Ex Parte Andersson et al

Patent Trial and Appeal Board

Jun 17, 2016

13382364 (P.T.A.B. Jun. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/382,364 01/05/2012
58342 7590 06/21/2016
WARREN A, SKLAR (SOER)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
19THFLOOR
CLEVELAND, OH 44115
FIRST NAMED INVENTOR
Stefan Andersson
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SSTRP0191WOUS1 2826
EXAMINER
VU, QUOC THAI NGOC
ART UNIT PAPER NUMBER
2642
NOTIFICATION DATE DELIVERY MODE
06/21/2016 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):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEP AN ANDERSSON and HANS W ACHTMEISTER
Appeal2014-008128
Application 13/382,3641
Technology Center 2600
Before ROBERT E. NAPPI, NATHAN A. ENGELS, and
JOHN D. HAMANN, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-9 and 11-20. Claim 10 was
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
THE CLAIMED INVENTION
Appellants' claimed invention relates to "changing an operating mode
of a mobile device." Spec. i-f 4. Claim 9 is illustrative of the subject matter
1 According to Appellants, the real party in interest is SONY MOBILE
COMMUNICATIONS AB. App. Br. 2.
Appeal2014-008128
Application 13/382,364
of the appeal and is reproduced below with emphasis added to disputed
limitations.
9. A mobile device, comprising:
an input device for receiving input information from a
user of the mobile device,
an output device for outputting output information to the
user, and
a processing unit adapted to
receive via the input device a request from the user
to change from a first operating mode of the mobile
device to a second operating mode of the mobile device,
request a credential from the user in response to
the received request,
receive a credential from the user,
validate the received credential, and
if the received credential is valid, set the second
operating mode, set an indication of the mobile device
indicating that the second operating mode has been set,
prohibit resetting the indication indicating that the
second operating mode has been set, and refuse access to
a hardware unique key stored on the mobile device.
REJECTIONS ON APPEAL
(1) The Examiner rejected claims 1-5, 9, 11-15, 19, and 20 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Mendonca
(US 2010/0229219 Al; Sept. 9, 2010) and Ordogh (US 2010/0219979 Al;
Sept. 2, 2010), collectively referred to as the "combination."
(2) The Examiner rejected claims 6 and 16 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Mendonca, Ordogh,
and Li (US 2011/0034211 Al; Feb. 10, 2011).
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(3) The Examiner rejected claims 7, 8, 17, and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Mendonca, Ordogh,
and Jobst et al. (US 6,707,915 Bl; Mar. 16, 2004) (hereinafter "Jobst").
(4) The Examiner rejected claims 19 and 20 under 35 U.S.C. § 112,
first paragraph, written description requirement, for claiming subject matter
which was not described in the Specification in such a way as to reasonably
convey to one skilled in the art that Appellants, at the time the application
was filed, had possession of the claimed invention.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
contentions that the Examiner erred. In reaching our decision, we consider
all evidence presented and all arguments made by Appellants. We below
address specific findings and arguments relating to each of the Examiner's
rejections Appellants are appealing.
(1) Conditional method steps
Appellants argue the Examiner errs in finding the combination of
Ordogh and Mendonca teaches or suggests four specific limitations2 recited
among the four independent claims on appeal - claims 1, 9, 19, and 2 0.
See App. Br. 7-12. Appellants' arguments group these claims in various
combinations (e.g., (1, 9, 19, 20) and (1, 9)) depending upon the specific
disputed limitation recited in the particular claim. See id. However, claims
1 and 19' s recitation of the disputed limitations occurs within conditional
2 We do not reach Appellants' argument concerning the claimed "hardware
unique key" because (i) for claim 1, it appears in a conditional step and
(ii) for claim 9, we do not sustain the Examiner's§ 103 rejection due to
another argument.
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steps. See Claim Appendix 15, 20. Claim 1 recites the conditional method
step of: "if the second operating mode has been set, prohibiting a reset of
the indication indicating that the second operating mode has been set and
refusing access to a hardware unique key stored on the mobile device." See
id. at 15. Claim 19 recites two conditional steps: (i) "setting the second
operating mode and setting an indication of the mobile device indicating that
the second operating mode has been set, if the received credential is valid,"
and (ii) "if the second operating mode has been set, prohibiting a reset of the
indication indicating that the second operating mode has been set." See id.
at 20. As we address below, the conditional method steps do not need to be
performed under the broadest reasonable interpretation of the claims.
During examination, claims are given their broadest reasonable
interpretation consistent with the specification. See In re Am. A cad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The broadest reasonable
interpretation of claims 1 and 19 encompass instances in which the methods
end when the prerequisite condition for the step is not met (e.g., if the
second operating mode has not been set, or if the received credential is
invalid). Thus, the broadest reasonable interpretation encompasses methods
where only the non-conditional steps are performed.
Such a finding follows from the direct inverse relationship between
invalidity and infringement. "[I]t is axiomatic that that which would literally
infringe if later anticipates if earlier." Bristol-Myers Squibb Co. v. Ben
Venue Labs, Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001). As to infringement,
conditional method steps need not be performed for infringement to be
found. See, e.g., Applera Corp. v. Illumina, Inc., 375 Fed. Appx. 12, 21
(Fed. Cir. 2010) (unpublished) (affirming a district court's interpretation of a
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Application 13/382,364
method claim as including a step that need not be practiced if the condition
for practicing the step is not met); Cybersettle, Inc. v. Nat'! Arbitration
Forum, Inc., 243 Fed. Appx. 603, 607 (Fed. Cir. 2007) (unpublished) ("It is
of course true that method steps may be contingent. If the condition for
performing a contingent step is not satisfied, the performance recited by the
step need not be carried out in order for the claimed method to be
performed."). Likewise, as to invalidity, conditional method steps need not
be shown in establishing invalidity.
(2) Prohibit resetting the indication
Appellants argue the combination, and Ordogh in particular, fails to
teach or suggest "prohibit[ing] resetting the indication indicating that the
second operating mode has been set," as recited in claims 9 and 20. See
App. Br. 7-9. Specifically, Appellants argue Ordogh does not teach or
suggest prohibiting a reset of the lost status determiner (80) and that the
permanent storage medium having the lost status determiner (80) "may also
be accessed and maybe even reset. It is just that, in Ordogh, such access
and/or reset may destroy the processor (52) and thus disable the mobile
terminal (10)." See App. Br. 8 (citing Ordogh i-fi-133-34); see also Reply Br.
2-3 (citing Ordogh i-fi-132-34).
The Examiner finds Ordogh teaches or suggests protecting data -
including a loss status flag which, if set, indicates a stolen condition, and
corresponds to the claimed second operating mode - by storing the loss
status flag in a permanent storage medium. See Ans. 3 (citing Ordogh
i-fi-133-34). The Examiner also finds an example of such permanent storage
medium includes read only memory ("ROM"), "which allows data to be
written one time" and stored until destroyed. See Ans. 3 (citing Ordogh
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if 32). The Examiner further finds "'permanent storage medium' indicates
that data cannot be written on more than once .... " Ans. 3. The Examiner
then concludes Ordogh's teaching of "loss status" being stored on a
permanent storage medium teaches the disputed limitation "because 'loss
status' cannot be changed to indicate 'not lost."' See id.
We agree with the Examiner's findings and adopt them as our own.
Ordogh teaches the disputed limitation by teaching storing a loss status flag
which, if set, indicates a stolen condition, in a permanent storage medium,
which allows data to be written one time. See Ordogh iii! 32-34.
(3) Refuse access to a hardware unique key
Appellants argue the combination fails to teach or suggest "refus[ing]
access to a hardware unique key stored on the mobile device," as recited in
claim 9. App. Br. 9-10. Appellants first argue "refus[ing] access" must
mean refusing read or refusing read and write capabilities in light of the
Specification. Reply Br. 5. According to Appellants, "the purpose of
refusing access to the hardware unique key on a rooted device includes
preventing this sensitive material [(e.g., usemames and passwords, etc.)]
from being known to [a] hacker." See Reply Br. 4--5 (citing Spec. 7, 11. 29-
34). Appellants add this sensitive information "would clearly be useful to
the hacker by the hacker merely knowing the contents of these materials
regardless of whether the hacker may write over them." Reply Br. 5.
Appellants thus contend "'refusing access' must be construed as refusing the
sensitive material at least from being read ... [,and] must be construed as
refusing read or refusing read and write, but not as refusing only write as the
Examiner proposes." See id. Appellants then argue Ordogh's teaching of
writing data to a ROM "does not refuse a read of that data." Id.
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The Examiner finds Ordogh teaches this disputed limitation. See Ans.
4. The Examiner begins by finding one of ordinary skill in the art would
understand "access" means "(1) 'read' data from memory or (2) 'write' data
onto the memory .... " See id. The Examiner then finds the Specification
"does not define a specific type of 'access,"' and thus, "it is reasonable to
interpret 'access' as data 'write,"' which includes "[c]hanging or deleting
data .... " See Ans. 4. The Examiner concludes Ordogh's teaching of
storing a unique finger-print type ID (i.e., the hardware unique key) on a
permanent storage medium teaches the disputed limitation because the
unique finger-print type ID "cannot be changed or deleted once it is stored
on the permanent storage medium." Id.
We find Appellants' arguments persuasive. We agree with Appellants
that the broadest reasonable interpretation of "refus[ing] access" in light of
the Specification includes refusing a read of the hardware unique key. See
Spec. 7, 11. 29-34. Accordingly, we do not sustain the Examiner's§ 103
rejection of claim 9, as well as claims 11-18, which depend from claim 9
and incorporate the disputed limitation.
(4) Motivation to combine Ordogh and Mendonca
Appellants argue the Examiner fails to show that combining Ordogh
and Mendonca is appropriate. See App. Br. 12-13. Appellants argue "a
person of ordinary skill in the art would not have any motivation to combine
the teachings of Ordogh with the teachings of Mendonca when looking for a
solution to the problem underlying the claimed invention." See id. at 12.
Appellants argue the claimed invention relates to the problem of
changing an operating mode of a mobile device and granting secure access
to a user of the mobile device while avoiding modification of the mobile
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device by a hacker. See id. at 12-13 (citing Spec. "Background of the
Invention"). Appellants then contend Ordogh, in contrast, relates to device
recovery by enabling the device to provide information indicative of a
location in response to a determination that the device has been lost or
stolen. See id. at 13 (citing Ordogh i17, Abstract).
The Examiner cites Mendonca for, inter alia, receiving a request to
change from a first operating mode to a second operating mode and
effectuating that request, if the requestor is properly credentialed. See Final
Act. 4--5 (citing Mendonca i1i138, 44, 48, 50, 53-57 (finding for the refusing
access to a hardware unique key stored on the mobile device limitation that
Mendonca teaches that "there is no interface to access to secret keys"), 68,
80, 94, 96, 101, 107-108). The Examiner combines Ordogh with Mendonca
for Ordogh's additional teachings, including concerning prohibiting a reset
of the indication indicating that the second operating mode has been set, if
so set. See id. 5 (citing Ordogh i1i133-34) (finding Ordogh teaches, inter
alia, storing a loss status flag in a permanent storage medium to prevent
tampering of the data). The Examiner concludes it would have been obvious
to one of ordinary skill in the art to include Ordogh's teachings concerning
prohibiting a reset of the indication indicating that the second operating
mode has been set, if so set, to Mendonca' s teachings to protect Mendonca' s
secret data keys from being tampered with. See id. (citing Ordogh i1 33).
We find Appellants' arguments unpersuasive and find the Examiner
provides "articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed.
Cir. 2006). The Examiner reasons a person of ordinary skill in the art would
have been motivated to combine Mendonca and Ordogh to protect the secret
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data keys from being tampered with (i.e., prohibit the secret data keys from
being changed or reset). See Final Act. 5 (citing Ordogh i-f 33); see also
supra ((2) Prohibit resetting the indication); KSR Int'! Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) ("[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill."). We also find
Appellants' argument that Ordogh is directed to a different problem
unpersuasive. See Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1368
(Fed. Cir. 2012) ("We have repeatedly held that the motivation to modify a
prior art reference to arrive at the claimed invention need not be the same
motivation that the patentee had.") (citing KSR, 550 U.S. at 420 that it is
error to look "only to the problem the patentee was trying to solve").
Appellants also contend "combining Ordogh with Mendonca as
suggested by the Examiner ... would render Mendonca unsatisfactory for its
intended purpose and Mendonca's basic principle of operation would be
changed." Reply Br. 6-8 (emphasis omitted). This argument, however, is
waived as it was raised for the first time in the Reply Brief without a
showing of good cause. See 37 C.F.R. § 41.41(b)(2) (2012); see also Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) ("[T]he
reply brief [is not] an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner's rejections, but
were not.").
(5) Written description (or claims 19 and 20
Appellants contend the Specification complies with the written
description requirement of 35 U.S.C. § 112, first paragraph, with respect to
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claims 19 and 20 because it discloses "that the credential is stored
permanently." See App. Br. 13. Specifically, Appellants first argue the
Specification discloses storing the credential in a "trim area." See id. (citing
Spec. 6, 11. 26-28; 7, 11. 16-32, Fig. 2 (22 ("TA"))). Appellants then argue
"[a] person skilled in the art knew at the time of invention that the 'trim
area' is a permanent storage location in memory of, for example, a Sony
Mobile telephone." App. Br. 13. Appellants thus contend information
stored in the trim area is permanently stored. See id.
The Examiner finds the Specification does not disclose that the trim
area is permanent storage. Ans. 10. The Examiner also questions whether
one of ordinary skill in the art would understand that "trim area" storage is
permanently stored. Id.
We are not apprised of error based on Appellants' arguments because
Appellants do not provide evidence to support the asserted views as to how
one of ordinary skill in the art at the time of the invention would understand
the "trim area" disclosure. See In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) ("Attorney's argument in a brief cannot take the place of evidence.");
see also Spec. 6, 11. 26-28; 7, 11. 16-32, Fig. 2 (22 ("TA")). We find there is
no evidence of record that one skilled in the art would have reasonably
concluded that Appellants had possession of permanently storing the
credential at the time the Specification was filed. See In re Gosteli, 872 F.2d
1008, 1012 (Fed. Cir. 1989). Accordingly, we sustain this rejection.
DECISION
(1) We affirm the Examiner's§ 103(a) rejections of claims 1-8, 19,
and 20.
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(2) We reverse the Examiner's§ 103(a) rejections of claims 9 and
11-18.
(3) We affirm the Examiner's rejection of claims 19 and 20, under
35 U.S.C. § 112, first paragraph, for failing to meet the written description
requirement.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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