Ex Parte Madathilparambil George et al

Patent Trial and Appeal Board

Dec 21, 2018

12151853 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/151,853 05/12/2008 George Madathilparambil George
67489 7590 12/21/2018
GEORGE MADATHILPARAMBIL GEORGE
211, EMBASSY HABITAT, NO. 59 PALACE ROAD
BANGALORE, 560052
INDIA
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.
2551
EXAMINER
DEBNATH, SUMAN
ART UNIT PAPER NUMBER
2495
MAIL DATE DELIVERY MODE
12/21/2018 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 GEORGE MADATHILP ARAMBIL GEORGE
and NIKHIL GEORGE
Appeal2017-002004
Application 12/151,853
Technology Center 2400
Before ALLEN R. MacDONALD, SHARON PENICK, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-002004
Application 12/151,853
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 160-1 71, which are all of the pending claims. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm-in-part.
THE INVENTION
The application is directed to "a method for improving [computer]
access protection, more particularly, by using a slave device that will enable
or disable protection for applications as required." (Abstract.) Claim 160,
reproduced below, is representative:
160. A method implemented in a first apparatus implemented in
hardware which is used for controlling at least one user in a
second apparatus, wherein a first user is to be created in said
second apparatus and at least one third apparatus, wherein
configuration of said first user is to be stored in said first
apparatus and in at least one fourth apparatus, said method
compnsmg:
a) using a first communication channel for communicating to
a fifth apparatus, wherein said second apparatus is not connected
to said first communication channel;
b) using a second communication channel for communicating
to said second apparatus, wherein said fifth apparatus is not
connected to said second communication channel;
c) receiving a first command from said fifth apparatus to
create said first user;
d) performing a first authentication;
e) discarding said first command if said first authentication
fails;
f) checking whether said first command conflicts with
ongoing operations in said first apparatus;
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g) discarding said first command if said first command
conflicts with ongoing operations in said first apparatus;
h) sending a first negative acknowledgement to said fifth
apparatus if said first command is discarded and if said first
authentication is successful;
i) allowing said second apparatus to read a first information
about said first command to create said first user if said first
command is not discarded, wherein said second apparatus
performing a first updating of data structures when said first
information is received so that said first user is created;
j) receiving a second command from said second apparatus
wherein said second command is sent by said second apparatus
after said first updating of data structures is completed;
k) sending a first synchronisation message to said fifth
apparatus after said second command is received;
1) receiving either a third command from said fifth apparatus
to complete operation specified in said first command or a fourth
command to discard operation specified in said first command,
wherein said third command is sent by said fifth apparatus after
said fifth apparatus receives said first synchronisation message
and at least one second synchronisation message, wherein each
said second synchronisation message is sent by said at least one
fourth apparatus, wherein said fourth command is sent by said
fifth apparatus after said fifth apparatus receives said first
negative acknowledgement or at least one second negative
acknowledgement, wherein each said second negative
acknowledgement is sent by said at least one fourth apparatus;
m) storing a list of users of said second apparatus;
n) creating said first user in said list when said third command
is received; and
o) sending a first positive acknowledgement to said fifth
apparatus when said creating of said first user is successful.
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Application 12/151,853
THE REJECTIONS
1. Claims 160-171 stand rejected "under 35 U.S.C. [§] 112(a) or
35 U.S.C. [§] 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement." (Final Act. 2-3.)
2. Claims 160-171 stand 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 Act. 3--4.)
3. Claims 160-171 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Pulkkinen et al. (US 2008/0104207 Al; published
May 1, 2008) and Aaron (US 2004/0268150 Al; published Dec. 30, 2004).
(See Final Act. 4--18.)
ANALYSIS
Written Description
Rejecting the claims for inadequate written description, the Examiner
finds "[t]here is no support for the claimed 'third apparatus,' 'fourth
apparatus,' 'fifth apparatus,' 'wherein said second apparatus is not
connected to said first communication channel,' 'sending a first negative
acknowledgement to said fifth apparatus,' 'third command,' 'fourth
command,' 'fifth command,' 'third negative acknowledgement,' [or]
'seventh command' within the Applicant's Specification." (Final Act. 2-3.)
Appellants respond by identifying these elements in the Specification.
(See App. Br. 42 ("[the] computer connected to [the] fourth apparatus
(SASEPDevice) is the third apparatus"); id. at 41 ("First apparatus and
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Application 12/151,853
fourth apparatus are SASEPDevices."); id. at 41 ("ASEPMasterDevice is the
fifth apparatus"); id. at 43--44 ("Fig. 15 illustrates communication channel
between element 15069, SASEPDevice which is the first apparatus and
element 1507 6, ASEPMasterDevice which is the fifth apparatus .... [T]his
communication channel is not connected to element 15063, computer which
is the second apparatus."); id. at 45 ("According to Fig. 12, element 12032, a
first NAK (Negative Acknowledgement) is sent to ASEPMasterDevice
which is the fifth apparatus by SASEPDevice which is the first apparatus.");
id. at 49--50 ("Master confirmation to perform operation which is third
command to complete operation illustrated in Fig. 12, elements 12097,
12098 and 12100 and Fig. 11, element 11084."); id. at 50 ("Master
confirmation to discard operation which is the fourth command to discard
operation illustrated in Fig. 12, elements 12097, 12098 and 12099."); id. at
61 ("Fig. 12, elements 12026, 12027, 12028, 12097, 12031, 12033 and
12032 illustrates handling of each Master Command including first
command or fifth command in SASEPDevice which is the first apparatus of
claims 160 and claim 161."); id. at 59 ("[S]ending first and third negative
acknowledgements from first apparatus to fifth apparatus and sending
second and fourth negative acknowledgements from fourth apparatus to fifth
apparatus is taught in clear and exact terms." ( citations omitted)); id. at 65-
66 ("Seventh command is sent by fifth apparatus (ASEPMasterDevice) if
fifth apparatus receives all required synchronisation messages for deleting
second user (Fig. 11, elements 11086, 11087, 11082, 11083 and 11084;
specification, page 45, line 11 to page 48, line 14).").
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apparatus terms
In connection with claim 160, the Examiner asserts that "Appellant
interpret[s] [ASEPMasterDevice] as [the] fifth apparatus and SASEPDevices
as [the] first and fourth apparatus without providing any rationale as to why
[ASEPMasterDevice] had to be the fifth apparatus or why [it] couldn't be a
first apparatus." (Ans. 3.) Similarly, in connection with claim 161, the
Examiner states that "by looking at the figure 15 and the pointed description
or by reading any other part of the Specification, anyone with ordinary
skill[] in the art [ would not] be able to figure out that element 1507 6 is a
fifth apparatus, element 15063 is a second apparatus and element 15069 is a
first apparatus and element 15063 is not connected to the first
communication channel without extensive interpretation that is made by the
appellant in the Appeal brief." (Id. at 7.)
We agree with Appellants that the claimed apparatuses are described,
because the Specification details a system that corresponds ( except as
detailed below) to what is recited in the claims. The question is not whether
a read of the Specification would reveal the exact claim terms ( e.g. "third
apparatus"), but, rather, whether one reading the claims could determine that
the substance of the claimed subject matter is found in the original
description. There is nothing to prevent Appellants from using broad terms
( e.g., "fifth apparatus" instead of "ASEPMasterDevice") in their claims,
provided that the context allows one find support in the original disclosure,
which in the case of the claimed third apparatus, fourth apparatus, and fifth
apparatus, it does. Although the use of generic terms, such as those in these
claims, might mean that more effort is required to correlate the claims with
the Specification, that alone is not a written description problem.
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"second apparatus not connected
to said first communication channel"
Regarding "said second apparatus is not connected to said first
communication channel," the Examiner asserts that "figure 15 at the very
best shows three apparatus and each apparatus are connected to each other
by arrows pointing in both directions" and "[a]ssuming ... Appellant is
claiming these arrows as communication channels[,] then every single
apparatus are connected to each other." (Ans. 4.) The Examiner further
finds that "[ a ]nyone with ordinary skill in the art would assume that the
element 15069 is part of element 15063 and an arrow is pointing from
element 15076 to element 15063." (Id.)
Here we agree with the Examiner, particularly because Appellants do
not provide a persuasive response to the Examiner's second point. The
claim requires "using a first communication channel for communicating to a
fifth apparatus, wherein said second apparatus is not connected to said first
communication channel." In Figure 15 as characterized by Appellants,
however, the ASEPMasterDevice is the "fifth apparatus" and communicates
with a SASEPDevice, which is the "first apparatus" and is depicted within or
as part of computer 15603, which is the "second apparatus." Because the
SASEPDevice is shown as being in the computer, we fail to see how the
indicated portions of the Specification support the computer ("second
apparatus") as "not connected" to the communication channel between that
SASEPDevice and that ASEPMasterDevice. Thus, we agree that the
recitation "second apparatus not connected to said first communication
channel" is not supported adequately in the Specification.
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"sending a first negative acknowledgement"
and "third negative acknowledgement"
Regarding "sending a first negative acknowledgement to said fifth
apparatus" and the "third negative acknowledgement," the Examiner asserts
that "Fig. 12 and the pointed description at the very best describes sending
NAK to ASEPMasterDevice" and "[ s ]omeone with ordinary skill in the art
wouldn't define the NAK message of Fig. 12 as first, second and third NAK
messages sent from fifth apparatus to a first apparatus." (Ans. 6.) This is
because, according to the Examiner, "[ o ]ne of ordinary skill in the art
including the Examiner wouldn't fully understand which elements of the
specification and/or figures should have considered as first negative
acknowledgement and third negative acknowledgement that are sent from
first apparatus to fifth apparatus." (Id.)
We agree with Appellants that the claim language "sending a first
negative acknowledgement to said fifth apparatus" and "sending a third
negative acknowledgement to said fifth apparatus" is supported, as identified
by Appellants (see App. Br. 45, 59), at element 12032 of Figure 12, in which
NAKs are sent to the ASEPMasterDevice, which is the fifth apparatus. The
first NAK would be sent from the first apparatus, and the third NAK would
be sent from the fourth apparatus. However, these limitations also require
sending the negative acknowledgement if the first/fifth command is
discarded and if the first/second authentication is successful. We conclude
that Figure 12 and the accompanying description do not support sending the
N AK "if said [first/fifth] command is discarded." This is because the
Specification describes sending the NAK in the case of a conflict, but only
discarding the operation upon subsequent receipt of confirmation from the
ASEPMasterDevice, after which only an ACK is sent. (See Spec. 50 ("If the
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operation has conflicts ... the SASEPDevice sends a [NAK] ... and returns
to the state 12026 where it awaits ... a Master Confirmation .... When a
Master Confirmation ... is received ... the SASEPDevice checks whether
the Master Confirmation is to discard or to perform the operation .... If the
Master Confirmation requests the operation to be discarded 12099, the
SASEPDevice discards the operation [and] sends an [ACK].").)
"third command" and "fourth command"
The Examiner maintains that "[ e ]ven after reading the Appeal brief, it
would be difficult for one of ordinary skilled in art to figure out how element
11014, 11015 and 11079 reads on third and fourth command." (Ans. 6.)
We observe, however, that Appellants also identify other portions of the
Specification as providing support. (See App. Br. 49--50 ("Master
confirmation to perform operation which is third command to complete
operation illustrated in Fig. 12, elements 12097, 12098 and 12100 and Fig.
11, element 11084."; "Master confirmation to discard operation which is the
fourth command to discard operation illustrated in Fig. 12, elements 12097,
12098 and 12099.").) The claim requires that the third command is
"received ... from [the] fifth apparatus to complete [the] operation specified
in [the] first command" and the "fourth command [is] to discard [the]
operation specified in [the] first command." This claim language provides
adequate context to identify the above passages concerning the commands
from the ASEPMasterDevice to either complete or discard the operation as
providing sufficient written description support.
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other terms
The Answer does not respond to Appellants' argument regarding
"fifth command" or "seventh command," and, after our review of the
Specification, we agree with Appellants that these terms are adequately
supported. See App. Br. 61, 65---66.
written description conclusion
For the reasons detailed above, we sustain the written description
rejection of claims 160, 161, and 167-171, due to a lack of support for "said
second apparatus is not connected to said first communication channel." We
also sustain the written description rejection of claims 160, 161, and 167-
171 due to a lack of support for sending a first/third negative
acknowledgement to the fifth apparatus "if said [first/fifth] command is
discarded."
However, we do not find the remaining terms-"third apparatus,"
"fourth apparatus," "fifth apparatus," "third command," "fourth command,"
"fifth command," and "seventh command"-to lack support and, therefore,
do not sustain the written description rejection to the extent it is based on
those terms. We, therefore, do not sustain the written description rejection
of claims 162-166.
Indefiniteness
The Examiner rejects claims 160-1 71 as indefinite, because
"[p ]resently, some claims require speculation and conjecture by the
Examiner and by one of ordinary skill in the art inasmuch as the claims
under examination are rejected under 35 U.S.C. [§] 112, second paragraph."
(Final Act. 4.) We understand the Examiner's concerns about speculation
and conjecture to arise from the "apparatus" and "command" terms.
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However, for the reasons given above, we do not find these terms lacking
support or, for the same reasons, indefinite. We thus do not sustain the
rejection under 35 U.S.C. § 112, second paragraph.
Obviousness
In the Final Action, the Examiner simply repeats or paraphrases each
claim element and then repeatedly cites certain paragraphs of Pulkkinen and
Aaron, without any explanation of how the references actually disclose,
teach, or suggest what is claimed. (See Final Act. 5-16.) For example,
claim 160 limitation "b )" is "using a second communication channel for
communicating to said second apparatus, wherein said fifth apparatus is not
connected to said second communication channel." For that limitation, the
rejection merely repeats the claim language followed by "([0024], [0025],
[0029])." (Final Act. 5.) This fails to identify the claimed "second
communication channel" and "fifth apparatus" in the reference, and fails to
explain how or why they are not connected. The other claim limitations are
treated the same way.
We assume the sparsity of the rejection is due to the difficulties the
Examiner had in mapping the claims to the Specification. It is, however, not
sufficient to carry the Office's "procedural burden of establishing a prima
facie case" by "stating the reasons for [the] rejection ... together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application." In re Jung, 637 F.3d 1356,
1362 (Fed. Cir. 2011) (quoting 35 U.S.C. § 132). The Section 103 rejection
is, therefore, not sustained.
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DECISION
The rejection of claims 160, 161, and 167-171 under 35 U.S.C. § 112,
first paragraph, is affirmed. The rejection of claims 162-166 under 35
U.S.C. § 112, first paragraph, is reversed.
The rejection of claims 160-171 under 35 U.S.C. § 112, second
paragraph is reversed.
The rejection of claims 160-171 under 35 U.S.C. § 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED-IN-PART
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