Ex Parte Carr

Board of Patent Appeals and Interferences

Feb 23, 2009

10141549 (B.P.A.I. Feb. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY DOUGLAS CARR
____________

Appeal 2008-1921
Application 10/141,549
Technology Center 2400
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Decided: February 23, 2009
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Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
STEPHEN C. SIU, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-18. The Appellant appeals
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

Appeal 2008-1921
Application 10/141,549

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INVENTION
The Appellant's inventive device allows a user to enable or disable
allowed features and functions while prohibits him from enabling non-
allowed features and functions. (Spec. 2.)

ILLUSTRATIVE CLAIM
1. A method for securely controlling access to a feature of a
device, comprising the steps of:
(a) receiving a request to enable the feature of the device;
(b) determining whether the feature is disabled;
(c) determining whether the feature can be enabled with
authorization;
(d) determining whether a requestor is authorized to enable the
feature of the device; and
(e) if the feature is disabled, if the feature can be enabled with
authorization and if the requestor is authorized to enable the feature
of the device, then enabling the feature of the device.

PRIOR ART
Merriam 6,643,781 B1 Nov. 4, 2003

REJECTIONS
Claims 1-8, 12, 17, and 18 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Merriam.

Claims 9-11 and 13-16 stand rejected under 35 U.S.C. § 103(a) as
obvious over Merriam.

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Application 10/141,549

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II. ISSUE
The Examiner finds that that in Merriam "the 'feature' of the
computing device 104 that corresponds to the 'feature' as set forth in claim 1,
is the 'normal operation' of the computing device (Col. 6, line 30)." (Answer
10-11.) He further finds that in col. 5, line 45 to col. 6, line 30 of the
reference "the limitation of 'enabled with authorization' is met because the
challenge/response methodology is used to unlock the computing device."
(Id. at 12.)

The Appellant makes the following argument.
Determining whether the device is locked and then using a
challenge message to being the unlocking process as described
in the Examiner's Answer at page 12 possibly relates to
enabling the alleged feature with authorization or determining
whether the alleged feature is enabled. The Examiner's citation
to Merriam does not describe "determining whether the feature
can be enabled with authorization".

(Reply Br. 3.) Therefore, the issue is whether the Examiner has shown that
Merriam both determines whether a device's feature can be enabled by an
authorized user and determines whether a requesting user is authorized to
enable the feature.

III. LAW
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability." In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). "[A]nticipation of a claim
under § 102 can be found only if the prior art reference discloses every
element of the claim . . . ." In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986)
Appeal 2008-1921
Application 10/141,549

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(citing Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick
Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)). "[A]bsence from the reference
of any claimed element negates anticipation." Kloster Speedsteel AB v.
Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986).

IV. FINDINGS OF FACT
Merriam's "FIG. 3 is a flow diagram illustrating a boot up process"
(col. 2, ll. 49-50) for a computing device. Upon initiation of the process, the
device's processor 204 "determine[s] whether [an] authorization
parameter 220 has expired . . . ." (Col. 5, ll. 11-12.) "[I]n response to a
determination that the authorization parameter 220 has expired, the
processor 204 issues a challenge (308) to the user via the user interface 212."
(Id. ll. 62-65.) "Once the user provides a response via the user interface 212,
the processor 204 receives the response (310) and makes a
determination (312) as to whether the response is correct for the issued
challenge." (Col. 6, ll. 9-12.) If "the response is deemed to be correct . . .
the processor 204 allows the boot up process to proceed (314) . . . ." (Id.
ll. 17-19.)

V. ANALYSIS
As aforementioned, the Examiner relies on Merriam's "challenge/
response methodology" (Answer 12) to teach the claimed limitation of
determining whether normal operation of the computing device can be
enabled with authorization before allowing a user to enable it. We find,
however, that the methodology constitutes the claimed step of "determining
whether a requestor is authorized to enable the feature of the device" rather
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Application 10/141,549

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than the claimed step of "determining whether the feature can be enabled
with authorization . . . ."

In Merriam, moreover, an authorized user can always enable the
associated computing device; the reference is concerned with restricting the
access of thieves. (See Abstract, l. 11.) We agree with the Appellant that
because "Merriam always enables the alleged feature with authorization;
therefore, there is no need in Merriam to determine 'whether the requested
feature can be enabled with authorization' . . . ."

VI. CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Examiner has failed to show that Merriam both determines whether a
device's feature can be enabled by an authorized user and determines
whether a requesting user is authorized to enable the feature.

VII. ORDER
We reverse the rejection of claims 1-18.

REVERSED

msc

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