Ex Parte Knudsen

Patent Trial and Appeal Board

Aug 30, 2013

10538457 (P.T.A.B. Aug. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CARL KNUDSEN
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Appeal 2011-001908
Application 10/538,457
Technology Center 2400
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Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1 and 3-20. Claim 2 has been canceled. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
Exemplary Claim
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below with emphases added:

1. An integrated circuit arrangement comprising:

an integrated circuit device having a plurality of
magnetically-responsive circuit nodes;

a package adapted to inhibit access to the integrated
circuit device and including a plurality of magnetized particles
therein, the magnetically-responsive circuit nodes magnetically
responding to the plurality of magnetized particles such that a
change in magnetic field collectively provided by the
magnetized particles renders a change in a magnetic state of at
least one of the magnetically-responsive circuit nodes; and

a detection circuit adapted to detect the magnetic state of
the magnetically- responsive circuit nodes and, in response to a
change in the magnetic state, to detect that the package has been
tampered with.

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The Examiner’s Rejections
(1) The Examiner rejected claims 1, 8-12, 15-17, 19, and 20 under 35
U.S.C. § 102(e) as being anticipated by Kommerling (US 7,005,733 B2).
Ans. 3-5.
(2) The Examiner rejected claims 1, 3-7, and 14 under 35 U.S.C.
§ 103(a) as being unpatentable over Sano (JP 3084959) and Kommerling.
Ans. 5-9.
(3) The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as being
unpatentable over Kommerling and Fujiki (JP 7209019). Ans. 9-10.
(4) The Examiner rejected claims 17 and 18 under 35 U.S.C. § 103(a)
as being unpatentable over Kommerling and Double (US 5,159,629).1 Ans.
10-11.

1 The Examiner incorrectly states (Ans. 3 and 10) that “Double et al. (US
5,129,629)” (Ans. 10) (emphasis added) is used in combination with
Kommerling to reject claims 17 and 18, and cites Figure 2; column 1, lines
16-18; column 3, lines 51-68; and column 4, lines 1-15 of the reference in
the body of the rejection (see Ans. 11). Appellant has not disputed the
merits of this rejection, or of the reference US 5,129,629 (see App. Br. 17;
Reply Br. 9).
Our close review of the record before us reveals that the Examiner’s
list of references cited (form PTO-892) mailed on May 28, 2009, correctly
lists Double as “US 5,159,629” (emphasis added). Additionally, the
portions of Double cited by the Examiner (see Fig. 2 and accompanying text
at col. 1, ll. 16-18; col. 3, ll. 51-68; and col. 4, ll. 1-15) support the reasoning
and findings the Examiner has made with regard to the Double reference
regarding intrusion detection at pages 10-11 of the Answer. Double’s title is
“Data Protection By Detection Of Intrusion Into Electronic Assemblies.”
We consider this as harmless error, and consider the rejection before
us on appeal to be over Kommerling and Double (US 5,159,629).

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Appellant’s Contentions
(1) Appellant contends (App. Br. 7-9; Reply Br. 5) that the Examiner
erred in rejecting claims 1, 8-12, 15-17, 19, and 20 under 35 U.S.C. § 102(e)
as being anticipated by Kommerling for numerous reasons, including:2
(a) “Kommerling does not disclose a circuit adapted to detect a
magnetic state and, in response to a change in the magnetic state, to
detect that the package has been tampered with,” as recited in claim 1
(App. Br. 8), or “detecting a magnetic response and in response to the
detected magnetic response altering a characteristic of the integrated
circuit chip,” as recited in claim 1 (App. Br. 9);
(b) “Kommerling does not envisage detecting tampering of the
encapsulation, because the data stored in the memory 110 is encrypted
and thus there is no need to detect tampering” (Reply Br. 5 citing
Kommerling at col. 6, ll. 17-23); and
(c) “Kommerling does not disclose a tamper-response circuit
adapted to ‘alter a characteristic of the integrated circuit chip in
response to the tamper-protection circuit detecting the magnetic
response of the at least one magnetically-responsive element,’” as
recited in claim 17 (App. Br. 9).

2 For this rejection, Appellant only presents specific arguments on the merits
with regards to claims 1 and 17, and Appellant argues that claims 8-12, 15,
16, 19, and 20 stand or fall for the same reasons as claim 1. (see App. Br.
7-9; Reply Br. 5). Thus, we select claim 1 as representative of the group of
claims 1, 8-12, 15, 16, 19, and 20. 37 C.F.R. § 41.37(c)(1)(iv).
Accordingly, our analysis will only address claims 1 and 17 with regard to
the anticipation rejection.
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(2) Appellant contends (App. Br. 9-16; Reply Br. 6-9) that the
Examiner erred in rejecting claims 1, 3-7, and 14 under 35 U.S.C. § 103(a)
as being unpatentable over Sano and Kommerling for numerous reasons,
including:3
(a) the combination of Sano and Kommerling fails to teach
detecting that the package has been tampered with in response to a
change in the magnetic state, as recited in claim 1 (App. Br. 9-10;
Reply Br. 6);
(b) the combination of Sano and Kommerling is improper (App.
Br. 11-14; Reply Br. 7-8); and
(c) Kommerling fails to disclose a comparison circuit adapted
to compare the detected magnetic state with a reference state, as
recited in claim 3, and Kommerling teaches away from storing a
reference state (App. Br. 15-16; Reply Br. 8-9).
(3) Appellant contends (App. Br. 16; Reply Br. 9) that the Examiner
erred in rejecting claim 13 under 35 U.S.C. § 103(a) as being unpatentable
over Kommerling and Fujiki for the same reasons as provided for claim 1.
(4) Appellant contends (App. Br. 17; Reply Br. 9) that the Examiner
erred in rejecting claims 17 and 18 under 35 U.S.C. § 103(a) as being
unpatentable over Kommerling and Double for the same reasons as provided

3 For this rejection, Appellant only presents specific arguments on the merits
with regards to claims 1 and 3, and Appellant argues that claims 4-7 and 14
(all dependent upon claim 1) stand or fall for the same reasons as claim 1
(see App. Br. 9-16; Reply Br. 6-9). Thus, we select claim 1 as representative
of the group of claims 1, 4-7, and 14. 37 C.F.R. § 41.37(c)(1)(iv).
Accordingly, our analysis will only address claims 1 and 3 with regard to
this rejection.
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for claim 16.
Principal Issues on Appeal
Based on Appellant’s arguments in the Appeal Brief (App. Br. 7-18)
and the Reply Brief (Reply Br. 5-10), the following issues presented on
appeal are:
Did the Examiner err in rejecting (a) claims 1, 8-12, 15-17, 19, and 20
under 35 U.S.C. § 102(e) as being anticipated by Kommerling, and/or (b)
claims 1, 3-7, 13, 14, 17, and 18 under 35 U.S.C. § 103(a) as being
unpatentable, because Kommerling discloses:
(i) inhibiting access to an integrated circuit device with a detection
circuit that detects whether a package has been tampered with (claims 1 and
19);
(ii) a tamper-protection circuit (claims 15 and 16), based on the
detection of a magnetic state of a magnetic node (claims 1 and 19) or
element/particle (claims 15 and 16), as recited in each of the respective
independent claims 1, 15, 16, and 19; and/or
(iii) the “comparison circuit” recited in claim 3?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contention in the Appeal Brief (App. Br. 10) and the Reply Brief (Reply Br.
1-2) that the Examiner has erred. We disagree with Appellant’s conclusions
as to the anticipation and obviousness rejections.
We adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (Ans. 3-11), as well
as the Advisory Action mailed February 24, 2010 (page 2 therein), and (2)
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the reasons set forth by the Examiner in the Examiner’s Answer in response
to Appellant's Appeal Brief (Ans. 11-15). We highlight and amplify certain
teachings and suggestions of the references as follows.
This entire appeal turns on whether or not the recited detection circuit
(claims 1 and 19) or tamper-protection circuit (claims 15 and 16) with
threshold comparison are “necessarily present” in Kommerling. We agree
with the Examiner (Ans. 11-13) that it is, and that Kommerling discloses
detecting tampering and by sensing a magnetic state and in response
disabling the device by making it impossible to read the key (Ans. 11-13
citing Kommerling at col. 11, ll. 3-10; see also Kommerling at col. 6, ll. 17-
20).
In view of the foregoing, Appellant’s arguments (App. Br. 7-9; Reply
Br. 5) that the Examiner erred in rejecting claims 1, 8-12, 15-17, 19, and 20
as being anticipated by Kommerling because Kommerling fails to disclose a
circuit adapted to detect a magnetic state and, in response to a change in the
magnetic state, to detect that the package has been tampered with, are not
persuasive. Therefore, we sustain the Examiner’s (i) anticipation rejection
of claims 1, 8-12, 15-17, 19, and 20, and (ii) obviousness rejections of
claims 13, 17, and 18.
We also agree with the Examiner’s (Ans. 5-6 and 13-16) analysis that
Sano’s Abstract and Figures 1 and 2, when combined with Kommerling,
teaches or suggest what is recited in claim 1.
A reference inherently discloses an element of a claim “if that missing
characteristic is necessarily present, or inherent, in the single anticipating
reference.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1377 (Fed.
Cir. 2003) (citation omitted) (emphasis added). “Inherency however, may
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not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not
sufficient.” Therasense, Inc. v. Becton, Dickson and Co. 593 F.3d 1325,
1332 (Fed. Cir. 2010) (citing Cont'l Can Co. USA, Inc. v. Monsanto Co., 948
F.2d 1264, 1269 (Fed. Cir. 1991)). The Examiner has the burden of
providing reasonable proof that a claim limitation is an inherent
characteristic of the prior art. In re Best, 562 F.2d 1252, 1254-55 (C.C.P.A.
1977); see also Crown Operations Int’l., LTD v. Solutia Inc., 289 F.3d 1367,
1377 (Fed. Cir. 2002).
The Examiner meets this “burden of production by ‘adequately
explaining the shortcomings it perceives so that the applicant is properly
notified and able to respond.’” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir.
2011) (quoting Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007)). The
burden of proof then shifts to the applicant “to prove that the subject matter
shown to be in the prior art does not possess the characteristic relied
on.” Best, 562 F.2d at 1254-55; In re Schreiber, 128 F.3d 1473, 1478 (Fed.
Cir. 1997) (holding that once the Examiner established a prima facie case of
anticipation, the burden of proof was properly shifted to the inventor to rebut
the finding of inherency).
The Examiner has made a prima facie case of anticipation, and has
met the burden of providing reasonable proof that the “tamper-response
circuit” with threshold comparison claim limitation is an inherent
characteristic of Kommerling (see Ans. 7-8). Best, 562 F.2d at 1254-55. In
addition, the Examiner has reasonably articulated the basis for the
conclusion of obviousness, i.e., that the comparison circuit is taught or
suggested by the combination of Sano and Kommerling (Ans. 13-15).
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Appellant has not met their burden of showing reversible error in the
Examiner’s findings regarding the “comparison circuit” limitation of claim
3. See 37 C.F.R. §41.37(c)(1)(vii).
In view of the foregoing, Appellant’s arguments (App. Br. 9-16;
Reply Br. 6-9; see supra) that the Examiner erred in rejecting claims 1, 3-7,
and 14 as being unpatentable over Sano and Kommerling are unpersuasive.
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 1, 3-7, and 14 over the combination of Sano and Kommerling.

CONCLUSIONS
The Examiner did not err in rejecting (a) claims 1, 8-12, 15-17, 19,
and 20 under 35 U.S.C. § 102(e) as being anticipated by Kommerling,
and/or (b) claims 1, 3-7, 13, 14, 17, and 18 under 35 U.S.C. § 103(a) as
being unpatentable, because Kommerling discloses:
(i) inhibiting access to an integrated circuit device with a detection
circuit that detects whether a package has been tampered with (claims 1 and
19);
(ii) a tamper-protection circuit (claims 15 and 16), based on the
detection of a magnetic state of a magnetic node (claims 1 and 19) or
element/particle (claims 15 and 16), as recited in each of the respective
independent claims 1, 15, 16, and 19; and
(iii) the “comparison circuit” recited in claim 3.

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DECISION
The Examiner’s anticipation and obviousness rejections of claims 1
and 3-20 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)(1)(iv).

AFFIRMED

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