Ex Parte Bare et al

Patent Trial and Appeal Board

Dec 16, 2013

10981150 (P.T.A.B. Dec. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BALLARD CLAUDE BARE
and SHAUN KAZUO WAKUMOTO
____________

Appeal 2011-007094
Application 10/981,150
Technology Center 2400
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Before MAHSHID D. SAADAT, JOHNNY A. KUMAR,
and MICHAEL J. STRAUSS, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007094
Application 10/981,150

2
Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1-5, 7, 9-18, and 21-31, which constitute all the claims pending in
this application as claims 6, 8, 19, and 20 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to a method and apparatus for data
communication and assuring integrity of data sent between multiple devices
(see Spec. 2:3-15).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A method of assuring integrity of a data set
between multiple devices, the method comprising:
generating a normalizing factor at a first device;
calculating a first integrity mechanism based on the data
set at the first device and the normalizing factor; and
sending the normalizing factor and the first integrity
mechanism from the first device to at least a second device,
wherein the first device is a source device of the data set
whose integrity is being assured, and the second device is a
destination device of the data set whose integrity is being
assured.

Rejections on Appeal
Claim 1 stands rejected under 35 U.S.C. § 112, second paragraph.
Appeal 2011-007094
Application 10/981,150

3
Claims 1-5, 9-18, and 21-31 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Vialen (US 2002/0044552 A1) and Morrison (US
2003/0131291 A1).

ANALYSIS
Rejection under 35 U.S.C. § 112, second paragraph
The Examiner finds that the limitation “integrity mechanism” recited
in claim 1 “renders the claim indefinite because it is unclear what does [sic]
integrity mechanism refers to in the claim and it is unclear how integrity
mechanism is defined” (Non-final Rej. 2).
Appellants contend that “[c]laim 1 specifically recites calculating a
first integrity mechanism based on the data set at the first device and the
normalizing factor that is also generated at the first device” (App. Br. 5).
Appellants further refer to page 16 of their disclosure for specific examples
of “integrity mechanism” and argue that the disputed term is defined and
supported by the instant disclosure (App. Br. 6). In response, the Examiner
explains that “[a]s best understood by the Examiner, the integrity mechanism
refers to the integrity of data transferred between devices” (Ans. 12). We
agree with Appellants’ reasoning and rebuttal that the meaning of “integrity
mechanism” is evident from reading the claim in view of the disclosure such
that one of ordinary skill in the art could reasonably ascertain the scope of
the claim (id.).
Therefore, we do not sustain the rejection of claim 1 under the second
paragraph of 35 U.S.C. § 112.
Appeal 2011-007094
Application 10/981,150

4
Rejection under 35 U.S.C. § 103
The Examiner relies on Vialen for disclosing all the elements of the
claimed method except for means for “calculating a first integrity
mechanism based on the data set . . . and the normalizing factor,” for which
the Examiner relies on Morrison (Ans. 4-5). Appellants argue that Morrison
includes no teaching that any integrity mechanism is calculated based on the
checksum in Morrison, which is characterized by the Examiner as the
“normalizing factor” or the checksum sent between devices (App. Br. 8).
The Examiner responds that the integrity mechanism is a checksum that is
calculated based on “a normalizing factor which is another checksum
received with the data” (Ans. 14). In response, Appellants contend that even
if the checksum can be considered the “normalizing factor” of claim 1, there
is no teaching in Morrison of one checksum being calculated based on
another checksum (Reply Br. 4).
We agree with Appellants. Morrison’s checksum is calculated based
on the transferred data and is transferred to the receiving device. However,
as pointed out by Appellants (Reply Br. 4) the Examiner has not identified
any element in Morrison to show that the claimed normalizing factor is used
to calculate the checksum and is sent along with the checksum or the
integrity mechanism to a second device. Therefore, we find that the
Examiner’s assertion with respect to Morrison teaching the claimed
“calculating a first integrity mechanism based on the data set at the first
device and the normalizing factor,” as required by claim 1 and the other
independent claims, is not supported by evidence of record.
Therefore, we do not sustain the 35 U.S.C. § 103 rejection of claims 1,
12 and 24, nor of the remaining dependent claims.
Appeal 2011-007094
Application 10/981,150

5
CONCLUSIONS
On the record before us, we conclude that the Examiner has erred in
rejecting claim 1 as being indefinite. Additionally, we conclude that the
Examiner has erred in rejecting claims 1-5, 9-18, and 21-31 under 35 U.S.C.
§ 103(a) as obvious over Vialen and Morrison.

DECISION
The Examiner’s decision rejecting claims 1-5, 9-18, and 21-31 is
reversed.

REVERSED

msc