11243352 (P.T.A.B. Jan. 28, 2014)

Ex Parte Boning

Patent Trial and Appeal BoardJan 28, 2014

11243352 (P.T.A.B. Jan. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte WERNER BONING ____________________ Appeal 2011-005483 Application 11/243,352 Technology Center 2100 ____________________ Before JOHNNY A. KUMAR, MICHAEL J. STRAUSS, and PETER P. CHEN, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005483 Application 11/243,352 2 STATEMENT OF CASE Introduction Appellant appeals under 35 U.S.C. § 134 from a final rejection of claims 1, 2, 5, 6, 8, and 10-37. Claims 3, 4, 7, and 9 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Exemplary Claim Exemplary claim 1 under appeal reads as follows: 1. A program-controlled unit comprising a memory for storing data, a memory protection apparatus for protecting the memory against read and/or write accesses by persons not authorized for such access, and a configuration block which is written to by the user of the program controlled unit and in which data relating to the read protection and/or the write protection is stored; wherein the configuration block is configured to receive user settings and dictate what areas of the memory a read protection and/or a write protection is intended to be effective in response thereto; wherein a confirmation code can be written to the configuration block, and wherein the writing of a predetermined confirmation code to the configuration block is a prerequisite for the settings stored in the configuration block becoming effective; and wherein the configuration block cannot be read from by the user of the program-controlled unit. Appeal 2011-005483 Application 11/243,352 3 Rejections The Examiner rejected claims 1, 2, 5, 6, 8, 10-14, and 16-28 under 35 U.S.C. § 103(a) as being unpatentable over Lee (US 5,930,826, Jul. 27, 1999) and Dalvi (US 6,073,243, Jun. 6, 2000). Ans. 4-16. The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as being unpatentable over Lee, Dalvi, and Yeager (US 5,802,583, Sep. 1, 1998). Ans. 17-18. The Examiner rejected claims 29-35 under 35 U.S.C. § 103(a) as being unpatentable over Lee, Dalvi, and Kawasaki (US 2001/0021966 A1, Sep. 13, 2001). Ans. 18-22. The Examiner rejected claims 36 and 37 under 35 U.S.C. § 103(a) as being unpatentable over Lee, Dalvi, and Falik (US 6,976,136 B2, Dec. 13, 2005). Ans. 22-23. Appellant’s Contentions 1. Appellant contends that the Examiner erred in rejecting claim 1 because Lee and Dalvi do not teach “wherein a confirmation code can be written to the configuration block, and wherein the writing of a predetermined confirmation code to the configuration block is a prerequisite for the settings stored in the configuration block becoming effective,” as recited in independent claim 1. App. Br. 3. In particular, Appellant contends that the PRTMODE signal in Lee does not correspond to the “predetermined confirmation code” because “the PRTMODE signal does not effectuate the protection bits of the protection bit array which allow each individual sector of the normal memory array to be protected independently from an erase, program, or read operation.” Id. at 4-5 (emphasis in original Appeal 2011-005483 Application 11/243,352 4 omitted, emphasis ours, hereinafter “independently” feature). Appellant further contends that the “passcode taught by Dalvi et al. is rather an override to the master lock-bit and does not effectuate settings stored.” Id. at 6 (emphasis ours, hereinafter “override” feature). 2. Appellant contends that the limitation “wherein a confirmation code can be written to the configuration block,” as recited in claim 1 (emphasis ours), must be given patentable weight because the limitation “recites a condition that the program-controlled unit is operable to prevent stored settings from becoming effective when the predetermined confirmation code is not written to the confirmation block, and is further operable to make such settings effective when the predetermined confirmation code is written to the configuration block.” Id. at 6-7. Issue on Appeal Did the Examiner err in rejecting claim 1 as being obvious because the references fail to teach or suggest the claim limitations at issue?1 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s contentions that the Examiner has erred. We agree with the Examiner and adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s 1 Separate patentability is not argued for the remaining claims. Therefore, we treat claim 1 as representative for purposes of this appeal. Except for our ultimate decision, dependent claims 2, 5, 6, 8, and 10-37 are not discussed further herein. Appeal 2011-005483 Application 11/243,352 5 Answer in response to Appellant’s Appeal Brief (see Ans. 4-28). However, we highlight and address specific findings for emphasis as follows. As to contention 1, based on our review of Lee and consistent with the Examiner’s stated positions (Ans. 25-26), we interpret the claim terms “predetermined confirmation code” using the broadest reasonable interpretation consistent with Appellant’s disclosure, to include the PRTMODE signal because independent claim 1 does not preclude such a reading. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Regarding Appellant’s contention about the “independently” feature, we find that Appellant’s arguments are not commensurate with the scope of the claims. Regarding Appellant’s argument about the “override” feature, Appellant’s arguments are not commensurate with the scope of claim 1, because claim 1 does not preclude Dalvi’s override feature. As to contention 2, the Examiner finds, and we agree, that the scope of “wherein a confirmation code can be written to the configuration block” does not require the writing of a confirmation code to the configuration block. Ans. 27-28. The writing of the confirmation code to the configuration block is an optional element that does not narrow claim 1. See In re Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006) (“[O]ptional elements do not narrow the claim because they can always be omitted.”). Accordingly, we affirm the Examiner’s rejection of claim 1, and dependent claims 2, 5, 6, 8, and 10-37. CONCLUSIONS The Examiner did not err in rejecting claims 1, 2, 5, 6, 8, 10-14, and 16-28 under 35 U.S.C. § 103(a) as being unpatentable over Lee and Dalvi. Appeal 2011-005483 Application 11/243,352 6 The Examiner did not err in rejecting claim 15 under 35 U.S.C. § 103(a) as being unpatentable over Lee, Dalvi, and Yeager. The Examiner did not err in rejecting claims 29-35 under 35 U.S.C. § 103(a) as being unpatentable over Lee, Dalvi, and Kawasaki. The Examiner did not err in rejecting claims 36 and 37 under 35 U.S.C. § 103(a) as being unpatentable over Lee, Dalvi, and Falik. DECISION2 The Examiner’s rejections of claims 1, 2, 5, 6, 8, and 10-37 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED msc 2 In the event of further prosecution, we leave it to the Examiner to consider a rejection under § 112, second paragraph. “[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim . . . indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential).