Ex Parte Etchegoyen

Patent Trial and Appeal Board

Oct 28, 2016

14201612 (P.T.A.B. Oct. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/201,612
96051 7590
Uniloc USA Inc.
Legacy Town Center
7160 Dallas Parkway
Suite 380
Plano, TX 75024
03/07/2014
11/01/2016
FIRST NAMED INVENTOR
Craig S. Etchegoyen
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.
UN-NP-SC-098 3945
EXAMINER
GEE, JASON KAI YIN
ART UNIT PAPER NUMBER
2495
NOTIFICATION DATE DELIVERY MODE
11/01/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
sean. burdick@unilocusa.com
tkiatkulpiboone@unilocusa.com
kris.pangan@unilocusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG S. ETCHEGOYEN
Appeal 2016-000343
Application 14/201,612 1
Technology Center 2400
Before CAROLYN D. THOMAS, HUNG H. BUI, and
AARON W. MOORE, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Final Office Action rejecting claims 11-15, which are all of the
claims pending on appeal. We have jurisdiction under 35 U.S.C. § 6(b).
WeAFFIRM. 2
1 According to Appellant, the real parties in interest are Uniloc Luxembourg
S.A. and Uniloc USA, Inc.
2 Our Decision refers to Appellant's Appeal Brief filed May 18, 2015 ("App.
Br."); Reply Brief filed October 5, 2015 ("Reply Br."); Examiner's Answer
mailed August 5, 2015 ("Ans."); Final Office Action mailed November 18,
2014 ("Final Act."); and original Specification filed March 7, 2014
("Spec.").
Appeal 2016-000343
Application 14/201,612
STATEl\llhNT OF Tfil CASE
Appellant's invention relates to "methods of and systems for detecting
tampering of a device such as a network appliance." Spec. 2.
Claim 11 is independent and is illustrative of Appellant's invention, as
reproduced with a disputed limitation emphasized below:
11. A device comprising:
at least one processor;
a computer readable medium that is operatively coupled to
the processor; and
authentication logic (i) that executes at least in part in the
processorfromthecomputerreadable medium and(ii) that, when
executed, causes the processor to detect modification of the
device by at least
for each of one or more components of the device:
measuring one or more characteristics of the
component that are capable of modifying the behavior of the
device; and
comparing the characteristics of the component to
corresponding predetermined reference characteristics of the
component thatare measured at manufacture of the device; and
determining that the device may have been
modified after manufacture upon a condition in which at least
one characteristic does not match the corresponding reference
characteristic for at least one component.
App. Br. 15 (Claims App.).
Examiner's Rejections and References
(1) Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Richardson et al. (US 2007/0143844 Al; published June
21, 2007; "Richardson"). Final Act. 5---6.
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Application 14/201,612
(2) Ciaim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Richardson and Wiseman et al. (US 2004/0003288 Al;
published Jan. 1, 2004; "Wiseman"). Final Act. 6-7.
(3) Claims 13-14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Richardson, Wiseman, and Hollander (US 2007 /0266447
Al; published Nov. 15, 2007; "Hollander"). Final Act. 7-8.
(4) Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Richardson, Wiseman, and Buer (US 2006/0090084 Al;
published Apr. 27, 2006; "Buer"). Final Act. 8-9.
ISSUE
Based on Appellant's arguments, the dis positive issue presented on
appeal is whether the Examiner erred in fmding the cited prior art teaches or
suggests the disputed limitation "comparing the characteristics of the
component to corresponding predetermined reference characteristics of the
component that are measured at manufacture of the device," as recited in
independent claim 11. App. Br. 5-11; Reply Br. 5-10.
ANALYSIS
With respect to independent claim 11, the Examiner fmds Richardson
discloses a device comprising at least one processor and authentication logic
that, when executed, causes the processorto detect modification of the
device by way of at least the disputed limitation: "comparing the
characteristics of the component to corresponding predetermined reference
characteristics of the component that are measured at manufacture of the
device." Final Act. 5 (citing Richardson ,-r,-r 26, 33, 42, 43).
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Appeal 2016-000343
Application 14/201,612
The Examiner acknowiedges Richardson does not explicitiy teach
"the characteristics of the component [that] are capable of modifying the
behavior of the device," but fmds such features were inherent and well-
known by those skilled in the art in order to support the conclusion of
obviousness. Id. at 6 (citing Richardson ,-r 26).
Appellant disputes the Examiner's factual fmdings regarding
Richardson. In particular, Appellant contends Richardson does not teach
"comparing the characteristics of the component to corresponding
predetermined reference characteristics of the componentthat are measured
at manufacture of the device," as recited in claim 11. App. Br. 5-11; Reply
Br. 5-10. According to Appellant, the term "at manufacture" is expressly
defmed in Appellant's Specification as:
prior to sealing of the assembled device in packaging by the
manufacturer for delivery.
App. Br. 5 (citing Spec. ,-r 5). Appellant argues the Examiner has not
accounted for such a defmition in Richardson. Id. at ~7. Appellant further
argues Richardson only describes:
the authentication of a remotely located device during device
communications. Accordingly, the device performing the
authentication would have to have received the predetermined
reference characteristics from the remotely located device during
some sort of registration process. The remotely located device
would have to cooperate in the registration process while in the
field, i.e., after manufacture as defmed in the instant application.
Id. at 11. According to Appellant, there is "no teaching or suggestion in
Richardson as to when reference characteristics of the device to be
authenticated are measured or recorded." Id. Appellant further asserts that
"[t]he record is devoid of any assertion or any teaching or suggestion that
characteristics of components of a device that are measured at manufacture
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Appeal 2016-000343
Application 14/201,612
of the device can serve as reference characteristics to which subsequentiy
measured characteristics are compared to detect tampering of the device."
Reply Br. 8 (emphasis added).
We agree with Appellant regarding the construction of the term "at
manufacture" recited in claim 11. Where an explicit defmition is provided
by the applicant for a term, that defmition will control interpretation of the
term as it is used in the claim. Toro Co. v. White Consolidated Industries
Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999) (meaning of words used in a
claim is "not construed in a lexicographic vacuum, but in the context of the
specification and drawings"). App. Br. 6. However, we are not persuaded
the Examiner erred. As correctly recognized by the Examiner, the term "at
manufacture" recited in claim 11 has been accorded the construction defmed
by Appellant's Specification. Ans. 2 (citing Spec. ,-r 5). Nevertheless,
Richardson still teaches Appellant's detection of tampering or modification
of a device since manufacture, including by use of "an electronic serial
number" as an example of Appellant's claimed "characteristics of
components of a device that are measured at manufacture of the device."
Ans. 4--5 (citing Spec. ,-r 26). According to the Examiner,
Richardson paragraph 26 gives two examples of stored
device parameters: 1) manufacturer of motherboard, and [2)]
make/model of cpu. For example, a motherboard may be
measured as an Intel motherboard, and a CPU may be measured
as Intel 001. Such parameters are examples of measurements
taken at manufacture. This is in-line with the applicant's own
specification. For example, paragraph 27 of applicant's
specification recites that measured data may be electronic serial
numbers .
. . . [S]uchidentifying measures, such as a make/model of
a cpu, must be measured at manufacture. At manufacture, serial
numbers are assigned during the production of the device.
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Appeal 2016-000343
Application 14/201,612
Components receive its identity, or its measured vaiue, at
manufacture.
Id. at 4.
We agree with the Examiner. We also agree with the Examiner's
fmdings that
[Richardson's] Paragraph 33 teaches taking measurements of a
first set of device parameters (10), comparing the measurements
with a stored version, and making a determination if the device
has been tampered with. Paragraph 26 teaches wherein device
parameters (10) (the stored parameters) may be parameters that
rarely change, such as the manufacturer of the motherboard, or
the make and model parameters of a cpu.
Ans. 3 (citing Richardson ,-r,-r 26, 33). As such, we adopt the Examiner's
fmdings and explanations provided on pages 2-5 of the Examiner's Answer.
In the reply, Appellant argues the distinction between the
measurement of"characteristics of a component of a device, not at
manufacture of the component, but at manufacture of the device." Reply Br.
9 (emphasis added). According to Appellant,
the characteristics of the components of the device (i) are
measured at manufacture, (ii) are measured at manufacture of the
device, not at manufacture of the components, and (iii) are the
reference characteristics to which subsequently measured
characteristics are compared to detect tampering of the device.
Id. at 5 (emphasis added).
We disagree. Contrary to Appellant's arguments, Richardson teaches
(1) "the characteristics of the component" in the context of taking
measurements of a first set of device parameters, as described in paragraph
33 of Richardson; (2) the "reference characteristics of the component that
are measured at manufacture of the device" in the context of taking a stored
version of the same parameters, such as the manufacturer of the
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Application 14/201,612
motherboard, or the make and modei parameters of a CPU, as described in
paragraph 26 of Richardson; and (3) then "comparing the characteristics of
the component to corresponding predetermined reference characteristics of
the component that are measured at manufacture of the device," as described
in paragraph 33 of Richardson.
For the reasons set forth above, Appellant has not demonstrated
Examiner error. As such, we sustain the Examiner's obviousness rejection
of independent claim 1 and its dependent claims 13-15, which Appellant
does not argue separately. App. Br. 7-9.
Claim 12 depends from claim 11, and further recites: "using an
indicator to indicate to a human operator upon determining that the device
may have been modified after manufacture." The Examiner further relies on
Wiseman for teaching the use of"an alert to a user if there has been
unauthorized modification to a system's component." Final Act. 6-7 (citing
Wiseman ,-r 15).
Appellant argues the Examiner's proposedmodification of
Richardson to incorporate Wiseman would not be operable because
"Richardson does not teach a device detecting unauthorized modification of
itself, but rather whether a remotely located device with which
communications is ongoing is authentic." App. Br. 12.
We disagree and adoptthe Examiner's explanation on page 6 of the
Examiner's Answer. Accordingly, we also sustain the Examiner's
obviousness rejection of claim 12.
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Appeal 2016-000343
Application 14/201,612
DECISION
As such, we AFFIRM the Examiner's fmal rejection of claims 11-15
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37C.F.R.§1.136(a)(l)(iv).
AFFIRMED
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