Ex Parte Seethaler et al

Patent Trial and Appeal Board

Mar 7, 2019

13051009 (P.T.A.B. Mar. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/051,009 03/18/2011
58127 7590 03/07/2019
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
FIRST NAMED INVENTOR
Kenneth Scott Seethaler
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.
RPS9201 l 0004USNP(7 l 0.154) 3 706
EXAMINER
KIM, STEVENS
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
03/07/2019 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 KENNETH SCOTT SEETHALER and
RANDALL SCOTT SPRINGFIELD 1
Appeal2017-009938
Application 13/051,009
Technology Center 3600
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3-5, and 7-20, which are all of the claims pending in the
application. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Lenovo (Singapore) PTE. LTD. as the real party in
interest. See App. Br. 3.
2 Claims 2, 6, and 21 have been cancelled.
Appeal2017-009938
Application 13/051,009
STATEMENT OF THE CASE
According to Appellants, the claims are directed to process of using
encryption to control and enable the exchange of power between an
electronic device and a corresponding coupled device, e.g., a battery.
Abstract. 3 Claims 1 and 15 are independent. Claim 1, reproduced below, is
representative the claimed subject matter:
1. Method comprising:
incorporating a first cryptographic element into an
electronic device;
providing second cryptographic elements to be
incorporated into devices couplable to the electronic device to
suppliers of the couplable devices, each of the second
cryptographic elements cooperating with the first cryptographic
element and enabling the exchange of encrypted messages
between a matched electronic device and a couplable device;
distinguishing among a plurality of models of the second
cryptographic elements using keys which differ one from
another;
supplying differing models of the second cryptographic
elements to differing suppliers of couplable devices;
wherein the supplying of differing models of the second
cryptographic elements to differing suppliers comprises
providing differing second cryptographic elements based on
manufacturer type; and
programming the electronic device to execute code in
response to each transition from one power state to another
power state and initiate an exchange of encrypted messages using
said first cryptographic element and one of the second
3 This Decision refers to: (1) Appellants' Specification filed March 18, 2011
(Spec.); (2) the Final Office Action (Final Act.) mailed October 13, 2016;
(3) the Appeal Brief (App. Br.) filed March 13, 2017; (4) the Examiner's
Answer (Ans.) mailed May 17, 2017; and (5) the Reply Brief (Reply Br.)
filed July 17, 2017.
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Application 13/051,009
cryptographic elements incorporated into a device coupled to the
electronic device during the transition;
wherein said programming comprises programming the
electronic device, in response to a failure of a matched exchange,
to block exchange of electrical power with the device coupled to
the electronic device.
REFERENCES AND REJECTIONS
Claims 1, 3-5, and 7-20 are rejected under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement.
Final Act. 3-8.
Claims 1, 3-5, and 7-20 are rejected under 35 U.S.C. § 112, second
paragraph as being indefinite. Id. at 8-12.
Claims 1, 3-5, and 7-20 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Schaecher (US 2011/0093714 Al; published
Apr. 21, 2011), Little (US 7,667,429 B2; issued Feb. 23, 2010), Buskey (US
2006/0149966 Al; published July 6, 2006), and Admitted Prior Art
("APA"). Id. at 13-19.
Our review in this appeal is limited to the above rejections and the
issues raised by Appellants. Arguments not made are waived. See MPEP
§ 1205.02; 37 C.F.R. § 4I.37(c)(l)(iv).
ANALYSIS
35 US.C. § 112,first paragraph: Written Description
The Examiner finds claim 1, reciting in pertinent part, "wherein said
programming comprises programming the electronic device, in response to a
failure of a matched exchange, to block exchange of electrical power with
the device coupled to the electronic device," and claim 15, reciting similar
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subject matter as claim 1, fail to comply with the written description
requirement of 35 U.S.C. § 112, first paragraph. Final Act. 3-8.
Specifically, the Examiner determines the Specification does not describe
"block[ing] [the] exchange of electrical power" for all types of "device[ s]
coupled to the electronic device," e.g., "network cards, memory cards, or
video driver cards." Ans. 5---6 ( emphasis omitted); Final Act. 7.
Appellants argue paragraph 19 of the Specification "extends the
ability to detect a match to couplable devices other than a battery," e.g., "a
network card," in order to enable or disable the functionality of the coupled
device. App. Br. 13; Reply Br. 15.
We are not persuaded the Examiner erred. The Specification
discloses network interface cards are coupled devices and further discloses
"enabl[ing] or disabl[ing] .. . functionality of such coupled devices" (Spec.
,r 19 (emphasis added)), but the claims recite "block[ing] exchange of
electrical power." Appellants fail to establish that disabling the functionality
of a coupled device discloses blocking the exchange of electrical power with
a coupled device. Indeed, the Specification describes that "interfacing to a
network through the [network interface] card [is] blocked" (id.), i.e., the
Specification describes blocking the ability to interface to a network, not
blocking the ability to exchange electrical power. It follows then, the
Specification does not disclose blocking the exchange of electrical power for
all coupled devices. Rather, the only blocked exchange of electrical power
for a coupled device described by the Specification is, specifically, for a
battery. Spec. ,r,r 3, 21, 24. As such, although the Specification provides
written description support for blocking the exchange of electrical power for
batteries, the Specification does not show the inventor had possession of
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Application 13/051,009
blocking the exchange of electrical power for all other types of coupled
devices. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en bane).
Accordingly, we are not persuaded the Examiner erred in finding
independent claims 1 and 15, and claims 3-5, 7-14, and 16-20, which
depend from claims 1 or 15, fail to comply with the written description
requirement under 35 U.S.C. § 112, first paragraph.
35 USC§ 112, second paragraph: Indefiniteness
The Examiner concludes claim 1, reciting in pertinent part, "an
electronic device," "a device coupled to the electronic device," and
"programming the electronic device to execute code in response to each
transition from one power state to another power state," and claim 15,
reciting similar subject matter as claim 1, are indefinite under 35 U.S.C.
§ 112, second paragraph. Final Act. 8-12. Specifically, the Examiner
determines it is unclear whether the "transition from one power state to
another refers to" a transition by "the electronic device or the device coupled
to the electronic device." Final Act. 9, 12; Ans. 8.
Appellants argue "it is sufficiently clear from the claimed limitation
that the electronic device transitions from one power state to another" and
"the [S]pecification makes this point clear." App. Br. 14 (citing Spec. ,r 21);
Reply Br. 14.
We are not persuaded the Examiner erred. The claims recite "the
electronic device" is programmed to execute code in response to "each
transition from one power state to another power state." At best, the claims
recite that "the electronic device" executes code - but, the claims do not
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define "each transition from one power state to another power state" as
transitions of "the electronic device." As such, as the Examiner points out
(Final Act. 9, 12), the claims are reasonably susceptible to at least two
interpretations, i.e., the electronic device executes code based on power state
transitions of the electronic device itself or the electronic device executes
code based on power state transitions of the device coupled to the electronic
device.
Accordingly, we are not persuaded the Examiner erred in concluding
independent claims 1 and 15, and claims 3-5, 7-14, and 16-20, which
depend from claims 1 or 15, are indefinite under 35 U.S.C. § 112, second
paragraph.
35 US.C. § 103(a): Obviousness
"each transition from one power state to another power state"
Appellants argue the Examiner erred in finding Little teaches
"programming the electronic device to execute code in response to each
transition from one power state to another power state and initiate an
exchange of encrypted messages," as recited in claim 1 and similarly recited
in claim 15. App. Br. 15-20; Reply Br. 19-24. Specifically, Appellants
argue "Little does not authenticate the device in response to a transition from
one power state to another." App. Br. 17-18; Reply Br. 22.
We are not persuaded. Little describes "an authentication process 550
that can be employed by the main processor 102" of an electronic device "to
authenticate [a] smart battery 130" coupled to the electronic device. Little
22:46-48. The Examiner finds (Ans. 11), and we agree, Little's disclosure
that the "[ a ]uthentication is done each time the mobile device 100 is turned
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on" (Little 22:48--49) teaches "in response to each transition from one power
state to another power state ... initiate an exchange of encrypted messages."
That is, the Examiner finds that Little's "power up" teaches a "transition
from one power state [(off)] to another power state [(on)]." Ans. 12.
Appellants do not explain why Little's authentication "each time the
mobile device 100 is turned on" (Little 22:48--49) does not teach a transition
from one power state to another, i.e., between on and off power states (see
Reply Br. 22; see also App. Br. 17-18). Further, Appellants' Specification
confirms that a power transition includes a transition between on and off
power states. Spec. ,r 17 ("The normal operating state and the off state
correspond to the typical on and off states of computer systems lacking such
multiple state of power management."). To the extent Appellants argue
Little does not teach transition between "sleep mode, awoken from sleep
mode, and the like" (Reply Br. 22; App. Br. 17-18), that argument is not
commensurate with the scope of the claims because the claims do not define
transitioning between such power states.
Accordingly, we are not persuaded the Examiner erred in finding
Little teaches "programming the electronic device to execute code in
response to each transition from one power state to another power state and
initiate an exchange of encrypted messages," as recited in claim 1 and
similarly recited in claim 15. Furthermore, Appellants' arguments that
Schaecher and Buskey do not teach the disputed limitation (App. Br. 16-17,
19; Reply Br. 21-23) are not persuasive of Examiner error because, as
discussed above, the Examiner finds that Little teaches the disputed
limitation.
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"block exchange of electrical power"
Appellants argue Little does not teach "in response to a failure of a
matched exchange ... block exchange of electrical power with the device
coupled to the electronic device," as recited in claim 1 and similarly recited
in claim 15. App. Br. 18-19; Reply Br. 22-23. In particular, Appellants
argue "Little specifically discloses the opposite of blocking exchange of
electrical power" and further "teaches away from the claimed limitations."
App. Br. 18-19; Reply Br. 22-23.
We are not persuaded. The Examiner finds (Ans. 11-12), and we
agree, Little's description that the mobile device "will not charge ... a non-
authentic battery pack, i.e. a battery pack that fails the authentication
process" (Little 23: 8-10) teaches "in response to a failure of a matched
exchange ... block exchange of electrical power with the device coupled to
the electronic device."
Appellants' arguments discuss embodiments in Little that "provide[]
that an [ un ]authenticated battery may be charged and used" (App. Br. 18
(citing Little 23:10-23, 23:45-58, 25:3-10); Reply Br. 22), but those
arguments do not address the embodiments in Little in which
unauthenticated batteries are not charged (Little 23:8-10, 23:23-27 ("in
other embodiments, if the battery pack is identified as ... a nonauthorized
third party battery pack, then the operating system associated with the main
processor 102 can be configured to not allow the normal boot process to
proceed.")). Accordingly, Appellants' arguments, directed to embodiments
of Little not relied upon by the Examiner, do not persuade us the Examiner
erred in finding Little teaches "in response to a failure of a matched
exchange ... block exchange of electrical power with the device coupled to
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the electronic device," as recited in claim 1 and similarly recited in claim 15.
Furthermore, Appellants' arguments that Buskey does not teach the disputed
limitation (App. Br. 19; Reply Br. 23-24) are not persuasive of Examiner
error because, as discussed above, the Examiner finds that Little teaches the
disputed limitation.
Further, because Little teaches embodiments that do block the
exchange of electrical power, we are not persuaded Little teaches away from
such a feature. App. Br. 18-19; Reply Br. 22-23. To teach away, a
reference must "criticize, discredit, or otherwise discourage the solution,"
but Little does not criticize, discredit, or discourage blocking the exchange
of electrical power and instead provides alternative embodiments. In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Accordingly, we are not persuaded the Examiner erred by relying on
Little in combination with Schaecher, Buskey, and AP A in rejecting claims
1 and 15 under 35 U.S.C. § 103(a) as obvious. Appellants do not argue
separate patentability for dependent claims 3-5, 7-14, and 16-20, which
depend directly or indirectly from claims 1 or 15. See App. Br. 15-20.
Accordingly, for the reasons set forth above, we also sustain the Examiner's
decision to reject claims 1, 3-5, and 7-20 under 35 U.S.C. § 103(a) as
obvious.
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1, 3-5, and 7-20.
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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.
§ 41.50(±).
AFFIRMED
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