11740575 (P.T.A.B. Jun. 24, 2016)

Ex Parte Dellow et al

Patent Trial and Appeal BoardJun 24, 2016

11740575 (P.T.A.B. Jun. 24, 2016)

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. 11/740,575 04/26/2007 Andrew Dellow 3875.1680001 1433 26111 7590 06/24/2016 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER HOLDER, BRADLEY W ART UNIT PAPER NUMBER 2439 MAIL DATE DELIVERY MODE 06/24/2016 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 ANDREW DELLOW, IUE-SHUENN CHEN, STEPHANE (STEVE) RODGERS, and XUEMIN (SHERMAN) CHEN ____________ Appeal 2014-006282 Application 11/740,5751 Technology Center 2400 ____________ Before JASON V. MORGAN, JOHN A. EVANS, and MATTHEW J. McNEILL, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL Appellants2 seek our review under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of Claims 1–24, all the pending claims. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.3 1 An Oral Hearing was held June 21, 2016. 2 According to Appellants, the real party in interest is Broadcom Corporation. Appeal Br. 3. 3 Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed November 18, 2013, “Appeal Br.”), the Reply Brief (filed May 2, 2014, “Reply Br.”), the Examiner’s Answer (mailed March 3, 2014, “Ans.”), the Final Action (mailed February 1, 2013, Appeal 2014-006282 Application 11/740,575 2 THE INVENTION In a code download scheme, the claims relate to a method and system for prohibiting code download on a system-on-a-chip. See Abstract. Claims 1, 9, and 17 are independent. An understanding of the invention can be derived from a reading of exemplary Claim 1, which is reproduced below. 1. A method for operating an integrated circuit, the method comprising: fetching code by a security processor from a restricted function portion of a ROM in a system-on-a-chip (SoC), wherein access to said restricted function portion of said ROM by said security processor is enabled by at least one bit from a one-time-programmable (OTP) memory and said restricted function portion in said ROM comprises code that prevents enabling security algorithms within said SoC; and booting at least a portion of said SoC using said fetched code from said restricted function portion of said ROM. REFERENCES AND REJECTIONS The Examiner relies upon the prior art as follows: Jones, et al. US 5,623,637 Apr. 22, 1997 Rodgers US 2003/0217322 A1 Nov. 20, 2003 Conti, et al. US 2006/0015947 A1 Jan. 19, 2006 Omathuna US 2006/0149958 A1 July 6, 2006 Hunter, et al. US 7,565,553 B2 July 21, 2009 The claims stand rejected as follows: 1. Claims 1, 9, and 17 stand rejected under 35 U.S.C. §103(a) as being “Final Act.”), and the Specification (filed April 26, 2007, “Spec.”) for their respective details. Appeal 2014-006282 Application 11/740,575 3 unpatentable over Hunter, Rodgers, and Conti. Final Act. 5–7. 2. Claims 2–4, 6–8, 10–12, 14–16, 18–20, and 22–24 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Hunter, Rodgers, Conti, and Omathuna. Final Act. 7–8. 3. Claims 4, 12, and 20 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Hunter, Rodgers, Conti, Omathuna, and Examiner’s Official Notice. Final Act. 9. 4. Claims 5, 13, and 21 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Hunter, Rodgers, Conti, Omathuna, and Jones. Final Act. 9–10. ANALYSIS We have reviewed the rejections of Claims 1–24 in light of Appellants’ arguments that the Examiner has erred. We are persuaded that Appellants identify reversible error. We provide the following explanation to highlight and address specific arguments and findings primarily for emphasis. CLAIMS 1, 9, AND 17: OBVIOUSNESS OVER HUNTER, RODGERS, AND CONTI Fetching code by a security processor from a restricted function portion of a ROM in a system-on-a-chip (SoC). Appellants rely on the Examiner’s finding that Hunter fails to teach the “fetching code” limitation of Claim 1 and Conti also fails to so teach. App. Br. 13. The Examiner finds Hunter teaches a security processor (i.e., the TMP) is enabled to access “data” only when a match of PCR values occurs. Appeal 2014-006282 Application 11/740,575 4 Final Act. 5 (emphasis added). The Examiner finds Hunter does not teach booting at least a portion of the SoC using the fetched code, but Conti so teaches. Final Act. 6 (citing Conti ¶¶ 7, 8, and 23–26). Appellants contend Conti teaches granting or restricting access to certain portions of a system, but that granting access is not the same as fetching code. App. Br. 13. Claim 1 recites, inter alia, “fetching code by a security processor form a restricted function portion of a ROM in a system-on-a-chip (SoC).” The Examiner finds that to meet this limitation, it is only required to show that a processor accesses data on a ROM. Final Act. 2. The Examiner finds Appellants do not define “code.” Id. The Examiner defines “code” as “any ‘symbolic arrangement of data” and finds that “[a]s a result, code is data.” Advisory Action 2 (citing FreeDictionary.com). Claim 1 recites “booting at least a portion of said SoC using said fetched code from said restricted function portion of said ROM.” App. Br. 14. Appellants argue Claim 1 further recites the function of the fetched code, i.e., “booting” a processor which cannot be performed by any “code.” Id. The Examiner’s Answer finds “Appellants have not detailed why Conti’s accessing a secure portion ROM is not the same as fetching code from a secure portion of ROM.” Ans. 4. Appellants disclose “[t]he first portion 130a of the ROM 130 may comprise code or instructions for enabling booting up the secure multimedia SoC 300” and the “second portion 130b may comprise code or instructions for enabling the secure multimedia SoC 300 to download proprietary security code.” Spec., ¶ 31. Appeal 2014-006282 Application 11/740,575 5 Code is defined as “[p]rogram instructions . . . [m]achine code consists of numerical instructions that the computer can recognize and execute.” Microsoft Dictionary, 5th ed., p.106, Microsoft Press (2002). In light of the Specification disclosure and the Microsoft Dictionary definition, we find the person of ordinary skill in the computer science art would interpret “code” used for “booting at least a portion of said SoC [system-on- a-chip]” to refer to “numerical instructions that the computer can recognize and execute.” Id. In view of the Specification disclosure read in connection with the Microsoft Dictionary definition, we find the “fetched code” limitation is not taught by Conti.4 DECISION The rejection of under 35 U.S.C. § 103 is REVERSED. REVERSED 4 We do not reach the merits of Appellants’ additional arguments as our agreement with Appellants, as indicated in our discussion infra, is dispositive of this appeal.