Ex Parte Chen et al

Patent Trials and Appeals Board

Sep 9, 2013

10871120 - (D) (P.T.A.B. Sep. 9, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/871,120 06/18/2004 Iue-Shuenn Chen 3875.0120001 9713
26111 7590 09/09/2013
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
RASHID, HARUNUR
ART UNIT PAPER NUMBER
2493
MAIL DATE DELIVERY MODE
09/09/2013 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 IUE-SHUENN CHEN and KEVIN PATARIU
___________

Appeal 2011-003243
Application 10/871,120
Technology Center 2400
____________

Before KALYAN K. DESHPANDE, JASON V. MORGAN, and
DANIEL N. FISHMAN, Administrative Patent Judges.

FISHMAN, Administrative Patent Judge.

DECISION ON APPEAL

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This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-34. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter new grounds for rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).

STATEMENT OF THE CASE
THE INVENTION
Appellants’ invention relates to security key transmission with strong
pairing to a destination client. See generally Abstract.
Claim 1, reproduced below, is illustrative:
1. A method for security key transmission to at least one
destination module, the method comprising:
performing by one or more processors and/or circuits
integrated within a single chip:
pairing a rule with a security key and an address
associated with the at least one destination module,
wherein the rule corresponds to the security key; and
sending the rule along with the security key and
the associated address to at least one destination for use
by the at least one destination module.

THE REJECTIONS
Claims 1-5, 7-9, 11-16, 18-20, 22-27, 29-32, and 34 are rejected under
35 U.S.C. § 102(b) as anticipated by Peterka (U.S. Patent Publication No.
2002/0174366 A1; published Nov. 21, 2002). Ans. 3-6.
Claims 6, 10, 17, 21, 28, and 33 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Peterka and Kamiya (U.S. Patent Publication No.
2002/0094089 A1; published July 18, 2002). Ans. 6-7.
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THE § 102 REJECTION
CLAIMS 1, 12, AND 23
The Examiner rejected independent claim 1 finding that Peterka
teaches the recited steps of “pairing a rule with a security key and an
address” and “sending the rule along with the security key and associated
address.” Ans. 3-4 (citing Peterka ¶¶ 0108, 0109, 0115, 0116, 0121, 0147,
and 0148). Appellants argue, inter alia, that the Examiner has improperly
picked disparate teachings of Peterka that fail to teach the limitations
“arranged as in the claim.” App. Br. 6-8.1 Independent claims 12 and 23
recite similar limitations to claim 1, were rejected for the same reasons as
claim 1 (Ans. 5-6), and Appellants argue that claims 12 and 23 are allowable
for the same reasons as claim 1 (App. Br. 14).
ISSUE
Has the Examiner erred in finding that Peterka teaches all elements as
arranged in claims 1, 12, and 23?
ANALYSIS
We are persuaded by Appellants’ argument that the Examiner has
erred in finding that Peterka teaches all elements of claim 1 as arranged in
the claim.
We agree with Appellants that the Examiner’s various citations relate
to different records and transmissions within Peterka and thus does not teach
the recited steps of “pairing” and “sending” “as arranged in the claim” as

1 Because our discussion of the arranging of elements of Peterka cited by the
Examiner as compared to claim 1 is dispositive of the § 102 rejection of
claims 1, 12, and 23, we need not reach Appellants’ other arguments
regarding these claims. App. Br. 8-13.
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required to anticipate the claim. App. Br. 7-8. Thus, we are persuaded by
Appellants’ argument that the Examiner has erred in finding that Peterka
teaches all elements as arranged in claim 1.
On the record before us, we are constrained to reverse the Examiner’s
decision rejecting independent claims 1, 12, and 23 and dependent claims 2-
5, 7-9, 11, 13-16, 18-20, 22, 24-27, and 29-32 as anticipated by Peterka
under § 102.
THE § 103 REJECTION
Claims 6, 10, 17, 21, 28, and 33 (dependent variously from
independent claims 1, 12, and 23) stand rejected over Peterka (as applied to
their respective base claims) in combination with Kamiya. The Examiner
does not rely on Kamiya to alleviate the deficiencies discussed above with
respect to the rejection of independent claims 1, 12, and 23. Thus, on the
record before us, we are constrained to reverse the Examiner’s decision to
reject claims 6, 10, 17, 21, 28, and 33 under § 103.

NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b)
CLAIMS 12-22 REJECTED UNDER § 101
Claim 12 recites a “machine-readable storage.” Transitory signals are
unpatentable as non-statutory subject matter under § 101. See In re Nuijten,
500 F.3d 1346, 1356-57 (Fed. Cir. 2007). The Specification is silent with
regard to defining “machine-readable storage.” Consistent with U.S. Patent
& Trademark Office policy, “[t]he broadest reasonable interpretation of a
claim drawn to a computer readable medium (also called machine readable
medium and other such variations) typically covers forms of non-transitory
tangible media and transitory propagating signals per se in view of the
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ordinary and customary meaning of computer readable media, particularly
when the specification is silent.” See U.S. Patent & Trademark Office,
Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat.
Office 212 (Feb. 23, 2010) (hereinafter, Subject Matter Eligibility of
Computer Readable Media); see also Ex parte Mewherter, No. 2012-007692
(PTAB May 8, 2013) (precedential), available at http://www.uspto.gov/ip
/boards/bpai/decisions/prec/fd2012007692.pdf. In this case, the
Specification is silent as regards defining “machine-readable storage.”
Accordingly, the broadest reasonable construction of “machine-readable
storage” encompasses a transitory, propagating signal and therefore claims
12-22 are directed towards non-statutory subject matter.
Thus, the recited “machine-readable storage” encompasses transitory
propagating signals. We therefore conclude claim 12 is not directed toward
statutory subject matter under 35 U.S.C. § 101. Claims 13-22 depend from
claim 12 and are therefore rejected for the same reason.

CLAIMS 1, 12, AND 23 REJECTED UNDER § 103
Claims 1, 12, and 23 are rejected on a new ground of rejection under
35 U.S.C. § 103(a) as unpatentable over Applicants’ Admitted Prior Art
(“AAPA”, see, e.g., Spec. ¶ 0020) and Peterka as generally applied by the
Examiner (see Ans. 3-4, 7-9).
We start our analysis by construing key terms in the claims. During
examination, claims are to be given their broadest reasonable interpretation
consistent with the specification, and the language should be read in light of
the specification as it would be interpreted by one of ordinary skill in the art.
In re Amer. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
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(citations omitted). To act as its own lexicographer, a patentee must “clearly
set forth a definition of the disputed claim term” other than its plain and
ordinary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
1366 (Fed. Cir. 2002).
Claim 1 recites “pairing a rule with a security key and an address
associated with the at least one destination module, wherein the rule
corresponds to the security key; and sending the rule along with the security
key and the associated address to at least one destination for use by the at
least one destination module.” Appellants’ Specification does not clearly
define “pairing,” “rule,” “address,” or “corresponding to.” We therefore
construe these terms as one of ordinary skill would understand their broadest
reasonable interpretation.
Construction of “Pairing”
The Specification describes a non-limiting, exemplary embodiment of
a system for “pairing” with respect to Figure 5 showing a key (707), a
security command (709 – e.g., a “rule”), and a destination address (711)
being concatenated to form a key sequence (705). Spec. ¶ 63. Lacking a
clear definition, we construe “pairing” to encompass “to unite in close
association with another.” Random House Webster’s Collegiate Dictionary;
p. 950 (1999).
Construction of “Rule”
The Specification states “a rule may define permissible usage by a
destination module defined by the associated address and may comprise a
command word, which may be implemented as a data structure.” See, e.g.,
Spec. ¶ 22. This non-limiting example does not provide a clear definition.
Lacking a clear definition, we construe “rule” to encompass “a principle or
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regulation governing conduct, procedure, arrangement, etc.” Random House
Webster’s Collegiate Dictionary; p. 1150 (1999).
Construction of “Address”
The Specification provides no definition of “address.” We agree with
the Examiner (Ans. 8) that the claim does not recite “IP address” as urged by
Appellants (App. Br. 10; Reply Br. 3). The Specification makes no reference
to “IP address.” Lacking a clear definition, we construe “address” to
encompass “the place or the name of the place where a person, organization,
or the like is located or may be reached.” Random House Webster’s
Collegiate Dictionary; p. 15 (1999). Consistent with this definition, we find
that one of ordinary skill in the art would understand “address” as recited in
the claims to encompass the physical location of a receiving client/node as
disclosed in Peterka.
Construction of “Corresponding To”
The manner in which a rule is “corresponding to” the security key is
not clearly defined in the Specification. Rather, the non-limiting, exemplary
embodiment of a “rule” as noted above further states that the data structure
that may implement the rule “may be associated with a permissible
algorithm type, a security key size, and/or a security key source.” See, e.g.,
Spec. ¶ 22. Lacking any clear definition, we construe that a rule is
“corresponding to” the security key if the rule and key are associated (e.g.,
“paired”) in any manner.

“Pairing” is Disclosed by the Combination of AAPA and Peterka
In view of the above construction of key terms, we construe the
limitation “pairing a rule with a security key and an address associated with
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the at least one destination module, wherein the rule corresponds to the
security key,” as uniting in close associating a rule with a key, and an
address with a destination module. Peterka discloses associating a “rule”
with an “address” (“[t]he method can comprise establishing a rule defining
whether the client is entitled to receive the program content; … the rule can
be comprised of … a restriction based on the location of where the program
content is to be delivered.” Peterka ¶ 0006). Peterka further discloses
associating a “rule” with a “key” and that a “rule” “corresponds to” the
“key” (“[i]f all rules are satisfied, … the program key is delivered to the
client.” Peterka ¶ 0062). AAPA discloses closely associating (e.g.,
“uniting”) a key with an address. We therefore find that AAPA in
combination with Peterka discloses “pairing a rule with a security key and
an address associated with the at least one destination module, wherein the
rule corresponds to the security key.”

“Sending” is Disclosed by the Combination of AAPA and Peterka
In view of the above construction of key terms, we construe the
limitation “sending the rule along with the security key and the associated
address to at least one destination for use by the at least one destination
module,” as sending the paired rule/key and address/destination module to a
destination. We note, as discussed in more detail infra, that this sending step
is not limited to occur in a single transmission, but can include multiple
transmissions. Peterka discloses a rule field in a data record 2200 of Figure
22 of Peterka that “can be encrypted prior to conveyance to the client”
(Peterka ¶ 0147) and thus discloses sending a rule to the client (i.e., to a
destination module). Peterka further discloses a location field (i.e., an
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address) in a data record 2300 of Figure 23 “which can be provided for an
individual client” (Peterka ¶ 0148) and thus discloses sending an address to a
client. Peterka further discloses sending a key to the client. Peterka ¶ 0108
(“the key can be unicast to the client”).
The claim recitation of sending the rule “along with” the key and the
address does not require that the three elements be transmitted in a single
message or transmission. The Specification provides only a non-limiting,
exemplary embodiment (Fig. 5; ¶ 63) showing the key (707), rule (709), and
address (711) as concatenated into key sequence (705) transmitted over a
serial bus (713; ¶ 65) to the destination module (715). Even in this non-
limiting example, we note that such an exemplary serial communication
necessarily sends the key, rule, and address separately (sequentially—each
following the preceding field of the key sequence). Thus, we find that
although the rule, address, and key of Peterka may be sent to the client in
separate transmissions, they are sent “along with” one another in that all are
sent to the client in some sequence over time in one or more messages or
transmissions. We therefore find that the combination of AAPA and Peterka
teaches “sending the rule along with the security key and the associated
address to at least one destination for use by the at least one destination
module.”
As discussed supra, each of these features is known in the prior art
and a person with ordinary skill in the art would have found their
combination to be obvious. Furthermore, the combination of these elements
would have yielded nothing more than predictable results.
For the above reasons we reject claim 1 under 35 U.S.C. § 103(a) as
unpatentable over AAPA and Peterka. Independent claims 12 and 23 recite
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limitations similar to claim 1 and are therefore rejected under 35 U.S.C.
§ 103(a) for the same reasons as claim 1. We leave it to the Examiner to
determine whether this new ground of rejection should be applied to the
respective dependent claims.

DECISION
For the reasons discussed above, the rejections of claims 1 through 34
are reversed.
We enter a new ground of rejection for independent claims 12-22
under 35 U.S.C. § 101.
We enter a new ground of rejection for independent claims 1, 12, and
23 under 35 U.S.C. § 103(a).
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record.
37 C.F.R. § 41.50(b).

REVERSED
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37 C.F.R. § 41.50(b)

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