Ex Parte Narasimha et al

Patent Trial and Appeal Board

Jun 18, 2018

14608282 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/608,282 01/29/2015
73635 7590 06/20/2018
The Watson Intellectual Property Group, PLC
[Motorola]
3133 Highland Drive, Suite 200
Hudsonville, MI 49426
FIRST NAMED INVENTOR
Murali Narasimha
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.
MM01049 9085
EXAMINER
PHUONG,DAI
ART UNIT PAPER NUMBER
2644
NOTIFICATION DATE DELIVERY MODE
06/20/2018 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):
lchapa@watson-ip.com
mloppnow@watson-ip.com
docketing.mobility@motorola.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MURALI NARASIMHA, ERIC BERDINIS, STEVES. KIM, and
ROBERT T. LOVE
Appeal2017-010758
Application 14/608,282 1
Technology Center 2600
Before MARC S. HOFF, THU A. DANG, and SCOTT B. HOWARD,
Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-6, 8, 11, 12, 14--20, and 22-24. The Examiner states that claims
7, 9, 10, 13, and 21 "are objected to as being dependent upon a rejected base
claim, but would be allowable if rewritten in independent form including all
1 Appellant identifies the Applicant, Motorola Mobility, LLC, as the real
party in interest. App. Br. 3. We take Official Notice that Motorola
Mobility, LLC is a wholly owned subsidiary of Lenovo Group Ltd. See
https://www.motorola.com/us/home (last accessed June 11, 2018). Counsel
is advised that "[ w ]hen an application is assigned to a subsidiary
corporation, the real party in interest is both the assignee and either the
parent corporation or corporations, in the case of joint ventures." MPEP
1205.02(i).
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Application 14/608,282
of the limitations of the base claim and any intervening claims." Final
Act. 25. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
THE INVENTION
The disclosed and claimed invention is directed to a method and
apparatus "for operating a user client wireless communication device on a
wireless wide area network. More particularly, the present disclosure is
directed to operating a user client wireless communication device on a
wireless wide area communication network without using a user wireless
wide area communication device as a server." Spec. ,r 2.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method in a user client wireless communication
device, the method comprising:
establishing at the user client wireless communication
device, a communication link with a user wireless wide area
network communication device;
receiving a random challenge and an authentication token
from a wireless wide area network;
sending the random challenge and the authentication
token to the user wireless wide area network communication
device;
receiving at least one temporary wireless wide area
network communication security key from the user wireless
wide area network communication device, where the at least
one temporary wireless wide area network communication
security key is for the wireless wide area network; and
operating the user client wireless communication device
on the wireless wide area network independent from the user
wireless wide area network communication device by using the
at least one temporary wireless wide area network
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Application 14/608,282
communication security key from the user wireless wide area
network communication device.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Muller
Bassu
Morikuni
Lee
Khalil
US 2011/0296494 Al
US 2012/0036360 Al
US 8,195,233 B2
US 2014/0010180 Al
US 2015/0105068 Al
REJECTIONS
Dec. 1, 2011
Feb.9,2012
June 5, 2012
Jan.9,2014
Apr. 16, 2015 2
Claims 1--4, 8, 12, 14--20, and 22-24 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Muller in view of Morikuni. Final Act.
11-22.
Claim 5 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Muller in view of Morikuni and Khalil. Final Act. 22-23.
Claim 6 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Muller in view of Morikuni and Lee. Final Act. 23-24.
Claim 11 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Muller in view ofMorikuni, and Bassu. Final Act. 24--25.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
arguments that the Examiner erred. In reaching this decision, we have
2 Khalil was filed on December 18, 20145 and claims the benefit of an
application filed on June 8, 2012.
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considered all evidence presented and all arguments made by Appellant. We
are persuaded by Appellant's arguments regarding the rejected claims.
Appellant argues that because Muller teaches away from the claimed
invention, the Examiner erred in rejecting claim 1 based on the combination
Muller and Morikuni. See App. Br. 11-12; Reply Br. 5---6. Specifically,
Appellant asserts the cited sections of Muller discuss a fraudulent attack that
is undesirable and that the Muller invention is designed to prevent. App. Br.
11-12; Reply Br. 6.
The Examiner finds Muller paragraphs 68 and 69 teach various
limitations of claim 1. See Final Act. 11-12. In response to the Appellant's
argument, the Examiner finds both Muller and Morikuni' s systems are both
compatible with cellular and authentication systems. Ans. 13; see also id. at
13-14 (responding to Appellant's teaching away argument).
Prior art teaches away from the claimed invention if "a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant." In re Gurley, 27
F.3d 551,553 (Fed Cir. 1994). Merely discussing a preferred embodiment,
"does not teach away ... [as] it merely expresses a general preference for an
alternative invention but does not 'criticize, discredit, or otherwise
discourage' investigation into the invention claimed." DePuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009)
(quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).
We are persuaded by Appellant's argument that the cited sections of
Muller teachaway from the claimed invention. Muller paragraphs 67-69
discuss Figure 5, which illustrates "how afraudulent authentication
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procedure may be prevented using the claimed invention." Muller ,r 67.
Specifically, paragraphs 68 and 69-the paragraphs relied on by the
Examiner----discuss how "malware" in a second terminal can be used by an
"attacker" at a first terminal to successfully authenticate itself. According
the Muller, "[u]sing this mechanism the attacker is capable of correctly
answering each subsequent Authentication and Ciphering Request from the
network." Muller ,r 69. Muller continues by stating that if the claimed
invention is used, the attacking terminal cannot use the malware to gain
access to the network. Muller ,r 70. That is, the invention of Muller-as
opposed to the undesirable malware attack-is directed to preventing a first
terminal from using a second terminal to get access to the network. A
person of ordinary skill in the art would discouraged from using the
description of the malware attack which the Muller invention is designed to
prevent.
Appellant raises additional issues in the Appeal Brief. See App. Br.
14-44. Because we are persuaded that the Examiner erred with respect to this
dispositive issue, we do not reach those additional issues.
Accordingly, based on the current record, we do no sustain the
Examiner's rejection of claim 1, along with the rejection of claims
independent claims 15, 17, and 22, which are argued on the same grounds,
and dependent claims 2--4, 8, 12, 14, 16, 18-20, 23, and 24.
Moreover, because the Examiner has not shown that Khalil, Lee, or
Bassau cures the foregoing deficiencies regarding the rejection of the
independent claims, we will not sustain the obviousness rejection of
dependent claims 5, 6, and 11, for similar reasons.
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DECISION
For the above reasons, we reverse the Examiner's decisions rejecting
claims 1---6, 8, 11, 12, 14--20, and 22-24.
REVERSED
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