DELL SOFTWARE, INC.

Patent Trials and Appeals Board

Jan 27, 2022

2021000104 (P.T.A.B. Jan. 27, 2022)

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. 14/680,242 04/07/2015 Daniel A. Ford DC-104330.01 1061 160816 7590 01/27/2022 Terrile, Cannatti & Chambers, LLP - Dell P.O. Box 203518 Austin, TX 78720 EXAMINER WU, YICUN ART UNIT PAPER NUMBER 2153 NOTIFICATION DATE DELIVERY MODE 01/27/2022 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): USPTO@dockettrak.com tmunoz@tcciplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL A. FORD Appeal 2021-000104 Application 14/680,242 Technology Center 2100 Before JOSEPH L. DIXON, JASON J. CHUNG, and BETH Z. SHAW, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-4, 6-10, 12-16, and 18. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a) (2018). Appellant identifies the real party in interest as Dell Products L.P. Appeal Br. 1. Appeal 2021-000104 Application 14/680,242 2 CLAIMED SUBJECT MATTER The claims are directed to device control using a secure decentralized transactional ledger. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A computer-implementable method for controlling a device within a device control environment, the device control environment comprising a device control server executing a device control system and a plurality of devices, the device control system and the plurality of devices communicating via a network, comprising: coupling the device with a secure transactional ledger, the coupling of the device providing an indication to enable control of the device via the device control system; depositing a command into the secure transactional ledger stored within the device control system; monitoring the secure transactional ledger for the command via the device, the monitoring comprising determining whether the command is addressed to the device and is from a source the device is configured to obey; accepting and executing the command via the device, executing the command providing indirect control of the device via the secure transactional ledger; and wherein the transactional ledger is represented by a block chain, the block chain comprising linked data representing the contents of the ledger, the block chain incorporates new commands in the transactional ledger by extending the block chain with additional blocks. Appeal 2021-000104 Application 14/680,242 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Kittlitz et al. US 2003/0069858 A1 Apr. 10, 2003 Smith US 2015/0379510 A1 Dec. 31, 2015 REJECTION Claims 1-4, 6-10, 12-16, and 18 stand rejected under 35 U.S.C. § 103 as being unpatentable over Kittlitz in view of Smith. OPINION 35 U.S.C. § 103 Non-obviousness cannot be established by attacking references individually where, as here, the ground of unpatentability is based upon the teachings of a combination of references. In re Keller, 642 F.2d 413, 426 (CCPA 1981). Rather, the test for obviousness is whether the combination of references, taken as a whole, would have suggested the patentee’s invention to a person having ordinary skill in the art. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We are bound by the controlling guidance of our reviewing court: “[i]t is the claims that measure the invention.” See SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc) (citations omitted); In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (citations omitted) (“[T]he name of the game is the claim.”) (emphasis added). “Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.” SuperGuide Appeal 2021-000104 Application 14/680,242 4 Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). “We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). We note claim terms are to be given their broadest reasonable interpretation, as understood by those of ordinary skill in the art and taking into account whatever enlightenment may be had from the specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). “In the patentability context, claims are to be given their broadest reasonable interpretations[,] . . . limitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted). “It is well-established that the Board is free to affirm an examiner’s rejection so long as appellants have had a fair opportunity to react to the thrust of the rejection.” In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (quotations marks and citations omitted). We find that the Examiner has addressed all the issues involved in this appeal, particularly in light of the fact that Appellant has failed to specifically identify errors in the Examiner’s rejections. Accordingly, we adopt the Examiner’s factual findings, reasoning, and conclusions (Final Act. 3-6; Ans. 4-6) as our own. See, e.g., In re Paulsen, 30 F.3d 1475, 1478 n.6 (Fed. Cir. 1994). With respect to independent claims 1, 7, and 13, Appellant does not set forth separate arguments for patentability. Appeal Br. 3. As a result, we exercise our authority under 37 C.F.R. § 41.37(c)(1)(iv) and group independent claims and select independent claim 1 as the representative claim for the group and will address Appellant’s arguments thereto. See 37 C.F.R. § 41.37(c)(1)(iv). Arguments which Appellant could have made Appeal 2021-000104 Application 14/680,242 5 but did not make in the Brief are deemed to be waived/forfeited. See 37 C.F.R. § 41.37(c)(1)(iv). With regard to independent claim 1, we agree with the Examiner and find Appellant’s arguments do not show error in the Examiner’s factual findings or conclusion of obviousness of representative independent claim 1. Appellant argues that the claims of the present application are generally directed to controlling a device via a secure transaction ledger, and nowhere within any of the cited references is the concept of controlling a device as disclosed and claimed via a secure transaction ledger disclosed or suggested. Appeal Br. 3. Appellant further argues that the claimed monitoring is patentably distinct from the verification of Kittlitz in paragraph 25 and the monitoring comprises determining whether the command is addressed to the device and is from a source the device is configured to obey. Appeal Br. 4. Appellant also argues this element is a specific part of the general concept of controlling a device via a secure transaction ledger. Appeal Br. 4. Appellant further argues that the Examiner cites to a portion of Kittlitz which discloses adjusting balances, signing newly-generated receipts and returning the receipts to the client subsystem (see e.g., Kittlitz, Figure 10, step 1018 and Paragraph [0078]). Appeal Br. 4. Appellant argues the claimed executing step is patentably distinct from the balance adjustment process disclosed by Kittlitz and the balance adjustment process does not provide indirect control of a device via a secure transaction ledger. Appeal Br. 4. Appellant also argues that there is no disclosure or suggestion in Kittlitz or in Smith of any of controlling a device within a device control environment, much less coupling the device with a secure transactional Appeal 2021-000104 Application 14/680,242 6 ledger where the coupling of the device provides an indication of a desire to control the device via the device control system, much less monitoring the secure transactional ledger for the command via the device, where the monitoring comprises determining whether the command is addressed to the device and is from a source the device is configured to obey, much less accepting and executing the command via the device, executing the command providing indirect control of the device via the secure transactional ledger, as required by claim 1. Appeal Br. 4-5. The Examiner clarifies that the Kittlitz reference was relied upon to teach this limitation, and the Examiner further finds that because the “block is a growing list of records, called blocks, and was designed to be without the need of a trusted authority or central server so it inherently extends the chain by incorporating multiple independent records.” Ans. 5- 6. The Examiner further identifies that Appellant is arguing the references individually and identifying the deficiencies in one reference which the Examiner has relied upon the other reference to teach that limitation, and Appellant’s argument does not show error in the prior art as applied by the Examiner in the grounds of the rejection. Ans. 6. We disagree with Appellant’s arguments and find that the Examiner specifically addresses each of Appellant’s arguments with respect to independent claim 1, and the Examiner provides detailed responses identifying the specific portions of the reference and how they are applied to teach or suggest the express claim language. Ans. 4-6. We further note that Appellant did not file a Reply Brief to respond to the Examiner’s further clarifications and mappings of the disclosed teachings within the Kittlitz and Smith references to the claim limitations. Appeal 2021-000104 Application 14/680,242 7 As a result, Appellant’s arguments do not show error in the Examiner’s factual findings or the conclusion of obviousness of representative independent claim 1. Therefore, we sustain the Examiner’s rejection of independent claim 1 and, and independent claims 7 and 13 not separately argued by Appellant and their respective dependent claims not separately argued. Claims 6, 12, 18 Appellant further argues with respect to dependent claims 6, 12, and 18 that when discussing the claim element of extending the block chain that incorporates a consensus of multiple independent parties, the Examiner cites to the disclosure of Kittlitz that the processing of transaction is in a distributed network. Appeal Br. 5. Appellant argues that nowhere within the Kittlitz reference is there any disclosure or suggestion of extending a block chain, much less where extending the block chain incorporates a consensus of multiple independent parties, as required by claims 6, 12 and 18. Appeal Br. 5. The Examiner further finds that Appellant is merely pointing out claim language without elaboration of deficiencies which does not constitute a persuasive argument under Rule 41.37. Ans. 6. We find that Appellant does not address the specific portion of the Kittlitz reference identified in the rejection, and the Examiner identified that the Smith reference was relied upon to teach the block chain. Final Act. 6; Ans. 6. We agree with the Examiner that Appellant merely repeats the language of the claim and does not provide a substantive argument for patentability. As a result, we find Appellant’s argument to be unpersuasive of error in the rejection of Appeal 2021-000104 Application 14/680,242 8 dependent, 6, 12, and 18, and we sustain the Examiner’s obviousness rejection. CONCLUSION We sustain the Examiner’s obviousness rejections of claims 1-4, 6- 10, 12-16, and 18. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4, 6-10, 12-16, 18 103 Kittlitz, Smith 1-4, 6-10, 12-16, 18 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED