Ex Parte DelaneyDownload PDFPatent Trial and Appeal BoardJan 9, 201711554673 (P.T.A.B. Jan. 9, 2017) Copy Citation United States Patent and Trademark Office 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. 11/554,673 10/31/2006 William P. Delaney 05-1267 5790 57299 7590 Kathy Manke Avago Technologies Limited 4380 Ziegler Road Fort Collins, CO 80525 EXAMINER WINTER, JOHN M ART UNIT PAPER NUMBER 3685 NOTIFICATION DATE DELIVERY MODE 01/11/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): kathy .manke @ broadcom. com patent.info@broadcom.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM P. DELANEY Appeal 2015-0000351 Application 11/554,6732 Technology Center 3600 Before HUBERT C. LORIN, NINA L. MEDLOCK, and CYNTHIA L. MURPHY, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 9-11, 15—22, 25, and 26.3 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our decision references Appellant’s Appeal Brief (“Br.,” filed December 19, 2013) and the Examiner’s Answer (“Ans.,” mailed August 8, 2014) and Final Office Action (“Final Act.,” mailed May 17, 2013). 2 The inventor, William P. Delaney, is assumed to be the real party in interest. See 37 C.F.R. § 41.37(c)(l)(i). 3 Claims 12—14, 23, 34, and 27 are withdrawn from consideration. See Final Act. 1. Appeal 2015-000035 Application 11/554,673 CLAIMED INVENTION Appellant’s claimed invention “relates generally to distribution of products and more specifically relates to improved distribution of model variants of electronics products in a hub-based distribution environment” (Spec. 11). Claim 9, reproduced below, is the sole independent claim and representative of the subject matter on appeal: 9. A method comprising: manufacturing a product that includes a private key value and a serial number, the product capable of being configured into any of multiple sub-models; generating, via a processor, encrypted authorization codes for the product that are each determined as a function of the serial number of the product, the private key value of the product, and a sub-model indicator, each authorization code corresponding to a different sub-model; providing the product and authorization codes to a customer; and receiving an encrypted acknowledgment message indicating that an authorization code has been used to configure the product into a specific sub-model, the encrypted acknowledgment message including the product serial number and an indicator for the specific sub-model, the acknowledgement message having been encrypted with a public key value corresponding to the private key value included with the product; and decrypting the acknowledgment message via a processor, based upon the private key value included with the product, thereby determining the serial number and the sub-model indicator of the specific sub-model. 2 Appeal 2015-000035 Application 11/554,673 REJECTIONS4 Claims 9—11, 15—22, 25, and 26 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Claims 9—11, 15—22, 25, and 26 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite for failing to particularly point out and distinctly claim the subject matter that Appellant regards as the invention. Claims 9, 15, 18—22, 25, and 26 are rejected under 35 U.S.C. § 103(a) as unpatentable over Chen et al. (US 7,552,341 B2, iss. June 23, 2009, hereinafter “Chen”) and Prologo et al. (US 2006/0236097 Al, pub. Oct. 19, 2006, hereinafter “Prologo”). Claims 10, 11, 16, and 17 are rejected under 35 U.S.C. § 103(a) as unpatentable over Chen, Prologo, and Coley et al. (US 2005/0251490 Al, pub. Nov. 10, 2005, hereinafter “Coley”). ANALYSIS Enablement The enablement requirement of § 112 demands that the patent specification enable those skilled in the art to make and use the full scope of the claimed invention without undue experimentation. Nat 7 Recovery Techs., Inc. v. Magnetic Separation Systems, Inc., 166 F.3d 1190, 1195 (Fed. Cir. 1999). The enablement requirement, thus, ensures that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims. The scope of the claims must be less than or equal to the scope of the enablement. The scope of 4 The rejection of claims 9-11, 15—22, 25, and 26 under 35 U.S.C. §101 has been withdrawn (Ans. 13). 3 Appeal 2015-000035 Application 11/554,673 enablement, in turn, is that which is disclosed in the specification plus the scope of what would be known to one of ordinary skill in the art without undue experimentation. Id. “Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations.” In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Some of these considerations, commonly referred to as “the Wands factors,” include “(1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.” Id. Here, in rejecting the claims under § 112, first paragraph, as non- enabled, the Examiner simply asserts that under a broadest reasonable interpretation, the claimed “product” could include any conceivable devices or items, e.g., medical devices or automobile vehicles, which are “beyond the scope of the ‘product’ defme[d] in [Appellant’s] [Specification” (Final Act. 5—6; see also Ans. 13—14). The Examiner does not discuss any of the Wands factors or otherwise explain why a person of ordinary skill in the art, on reviewing Appellant’s Specification, would have needed to experiment unduly in order to make and/or use Appellant’s claimed invention. The Examiner has failed to establish a prima facie case of non enablement. Therefore, we do not sustain the Examiner’s rejection of claims 9-11, 15—22, 25, and 26 under 35 U.S.C. § 112, first paragraph. 4 Appeal 2015-000035 Application 11/554,673 Indefiniteness We are persuaded by Appellant’s argument that the Examiner erred in rejecting claims 9—11, 15—22, 25, and 26 under 35U.S.C. § 112, second paragraph (Br. 9-10). Referencing the limitation, “manufacturing a product. . . capable of being configured into any of multiple sub-models,” as recited in independent claim 9, the Examiner asserts that “the phrase ‘into any’ renders the claim indefinite because it is unclear what the scope of the limitation is.” (Final Act. 6). We agree with Appellant that a person of ordinary skill in the art would understand what is claimed when claim 9 is read in light of the Specification, namely, that the product can be configured into one of multiple sub-models for the product, e.g., a sub-model with minimal features or a “deluxe” sub-model with full set of product features (Br. 9). Therefore, we do not sustain the Examiner’s rejection of claims 9-11, 15—22, 25, and 26 under 35 U.S.C. § 112, second paragraph. See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test for definiteness under 35 U.S.C. § 112, second paragraph is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.”). Obviousness Independent Claim 9 and Dependent Claims 15, 18—22, 25, and 26 We are persuaded that the Examiner erred in rejecting independent claim 9 under 35 U.S.C. § 103(a) because Chen, on which the Examiner relies, fails to disclose or suggest a product that can be configured into any one of a number of sub-models where multiple authorization codes are generated for the product, with each authorization code corresponding to a 5 Appeal 2015-000035 Application 11/554,673 different sub-model, i.e., “manufacturing a product that includes a private key value and a serial number, the product capable of being configured into any of multiple sub-models” and “generating . . . encrypted authorization codes for the product that are each determined as a function of the serial number of the product, the private key value of the product, and a sub-model indicator, each authorization code corresponding to a different sub-model,” as recited in claim 9 (Br. 10—13). Chen is directed to a method for licensing software for use on a particular computing device, and discloses that an unlocking code is provided from a distribution service to the computing device (directly or via a user), which unlocks the software or a portion of the software for use with the associated computing device (Chen, Abstract). Chen discloses that the unlocking, i.e., authorization, code may be based on a unique identifier of the computing device and an identifier associated with the software seeking to be assessed; therefore, the code may only be used by a computing device having that unique identifier (id.). Chen discloses an exemplary method of providing a software license with reference to Figure 3 in which the identifier of the computing device and the software product identifier are signed with a private key, e.g., using RSA signing, DSA signing, or another private/public key signing technique; the signed bits may then be transformed into an activation code with a predetermined number of alpha numeric characters (id. at col. 7,11. 1—8). In another exemplary method shown in Figure 4, an activation control system computes a hash based on a machine key corresponding to the computing device identifier and the software product identifier and generates an activation code based on the hash (id. at col. 8,11. 28-40). 6 Appeal 2015-000035 Application 11/554,673 The Examiner takes the position that Chen’s disclosure of providing an activation code based upon a product identifier, i.e., the identifier associated with the software seeking to be accessed, is “sufficient to teach ‘generating . . . encrypted authorization codes for the product,” as called for in claim 9 (Ans. 16). Yet the difficulty with that analysis, as Appellant observes, is that claim 9 calls for a product that can be configured into any of multiple different sub-models, and requires that multiple authorization codes are generated for the product, with each authorization code corresponding to a different sub-model (Br. 12). Chen does not disclose or suggest a manufactured product that can be configured into multiple sub-models; instead, in Chen, each software product has only a single configuration, i.e., it can be unlocked, and Chen only creates a single activation code for each software product, which is applied to activate, i.e., unlock, the software (Br. 12 (citing Chen, col. 1, 1. 66-col. 2,1. 7; col. 8,11. 19—26; col. 8,11. 60-62)). There would no reason in the Chen system nor, indeed, any need in that system, to generate plural activation codes for each software product. Because each software product can only be configured in one way, only one activation code is required. In view of the foregoing, we do not sustain the Examiner’s rejection of independent claim 9 under 35 U.S.C. § 103(a). For the same reasons, we also do not sustain the Examiner’s rejection of dependent claims 15, 18—22, 25, and 26. Cf. In reFritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims are nonobvious if the independent claims from which they depend are nonobvious”). 7 Appeal 2015-000035 Application 11/554,673 Dependent Claims 10, 11, 16, and 17 The Examiner’s rejection of dependent claims 10, 11, 16, and 17 does not cure the identified deficiency in the Examiner’s rejection of independent claim 9. Therefore, we do not sustain the rejection of claims 10, 11, 16, and 17 under 35 U.S.C. § 103(a) for the same reasons set forth above with respect to independent claim 9. DECISION The Examiner’s rejection of claims 9-11, 15—22, 25, and 26 under 35 U.S.C. § 112, first paragraph, is reversed. The Examiner’s rejection of claims 9-11, 15—22, 25, and 26 under 35 U.S.C. § 112, second paragraph, is reversed. The Examiner’s rejections of claims 9-11, 15—22, 25, and 26 under 35 U.S.C. § 103(a) are reversed. REVERSED 8 Copy with citationCopy as parenthetical citation