Ex Parte Paul et al

Patent Trial and Appeal Board

Mar 7, 2013

11172547 (P.T.A.B. Mar. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte STEPHEN PAUL and STEVEN GOODRICH ____________ Appeal 2011-006827 Application 11/172,547 Technology Center 3600 ____________ Before: MICHAEL W. KIM, JAMES A. TARTAL, and PHILIP J. HOFFMANN, Administrative Patent Judges. KIM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-006827 Application 11/172,547 2 STATEMENT OF THE CASE This is an appeal from the final rejection of claims 1-201. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6. The invention relates to a system and method for ensuring a secure computing environment for computer systems used to communicate over the Internet (Spec., para. [001]). Claim 1, reproduced below, is further illustrative of the claimed subject matter. 1. A method for restricting installation of software in a personal Internet communication device, comprising: receiving a request to install software from an external storage device; retrieving a security key from a non-volatile memory in the personal Internet communication device; obtaining an authorization signature key from the external storage device; comparing the authorization signature key with a security key at the personal Internet communication device; and installing the software only if the authorization signature key matches the security key. Claim 8 is rejected under 35 U.S.C. § 112 , first paragraph, as failing to comply with the enablement requirement. Claims 1-20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Saito (US 7,506,378 B2; iss. Mar. 17, 2009) and Largman (US 7,536,598 B2; iss. May 19, 2009). We AFFIRM-IN-PART. 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed November 22, 2010) and Reply Brief (“Reply Br.,” filed March 7, 2011), and the Examiner’s Answer (“Ans.,” mailed January 7, 2011). Appeal 2011-006827 Application 11/172,547 3 ISSUES Did the Examiner err in asserting that claim 8 does not comply with the enablement requirement of 35 U.S.C. § 112, first paragraph? Did the Examiner err in asserting that a combination of Saito and Largman render obvious claims 1-9 and 18-20? Did the Examiner err in asserting that a combination of Saito and Largman render obvious claims 10-17? ANALYSIS Enablement Requirement We are persuaded the Examiner erred in asserting that claim 8 does not comply with the enablement requirement of 35 U.S.C. § 112, first paragraph (App. Br. 6-8; Reply Br. 2-3). The test for compliance with the enablement requirement is whether the disclosure, as filed, is sufficiently complete to enable one of ordinary skill in the art to make and use the claimed invention without undue experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Further, when rejecting a claim for lack of enablement, the PTO bears the initial burden of setting forth a reasonable explanation as to why the scope of the claim is not adequately enabled by the description provided in the specification. In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993). Factors that may be considered in determining whether a disclosure would require undue experimentation include (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill Appeal 2011-006827 Application 11/172,547 4 of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. Wands, 858 F.2d at 737. In concluding there is no enabling disclosure, the Examiner has not addressed the Wands factors or otherwise explained why one of ordinary skill in the art would have to engage in undue experimentation to practice the claimed invention. Instead, the Examiner contends that the claims contain subject matter not described in the Specification in such a way as to enable one skilled in the art to make and/or use the invention (Ans. 6-7, 14- 16). Specifically, the Examiner blanketly asserts that the Specification does not enable one of ordinary skill to perform “receiving a request to install” via “a limited set of BIOS firmware instructions” (Id.). Because there is no explanation of why one of ordinary skill in the art would have to engage in undue experimentation to practice these aspects, the Examiner has failed to establish a prima facie case of non-enablement of claim 8, and we are constrained to reverse the rejection. Obviousness Rejection of Claims 1-9 and 18-20 We are not persuaded the Examiner erred in asserting that a combination of Saito and Largman renders obvious claims 1-9 and 18-20 (App. Br. 8-15; Reply Br. 3-6). After carefully considering Appellants’ arguments, we agree with and adopt the Examiner’s findings and rationales, as set forth on pages 16-20 and 21-23 of the Examiner’s Answer. The Specification does not provide a lexicographic definition of “authorization signature key” or “security key,” and the fact that column 8, lines 53-60 of Ishiguro discloses using the encryption key for decryption, does not preclude the string of alphanumeric characters from being compared, as recited in Appeal 2011-006827 Application 11/172,547 5 independent claims 1, 9, and 18. Furthermore, Saito, not Largman, is cited for disclosing “storing and comparing security keys and authorization signature keys” (Ans. 7-8, 16-20). Largman is only cited for disclosing a computer that is a personal internet communication device (Ans. 8, 22-23). Obviousness Rejection of Claims 10-17 We are persuaded the Examiner erred in asserting that a combination of Saito and Largman renders obvious claims 10-17 (App. Br. 13; Reply Br. 5). For claims 10-13, the Examiner asserts that “as the limitations [in claims 10-13 are] directed to the composition of the non-volatile storage unit and boot loader device do not affect the steps performed in claim 9, each is not entitled to patentable weight” (Ans. 20). However, the Examiner does not provide Appellants with any notice regarding why the specific structural limitations present in these claims are not entitled to patentable weight, instead blanketly asserting “[i]t has been held that to be entitled to such weight, the recited structural limitations must affect the method in a manipulative sense and not to amount to the mere claiming of a use of a particular structure (Ex parte Pfeiffer, 135 USPQ 31 ([Bd. App.] 1961))” (Ans. 20). Ex parte Pfeiffer appears to be one of several cases from that era debating the issue of whether a process is patentable because it employs some structure that may be novel and unobvious. In re Durden, 763 F.2d 1406, 1408-09 (Fed. Cir. 1985) (citing Ex parte Wagner, 88 USPQ 217 (Bd. App. 1950) and Ex parte MacAdams, 206 USPQ 445 (Bd. App. 1978)). In addressing the issue, our reviewing court, acknowledging that different cases may warrant different outcomes (Cf. Durden, supra, with In re Kuehl, 475 F.2d 658 (CCPA 1973)), has rejected the notion that the PTO may rely upon Appeal 2011-006827 Application 11/172,547 6 some generalized rule for such a situation. Durden, 763 F.2d at 1411. More recent cases reaffirm this principal: Suffice it to say that we do not regard Durden as authority to reject as obvious every method claim reading on an old type of process, such as mixing, reacting, reducing, etc. The materials used in a claimed process as well as the result obtained therefrom, must be considered along with the specific nature of the process, and the fact that new or old, obvious or nonobvious, materials are used or result from the process are only factors to be considered, rather than conclusive indicators of the obviousness or nonobviousness of a claimed process. When any applicant properly presents and argues suitable method claims, they should be examined in light of all these relevant factors, free from any presumed controlling effect of Durden. Durden did not hold that all methods involving old process steps are obvious; the court in that case concluded that the particularly claimed process was obvious; it refused to adopt an unvarying rule that the fact that nonobvious starting materials and nonobvious products are involved ipso facto makes the process nonobvious. Such an invariant rule always leading to the opposite conclusion is also not the law. In re Dillon, 919 F.2d 688, 695 (Fed. Cir. 1990) (en banc). See also In re Ochiai, 71 F.3d 1565, 1571-72 (Fed. Cir. 1995). The Examiner’s analysis of claims 10-13 does not include any discussion of the specific claim limitations involved, nor the specific facts relied upon by the Examiner to reach a conclusion that the claimed subject matter as a whole would have been obvious to one having ordinary skill in the art. Rather, the Examiner appears to have engaged in exactly the type of analysis that was disapproved by our reviewing court as discussed above. We cannot sustain the Examiner’s rejection of claims 10-13 on this basis. For claims 13-17, the Examiner asserts that: it has been held that unless the language breathes life and Appeal 2011-006827 Application 11/172,547 7 meaning into the claim it is not given patentable weight (Pitney Bowes, Inc. v. Hewlett-Packard Co.[,] 51 USPQ2d 1161 (Fed. Cir. 1999), Catalina Marketing International Inc. v. Coolsavings.com Inc., 62 USPQ2d 1781 (Fed. Cir. 2002)). Claim 13, for example, is directed to the recordable medium that stores instructions. However, the body of the claim is directed to the instructions, or more specifically the affect that the instructions have on a particular device. Hence, as what stores the instructions is non-essential structure or steps, it is not given patentable weight. Claims 14-17 recite similar language. (Ans. 20-21). However, for claim 13, the preamble of independent claim 9 recites “at least one recordable medium having stored thereon executable instructions and data” (emphasis added), thus tying the steps to the recordable medium. Moreover, claims 14-17 do not recite similar language. For example, claims 16 and 17 recite additional steps to be executed by the at least one processing device. Accordingly, for at least these reasons, we cannot sustain the Examiner’s rejection of claims 13-17 on this basis. DECISION The decision of the Examiner to reject claims 1-9 and 18-20 is AFFIRMED. The decision of the Examiner to reject claims 10-17 is REVERSED. 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). AFFIRMED-IN-PART hh