Ex Parte Ulmer et al

Patent Trial and Appeal Board

Nov 19, 2014

11511910 (P.T.A.B. Nov. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CEDRIC S.P. ULMER, PASCAL T.C. SPADONE,
CEDRIC R.J. HEBERT, and LAURENT Y. GOMEZ
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Appeal 2012-005283
Application 11/511,910
Technology Center 2400
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Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–3, 5–7, and 9–12, which are all the claims pending in
the application. Claims 4 and 8 were cancelled during prosecution. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
Embodiments of the claimed invention on appeal “relate generally to
the field of electronic data processing and more specifically to security of
passwords.” (Spec. ¶2).
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Representative Claim
1. A system to scramble characters of a password entered by a
user on an input device, the system comprising:

a keystroke controller to identify a keystroke that represents a
character of the password entered on the input device; and

a scrambling pad to scramble the character represented by the
identified keystroke into a scrambled character according to a
transformation rule and to generate the transformation rule by
using a shift transformation and an integer for shifting, the
transformation rule complying with a restriction for scrambled
characters of the password.

(Contested limitations emphasized.)
Rejection
Claims 1–3, 5–7, and 9–12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined teachings and suggestions of Topp
(US Patent 6,134,661; Oct. 17, 2000) and Rajaraman ("Electronic
Commerce: 3. Secure Messaging"), and Kumhyr (US Pat. Publication No.
2003/0041251 A1; Feb. 27, 2003).
Grouping of Claims
Based on Appellants’ arguments, we decide the appeal of claims 1–3,
5–7, and 9–12 on the basis of representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2004).1

1 Appellants filed a Notice of Appeal on May 18, 2011. The date of filing
the Notice of Appeal determines which set of rules applies to an Ex parte
appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the

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ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. We disagree with Appellants’ arguments with respect to
representative claim 1 and we adopt as our own: (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken, and (2), the reasons and rebuttals set forth in the Answer in response
to Appellants’ arguments. (Ans. 14–21). We highlight and address specific
findings and arguments regarding representative claim 1 for emphasis in our
analysis below.
Representative Claim 1
Appellants refer to Kumhyr at ¶23 and Fig. 3, ref. no. 350 and
contend, inter alia:
the initial translation of Kumhyr is performed without
consideration of the password format specification of Kumhyr.
It is possible that the initial translation may serendipitously
comply with a password format specification if, as in the
"Porsche" example, the password format specification
coincidentally happens to require one special character.
However, the password format specification is only explicitly
considered by Kumhyr after the initial translation of Kumhyr is
performed [referring to Kumhyr at ¶26].

(App. Br. 12.)

2004 version of the Board rules published in the 2011 edition of Title 37 of
the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the
appeal. See also Manual of Patent Examining Procedure (MPEP) 8th ed.,
Rev. 8, July 2010.
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Appellants further urge: “Because the initial translation of Kumhyr is
checked for compliance and is only later conformed to the password format
specification, Kumhyr does not teach or suggest that ‘the transformation rule
compl[ies] with a restriction for scrambled characters of the password’ as
recited in claim 1.” (App. Br. 12, emphasis added.)
At the outset, we conclude the contested functional limitations are
statements of intended use that do not further limit the structure of the
claimed system (apparatus).2 Our reviewing court guides that the
patentability of an apparatus claim “depends on the claimed structure, not on
the use or purpose of that structure.” Catalina Marketing Int’l. Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002); see also
Superior Industries v. Masaba, 2013-1302, 2014 WL 163046 at *5 (Fed.
Cir. Jan. 16, 2014) (Rader, J., concurring) which guides:
(“[A] system claim generally covers what the system is, not
what the system does. Hewlett-Packard Co. v. Bausch & Lomb
Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v.
Ryer, 91 U.S. 150, 157 [] (1875) (‘The inventor of a machine is
entitled to the benefit of all the uses to which it can be put, no
matter whether he had conceived the idea of the use or not.’).

2 “An intended use or purpose usually will not limit the scope of the claim
because such statements usually do no more than define a context in which
the invention operates.”' Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed.Cir. 2003). Although “[s]uch
statements often . . . appear in the claim's preamble,” In re Stencel, 828 F.2d
751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear
elsewhere in a claim. Id.

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Thus, it is usually improper to construe non-functional claim
terms in system claims in a way that makes infringement or
validity turn on their function. Paragon Solutions, LLC v. Timex
Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).”).[3]

This reasoning is applicable to each of Appellants’ system (apparatus)
claims on appeal (claims 1–3, 5, and 11). Therefore, a question arises as to
how much patentable weight, if any, should be given to the contested
functional limitations recited in representative system claim 1. However, to
the extent our reviewing court may give such contested functional
limitations patentable weight, we consider the contested aspects of the
Examiner’s rejection below.

Issue: Under § 103, did the Examiner err by finding the cited prior art
would have collectively taught or suggested the contested limitation:
a scrambling pad to scramble the character represented by the
identified keystroke into a scrambled character according to a
transformation rule and to generate the transformation rule by
using a shift transformation and an integer for shifting, the
transformation rule complying with a restriction for scrambled
characters of the password,

within the meaning of representative claim 1? (Emphasis added).

3 Superior Industries v. Masaba is a recent non-precedential opinion of the
Court of Appeals for the Federal Circuit. However, we consider the
concurring opinion by former Chief Judge Rader as guiding because it cites
precedential authority in support.
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We find Appellants’ contentions unpersuasive. As found by the
Examiner, Rajaraman (10–11) expressly teaches a “transformation” or
“substitution rule” e.g., for a given key, “replac[ing] every letter by a letter
which is 4 letters away from it in the collating sequence. For example, A
will be replaced by E, B by F and Z by D.” Moreover, Kumhyr describes:
[0023] Initial translation of the user's preferred word, block
350, may be implemented in various ways. The invention may
be implemented in a way that emphasizes ease of use for the
authorized user. For example, the translating may include
substituting a character for another character.
(Emphasis added.)
Appellants are attacking the teachings of Kumhyr in isolation and do
not specifically rebut the Examiner's underlying factual findings and
ultimate legal conclusion of obviousness, which are based on the combined
teachings and suggestions of Topp, Rajaraman, and Kumhyr. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). One cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. Id.
Moreover, in urging “Kumhyr requires that an ‘initial translation’
be generated before ensuring that the generated word (i.e., initial
translation) complies with the password format specification” (App. Br. 11),
Appellants are arguing a temporal limitation that is not claimed. (Claim 1.)
Appellants, who did not file a Reply Brief, have not further addressed
the Examiner’s Responsive arguments to the contested limitations (Ans. 14–
21), let alone demonstrated error by the Examiner, as required to satisfy their
burden on appeal with respect to this ground of rejection. See Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). We further observe
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Appellants do not contest the combinability of the cited references:
“Appellants, however, did not argue that the references were not
combinable.” (App. Br. 13). On this record, we are not persuaded the
Examiner’s proffered combination would have been “uniquely challenging
or difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
We emphasize once again the Examiner’s ultimate legal conclusion of
obviousness is based on the combined teachings and suggestions of Topp,
Rajaraman, and Kumhyr. Moreover, our reviewing court guides: “A prima
facie case of obviousness is established when the teachings from the prior art
itself would appear to have suggested the claimed subject matter to a person
of ordinary skill in the art.” In re Bell, 991 F.2d 781, 783 (Fed. Cir. 1993)
(quoting In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976)) (Emphasis
added).
For the aforementioned reasons, we are not persuaded of error
regarding the Examiner’s underlying factual findings and ultimate legal
conclusion of obviousness regarding representative independent claim 1.
Accordingly, we sustain the § 103 rejection of independent claim 1, and the
rejection of grouped claims 2, 3, 5–7, and 9–12 (not argued separately)
which fall therewith. See Claim Grouping, supra.

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DECISION
We affirm the Examiner’s decision rejecting claims 1–3, 5–7,
and 9–12 under 35 U.S.C. § 103.
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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