Ex Parte Krauter et al

Board of Patent Appeals and Interferences

Jan 29, 2009

09749050 (B.P.A.I. Jan. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte IMMANUEL KRAUTER, CLAUS MOESSNER,
and AXEL AUE
____________

Appeal 2008-2735
Application 09/749,050
Technology Center 2100
____________

Decided: January 29, 2009
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Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and
THU ANN DANG, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-11. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appeal 2008-2735
Application 09/749,050

THE INVENTION
The disclosed invention relates to detecting manipulation of a
programmable memory device of a digital controller for a motor vehicle,
where data and control programs for operation of the controller and for
control/regulation of certain functions of the motor vehicle can be stored in
the memory device. (Spec. 1, ll. 1-5).
Independent claim 1 is illustrative:
1. A method for detecting a manipulation of a
programmable memory device of a digital controller for a
motor vehicle, comprising the steps of

storing in the programmable memory device data and
control programs for an operation of the digital controller and
for a control/regulation of functions of the motor vehicle;

storing information regarding a
programming/reprogramming operation in a separate memory
area of the programmable memory device where only reading
and programming are possible, the step of storing information
regarding the programming/reprogramming operation being
performed in conjunction with each
programming/reprogramming operation of the programmable
memory device, the stored information recording a number of
times the programmable memory device has been
programmed/reprogrammed; and

reading out and comparing a content of the separate
memory area with another set of information in order to detect a
manipulation, wherein the separate memory area is incapable of
being erased, and wherein a remaining memory area of the
programmable memory device is capable of being erased.

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THE REFERENCES
The Examiner relies upon the following references as evidence in
support of the obviousness rejections:
Berra US 5,787,367 Jul. 28, 1998
(filed Jul. 3, 1996)
Blomquist US 5,658,250 Aug. 19, 1997
(filed Nov. 8, 1995)
Komori US 6,044,014 Mar. 28, 2000
(filed Jun. 16, 1999)

THE REJECTIONS1
1. The Examiner rejected claims 1-7 and 9-11 under 35 U.S.C.
§ 103(a) as being unpatentable over Berra, in view of Komori
and Blomquist.
2. The Examiner rejected claim 8 under 35 U.S.C. § 103(a), as
being unpatentable over Berra in view of Komori.

“[T]he examiner bears the initial burden on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Therefore, we look to Appellants’ Briefs to show error in the
proffered prima facie case.

1 The Final Office Action included a rejection of claims 1-7 and 9 under
35 U.S.C. § 112 second paragraph. The Examiner withdrew the rejection in
the Examiner’s Answer. (Ans. 2). Therefore, the rejection under 35 U.S.C.
§ 112 is not before us.
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Obviousness under 35 U.S.C. § 103
PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, “[w]hat matters is the
objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1742
(2007). To be nonobvious, an improvement must be “more than the
predictable use of prior art elements according to their established
functions.” Id. at 1740.

Claims 1-7 and 9-11
We consider the Examiner’s rejection of claims 1-7 and 9-11 under
35 U.S.C. § 103(a) as being unpatentable over Berra in view of Komori and
Blomquist. Since Appellants’ arguments have treated these claims as a
single group which stand or fall together, we select claim 1 as the
representative claim for this group. See 37 C.F.R. § 41.37(c)(1)(vii).

Appellants’ Contentions
1. Appellants contend that the cited references, most notably
Blomquist, fail to teach or suggest the limitation of a separate
memory area is incapable of being erased, and that the
remaining memory area of the programmable memory device is
capable of being erased. (App. Br. 10)
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2. Appellants contend that the flash memory 150 disclosed in
Blomquist is not analogous to the “separate memory area”
recited in claims 1 and 9. (Id. at pp. 10-11)
3. Appellants contend that Blomquist does not disclose a memory
area that is incapable of being erased. (Reply Br. 4)

ISSUE
Have Appellants shown the Examiner erred in determining that the
cited references teach the claimed limitation of the “separate memory area is
incapable of being erased?”

FINDINGS OF FACTS
The following Findings of Facts (FF) are supported by a
preponderance of the evidence.
Blomquist
1. The Examiner relied on Blomquist to teach the limitation of the
separate memory area that is incapable of being erased. (See Ans. 5).
2. Blomquist teaches flash memory 150 that includes a boot program
which is preferably non-erasable. (Col. 8, ll. 23-24).
3. Blomquist teaches a flash memory (“Intel product”) that includes
separately erasable and reprogrammable blocks of memory, at least
one of which can be blocked from erasure, once programmed with the
desired information. (Col. 8, ll. 53-56).

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Specification
4. The Specification teaches that the one-time programmable memory
region of a programmable memory device is implemented with flash
memory. The flash cells of the OTP region have only lines for
programming or reading the content of the flash cells. (Spec. 5, ll.
12-17) (emphasis added)

ANALYSIS
As mentioned above, Appellants contend that the cited references fail
to teach or suggest the limitations of a separate memory area that is
incapable of being erased, and that the remaining memory area of the
programmable memory device is capable of being erased.
As discussed above, we find that Blomquist discloses an Intel product
that includes reprogrammable blocks of memory, at least one of which
(separate area) can be blocked from erasure once programmed with the
desired information (incapable of being erased). (FF 3) (emphasis added).
The Intel product disclosed in Blomquist is consistent with the OTP memory
described in Appellants’ Specification, and referenced in Appellants’
arguments. (FF. 4 and App. Br. 10-11). For this reason, we do not find the
Appellants’ arguments to be persuasive.
We conclude that Appellants have not shown error in the Examiner’s
prima facie case rejecting claim 1. Accordingly, we sustain the Examiner’s
rejection under 35 U.S.C. § 103(a) of claim 1, and claims 2-7 and 9-11
which fall therewith, as being unpatentable over Berra in view of Komori
and Blomquist.
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Claim 8
We next consider the Examiner’s rejection of claim 8 as being
unpatentable over Berra in view of Komori.
Claim Construction
“[T]he PTO gives claims their ‘broadest reasonable interpretation.’”
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)).
At the outset, we note that claim 8 recites a “separate memory area of
the programmable memory device where only reading and programming are
possible.” Claim 8 is otherwise silent with regards to the separate memory
area being incapable of being erased. We decline to read any such limitation
into claim 8.2
We further note that the limitation argued by Appellants is expressly
recited in independent claims 1 and 9. Thus, Appellants’ argument that the
limitation is “plain to anyone” is not persuasive. (See Reply Br. 6)
Appellants’ arguments are based upon the assertion that the references
fail to teach a separate memory area that “is not capable of being erased.”
However, as discussed above, this limitation is not expressly recited in claim

2 "Though understanding the claim language may be aided by explanations
contained in the written description, it is important not to import into a claim
limitations that are not part of the claim. For example, a particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment." Superguide
Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). See
also Liebel-Flarsheim Co. v. Medrad Inc., 358 F.3d 898, 906, (Fed. Cir.
2004).
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8, and we will not read this limitation into the claim. In particular, we note
that programming a device necessarily involves overwriting, i.e., erasing the
previous memory contents in order to add the new program.
It is our reasoned view that Appellants are arguing limitations that are
not recited in claim 8. Thus, based on the record before us, we conclude that
Appellants have not met their burden of showing error in the Examiner’s
prima facie case.

REPLY BRIEF
We note that the Reply Brief is properly used to respond to points of
argument raised by the Examiner in the Answer and not as a means for
presenting new arguments. See Optivus Tech., Inc. v. Ion Beam Applications
S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (an issue not raised in an opening
brief is waived). While we have fully considered Appellants’ responses in
the Reply Brief, we decline to address any new arguments not originally
presented in the principal Brief. With respect to all claims before us on
appeal, arguments which Appellants could have made but chose not to make
have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii). See also In re Watts, 354 F.3d 1362, 1368 (Fed. Cir.
2004).
Based on the record before, us we conclude that Appellants did not
show error in the Examiner’s prima facie case of obviousness. Accordingly,
we sustain the Examiner’s rejection of claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Berra in view of Komori.

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CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude the
following:
Appellants have not shown that the Examiner erred in determining
that the cited references teach the claimed limitation of “separate memory
area is incapable of being erased.”
Therefore, claims 1-11 are not patentable.

DECISION
The decision of the Examiner rejecting claims 1-7 and 9-11 under
35 U.S.C. § 103(a) is affirmed.
The decision of the Examiner rejecting claim 8 under 35 U.S.C.
§ 103(a) is 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).

AFFIRMED

pgc

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