Robert Smart

Patent Trials and Appeals Board

Jul 30, 2019

14667256 - (D) (P.T.A.B. Jul. 30, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/667,256 03/24/2015 Robert Smart 13IMS0690US01
858063.486
8509
38106 7590 07/30/2019
Seed IP Law Group LLP/ST (EP ORIGINATING)
701 FIFTH AVENUE, SUITE 5400
SEATTLE, WA 98104-7092
EXAMINER
KANAAN, SIMON P
ART UNIT PAPER NUMBER
2492
NOTIFICATION DATE DELIVERY MODE
07/30/2019 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):
USPTOeAction@SeedIP.com
pairlinkdktg@seedip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte ROBERT SMART1
_____________

Appeal 2018-007228
Application 14/667,256
Technology Center 2400
______________

Before ROBERT E. NAPPI, ERIC S. FRAHM, and
MICHAEL T. CYGAN, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1 through 45 which constitute all the
claims pending in this application. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 According to Appellant, the real party in interest is STMicroelectronic
LTD. App. Br. 2.
Appeal 2018-007228
Application 14/667,256

2

INVENTION
The invention is directed to a data processing using a virtual data
buffer, with contiguous virtual addresses being associated with
discontinuous addresses of a physical memory, wherein cyphering is
performed between the data processing and the physical memory and the
cypher key is based on virtual buffer address. Abstract.
Claim 1 is illustrative of the invention and is reproduced below (with
emphasis added to the disputed limitation).
1. A method, comprising:
receiving a command associated with a virtual
buffer, contiguous virtual addresses of the virtual buffer
being associated with discontiguous addresses of a
physical memory;
determining whether a virtual address associated
with the command is within an address range; and
based on the determination of whether the virtual
address associated with the command is within the
address range,
determining a key based on virtual buffer address
information associated with the virtual buffer; and
executing the command using the determined key.

REJECTION AT ISSUE2
The Examiner has rejected claims 1 through 45 under 35 U.S.C.
§ 103(a) as being unpatentable over Vrancic (US 6,839,777 B1, iss. Jan. 4,

2 Throughout this Decision, we refer to the Appeal Brief (“App. Br.”) filed
February 9, 2018, the Reply Brief (“Reply Br.”) filed July 9, 2018, the Final
Office Action (“Final Act.”) mailed July 14, 2017, and the Examiner’s
Answer (“Ans.”) mailed May 18, 2018.
Appeal 2018-007228
Application 14/667,256

3

2005) and Walrath (US 2013/0205139 A1, pub. Aug. 8, 2013) and Noel et
al. (US 5,978,892, iss. Nov. 2, 1999). Final Act. 3–12.

ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have persuaded us of error in the
Examiner’s obviousness rejection.
Appellant argues, on pages 29 through 31 of the Appeal Brief and
pages 4 through 6 of the Reply Brief, that the Examiner’s rejection of
independent claim 1, 16, and 27 is in error. The dispositive issue presented
by these arguments is, did the Examiner err in finding the combination of
Vrancic, Walrath, and Noel teach or suggest determining whether a virtual
address associated with the command is within an address range as recited in
the independent claim?
The Examiner, in response to Appellant’s arguments directed to the
dispositive issue, states “Vrancic and Noel both have virtual memory with
virtual addresses and Noel even specifies that the virtual memory is in a
range and all memory is within a range therefore the limitation ‘determining
whether a virtual address associated with the command is within an address
range’ is met because the deterring [sic] step in this case would always be
true.” Answer 5. We disagree with the Examiner’s finding. The claims
recite a step of determining whether the memory is in a range, but the
Examiner has not identified a step of determining whether the memory is in
a range; whether or not a memory address will always be in a range, does
not necessarily teach a step of making a determination. A proper
Appeal 2018-007228
Application 14/667,256

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determination of obviousness under 35 U.S.C. § 103 requires a
determination that the “differences between the claimed invention and the
prior art are such that the claimed invention as a whole would have been
obvious.” 35 U.S.C. § 103. The Examiner has not determined, for example,
that such a range-determining step would have been inherently performed by
the process resulting from the combined teachings of the references such that
it does not constitute a difference from the prior art. Nor has the Examiner
determined that such a step, though not taught or suggested by the
references, would have been obvious to one having ordinary skill in the art
at the time the invention was made. Instead, the Examiner implies that such
a range-determining step need not be found in the prior art because the
results of the step would always be true, which fails to follow the analysis
required by §103. Accordingly, we do not sustain the Examiner’s rejection
of independent claims 1, 16, and 27 or dependent claims 2 through 15, 17
through 26 and 28 through 36.
The Examiner’s rejection of independent claims 37 and 43 relies upon
similar rationale as discussed above with respect to claim 1. Final 12,
Answer 17. Independent claim 37 recites “determining, based on
identification information associated with the virtual buffer” and
independent claim 43. Thus, claims 37 and 43 differ in scope from claim 1
in that they do not make a determination of a virtual address being in a range
of virtual addresses. Claims 37 and 43, do nonetheless recite a limitation
directed to a determination being made based upon information associated
with the virtual buffer. The Examiner has not shown that the combination of
Vrancic, Walrath, and Noel teach or suggest a step of making a
determination based upon information associated with the virtual buffer.
Appeal 2018-007228
Application 14/667,256

5

Accordingly, we do not sustain the Examiner’s rejection of independent
claims 37 and 43 or dependent claims 38 through 43, 44, and 45.

DECISION
We reverse the decision of the Examiner to reject claims 1 through 45
under 35 U.S.C. § 103(a).

REVERSED