Ex Parte Panshin et al

Patent Trial and Appeal Board

May 18, 2016

12994756 (P.T.A.B. May. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/994,756 02/24/2011
22879 7590 05/20/2016
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Stephen D. Panshin
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.
82572480 5749
EXAMINER
SANTIAGO CORDERO, MARNELISSE
ART UNIT PAPER NUMBER
2676
NOTIFICATION DATE DELIVERY MODE
05/20/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN D. PANSHIN, JEFFERSON P. WARD,
DAVID B. NOV AK, GLENN D. McCLOY, and
BRIAN L. HEL TERLINE
Appeal2014--006554
Application 12/994,756
Technology Center 2600
Before ST. JOHN COURTENAY III, MONICA S. ULLAGADDI, and
MATTHEW J. McNEILL, Administrative Patent Judges.
ULLAGADDI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-15. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Claims 16-20 are withdrawn. App. Br. 22 (Claims App'x).
Appeal2014-006554
Application 12/994,756
STATEMENT OF THE CASE
Claim 1, reproduced below with a key disputed limitation
emphasized, is illustrative of the claimed subject matter:
1. A replaceable printer component comprising:
a memory configured to store a tag encryption mask and
data, the data stored in a plurality of portions of the memory
where each portion is defined by a tag stored in the memory, the
tag encryption mask comprising a data structure indicating an
encryption status of each portion of the memory defined by a tag;
and
a communication link configured to communicatively link
the memory to a printer controller when the replaceable printer
component is installed in a printing system.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Helter line
Van Rijnsoever
Haines
US 6,264,301 Bl
US 2002/0090086 Al
US 6,738,903 Bl
REJECTIONS
July 24, 2001
July 11, 2002
May 18, 2004
Claims 9-14 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite.
Claims 1, 3-9 and 11-15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Haines and Van Rijnsoever.
Claims 2 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Haines, Van Rijnsoever, and Helterline.
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ANALYSIS
35 US.C. § 103 Rejection of Claims 1, 3-9, and 11-15
With regard to claim 1, Appellants argue (i.) "Van Rijnsoever cannot
be implemented outside of the RTP system and fulfills [sic.] needs specific
to the R TP system" because "[ c ]ommunication using encrypted R TP packets
between a replaceable printer component and a printer controller is not
feasible." App. Br. 13-14. Appellants further argue (ii.) "the RTP specific
teachings of Van Rijnsoever are not relevant to Appellant's system as recited
in claim 1 and one of skill in the art would not look to the teachings of Van
Rijnsoever for instructions on how to manage memory in a printing system."
Id. at 13.
In response to argument (i. ), "it is not necessary that the inventions of
the references be physically combinable to render obvious the invention
under review." In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983).
"Combining the teachings of references does not involve an ability to
combine their specific structures." In re Nievelt, 482 F.2d 965, 968 (CCPA
1973). The relevant inquiry is whether the claimed subject matter would
have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references. See In re Keller, 642 F.2d 413, 425
(CCPA 1981).
The Examiner finds Haines teaches a memory and a communication
link in a printing system and finds Van Rijnsoever' s teaching of "localizing
information [that] indicates the encrypted parts of the frame defined by a
frame header" meets the disputed limitation. Final Act. 6-7. Based on these
findings, the Examiner finds modifying Haines with Van Rijnsoever
"[i]ncreas[es] security, without affecting complicated preprocessing, [and]
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benefits Haines by way of a higher protection level of information." Id. at 8.
Contrary to arguments (i.) and (ii.), the combination set forth by the
Examiner does not require incorporating Van Rijnsoever's entire RTP
packet and associated processing in the cited teachings of Haines. See Final
Act. 6-8.
Moreover, with regard to argument (ii.), two criteria have evolved for
determining whether prior art is analogous: (1) whether the art is from the
same field of endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992)
(citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599
F.2d 1032, 1036 (CCPA 1979)). Appellants' argument (ii.) presents
insufficient evidence to support either prong of this test.
Appellants also argue (iii.) Van Rijnsoever's "pointers cannot be
construed as indicating 'an encryption status' as recited in claim 1" because
"before the encryption algorithm is run, the pointers point to unencrypted
data" and "[t]hus, by themselves, the pointers cannot give any indication as
to whether the data is encrypted or not." App. Br. 13. Appellants further
argue (iv.) Van Rijnsoever's pointers are distinguishable because
Van Rijnsoever does not teach that the pointers are actually
stored or transmitted for "indicating an encryption status of
each portion of the memory defined by a tag" as recited in
claim 1. There is a significant amount of evidence that Van
Rijnsoever uses the pointers to speed up the encrypting
algorithm then discards the pointers. Thus the pointers can
never be used for "indicating encryptions status" as recited in
claim 1.
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Id. at 13-14 citing Baugher, et al., Secure Real-time Transport Protocol
(SRTP), RFC 3711, March 2004, pp. 14--16. Appellants also contend (v.)
"pointers are [ ] not present in the received R TP packet" because "Van
Rijnsoever clearly intends for the packets to follow the R TP standard" and
pointers "would simply introduce useless overhead to the transmission."
App. Br. 14.
Arguments (iii.), (iv.), and ( v.) are unpersuasive with respect to claim
1 because, as discussed above, the Examiner relies on Van Rijnsoever's
localizing information, not the pointers, to teach or suggest the disputed
limitation of claim 1. See Ans. 15-16.
However, we address these arguments with respect to independent
claim 9 because the Examiner cites Van Rijnsoever's pointers as teaching
the "means for indicating an encryption status for each block of data." See
Final Act. 10. Appellants present arguments substantially similar to
arguments (i.) through (v.) with respect to claim 9. App. Br. 15-16. We
find arguments (i.) and (ii.) unpersuasive for the reasons discussed above,
and find arguments (iii.) through ( v.) unpersuasive for the reasons discussed
below.
Contrary to argument (iii.), claim 9 does not require the "means for
indicating" to independently indicate the "encryption status." See Ans. 18.
As such, this argument is unpersuasive as it is not commensurate with the
scope of claim 9. Similarly, argument (iv.) is unpersuasive because claim 9
does not require the claimed "means for indicating" to be stored, transmitted,
or received, nor does it require the "means for indicating" to indicate an
encryption status for any particular length of time. See generally Ans. 16.
Even assuming, arguendo, Appellants' argument that the pointers "are used
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solely to speed up the encrypting algorithm" were supported by the cited
portions of Van Rijnsoever (see App. Br. 16 citing Van Rijnsoever i-fi-f 15,
16), the purpose for which the pointers are employed is not persuasive to
show non-obviousness, 2 Regardless of the purpose for which the pointers are
used, Van Rijnsoever teaches the "means for indicating" recited in claim 9:
"the pointers 62 indicate both the beginning and the end of each encrypted
frame." Ans. 18 citing Van Rijnsoever i-fi-f 16, 19; see also Ans. 19.
Argument ( v.) is not supported by a preponderance of evidence in the
teachings of Van Rijnsoever. See generally Ans. 15. Moreover, as
discussed above, the combination set forth by the Examiner addresses the
combined teachings of Haines and Van Rijnsoever and does not require
physical combinability, i.e., incorporating the entire RTP packet described in
Van Rijnsoever into the cited teachings of Haines. See Final Act 6-8; see
Sneed, 710 F.2d at 1550; see also Nievelt, 482 F.2d 965 at 968. For a
similar reason, the argument that (vi.) "[ c ]ommunication between a
replaceable printer component and printer is not under the rigid time
constraints of an [sic] real time streaming system" is not persuasive. See
App. Br. 15-16.
The argument that (vii.) "the R TP specific teachings of Van
Rijnsoever to speed up delivery of data are not relevant to Appellant's
[claimed invention] as recited in claim 9" (see App. Br. 16) is not persuasive
to show nonobviousness because it is not supported by sufficient evidence
2 It is sufficient that references suggest doing what an appellant did, although
the appellant's particular purpose was different from that of the references.
In re Heck, 699F.2d1331, 1333 (Fed. Cir. 1983) (citing In re Gershon, 372
F.2d 535, 539 (CCPA 1967)). "Obviousness is not to be determined on the
basis of purpose alone." In re Graf, 343 F.2d 774, 777 (CCPA 1965).
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that shows Van Rijnsoever' s teachings are not at least "reasonably pertinent
to the particular problem with which the inventor is involved." See Clay,
966 F.2d at 659; see Wood, 599 F.2d at 1036.
For the foregoing reasons, we are not persuaded the Examiner erred in
finding the combination of Haines and Van Rijnsoever teaches or suggests
the contested limitations as recited in claim 1, the commensurate limitations
of claim 9, and the limitations of claims 3-8 and 11-15, which depend
therefrom and are not separately argued. Therefore, we sustain the rejection
of claims 1, 3-9, and 11-15 under 35 U.S.C. § 103(a).
35 US.C. § 103 Rejection of Claims 2 and 10
Appellants contend the "'decoding' referred to by Helterline is simply
using a family ID and tag ID to identify which component is being used"
and argue "[t]here is no encryption of the family ID, tag ID or other data
taught by Helterline" and thus, Helterline fails to teach or suggest the "tag
encryption mask" recited in claim 2. App. Br. 17-18.
The Examiner cited Van Rijnsoever as teaching the "tag encryption
mask" and cited Helterline as teaching "the memory is configured to include
up to 16 tags to define 16 portions of the memory, and wherein the tag
encryption mask comprises 16-bits, each bit indicating the encryption status
of one of the 16 portions of the memory," as recited in claim 2. Helterline
describes two bytes of data, each of which includes memory address values
0 through N-7 that contain data relating to various parameters of the
replaceable printing component 14 and tag information. See Ans. 20-21
citing Helterline, col. 5, 11. 45-54 and col. 6, 11. 35--45. Appellants fail to
persuasively rebut the Examiner's findings, because Appellants' arguments
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do not explain why modifying Haines and Van Rijnsoever with the cited
teachings of Helterline would have been beyond the level of skill of the
ordinarily skilled artisan.
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Haines, Van Rijnsoever, and Helterline teaches or suggests
the contested limitations recited in claim 2, and the commensurate
limitations of claim 10. Therefore, we sustain the rejection of claims 2 and
10 under 35 U.S.C. § 103(a).
35 US.C. § 112, Second Paragraph Rejection of Claims 9--14
Claim 9 recites "means-plus-function" language that the Examiner
finds invokes 35 U.S.C. § 112, sixth paragraph. Final Act. 3-5; Ans. 11-13.
The Examiner further concludes that claims 9-14 are indefinite because the
Examiner finds the "means for indicating an encryption status" element is
not described with respect to corresponding structure in the Specification in
a manner that would satisfy the structural requirements of 35 U.S.C. § 112,
sixth paragraph. 3 Id. Appellants argue the "means for indicating" recited in
claim 9 is defined - by the "tag encryption mask" because the Specification
describes various embodiments and includes an example in which "the
location of the tag encryption mask is defined, its bit level structure is
defined, and the relationship between each bit in the tag encryption mask
3 If there is no structure in the specification corresponding to the means-
plus-function limitation in the claims, the claim is invalid as indefinite. See
Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1378-79 (Fed.
Cir. 1999) (citing In re Donaldson, 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en
bane)).
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and the corresponding data is described." App. Br. 11 citing Spec. 27; see
also Reply Br. 4--5.
We agree with the Examiner that the exemplary embodiment
discussed by Appellants "provides information defining the tag encryption
mask, but does not describe a corresponding structure of the tag encryption
mask" and that the "[ m Jeans for indicating is stored in the means for
storing."4 Ans. 13. At most, Appellants refer to a "bit level structure,"
which may define a logical representation of the "tag encryption mask," but
does not meet the "corresponding structure" requirement of 35 U.S.C. § 112,
sixth paragraph. Nor do Appellants disclose an algorithm as "corresponding
structure" under Aristocrat, 521 F .3d at 1333.
For the foregoing reasons, Appellants have not persuaded us the
Examiner erred. Therefore, we sustain the 35 U.S.C. § 112, second
paragraph rejection of claim 9, as well as that of claims 10-14, which
depend therefrom. 5
4 For a computer-implemented claim limitation interpreted under§ 112,
sixth paragraph, the corresponding structure must include the algorithm
needed to transform the general purpose computer or processor disclosed in
the specification into the special purpose computer programmed to perform
the disclosed algorithm. Aristocrat Techs. Australia Pty Ltd. v. Int'! Game
Tech., 521F.3d1328, 1333 (Fed. Cir. 2008); see also Function Media,
L.L.C. v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013).
5 Claim 15 depends from claim 9, but was not rejected under 35 U.S.C.
§ 112, second paragraph. In the event prosecution continues, the Examiner
may wish to consider whether a rejection of claim 15 under 35 U.S.C. § 112,
second paragraph as being indefinite would be appropriate.
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DECISION
The rejection of claims 1, 3-9, and 11-15 under 35 U.S.C. § 103(a) as
being unpatentable over Haines and Van Rijnsoever is affirmed.
The rejection of claim 2 and 10 under 35 U.S.C. § 103(a) as being
unpatentable over Haines, Van Rijnsoever, and Helterline is affirmed.
The rejection of claims 9-14 under 35 U.S.C. § 112, second
paragraph, as being indefinite 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).
AFFIRMED
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