Ex Parte Shaw et al

Patent Trial and Appeal Board

Nov 24, 2014

11031287 (P.T.A.B. Nov. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARI MYRA SHAW and JOSEPH P. MURRAY
__________

Appeal 2012-006342
Application 11/031,2871
Technology Center 3600
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Before HUBERT C. LORIN, MICHAEL W. KIM, and
BRUCE T. WIEDER, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Mari Myra Shaw, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1–16 and 35–53. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.2

1 The Appellants identify Janssen Scope LLC as the real party in interest.
App. Br. 2.
Appeal 2012-006342
Application 11/031,287

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THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method, comprising:
storing first data encrypted using a first encryption type
and second data encrypted using a second encryption type in a
computer readable storage medium integrated within a smart
card;
decrypting, by the smart card, the encrypted first data,
wherein data resource access rights for decrypted first data are
restricted for at least a first type of user; and
decrypting, by the smart card, the encrypted second data,
wherein data resource access rights for decrypted second data
are restricted for at least a second type of user.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Peyret

US 5,923,884 July 13, 1999
The following rejection is before us for review:
1. Claims 1–16 and 35–53 are rejected under 35 U.S.C. §102(b) as being
anticipated by Peyret.

ISSUE
Did the Examiner err in rejecting claims 1–16 and 35–53 under 35
U.S.C. §102(b) as being anticipated by Peyret?

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Oct. 20, 2011) and Reply Brief (“Reply Br.,” filed Feb. 22, 2012),
and the Examiner’s Answer (“Ans.,” mailed Jan. 9, 2012).
Appeal 2012-006342
Application 11/031,287

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FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
We will reverse the rejection because a prima facie case of
anticipation has not been made out in the first instance.
The Examiner’s position is:
Re claim [sic] 1, 2-16, and 35-53. Peyret discloses a method,
comprising: storing first data encrypted using a first encryption
type and second data encrypted using a second encryption type
in a computer readable storage medium integrated within a
smart card (see the abstract, also see col. 3 line 54 – col. 4 line
16, also see col. 5 lines 13-35); decrypting, by the smart card,
the encrypted first data, wherein data resource access rights for
decrypted first data are restricted for at least a first type of user;
and decrypting, by the smart card, the encrypted second data,
wherein data resource access rights for decrypted second data
are restricted for at least a second type of user (see the abstract
and the summary of the invention).
Ans. 4–5 (reproduced from the Final Rejection of Feb. 17, 2011, p. 3).
The Examiner has the initial burden of establishing a prima facie case
of unpatentability. This has not been done here.
As a preliminary matter, the Examiner has not addressed all the
claims. By focusing solely on claim 1, the dependent claims are left
untreated. Moreover, claim 1, which is directed to a process, is not
representative of the subject matter covered by all the independent claims.
While independent claim 9, albeit to a storage medium, arguably parallels
claim 1, the other independent claims 39, 48, and 53 clearly differ in scope
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Application 11/031,287

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and therefore do not parallel claim 1. It was incumbent on the Examiner to
explain why claims 39, 48, and 53 also read on Peyret.
Even as to claim 1, a prima facie case of anticipation has not been
made out in the first instance.
A determination that a claim is anticipated under 35
U.S.C. § 102(b) involves two analytical steps. First, the Board
must interpret the claim language, where necessary. Because
the PTO is entitled to give claims their broadest reasonable
interpretation, our review of the Board’s claim construction is
limited to determining whether it was reasonable. In re Morris,
127 F.3d 1048, 1055 (Fed. Cir. 1997). Secondly, the Board
must compare the construed claim to a prior art reference and
make factual findings that “each and every limitation is found
either expressly or inherently in [that] single prior art
reference.” Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150
F.3d 1354, 1360 (Fed. Cir. 1998). . . .
In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
Claim 1 is reasonably broadly construed to cover (a) storing in a
computer readable storage medium integrated within a smart card (1) first
data encrypted using a first encryption type and (2) second data encrypted
using a second encryption type and (b), by the smart card, decrypting (1) and
(2) such that data resource access rights for decrypted first data are restricted
for at least a first type of user and data resource access rights for decrypted
second data are restricted for at least a second type of user.
The Examiner takes the position that claim 1, the abstract, summary
of the invention, column 3, line 54 – column 4, line 16, and column 5, lines
13–35 of Peyret describe the storing and decrypting steps as claimed. See
Ans. 4-5. But said disclosures make no mention of (1) first data encrypted
using a first encryption type and (2) second data encrypted using a second
encryption type and by a smart card, decrypting (1) and (2) such that data
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Application 11/031,287

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resource access rights for decrypted first data are restricted for at least a first
type of user and data resource access rights for decrypted second data are
restricted for at least a second type of user, as claim 1 is reasonably broadly
construed. Peyret involves applets, not data. As the Appellants point out,
“Peyret [ ] notes that the applications or applets are ‘program code.’ (See
Col. 5, line 9).” App. Br. 9. Furthermore, there is no mention in Peyret of
using first and second encryption types. Accordingly, Peyert cannot
anticipate the claim 1 on the ground that Peyret expressly describes what is
claimed.
Peyert can nevertheless anticipate the claim 1 if Peyret inherently
describes what is claimed. But the difficulty here is that the Examiner does
explain why Peyret’s applets are necessarily “data” as that claim term is
reasonably broadly construed or why Peyret’s encryption/decryption
necessarily includes using first and second encryption types as claimed.
“Inherent anticipation requires that the missing descriptive material is
‘necessarily present,’ not merely probably or possibly present, in the prior
art.” Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed.
Cir. 2002) (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)
(citation omitted)). “The mere fact that a certain thing may result from a
given set of circumstances is not sufficient [to establish inherency.]” In re
Oelrich, 666 F.2d 578, 581 (CCPA 1981). (emphasis added).
For the foregoing reasons, a prima facie case of anticipation has not
been made out in the first instance by a preponderance of the evidence.
Accordingly, we do not sustain the rejection of claims 1–16 and 35–53.

Appeal 2012-006342
Application 11/031,287

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DECISION
The decision of the Examiner to reject claims 1–16 and 35–53 is
reversed.

REVERSED

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