Ex Parte Wahl et al

Board of Patent Appeals and Interferences

Jan 30, 2012

10896398 (B.P.A.I. Jan. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVID C. WAHL, JEFF LAVIN, and CAMERON A.
SWEN
____________________

Appeal 2009-014657
Application 10/896,398
Technology Center 2100
____________________

Before: JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
DEBRA K. STEPHENS, Administrative Patent Judges.

COURTENAY III, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
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Invention
Appellants’ invention relates generally to the field of information
handling systems. More particularly, the invention on appeal is directed to a
multipurpose media access data processing system. (Spec. 1).

Illustrative Claim 1
A method for controlling a multipurpose media access
device in conjunction with a data communication network
comprising:

storing a unique user identifier in a storage module in the
multipurpose media access device, the unique user identifier
corresponding to a predetermined set of operational features for
the multipurpose media access device to enable a limited set of
data transfer capabilities on the communication network in
accordance with a user profile associated with the unique user
identifier, the limited set of data transfer capabilities preventing
unauthorized copying of a system image, and

executing a program stored in a program storage module
of the multipurpose media access device, the program including
instructions to use the unique user identifier to enable the
predetermined set of operational features to provide limited
transfer of data between the multipurpose media access device
and the communication network in accordance with the user
profile associated with the unique user identifier.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Watanabe
Chebrolu
US 6,763,458 B1
US 7,181,504 B1
Jul. 13, 2004
Feb. 20, 2007
Nalawadi US 2003/0005272 A1 Jan. 2, 2003

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GROUPING OF CLAIMS
REJECTIONS
Claims 1-3, 6-8, and 11-13 stand rejected under 35 U.S.C §102(e) as
being anticipated by Chebrolu.
Claims 4, 9, and 14 stand rejected under 35 U.S.C §103(a) as being
unpatentable over the combination of Chebrolu and Nalawadi.
Claims 5, 10, and 15 stand rejected under 35 U.S.C §103(a) as being
unpatentable over the combination of Chebrolu and Watanabe.

GROUPING OF CLAIMS
Regarding the rejection under §102, Appellants argue claims 1-3, 6-8
and 11-13 as a group. We select representative claim 1 to decide the appeal
for this group. See 37 C.F.R. § 41.37(c)(1)(vii).
Regarding the rejection under §103 over the combination of Chebrolu
and Nalawadi, Appellants argue claims 4, 9, and 14 as a group. We select
representative claim 4 to decide the appeal for this group. See 37 C.F.R. §
41.37(c)(1)(vii).
We address the obviousness rejection of claims 5, 10, and 15
separately, infra.

FACTUAL FINDINGS
We adopt the Examiner’s factual findings as set forth in the Answer.
(Ans. 3, et seq.).

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Anticipation Rejection
Claims 1-3, 6-8 and 11-13
ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal regarding the
anticipation rejection:
Under §102, have Appellants shown the Examiner erred
in rejecting representative claim 1 over Chebrolu?

ANALYSIS
Appellants contend that the cited Chebrolu reference:
does not disclose or suggest using a unique user identifier to
enable a predetermined set of operation features to provide
limited transfer of data between a multipurpose media access
device and a communication network in accordance with the
user profile associated with the unique user identifier, much
less where the limited set of data transfer capabilities prevent
unauthorized copying of a system image as disclosed and
claimed.
(App. Br. 5).

We begin our analysis by observing that Appellants respond to the
Examiner’s final rejection of representative claim 1 by: (1) broadly
describing the teachings of the Chebrolu reference, (2) restating the
Examiner’s findings, and (3) merely reciting the language of the claim,
asserting that the aforementioned limitations are not disclosed by Chebrolu.
(App. Br. 4-5),
However, we find Appellants have failed to traverse the specific
factual findings the Examiner has set forth in the anticipation rejection of
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claims 1-3, 6-8, and 11-13. (See Ans. 3-12). We note that a statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim. See 37 C.F.R. § 41.37(c)(1)(vii).
We decline to examine the claims sua sponte, looking for distinctions
over the prior art. Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed.
Cir. 1991) (“It is not the function of this court to examine the claims in
greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art.”). See also Ex parte Belinne, No. 2009-
004693, 2009 WL 2477843 at *3-4 (BPAI Aug. 10, 2009) (informative).
Moreover, Attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984). “Argument in the brief does not take
the place of evidence in the record.” In re Schulze, 346 F.2d 600, 602
(CCPA 1965) (citing In re Cole, 326 F.2d 769, 773 (CCPA 1964)).
On this record, we find Appellants have failed to present substantive
arguments and supporting evidence persuasive of Examiner error regarding
the aforementioned disputed limitations. See In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011)(“we hold that the Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art.”); see also Hyatt v. Dudas, 551
F.3d 1307, 1314 (Fed. Cir 2008)(Arguments not made are considered
waived).
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For these reasons, we sustain the Examiner’s § 102 rejection of
representative claim 1, and claims 2-3, 6-8, and 11-13 (not argued
separately) which fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

Obviousness Rejection over Chebrolu and Watanabe
Claims 5, 10, and 15
Appellants do not provide separate arguments for this obviousness
rejection, instead contending that claims 5, 10, and 15 are allowable for the
same reasons argued regarding claim 1, which we did not find to be
persuasive. (App. Br. 6-7). We also observe that Appellants present no
arguments regarding the secondary Watanabe reference for claims 5, 10, and
15. Arguments not made are considered waived. See 37 C.F.R. §
41.37(c)(1)(vii). Therefore, for the same reasons discussed above regarding
claim 1, we sustain the Examiner’s obviousness rejection of claims 5, 10,
and 15.

Obviousness Rejection over Chebrolu and Nalawadi
Claims 4, 9, and 14
For convenience, we reproduce claim 4 here:
4. The method of claim 1 wherein:

the multipurpose media access device includes a USB
port and a USB driver, the USB driver including support for a
limited subset of USB peripherals, the support for a limited set
of USB peripherals preventing a user from operating a read
writeable storage device via the USB port.

(App. Br. 9, “Claims Appendix A”).

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Appellants present the following contentions:
When setting forth that Nalawadi discloses a USB driver
that includes support for a limited subset of USB peripherals
and the support for a limited set of USB peripherals preventing
a user from operating a read writeable storage device via the
USB port, the examiner refers to paragraph 0023 of Nalwadi,
which generally discloses disabling a periodic system
management interrupt (SMI).
However, disabling a periodic SMI is not a disclosure or
suggestion of providing support for a limited subset of USB
peripherals as disclosed and claimed, much less where the
support for the limited set of USB peripherals is for the purpose
of preventing a user from operating a read writeable storage
device via the USB port. By preventing a user from operating
such a device via the USB port, the limitation of preventing
unauthorized copying of a system image is further enhanced.
(App. Br. 7).

The Examiner disagrees:
Appellant's argument is not persuasive since Nalawdi discloses
USB [driver] which [includes support] for [a] limited subset of
USP peripherals (i.e., 'provides various software controls to
enable and disable the various USB interrupt sources, and also
to enable and disable the occurrence of USB legacy SMIs"
(0009) and [the] Examiner asserts that with the software
controls to enable and disable the various USB, this is
equivalent [to the claimed] limited subset of USB peripheral[s]
and when the USB is disabled by software, the user is
prevent[ed] [from] operat[ing] a read or write storage device via
the USB port.
(Ans. 21).

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For the reasons discussed infra, we find the weight of the evidence
supports the Examiner’s position.1
As pointed out by the Examiner (Id.), Nalawadi teaches that “the
chipset also provides various software controls to enable and disable the
various USB interrupt sources.” (para. [0009]). Nalawadi also teaches that
“[i]n various embodiments, external device 126 [Fig. 1] may be any USB
enabled device, such as, for example, a machine readable medium reader
and/or writer . . . .” (para. [0013], Fig. 1). Given this evidence, we find
disabling the corresponding USB interrupt will disable the USB enabled
read/write device, as taught by Nalawadi. (paras. [0009, 00013]).
Moreover, the Supreme Court has provided clear guidance that “when
a patent ‘simply arranges old elements with each performing the same
function it had been known to perform’ and yields no more than one would
expect from such an arrangement, the combination is obvious.” KSR Int’l v.
Teleflex Inc. 550 U.S. 398, 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S.
273, 282 (1976)).
This reasoning is applicable here. We also observe that Appellants
have not further rebutted the Examiner’s responsive arguments by filing a
Reply Brief. Therefore, for the reasons discussed above, and for the reasons
previously addressed regarding claim 1, we sustain the Examiner’s

1 The test for obviousness is what the combined teachings of the references
would have suggested to one of ordinary skill in the art. See In re Kahn, 441
F.3d 977, 987-88 (Fed. Cir. 2006); In re Young, 927 F.2d 588, 591 (Fed. Cir.
1991); In re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, in
evaluating such references it is proper to take into account not only the
specific teachings of the references but also the inferences which one skilled
in the art would reasonably be expected to draw therefrom. In re Preda, 401
F.2d 825, 826 (CCPA 1968).
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obviousness rejection over the combination of Chebrolu and Nalawadi of
representative claim 4, and claims 9 and 14 which fall therewith. See 37
C.F.R. § 41.37(c)(1)(vii).

CONCLUSION
On this record, Appellants have not persuaded us of reversible error
by the Examiner. 2

DECISION
We affirm the Examiner’s § 102 rejection of claims 1-3, 6-8 and 11-
13 .
We affirm the Examiner’s § 103 rejections of claims 4, 5, 9, 10, 14,
and 15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

ORDER
AFFIRMED

2 See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“Jung argues that the
Board gave improper deference to the examiner’s rejection by requiring
Jung to ‘identif[y] a reversible error’ by the examiner, which improperly
shifted the burden of proving patentability onto Jung. Decision at 11. This
is a hollow argument, because, as discussed above, the examiner established
a prima facie case of anticipation and the burden was properly shifted to
Jung to rebut it. . . . ‘[R]eversible error’ means that the applicant must
identify to the Board what the examiner did wrong . . . .”).

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