Ex Parte Chen

Patent Trial and Appeal Board

Aug 14, 2014

11620885 (P.T.A.B. Aug. 14, 2014)

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.
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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).
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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.
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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
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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.
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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.
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"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).
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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,
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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
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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
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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.
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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

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