Ex Parte KWON

Patent Trial and Appeal Board

May 16, 2016

12942556 (P.T.A.B. May. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/942,556 11/09/2010
66547 7590 05/16/2016
THE FARRELL LAW FIRM, P,C
290 Broadhollow Road
Suite 210E
Melville, NY 11747
FIRST NAMED INVENTOR
Soon-Hwan KWON
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.
1235-686 (SP10236) 1906
EXAMINER
MEJIA, FELICIANO S
ART UNIT PAPER NUMBER
2492
MAILDATE DELIVERY MODE
05/16/2016 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 SOON-HWAN KWON
Appeal2014-008105
Application 12/942,556
Technology Center 2400
Before JOSEPH L. DIXON, THU A. DANG, and
NATHAN A. ENGELS, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-5, 7-15, and 17-20. Claims 6 and 16 are objected to by the Examiner.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The claims are directed to pairing method and apparatus for ad-hoc
connection in wireless communication terminal. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A pairing method for a connection in a wireless
communication terminal, the method comprising:
Appeal2014-008105
Application 12/942,556
measuring, by a timer, an event duration that occurs
according to user manipulation;
generating, by a pairing key generator, a pairmg key
using the measured duration; and
performing, by a communication module, a painng
procedure with a counterpart terminal using the pairing key.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Yeh et al.
Kinnis et al.
Lillie et al.
Gabriel et al.
US 2004/0139339 Al
US 6,959,382 Bl
US 7,757,274 B2
US 8,365,260 B2
July 15, 2004
Oct. 25, 2005
July 13, 2010
Jan.29,2013
(filed Sept. 25, 2009)
REJECTIONS
The Examiner made the foiiowing rejections:
Claims 1--4, 9-14, 19, and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lillie in view of Kinnis. (Final Act. 3---6).
Claims 5, 7, 15, and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lillie [in view of Kinnis] and in further view of Gabriel. 1
(Final Act. 6-7).
Claims 8 and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lillie in view of Kinnis and in further view of Yeh.
1 The Examiner does not include the Kinnis reference in the introductory
paragraph with regards to claims 5, 7, 15, and 17, we interpret this as a
typographical error because the Kinnis reference is used to reject the parent
claims and discussed in the body of the rejection.
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Application 12/942,556
ANALYSIS
We find that the following findings are relevant to the rejections under
review and are supported by at least a preponderance of the evidence.
Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the
general evidentiary standard for proceedings before the Office).
Burden on Appeal
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner's position. See In re Kahn, 441F.3d977, 985-86 (Fed. Cir.
2006) ("On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness. ")
(quoting In re Roujfet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
With regards to independent claims 1 and 11, Appellant presents the
same argument for both independent claims. (App. Br. 4). Consequently,
we address independent claim l as the illustrative claim and find that
independent claim 11 contains commensurate limitations. Appellant
contends that the Examiner's reliance upon the Kinnis reference is in error
with regards to the claimed "measuring, by a timer, an event duration."
Appellant contends that the passage relied upon by the Examiner is
not particularly clear on how the timing of the key presses is
"utilized" to generate a number-a number which apparently
gets bigger and bigger. Nevertheless, a closer reading of this
passage provides the understanding that the timing of individual
keypresses, i.e., when the key is pressed as measured by the
internal clock, is used to generate an ever larger number,
presumably by addition. In other words, the time at which the
first key is pressed is added to the time at which the second key
is pressed, and so on. This is why the user is not instructed to
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Application 12/942,556
merely depress a key, or press two keys in a row, but rather "to
start typing on the keys of the keyboard."
(App. Br. 5). Appellant further contends that "the number in Kinnis et al. is
not generated using a measured event duration. As far as can be ascertained,
the number in Kinnis et al. is generated by putting together the times of each
key press a user makes while typing." (App. Br. 6).
The Examiner interprets the disclosure of the Kinnis reference and
maintains:
Kinnis et al. teaches the use of a Java API which "prompts" a
user to start typing on the keys, as the beginning of an "event."
Further, the Examiner asserts that the number produced after
having achieved the "desired" size is the number used by the
secure random generator to produce a [random] number seed
for the generation of the key pair.
(A)(Appellant's claim) "duration" is defined as "the time
during which something exists or lasts," Merriam Webster's
Collegiate Dictionary, Eleventh Edition.
(Kinnis column 6 line 4 7) "timing" is defined as
"observation and recording (as by a stopwatch) of the elapsed
time of an act, action, or process," Id.
The Examiner believes it is facially evident that these
two terms are coextensive.
(B) Even if the term "timing" does not anticipate the term
"duration" the additional recitation of Kinnis that there are
"timing of the key presses to generate a number. When this
process obtains a number of the desired size" means that there
are multiple key presses, where the time between presses are
used to "generate a number". This disclosure additionally, and
independently, discloses a duration.
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Application 12/942,556
(C) Lastly, the Examiner would point out that Appellant's
argument regarding the lack of specificity with regard to how
Kinnis uses the timing (Appellant's brief p. 5 , i-f 2) is arguably
untrue in view of the argued (see above 3 paragraphs) and
previously cited (Office Action dated 9/18/2013, p. 4 11. 1-2).
Although Appellant's argument with regard to Kinnis is up to
debate, it is absolutely applicable to the claimed scope
"generating [] a pairing key using the measured duration".
Appellant does not set forth any species of method for
generating a key using time or duration information, and merely
sets forth the genus idea that time might be a factor. Appellant
cannot avoid the particular methods of the prior art (Kinnis
column 6 lines 46-54) by avoiding any disclosure thereof. The
Examiner cannot, and the prior art is not required, to render
obvious unclaimed disclosures of the specification.
For any of the independent reasons (A-C) detailed above
the Examiner believes that the rejection detailed in the Office
Action on 9/18/2013 is proper and should be upheld.
The Examiner, citing the Appellant's argument of a user
key press for one or more keys in a row does constitute an
"event." In other words, the Examiner reasons that a user
prompted to start typing, as instructed by the execution of a
Java API, until a number of a desired size, code in the Java
API's, does in fact, read on the Appellant's limitation of:
"measuring and event"
(Ans. 3-5).
Appellant contends that independent Claims 1 and 11 recites a pairing
key generator "generating a pairing key using [a] measured event duration"
(Reply Br. 2). Appellant further contends that:
The key in Kinnis et al. is not generated using the
measured duration of an event. The key in Kinnis et al. is
apparently generated by putting together "the timing of the key
presses" (emphasis added) - the timing of each of a plurality of
keys pressed by a user who has been prompted to type.
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Application 12/942,556
Using the definition supplied by the Examiner for
duration: '"the time during which something exists or lasts",
the key generated in col. 6, lines 41-54 of Kinnis et al. is not
duration- while Kinnis et al. may not be clear as to how the
timings of the multiple key presses are "utilized" to generate "a
number of desired size," the key generated in Kinnis et al. is
clearly not "the time during which the user's typing exists or
lasts."
(Reply Br. 2-3; footnote omitted). Based upon the totality of the evidence
regarding column 6 of the Kinnis reference, we agree with Appellant that the
limited disclosure of the Kinnis reference does not teach or fairly suggest the
invention as recited in independent claims 1 and 11.
While the Kinnis reference may be capable of determining the
"timing" of the key presses, we find no teaching or suggestion of measuring,
by a timer, an event "duration" that occurs according to user manipulation
and generating, by a pairing key generator, a pairing key using the measured
duration in the cited portions of Kinnis. Such conjecture would require us to
resort to speculation, unfounded assumptions, or hindsight reconstruction.
See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). We will not resort to
such speculation or assumptions to cure the deficiencies in the factual basis
in order to support the Examiner's rejection. The Kinnis reference is unclear
as to how the "timing" of the plurality of key presses is a "duration" used to
generate a number which apparently gets bigger and bigger and is used by a
signature service 100 to generate a number which is used as the seed in a
random number generator which ultimately is used to generate a key pair.
With speculation by both the Examiner and by Appellant, it is clear that the
Examiner has not shown a preponderance of the evidence supporting the
underlying factual findings to support the ultimate conclusion of
obviousness of independent claims 1 and 11.
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"The review authorized by 35 U.S.C. Section 134 is not a process
whereby the examiner ... invite[ s] the [B]oard to examine the application
and resolve patentability in the first instance." Ex parte Braeken,
54 USPQ2d 1110, 1112 (BPAI 1999). We decline and will not resort to
speculation, unfounded assumptions, or hindsight reconstruction to make up
for this deficiency in the Examiner's rejection of independent claims 1 and
11 and their respective dependent claims.
CONCLUSION
The Examiner erred in rejecting claims 1-5, 7-15, and 17-20 based
upon obviousness.
DECISION
For the above reasons, we sustain the Examiner's rejections of claims
1-5, 7-15, and 17-20.
REVERSED
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