Ex Parte ChenDownload PDFPatent Trial and Appeal BoardAug 14, 201411620885 (P.T.A.B. Aug. 14, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/620,885 01/08/2007 Iue-Shuenn Chen 3875.1300001 1127 26111 7590 08/14/2014 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER SONG, HUA JASMINE ART UNIT PAPER NUMBER 2188 MAIL DATE DELIVERY MODE 08/14/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte IUE-SHUENN CHEN ____________________ Appeal 2012-000587 Application 11/620,8851 Technology Center 2100 ____________________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1–21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellant, the real party in interest is Broadcom Corp. App. Br. 2. Appeal 2012-000587 Application 11/620,885 2 STATEMENT OF THE CASE2 The Invention Appellant's invention relates to methods and systems for accessing protected memory. Abstract. Exemplary Claims Claims 1, 3 and 5, reproduced below, are representative of the subject matter on appeal (emphases added to disputed limitations): 1. A method for modifying memory, the method comprising: permitting access to protected memory on a chip when a user access key for said chip matches a customer specific access key that is pre-programmed and stored in a one-time programmable memory within said chip, and said user access key is received by said chip via a customer-specific interface; and when access to said protected memory is permitted, formatting information communicated to and/or from said protected memory during access of said protected memory based on one or more formatting criterion. 3. The method according to claim 1, comprising allocating a plurality of portions of said protected memory in said chip for access by different customers, wherein each of said plurality of portions of said memory on said chip is accessed via a different user access key. 2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed Mar. 25, 2011); Reply Brief ("Reply Br.," filed Aug. 18, 2011); Examiner's Answer ("Ans.," mailed June 23, 2011); Final Office Action ("Final Act.," mailed Oct. 26, 2010); and the original Specification ("Spec.," filed Jan. 8, 2007). Appeal 2012-000587 Application 11/620,885 3 5. The method according to claim 1, comprising assigning a list of objects to each of said users, wherein an object indicates an address to a portion of said protected memory. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Noble US 2006/0272027 A1 Nov. 30, 2006 Qawami et al. ("Qawami") US 2007/0157000 A1 July 5, 2007 Li et al. ("Li") US 7,444,682 B2 Oct. 28, 2008 Rejection on Appeal3 Claims 1–21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Li, Qawami, and Noble. Ans. 5. GROUPING OF CLAIMS Based on Appellant's arguments (App. Br. 9–16), we decide the appeal of the obviousness rejection of claims 1–21 on the basis of the following claim groupings: Group A: Claims 1, 2, 8, 9, 15, and 16 on the basis of representative claim 1; Group B: Claims 3, 4, 10, 11, 17, and 18 on the basis of representative claim 3; and 3 We note the rejection of claims 1–21 under 35 U.S.C. § 112, ¶ 1, has been withdrawn by the Examiner. Ans. 4. Appeal 2012-000587 Application 11/620,885 4 Group C: Claims 5–7, 12–14, and 19–21 on the basis of representative claim 5. ISSUES AND ANALYSIS We only consider those arguments actually made by Appellant in reaching this decision, and we do not consider arguments which Appellant could have made but chose not to make in the Briefs so that any such arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii). We disagree with Appellant's contentions with respect to claims 1–21, and we 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 and rebuttals set forth by the Examiner in the Examiner's Answer in response to Appellant's Arguments. However, we highlight and address specific findings and arguments regarding claims 1, 3, and 5 for emphasis as follows. 1. § 103 Rejection of Claims 1, 2, 8, 9, 15, and 16 (Group A) Issue 1 Appellant argues (App. Br. 9–12; Reply Br. 5–12) the Examiner's rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Li, Qawami, and Noble is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests the limitations of "permitting access to protected memory on a chip when a user access key for said chip matches a customer specific access Appeal 2012-000587 Application 11/620,885 5 key . . . and said user access key is received by said chip via a customer- specific interface ," as recited in claim 1? Analysis Appellant disagrees with the Examiner's reliance upon Noble as teaching or suggesting the disputed limitation. App. Br. 9. Specifically, the Applicant submits that Noble does not teach, disclose, or suggest "permitting access to protected memory on a chip when a user access key for said chip matches a customer specific access key . . . and [the] user access key is received by said chip via a customer-specific interface," as recited by [ ] Applicant's claims 1, 8, and 15. In this regard, the Applicant notes that Noble does not teach, describe, or suggest that the invention described therein, or any aspects thereof, such as "interface" for example, are customer-specific. App. Br. 9–10. Appellant further contends Noble teaches "communications between computer(s) and storage devices, without requiring or suggesting that these communications be customer-specific." App. Br. 10. In addition, Noble only describes that the interface used in interacting with storage devices, which the Examiner equates with the "customer-specific interface" recited by the Applicant's claims 1, 8, and 15, as being "Ultra ATA, Ultra DMA, EIDE, USB, Firewire, serial attached SCSI (SAS) and Serial ATA (SATA) . . . [and] can also be a custom interface." Id. (citing Noble ¶ 42). Appellant further attempts to distinguish between Appellant's recited "customer-specific interface," which allegedly relates to specificity to customers, and Noble's "custom interface," which is arguably designed to receive access requests to secured portions of the data storage device, i.e., functional customization. App. Br. 10. Appeal 2012-000587 Application 11/620,885 6 Appellant surmises the Examiner equates the recited "customer- specific interface" with Noble's custom interface "simply because both these interfaces may be of the same type (e.g. USB)" (App. Br. 11), but argues "nothing in Noble describes or suggests that the interface disclosed there [sic] is a 'customer-specific' interface." Id. Appellant makes similar arguments in the Reply (see Reply Br. 5–7), and also contends, "the Examiner's arguments amount to conclusory statements." Reply Br. 7. In response, the Examiner finds, and we agree, "Nobel discloses the access key and the request for access to the secure portion of the data storage device can be received using an interface . . . [which] can be any interface for communicating with the data storage device." Ans. 8. Further, in agreement with the Examiner, we note Appellant's Specification discloses, "the customer interface 330 may be a PCI bus, the customer interface 332 may be a USB interface, and the customer interface 334 may be a network interface." Spec. ¶ 32 (emphasis added); see Ans. 10. We also note, to the extent Appellant's Specification discusses customer-specific interfaces, it merely states: [A] manufacturer of the chip 107 may provide a programming interface to allow a first customer or vendor to write to the chip 107. The manufacturer of the chip 107 may then provide another programming interface to allow another customer to write to the chip 107. Accordingly, there may be a plurality of programming interfaces for use by different customers of the chip 107. Spec. ¶ 24. Thus, we see no error in equating Noble's USB interface with the recited "customer-specific" interface. Appeal 2012-000587 Application 11/620,885 7 "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). Any special meaning assigned to a term "must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998). Absent an express intent to impart a novel meaning to a claim term, the words take on the ordinary and customary meanings attributed to them by those of ordinary skill in the art. Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (citation omitted). Thus, under the broadest reasonable interpretation standard, we agree with the Examiner's findings cited above that Noble teaches or at least suggests "said user access key is received by said chip via a customer- specific interface," as recited in claim 1. Accordingly, Appellant has not provided sufficient evidence or argument to persuade us of any reversible error in the Examiner's reading of the contested limitations on the cited prior art. Therefore, we sustain the Examiner's obviousness rejection of independent claim 1. As Appellant has not provided separate arguments with respect to claims 2, 8, 9, 15, and 16, grouped with claim 1, we similarly sustain the Examiner's rejection of these claims under 35 U.S.C. § 103(a). Appeal 2012-000587 Application 11/620,885 8 2. § 103 Rejection of Claims 3, 4, 10, 11, 17, and 18 (Group B) Issue 2 Appellant argues (App. Br. 12–14; Reply Br. 8–10) the Examiner's rejection of claim 3 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Li, Qawami, and Noble is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests the limitations of "allocating a plurality of portions of said protected memory . . . wherein each of said plurality of portions of said memory on said chip is accessed via a different user access key," as recited in claim 3? Analysis Appellant contends, "at the sections to which the Examiner refers," Li does not teach or suggest the disputed limitation. App. Br. 13. "Specifically . . . Li does not disclose or describe any allocation in protected memory for access based on different user keys." App. Br. 13–14. Appellant concludes by contending, "[n]owhere in . . . [the sections cited by the Examiner,] does Li disclose or mention any allocation of 'plurality of portions of [the] protected memory' or that each portion thereof is 'accessed via a different user access key.'" App. Br. 14. In response, we find Qawami teaches or at least suggests the disputed limitation: [0027] For example, a customer, that wants to store code to be protected from alteration by users, stores the code and locks write/erase access to those segments in main array 205. Here, Appeal 2012-000587 Application 11/620,885 9 users are able to read from the blocks, but are not able to write or erase the protected blocks. [0028] Therefore, locking of a cell, bit, or location includes any different level of denying access to a segment, block or location including not allowing a write, an erase, a read, or any combination thereof to a segment, block or location. Locking may be accomplished through a module. Examples of components of a locking module, include an OTP block lock array, an erasable block lock array, a permanent block lock array, a temporary block lock array, firmware, microcode, software, Boolean logic, and other logic or hardware. Qawami ¶¶ 27 and 28 (emphasis added); and see Ans. 10. We find this portion of the cited art teaches or at least suggests the use of different user keys (e.g., "other logic or hardware") to access different portions of protected memory. Accordingly, Appellant has not provided sufficient evidence or argument to persuade us of any reversible error in the Examiner's reading of the contested limitations on the cited prior art. Therefore, we sustain the Examiner's obviousness rejection of dependent claim 3. As Appellant has not provided separate arguments with respect to dependent claims 4, 10, 11, 17, and 18, grouped with claim 3, we similarly sustain the Examiner's rejection of these claims under 35 U.S.C. § 103(a). 3. § 103 Rejection of Claims 5–7, 12–14, and 19–21 (Group C) Issue 3 Appellant argues (App. Br. 14–16; Reply Br. 10–11) the Examiner's rejection of claim 5 under 35 U.S.C. § 103(a) as being unpatentable over the Appeal 2012-000587 Application 11/620,885 10 combination of Li, Qawami, and Noble is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests the limitation of "assigning a list of objects to each of said users, wherein an object indicates an address to a portion of said protected memory," as recited in claim 5? Analysis Appellant contends, "Li does not teach, at the . . . sections [cited by the Examiner], 'assigning a list of objects to each of said users, wherein an object indicates an address to a portion of said protected memory,' as recited by the Applicant's claims 5, 12, and 19." App. Br. 15. Further, Li does not disclose any assigning of "a list of objects" in the above cited sections . . . [and] the only mention and/or use of an "address" in these sections pertains to the address of the mine 112, which is expressly described as being used to erase "the contents of the protected-cell zone 114 when the memory address of the mine 112 is accessed. [T]he use of mines in Li renders them distinct from the portion of protected memory intended for use by memory users since accessing these mines "erases the content of the protected-cell zone 114." In other words, the mines used in Li do not constitute portions of protected memory for memory use/accessing purposes since they correspond to areas that are to be avoided during valid protected-cell zone access. App. Br. 15. In response, the Examiner finds, and we agree, "Li teaches storing a mine 112 in the memory 502 (Fig.5 [elements 506 and 508]), Li also teaches a plurality of mine[s] can be included in the memory cell array (col. 3, lines 32–34), each mine has an address stored in the mine register (col. 3, lines Appeal 2012-000587 Application 11/620,885 11 51–58 and col. 3, lines 33–35 and Fig.5 and col. 5, lines 31–33)." Ans. 10–11. Accordingly, Appellant has not provided sufficient evidence or argument to persuade us of any reversible error in the Examiner's reading of the contested limitations on the cited prior art. Therefore, we sustain the Examiner's obviousness rejection of dependent claim 5. As Appellant has not provided separate arguments with respect to dependent claims 6, 7, 12– 14, and 19–21, grouped with claim 5, we similarly sustain the Examiner's rejection of these claims under 35 U.S.C. § 103(a). REPLY BRIEF To the extent Appellant advances new arguments in the Reply Brief (Reply Br. 3–11) not in response to a shift in the Examiner's position in the Answer, we note that "[a]ny bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived." Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Cf. with Optivus Tech., Inc. v. Ion Beam Appl'ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n issue not raised by an appellant in its opening brief . . . is waived."). CONCLUSION The Examiner did not err with respect to the unpatentability rejection of claims 1–21 under 35 U.S.C. § 103(a) over the combination of Li, Qawami, and Noble, and we sustain the rejection. DECISION We affirm the Examiner's decision rejecting claims 1–21. Appeal 2012-000587 Application 11/620,885 12 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) (2011). AFFIRMED tj Copy with citationCopy as parenthetical citation