Ex Parte Eisele

Board of Patent Appeals and Interferences

Apr 7, 2003

08420796 (B.P.A.I. Apr. 7, 2003)

-1-
The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
Paper No. 67
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte RAYMUND H. EISELE
________________
Appeal No. 2001-1786
Application 08/420,796
________________
ON BRIEF
________________
Before JERRY SMITH, RUGGIERO and BLANKENSHIP, Administrative
Patent Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 28, 30-35 and 37-47,
which constitute all the claims remaining in the application.
The disclosed invention pertains to a method and
apparatus for enhancing the data security of an electronic data
processing computer. The invention uses a device which can be
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inserted into the conventional floppy disk drive or tape cassette
drive of the electronic computer. A data processing means within
the device performs processing of data to enable secure access,
encryption and affecting operation of the electronic computer.
The device operates to simulate the presence of a floppy disk or
a tape cassette as input to the computer.
Representative claim 28 is reproduced as follows:
28. A data security system for electronic data processing
equipment, the electronic data processing equipment having a
central processing unit with a storage unit, the storage unit
being one of a diskette drive and a tape cassette storage unit
having at least one magnetic read/write head, and a device for
providing data security, the device comprising:
housing means for housing components of the device, and for
insertion into the storage unit, the housing means being of a
shape and size of one of a diskette and a cassette housing and
being designed to fit at least partially into and operatively
engage the storage unit;
a single interface means disposed in said housing means, for
transferring data to and from the device and the at least one
magnetic read/write head of the storage unit of the electronic
data processing equipment;
data processor means, disposed in said housing means and
operatively connected to said interface means, for performing
processing of data to enable secure access, encryption, and
affecting operation of the electronic data processing equipment;
a battery, disposed in said housing means, for storing
energy to operate the device; and
wherein the interface means includes simulation means for
simulating one of a diskette and a tape storage medium, the
simulation means comprising driver circuit means operatively
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connected to the data processor means, for converting digital
data signals from the data processor means into simulated storage
media signals to be provided to the storage unit and for
converting received signals from the storage unit into digital
data signals for processing by the data processor means.
The examiner relies on the following references:
Berwick et al. (Berwick) 4,504,871 Mar. 12, 1985
Hirokawa 4,672,182 June 09, 1987
Francini et al. (Francini) 4,701,601 Oct. 20, 1987
Sato et al. (Sato) 4,891,727 Jan. 02, 1990
(filed June 15, 1988)
Eisele 5,159,182 Oct. 27, 1992
Claims 28, 30-35 and 37-47 stand rejected under the
judicially created doctrine of obviousness-type double patenting
over claims 1-11 of Eisele. Claims 28, 30-35 and 37-47 also
stand rejected under 35 U.S.C. § 103. As evidence of obviousness
the examiner offers Hirokawa in view of Sato, Francini and
Berwick.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of obviousness and double patenting relied upon by the examiner
as support for the rejections. We have, likewise, reviewed and
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taken into consideration, in reaching our decision, the
appellant’s arguments set forth in the brief along with the
examiner’s rationale in support of the rejections and arguments
in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in the
claims on appeal. We reach the same conclusion with respect to
the double patenting rejection. Accordingly, we reverse.
We consider first the rejection of the appealed claims on
the ground of obviousness-type double patenting over the claims
of Eisele. As a preliminary matter, we note that appellant filed
a terminal disclaimer in parent application Serial No.
07/947,570, and that this is a continuation application of that
application filed under 37 CFR § 1.62 (file wrapper continuation)
which was effective at that time. Appellant argues that the
terminal disclaimer filed in the parent application should be
effective in this file wrapper continuation [brief, pages 7-8].
The examiner responds that the terminal disclaimer filed in the
parent application is not effective in this file wrapper
continuation because the disclaimer does not by its terms
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indicate that it applies to any continuation applications filed
with respect to the parent application [answer, page 8].
We agree with the examiner on this point. As noted by
the examiner, this question is covered in section 1490 of the
Manual of Patent Examining Procedure (MPEP). Although
appellant’s argument would be correct under current practice
involving continued prosecution applications (CPAs) or requests
for continued examination (RCEs), the current practice does not
apply to file wrapper continuations filed under 37 CFR § 1.62.
Since a file wrapper continuation is given a new application
number, it is considered to be a different application from its
parent application for purposes of a terminal disclaimer.
Therefore, since appellant’s terminal disclaimer does not
indicate that it applies to any continuations filed, it is not
effective with respect to this file wrapper continuation.
Thus, we consider the double patenting rejection on the
merits. The examiner’s rejection states the following:
Although the conflicting claims are not
identical, they are not patentably distinct
from each other because deletion of a
feature, with a corresponding loss of
function has been held to be obvious. Note
In re Porter, 20 USPQ 298. For example,
claim 1 of the patent is substantially
similar to claim 28 of the instant
application yet patented claim 1 further
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includes the recitation of electric power
generation means including a rotor, etc.,
which recitation has not been included in
claim 28. Thus the deletion of this
limitation, with the corresponding loss of
function, would have been obvious to those of
ordinary skill in the art in light of the
above decision. [answer, page 4].

Thus, the rejection has considered only a single claim of the
application (claim 28) and has addressed only the obviousness of
eliminating a feature and its corresponding function.
Ordinarily, this rejection would not constitute a prima
facie case of obviousness-type double patenting because it does
not consider each of the claims on appeal and does not provide a
claim by claim comparison of the claims on appeal and the claims
of the patent. The examiner has the same burden of providing a
prima facie case of unpatentability in support of an obviousness-
type double patenting rejection as the examiner has in supporting
an obviousness rejection under 35 U.S.C. § 103. However, since
appellant has provided a detailed argument in response to this
rejection which has forced the examiner to explain in more detail
the rationale behind this rejection, we will consider this
rejection on the merits.
Appellant has provided a detailed analysis of why the
claims of this application are not obvious over the claims of the
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Eisele patent. Specifically, with respect to independent claim
28, appellant argues that claim 28 is directed to a security
system while no claims of the patent define a security system or
security device [brief, pages 15-16]. The examiner responds that
since the Eisele patent and this application have the same
disclosure, and since the claims are recited in “means-plus-
function” form, the data processor means of this application is
the same as the data processor means of the patent when the
specification is used to interpret the claimed subject matter
[answer, pages 10-11]. The examiner also responds that even if
the processor means of the patent do not include the disclosed
security features, such feature would have been obvious to the
artisan anyway [id., pages 11-12].
We do not agree with either of the examiner’s positions
in support of the rejection. On the latter point, the examiner
has failed to provide evidence in support of the obviousness of
adding the claimed security features to the claims of the Eisele
patent. Merely because security features were known in the art
is not evidence that it would have been obvious to add these
features to the claimed invention of the Eisele patent. See the
discussion of claim 11 in In re Thrift, 298 F.3d 1357, 63 USPQ2d
2002 (Fed. Cir. 2002). Thus, the Board cannot accept mere
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conclusions of obviousness by the examiner which are not
supported by appropriate evidence on the record.
On the former point, we do not agree with the examiner’s
interpretation of the claims on appeal or the claims of the
patent. Claim 1 of the patent recites a processor means “for
performing processing of data” while claim 28 recites a data
processor means “for performing processing of data to enable
secure access, encryption, and affecting operation of the
electronic data processing equipment.” Although the processor
means of both claims performs the processing of data, the means
of claim 28 performs processing data for the specific purpose of
access, encryption, and affecting operation of the electronic
data processing equipment. Thus, the specific function of
processing recited in claim 28 is not the same as the more
general function recited in patent claim 1.
Construction of a means-plus-function limitation involves
two steps. First, one must identify the claimed function.
Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316,
1324, 58 USPQ2d 1545, 1549 (Fed. Cir. 2001); Micro Chem., Inc. v.
Great Plains Chem. Co., Inc., 194 F.3d 1250, 1258, 52 USPQ2d
1258, 1263 (Fed. Cir. 1999). One must construe the function of a
means-plus-function limitation to include the limitations
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contained in the claim language, and only those limitations. It
is improper to narrow the scope of the function beyond the claim
language. It is equally improper to broaden the scope of the
claimed function by ignoring clear limitations in the claim
language. Ordinary principles of claim construction govern
interpretation of the claim language used to describe the
function.
After identifying the claimed function, one must then
determine what structure, if any, disclosed in the specification
corresponds to the claimed function. In order to qualify as
corresponding, the structure must not only perform the claimed
function, but the specification must clearly associate the
structure with performance of the function. This inquiry is
undertaken from the perspective of a person of ordinary skill in
the art. Amtel Corp. v. Info. Storage Devices, Inc., 198 F.3d
1374, 1378-79, 53 USPQ2d 1225, 1227-28 (Fed. Cir. 1999). See
Cardiac Pacemakers, Inc. v. St. Jude Medical Inc., 296 F.3d 1106,
1113, 63 USPQ2d 1725, 1730 (Fed. Cir. 2002).
The first inquiry noted above results in a finding that
the function performed by the processor means of claim 28 is not
the same as the function performed by patent claim 1. As noted
above, the function of the claimed means cannot be narrowed or
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broadened beyond the actual language of the claim. The structure
necessary to support the functions of appealed claim 28 is not
the same as the structure necessary to support the function of
patent claim 1. Note that the Eisele patent discloses that
processor means 2 serves to transmit data between processor 2 and
the data processing equipment [column 4, lines 51-54]. The
patent also discloses that a particular feature of processing
means 2 is that it can also be used for verification, encryption
and decryption [id., lines 55-59]. Thus, the processing means of
patent claim 1 is not required to have the additional structure
of appealed claim 28 for performing the security related
functions. Therefore, it was improper for the examiner to
consider the means of patent claim 1 to be exactly the same as
the means of appealed claim 28.
Independent claim 47 is also recited in “means-plus-
function” form in which the functions of claim 47 are not the
same as the functions recited in the claims of the patent.
Therefore, the examiner has improperly determined the scope of
claim 47 and the claims of the patent for the same reasons
discussed above with respect to claim 28.
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With respect to independent claims 39 and 40, which are
drafted in process form, appellant argues that these claims
recite a method of operating a security system whereas none of
the patent claims recite a method or a security system.
Appellant notes that claim 39 recites steps of transferring user
identification data, verifying user authorization, and
transferring a verification result, and that these functions are
not recited in the patent claims. Appellant makes similar
arguments with respect to claim 40 [brief, pages 18-24].
The examiner responds that the recitation of the function
and the intended use of the claims in the patent renders obvious
the method claims on appeal. The examiner also notes that the
steps of these method claims are either inherent in the device
claims of the patent or are the logical result of the
incorporation of known security features [answer, pages 12-13].
The examiner’s double patenting rejection of claims 39
and 40 fails for essentially the reasons argued by appellant in
the brief. The claims of the Eisele patent recite nothing about
user identification data, user authorization, verification
results and personal identification numbers. The steps of the
claims on appeal which perform operations on data of this type
are not inherent in the device of the patent claims and not
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obvious based on the examiner’s bare opinion which is unsupported
by any evidence on this record.
In summary, the examiner’s double patenting rejection
fails with respect to each of the independent claims on appeal.
Therefore, we do not sustain this rejection with respect to any
of the claims on appeal.
We now consider the rejection of claims 28, 30-35 and 37-
47 under 35 U.S.C. § 103 as unpatentable over the teachings of
Hirokawa in view of Sato, Francini and Berwick. In rejecting
claims under 35 U.S.C. § 103, it is incumbent upon the examiner
to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988). In so doing, the examiner is expected to
make the factual determinations set forth in Graham v. John Deere
Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a
reason why one having ordinary skill in the pertinent art would
have been led to modify the prior art or to combine prior art
references to arrive at the claimed invention. Such reason must
stem from some teaching, suggestion or implication in the prior
art as a whole or knowledge generally available to one having
ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley Corp.,
837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert.
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denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed.
Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS Hosp. Sys.,
Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933
(Fed. Cir. 1984). These showings by the examiner are an
essential part of complying with the burden of presenting a prima
facie case of obviousness. Note In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If that burden is
met, the burden then shifts to the applicant to overcome the
prima facie case with argument and/or evidence. Obviousness is
then determined on the basis of the evidence as a whole and the
relative persuasiveness of the arguments. See Id.; In re Hedges,
783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147
(CCPA 1976). Only those arguments actually made by appellant
have been considered in this decision. Arguments which appellant
could have made but chose not to make in the brief have not been
considered and are deemed to be waived [see 37 CFR § 1.192(a)].
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The examiner has indicated how he finds the claims on
appeal to be obvious over the applied prior art [answer, pages 5-
8]. Appellant has argued in detail the alleged deficiencies of
each of the applied references, the impropriety of combining the
teachings of the applied prior art, and the reasoning behind
appellant’s position that the examiner’s rejection can only be
the result of an improper attempt to reconstruct appellant’s
invention in hindsight [brief, pages 24-41]. The examiner
provides a detailed response in an effort to justify the
rejection [answer, pages 13-25].
We will not sustain this rejection of the examiner for
essentially the reasons provided by appellant in the brief. We
reach this decision primarily because we agree with appellant
that there is no motivation for combining the references in the
manner proposed by the examiner. The proposed combination of the
applied references clearly requires that certain features of each
of the references be selected to the exclusion of other features
of each of the references. Although the examiner purports to
rationalize why this selective use of certain features of the
references would have been obvious to the artisan, we are
compelled to find that the only motivation for combining the
specific selected features of these particular references, while
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eliminating other taught features, is to reconstruct the
invention using the claims as a template for applying the prior
art. We agree with appellant that this constitutes an improper
reconstruction of the claimed invention using hindsight gained by
the claimed invention. Accordingly, we do not sustain this
rejection of the claims on appeal.
In summary, we have not sustained either of the
examiner’s rejections of the claims on appeal. Therefore, the
decision of the examiner rejecting claims 28, 30-35 and 37-47 is
reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
JOSEPH F. RUGGIERO ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 2001-1786
Application 08/420,796
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Mark Nusbaum
Nixon & Vanderhye
1100 North Glebe Road
8th Floor
Arlington, VA 22201