Ex Parte Dalzell et al

Patent Trial and Appeal Board

Nov 19, 2014

11339023 (P.T.A.B. Nov. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WILLIAM J. DALZELL, PATRICIA H. DARE, and
SIMEON MASSON
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Appeal 2012-004768
Application 11/339,023
Technology Center 2400
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Before CARL W. WHITEHEAD JR., JEFFREY S. SMITH, and
DANIEL FISHMAN, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants are appealing the final rejection of claims 1, 3–6, 8–12,
14–18 and 20–24 under 35 U.S.C. § 134(a). Appeal Brief 3. Claims 2, 13,
and 19 are cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Introduction
The invention is directed to “An anti-tamper system including an
interface key having a first surface and a second surface, the interface key
adapted to mate with a test connector at the first surface and adapted to mate
with an interface port in the chassis at the second surface.” Abstract.

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Representative Claim (disputed limitations emphasized)
1. A system comprising:
an interface key comprising at least one operable receptacle on
a first surface and at least one dummy pin on a second surface,
wherein the at least one dummy pin is not electrically connected to
any operable receptacles of the first surface.

Rejections on Appeal
Claim 24 stand rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter, which Appellants regards as the invention. Answer 4–5.
Claims 1, 8, 9, and 21–24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over St. Pierre (US Patent Number 6,539,510 B1; issued
March 25, 2003) and Baumbach (US Patent Number 3,794,947; issued
February 26, 1974). Answer 5–8.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over St. Pierre and Quinby (US Patent Number 7,390,201 B1;
issued June 24, 2008). Answer 8–9.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Swoboda (US Patent Number 6,947,884 B2; issued
September 20, 2005) and Quinby. Answer 9–10.
Claims 3–7, 10–12, 14, 15, 17, 18 and 20 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over St. Pierre, Baumbach, and
Quinby. Answer 10–13.

ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed August 4, 2011), the Answer (mailed
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November 21, 2011), and the Reply Brief (filed January 20, 2012) for the
respective details. We have considered in this Decision only those
arguments Appellants actually raised in the Briefs. Any other arguments
that Appellants could have made but chose not to make in the Briefs are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
We adopt the Examiner’s findings in the Answer and the Final Office
Action as our own, except as to those findings that we emphasize, expressly
overturn, or set aside in the analysis as follows.

35 U.S.C. § 112, second paragraph rejection
Claim 24 recites “the interface port is a non-standard port.”
Appellants contend the 35 U.S.C. § 112, second paragraph rejection of claim
24 is improper because the Specification defines a non-standard port as a
port that includes dummy receptacles. Appeal Brief 6–7 (citing
Specification ¶ 36, which discloses a “port that includes dummy receptacles
is a non-standard port.”). Appellants’ alleged definition does not narrow the
scope of the term non-standard port but rather provides one example of a
non-standard port. The Examiner finds that although Appellants provide
various examples throughout the Specification, the examples fail to redefine
“non-standard” from its ordinary meaning, because the definition of
standardized ports (and hence non-standard ports) is established by industry
governing organizations. Answer 13–15. We do not find Appellants’
arguments persuasive and we agree with the Examiner’s findings.
Therefore, we sustain the Examiner’s indefiniteness rejection of claim 24 for
the reasons articulated above.

35 U.S.C. § 103 rejections
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Appellants argue it would not have been obvious to modify St.
Pierre’s JTAG (Joint Test Action Group) interface cable 10 by adding
Baumbach’s polarizing pin 28 because “Such a modification would appear
to contradict one of the fundamental objectives of the St. Pierre device,
namely to facilitate quick and easy construction of custom JTAG chains,
composed of cables with standard JTAG connectors, that can be used for a
broad range of diagnostic purposes.” Appeal Brief 9, 10. Appellants further
argue:
Even if St. Pierre discloses that one end of the JTAG interface
cable 10 includes pins, an assertion with which Appellant does
not necessarily agree, modification of that end of the JTAG
interface cable 10 to include an additional pin, i.e., the
polarizing pin 28 of Baumbach, would presumably create a
non-standard configuration of pins on the end of the JTAG
interface cable 10. Consequently, it would not have been
obvious to one having ordinary skill in the art at the time of the
invention to modify St. Pierre in view of Baumbach in the
manner proposed by the Examiner.

Id. at 10.
In regard to independent claim 1, we do not find Appellants’
arguments to be persuasive because the creation of a non-standard
cable interface does not negatively affect the functionality of St.
Pierre’s device. We agree with the Examiner’s findings that
modifying St. Pierre’s cable interface with Baumbach’s dummy pin to
ensure proper orientation would be obvious to one of ordinary skill in
the technology.1 See Answer 7. Therefore, we sustain the Examiner’s
obviousness rejection of independent claim 1.

1 The test for obviousness is what the combined teachings of the references
Footnote continued on the next page.
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In regard to independent claim 8, Appellants argue “the
Examiner failed to cite any portion of St. Pierre that discloses a CPU
that performs testing.” Appeal Brief 15. We do not find Appellants’
arguments to be persuasive because they are not commensurate with
the scope of claim 8. Claim 8 does not require a CPU that performs
testing. Furthermore, St. Pierre employs a JTAG interface (see Figure
1, column 7–12) and, therefore, provides the test connector/test
equipment that is recited in claim 8. We sustain the Examiner’s
obviousness rejection of independent claim 8. We also sustain the
Examiner’s obviousness rejection of dependent claim 9, as well as,
independent claim 21 and dependent claims 22–24 for the same
reasons as claim 1 in regard to the St. Pierre/Baumbach combination
in addition to the reasons in regard to claim 8’s test equipment.
In regard to independent claim 16, Appellants argue, “No
reasonable support has been provided for the determination that the
epoxy disclosed by Quinby necessarily functions to break one or more
connectors that connect a test port with electronic circuit boards that
are housed in a chassis.” Appeal Brief 20.
Claim 16 does not positively recite a method step wherein the
fill material actually breaks the connectors. Claim 16 only requires
the fill material to function to break one or more conductor. This is
substantiated by Appellants’ Specification - “the fill material 57 is

would have suggested to one of ordinary skill in the art. See In re Kahn, 441
F.3d 977, 987–88 (Fed. Cir. 2006), In re Young, 927 F.2d 588, 591 (Fed.
Cir. 1991) and In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner
can satisfy this test by showing some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.
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formed from a single material that, upon mechanical removal,
damages the connection formed by conductors” and “the fill material
formed from a single material that, upon mechanical removal,
damages the interface port 50 thereby preventing access to at least one
of the electronic circuit boards 65.” Specification ¶ 53–54. It is not
the fill material itself that breaks the conductors; it is the method of
removing the fill material that actually breaks the conductors.
Therefore, we do not find Appellants’ arguments to be
persuasive because Appellants’ arguments are not commensurate with
the scope of the claim and Appellants have not distinguished their fill
material from the Quinby’s fill material. We sustain the Examiner’s
obviousness rejection of independent claim 16 for the reasons
articulated above.
Appellants argue the Examiner erred in rejecting claim 16 over
Swoboda and Quinby for essentially the same reasons as the rejction
over St. Pierre and Quinby. Appeal Brief 21–22. For essentially the
same reasons articulated above with respect to the rejection of claim
16 over St. Pierre and Quinby, we are not persuaded of error and we
sustain the rejection of claim 16 over Swoboda and Quinby.
We also sustain the Examiner’s obviousness rejection of claims
3–6, 10–12, 14, 15, 17, 18 and 20 for the reasons articulated above in
regard to independent claims 1, 8 and 16.

DECISION
The Examiner’s 35 U.S.C. § 112, second paragraph rejection of claim
24 is reversed.
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The Examiner’s 35 U.S.C. § 103(a) rejections of claims 1, 3–6, 8–12,
14–18 and 20–24 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). See
37 C.F.R. § 41.50(f).

AFFIRMED

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