prior art reference:
Hind US 6,772,331 B1 Aug. 3, 2004
(filed May 21, 1999)
The Examiner rejected claims 1, 2, and 4-7 as obvious under 35
U.S.C. § 103 based on Hind.

ISSUE
Appellant and the Examiner disagree over the meaning of “said
encryption” in claims 1 and 6 and “appropriate encryption” in claims 1, 6,
and 7. The issue on appeal is whether interpreting the claims requires
considerable speculation as to the meaning of the terms employed and
assumptions as to the scope of the claims.

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FINDINGS OF FACT (FF)
Appellant’s Disclosure
1. In the Brief (App. Br. 2), Appellant relies on, inter alia, step
“S105” of Figure 3 to support the limitation in claim 1 of “an encryption
judging means to judge whether or not there is said encryption in an access
demand.” This step, S105, represents a decision box in a flow diagram that
decides “Is there effective WEP?” (Fig. 3). Appellant relies on the same
step, S105, to support similar limitations in claims 6 and 7 (App. Br. 3-4).
2. Also in the Brief (App. Br. 2-4), to support the same limitations in
claims 1, 6, and 7, Appellant further relies on page 3, line 19, to page 4, line
1, of the Specification, which states: “The encryption judging means judges
whether or not there is said encryption in said access demand” (Spec. 3:19-
20).
3. Appellant (App. Br. 2) bases support for the claim 1 limitation
“wherein said appropriate encryption is WEP” on page 4, lines 21-23 of the
Specification, which states: “In addition, the wireless LAN access point may
be constructed such that said encryption is accomplished in conformity with
WEP.”
4. Appellant states:
If the request for connection is the one for in-house LAN 20
instead of the one for WAN 30, then a judgment is made (in
step S105) as to whether it is accompanied by encryption by
effective WEP. If WEP is effective, connection to in-house
LAN 20 is allowed in step S110, and if WEP is not effective,
connection to in-house LAN 20 is not allowed . . .
(Spec. 10:19-25).
5. Appellant also states: “This WEP sets up the ‘key’ at the access
point and tells it only to those who are allowed to connect to the in-house
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LAN (access-limited area), so that only the terminal which has set up the
‘key’ can access the access-limited area” (Spec. 10:8-12). Appellant also
states, with respect to another embodiment, that “encipherment is
accomplished by WEP . . . [or] in other ways” (Spec. 15:11-13), “the cipher
is verified” (Spec. 15:17), and “a judgment is made as to whether or not
encipherment is effective” (Spec. 15:18-19).

PRINCIPLES OF LAW
Under § 112, second paragraph, claims must be “sufficiently definite
such that those skilled in the art would understand what is being claimed
when the claim is read in light of the Specification.” Ex parte Miyazaki,
App. No. 2007-3300, slip op. at 16 (BPAI 2008) (precedential), avail. at
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd073300.pdf. All words
in a claim must be considered in judging the patentability of that claim
against the prior art. If no reasonably definite meaning can be ascribed to
certain terms in the claim, the subject matter does not become obvious–the
claim becomes indefinite. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
A prior art rejection of a claim which is so indefinite that “considerable
speculation as to meaning of the terms employed and assumptions as to the
scope of such claims” are needed should not be made. In re Steele, 305 F.2d
859, 862 (CCPA 1962). “It is evident to us from the above summary of the
description, definitions and examples appearing in appellant’s specification,
that the claims on appeal are inherently inconsistent. . . . The result is an
inexplicable inconsistency within each claim that the rejection under 35
U.S.C. 112 on the grounds of indefiniteness be sustained.” In re Cohn, 438
F.2d 989, 993 (CCPA 1971).
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ANALYSIS
Appellant argues (App. Br. 6) that claim 1 “requires an encryption
judging means to judge whether or not there is said encryption in an access
demand. . . . The claimed invention simply requires judging if there is
‘encryption,’ i.e., if encryption exits, not whether or not the encryption is
valid.” Appellant’s argument does not account for the fact that the phrase
“said encryption” in claim 1, line 5, refers back to the phrase “appropriate
encryption” appearing in the claim preamble, line 3.
Further, Appellant’s argument conflicts with the disclosure and a
normal construction of the term “appropriate encryption.” That is, the
disclosure indicates that access to limited areas (i.e., those “requiring
secrecy” (see supra note 2 and accompanying text)) is allowed only if the
WEP “key” and/or “encipherment” is effective (FF 4, 5). As such,
Appellant’s Specification apparently describes a normal situation whereby
access to a secured area is limited to the detection of a valid encryption to
ensure secrecy of a LAN (id.; supra note 2 and accompanying text).
In the Brief, on one hand, Appellant bases support for the encryption
judgment means on an effective WEP (FF 1), but, on the other hand, argues
in the Reply Brief that “appropriate encryption” only requires a
determination as to “whether or not there is WEP encryption in the access
demand” (Reply Br. 3 (emphasis added)). As indicated supra, a normal
reading of the Specification does not support allowing access to secure areas
simply because a certain protocol (i.e., WEP) exits. Appellant’s reliance on
a certain portion of the Specification for that construction (see FF 3) is not
supported (i.e., the term “appropriate” is not employed at that cited portion
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(FF 3)). Similarly, while the Specification supports merely determining if
the encryption exists, this support exists without use of the word
“appropriate” (see FF 2).
Therefore, it is not clear whether or not the phrase in claims 1 and 6,
“judge whether or not there is said encryption” requires a determination of
an effective encryption or the mere existence of encryption, since “said
encryption” refers back to “appropriate encryption” and the Specification
ambiguously supports either interpretation. For similar reasons, it is also not
clear whether the phrase in claim 7, “judge whether or not there is said
appropriate encryption,” requires a determination of the mere existence of
encryption or the determination of an effective encryption.3
Further, claims 1, 6, and 7 are unclear for a similar, but additional
reason. Claim 1 (emphasis added) also recites:
wherein when said encryption judging means judges that
there is said appropriate encryption in said access demand,
said access object limiting means allows access to said access-
limited areas and said access-unlimited areas, and when said
encryption judging means judges that there is not said
appropriate encryption in said access demand, said access-
object limiting means allows access only to said access-
unlimited areas . . . .
This “wherein” clause4 further indicates, contrary to Appellant’s
arguments, that “appropriate encryption” here does not merely refer to
judging whether or not encryption merely exists, because access to access-

3 Claim 6, line 4, similarly recites “said encryption,” which refers back to
“appropriate encryption” on line 3 of the claim. Claim 7 recites “appropriate
encryption” throughout the claim. In any case, Appellant states that claims 6
and 7 “each require similar features to those mentioned above” (App. Br.
10), i.e., “those” “features” in claim 1.
4 Claims 6 and 7 each recite a similar clause. See also supra note 3.
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limited areas is based on “when said encryption judging means judges that
there is said appropriate encryption in said access demand.” As noted supra,
Appellant’s disclosure indicates that allowing such access to an access-
limited area occurs only when the encryption is “effective” (FF 1, 4) and a
WEP “key” or “encipherment” is employed: “This WEP sets up the ‘key’ at
the access point and tells it only to those who are allowed to connect to the
in-house LAN (access-limited area), so that only the terminal which has set
up the ‘key’ can access the access-limited area” (FF 5). Such an “effective”
WEP key indicates a determination of validity of the encryption, as opposed
to a determination of its mere existence.
As such, Appellant’s argument that “appropriate encryption”
embraces only the existence of such encryption eviscerates the normal
meaning of the “wherein” clause quoted supra from claim 1 and the similar
clauses in claims 6 and 7. In other words, Appellant’s arguments, if
adopted, would mean that the independent claims do not preclude any WAN
(internet) surfer having any WEP key to obtain access to a secure LAN (in-
house) computer (see supra note 2 and accompanying text).
Moreover, the term “appropriate encryption” may or may not mean
one thing in the earlier judging means clause (i.e., “whether or not there is
said appropriate encryption in an access demand”), and another in the
second judging means clause (i.e., the “wherein clause” of claim 1 quoted
supra). As such, skilled artisans would not have understood the meaning
and scope of the claim.
Based on the arguments, the disclosure, and a reading of the claims,
the phrase “appropriate encryption” can either merely encompass
determining the mere existence of (WEP) encryption and/or determining
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whether a valid (effective) WEP encryption exists. And, the meaning may
vary depending on where the phrase occurs in the claims, further rendering it
ambiguous. “The problem in this case is that the appellants failed to make
their intended meaning explicitly clear.” In re Morris, 127 F.3d 1048, 1056
(Fed. Cir. 1997). “It is the applicants’ burden to precisely define the
invention, not the PTO’s.” Id.
All words in a claim must be considered in judging the patentability of
that claim against the prior art. If no reasonably definite meaning can be
ascribed to certain terms in the claim, the subject matter does not become
obvious–the claim becomes indefinite. Wilson, 424 F.2d at 1385. Our
analysis of the claims indicates that the claims are not only inconsistent with
Appellant’s disclosure and Briefs, but are also internally inconsistent based
upon the possibility of different meanings attributed to the same phrase in
different portions of the claim. See Cohn, 438 F.2d at 989. Under Miyazaki,
slip op. at 16, claims 1, 6, and 7 are not “sufficiently definite such that those
skilled in the art would understand what is being claimed when the claim is
read in light of the Specification.”
Therefore, considerable speculation as to meaning of the terms
employed and assumptions as to the scope of such claims needs to be made.
A rejection under 35 U.S.C. § 103 should not be based on such speculations
and assumptions. Steele, 305 F.2d at 862; Ex parte Head, 214 USPQ 551,
554 (BPAI 1981).
Accordingly, we reverse the Examiner’s decision rejecting, under 35
U.S.C. § 103, independent claims 1, 6, and 7 and dependent claims 2, 4, and
5. It must be noted, however, that this reversal is based on the indefiniteness
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of the subject matter, and is not to be construed as a reversal based on the
prior art cited by the Examiner.

NEW GROUND OF REJECTION
We enter a new ground of rejection pursuant to 37 C.F.R. § 41.50(b).
35 U.S.C. § 112, second paragraph, reads as follows: “The
specification shall conclude with one or more claims particularly pointing
out and distinctly claiming the subject matter which the applicant regards as
his invention.”
Claims 1, 2, and 4-7 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as his invention.
As explained above, it is not clear whether the phrase in claims 1 and 6,
“whether or not there is said encryption,” and the similar phrase in claim 7,
“whether or not there is said appropriate encryption,” require a
determination of whether there is a mere existence of an encryption or the
determination of an effective (i.e., valid) encryption. The term “appropriate
encryption” in the “wherein” clause of claim 1, and in the similar clauses in
claims 6 and 7, is also similarly ambiguous for the reasons explained supra.

CONCLUSION OF LAW
Pursuant to 37 C.F.R. § 41.50(b), we conclude that claims 1, 2, and 4-
7 are unpatentable under 35 U.S.C. § 112, second paragraph, as being
indefinite, as set forth above. Interpreting those claims requires considerable
speculation as to meaning of the terms employed and assumptions as to the
scope of the claims.
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DECISION
The decision by the Examiner to reject claims 1, 2, and 4-7 based on
obviousness is reversed. We have entered a new ground of rejection of
claims 1, 2, and 4-7 under 35 U.S.C. § 112, second paragraph, based on
indefiniteness.

NON-FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (2007). 37 C.F.R. § 41.50(b) provides that “[a] new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(1)(iv) (2007).

REVERSED: 37 C.F.R. § 41.50(b)
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