Ex Parte Chow

Patent Trial and Appeal Board

Jun 25, 2013

10813003 (P.T.A.B. Jun. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JERRY CHOW
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Appeal 2010-008839
Application 10/813,003
Technology Center 2400
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Before KALYAN K. DESHPANDE, JOHNNY A. KUMAR, and
TREVOR M. JEFFERSON, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-008839
Application 10/813,003

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STATEMENT OF CASE1
The Appellant seeks review under 35 U.S.C. § 134(a) of a final
rejection of claims 1-17, 19, 20, 22-28, 30, 32, 34-36, 39, 41 and 43-47, the
only claims pending in the application on appeal. We have jurisdiction over
the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

The Appellant’s invention relates to controlling memory operations
that alter contents in a writable memory. Spec. 1:12-13.
An understanding of the invention can be derived from a reading of
exemplary claim 22, which is reproduced:
22. A method of protecting memory in an electronic device,
comprising:

receiving a memory command to access a protected
memory location;

determining whether the received memory command is a
memory read command to read the protected memory location,
or a memory write command to alter the protected memory
location;

in response to determining that the received memory
command is the memory write command:

identifying a memory protection key
corresponding to the protected memory location;

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Nov. 2, 2009) and Reply Brief (“Reply Br.,” filed Apr. 5, 2010),
and the Examiner’s Answer (“Ans.,” mailed Feb. 5, 2010).
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determining whether the memory write command
includes the memory protection key corresponding to the
protected memory location, wherein at least the memory
protection key in the memory write command has been
written to volatile memory;

permitting completion of the memory write
command if the memory write command includes the
memory protection key corresponding to the protected
memory location; and

rendering the memory protection key in the
memory write command that has been written to the
volatile memory inaccessible by overwriting at least a
portion of the memory protection key in the volatile
memory upon completion of the memory write command
to make the memory protection key in the volatile
memory inaccessible after completion of the memory
write command; and

in response to determining that the received
memory command is the memory read command,
processing the memory read command to read the
protected memory location without checking for any
memory protection key.

REJECTIONS
The Examiner rejected claims 1, 9, 10, 22-25, 30, 32, 34, 35, 41 and
46 under 35 U.S.C. § 103(a) as being unpatentable over Bryant (US
5,628,023, May 6, 1997) in view of Matt Bishop, Common Security-Related
Programming Problems, Computer Security, Chapter 29.5 (Dec. 12,
2002)(hereinafter “Bishop”). Ans. 3.
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The Examiner rejected claims 1, 2, 4, 7-9, 11-15 and 46 under 35
U.S.C. § 103(a) as being unpatentable over Beukema (US 2002/0124148
A1, Sep. 5, 2002) in view of Bishop. Ans. 9.
The Examiner rejected claims 16, 17, 19, 20, 22, 25-28, 36, 39, 43-45,
and 47 under 35 U.S.C. § 103(a) as being unpatentable over Hind (US
6,976,163 B1, Dec. 13, 2005), in view of Bryant and Bishop. Ans. 12.
The Examiner rejected claims 1 and 3-6 under 35 U.S.C. § 103(a) as
being unpatentable over England (US 7,194,092 B1, Mar. 20, 2007) in view
of Bishop. Ans. 22.
ISSUE
Based on Appellant’s arguments, the principal and dispositive issue of
whether the Examiner erred in rejecting exemplary claim 22 turns on
whether the teachings of the combination of the references would have
taught or suggested the claimed subject matter (App. Br. 7-16; Reply Br. 3-
7). In particular, Appellant contends that the Examiner erred in rejecting the
claims as obvious over Bryant and Bishop because Bryant teaches away
from the claimed invention. Id. at 7-10.

ANALYSIS
Claims 1, 9, 10, 22-25, 30, 32, 34, 35, 41 and 46 under
35 U.S.C. §103(a) over Bryant and Bishop
Claim 222

2 Appellant contends that claims 1, 9, 10, 41, and 46 should be allowable
over Bryant and Bishop for the same reasons as claim 22. App. Br. 11-12.
Separate patentability is not argued for the remaining claims.

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The Appellant first contends that the combination of Bryant and
Bishop fails to teach or suggest
rendering the memory protection key in the memory write
command that has been written to the volatile memory inaccessible
by overwriting at least a portion of the memory protection key in
the volatile memory upon completion of the memory write
command to make the memory protection key in the volatile
memory inaccessible after completion of the memory write
command
as recited in claim 22 (hereinafter the “memory inaccessible” limitation).
App. Br. 8; Reply Br. 3. (Emphasis ours). The Appellant specifically
contends that Bryant fails to teach or suggest the memory inaccessible
limitation. Id.
We disagree with the Appellant. First, we note that, in rejecting claim
22, the Examiner has relied on Bishop as describing this limitation. Ans. 8,
9. Since the Appellant’s argument fails to rebut the findings of the
Examiner, we do not find the Appellant’s argument to be persuasive.
The Appellant further contends that Bryant teaches away from the
claimed invention and that there is no motivation to modify Bryant to
include the memory inaccessible limitation. App. Br. 9-10 and Reply Br. 3-
4. The Appellant specifically argues that Bryant describes storing the token
in the register for future use, thereby the key would remain accessible for
future use in the register, and therefore Bryant teaches away from memory
inaccessible limitation. Id. (Emphasis ours). The Examiner responds that in
Bryant the data value representing the retrieved token is temporarily stored
in volatile memory that is only used to validate the memory write command;
once the verification step is performed, the data value stored in this volatile
memory is not used again and should be securely erased to prevent
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invalid/improper use of the temporarily stored information. Ans. 26. In
other words, the Examiner finds that in Bryant the “temporary memory is
separate from the… register”. Ans. 25. (Emphasis ours). Thus, the token
value is stored both in the temporary memory and the register. The Examiner
finds that the temporary memory in Bryant encompasses the memory
inaccessible limitation, and is thus not teaching away. Id.
We agree with the Examiner. “‘A reference may be said to teach
away when 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.’”
Ricoh Co., Ltd. v. Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir.
2008) (citations omitted). A reference does not teach away if it merely
expresses a general preference for an alternative invention from amongst
options available to the ordinarily skilled artisan, and the reference does not
discredit or discourage investigation into the invention claimed. In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004).
Here, we agree with the Examiner that Bryant discloses a temporary
memory that is rendered inaccessible to prevent invalid/improper use of the
temporarily stored information. While Bryant does describe storing the
token in a register for future use, this description is nothing more than a
general preference of Bryan and Bryant does not discredit storing the token
in a temporary memory. Additionally, Bishop explicitly provides the
motivation for a person with ordinary skill in the art to modify Bryant to
securely delete sensitive information, where Bishop describes that all of the
needed information is stored locally and thus when “the process finishes
using a sensitive object (one that contains confidential information or one
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that should not be altered), the object should be erased, then deallocated or
deleted.” Bishop, pages 901, 902. As such, we do not find the Appellant’s
arguments persuasive.
Claims 16, 17, 19, 20, 22, 25-28, 36, 39, 43-45 and 47 under
35 U.S.C. § 103(a) over Hind, Bryant, and Bishop
Appellant’s argument for the rejection of claims 16, 17, 19, 20, 22, 25-
28, 36, 39, 43-45 and 47 merely references the arguments for claim 22 in
response to the above rejection of claim 22. App. Br. 13-16; Reply Br. 7.
Because the separate rejection of claims 16, 17, 19, 20, 22, 25-28, 36, 39,
43-45 and 47 over Hind, Bryant, and Bishop is not substantively argued, we
reach the same result for these claims as we do for claim 22.

Claims 1, 2, 4, 7-9, 11-15 and 46 under 35 U.S.C. § 103(a) as being
unpatentable over Beukema and Bishop; Claims 1 and 3-6 under 35 U.S.C.
§ 103(a) as being unpatentable over England and Bishop
Regarding the rejections over Beukema/Bishop and England/Bishop
while Appellant raised additional arguments for patentability of the cited
claims (App. Br. 12, 16; Reply Br. 6,7); we find that the Examiner has
rebutted in the Answer each and every one of those arguments supported by
sufficient evidence. Ans. 27-29. Therefore, we adopt the Examiner’s
findings and underlying reasoning, which are incorporated herein by
reference. Accordingly, we sustain the Examiner’s obviousness rejection of
claims 1-9, 11-15, and 46.

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CONCLUSION
The Examiner did not err in rejecting claims 1-17, 19, 20, 22-28, 30, 32,
34-36, 39, 41 and 43-47.

DECISION
To summarize, our decision is as follows.
 The rejection of claims 1-17, 19, 20, 22-28, 30, 32, 34-36, 39, 41 and
43-47 is sustained.

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) (2011).

AFFIRMED

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