Ex Parte Epstein

Board of Patent Appeals and Interferences

Jan 14, 2010

09894391 (B.P.A.I. Jan. 14, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MICHAEL EPSTEIN
____________________

Appeal 2008-005210
Application 09/894,391
Technology Center 2400
____________________

Decided: January 15, 2010
____________________

Before LANCE LEONARD BARRY, STEPHEN C. SIU, and DEBRA K.
STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
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Application 09/894,391

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Appellant appeals under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 4-10. Claims 1-3 and 11-13 were canceled. (Br. 2). We
have jurisdiction under 35 U.S.C. § 6(b) (2008).
We AFFIRM.
STATEMENT OF THE CASE
Introduction
According to Appellant, the invention relates to “protecting data from
illicit copying from a remote location” (Spec. 1, ll. 5-6).
Exemplary Claim(s)
Claim 4 is an exemplary claim and is reproduced below:
4. A security system comprising:

a verifier for determining an authorization to process
protected material, based on one or more responses to one or
more requests; and

a timer for measuring response times associated with the
one or more responses to the one or more requests,

wherein

the verifier determines the authorization based at least in
part on an assessment of the response times, and wherein

the response times are correlated to a physical proximity
between the verifier and a first source of the one or more
requests, and between the verifier and a second source of the
one or more responses.
Prior Art
Hershey 4,924,378 May 8, 1990
Fischer 5,659,617 Aug. 19, 1997
Dillenberger 2002/0069281 A1 Jun. 6, 2002
Candelore 2002/0154777 A1 Oct. 24, 2002
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van Zoest 6,496,802 B1 Dec. 17, 2002
Serret-Avila 6,785,815 B1 Aug. 31, 2004
Honda 6,910,221 B1 Jun. 21, 2005
Vered 6,954,786 B1 Oct. 11, 2005

Rejections
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Candelore, Honda and Fischer.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Candelore, Honda, Fischer, and Dillenberger.
Claims 7 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Serret-Avila, Honda, and Hershey.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hershey and Fischer.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Serret-Avila, Honda, Hershey and Vered.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Serret-Avila, Honda, Hershey and van Zoest.1

GROUPING OF CLAIMS
(1) Appellant argues claim 4 individually (see Br. 9-11). We
therefore treat claim 4 individually.

1 Appellant appears to have inadvertently omitted the rejections of claims 8
and 10 from the Grounds of Rejection To Be Reviewed on Appeal in their
Appeal Brief filed Oct. 26, 2007 (see Br. 8). However, Appellant addresses
these claims in their Argument and thus, we consider these claims to be
appealed (see Br. 8 and 15).
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(2) Appellant argues claim 5 individually (see Br. 11-12). We
therefore treat claim 5 individually.
(3) Appellant argues claims 7-10 as a group based on representative
claim 7 (see Br. 12-15). We therefore treat claims 8, 9, and 10 as standing
or falling with representative and independent claim 7.
(4) Appellant argues claim 6 on the same basis as claims 4 and 5 (id.
at 16). However, we address claim 6 separately.
We accept Appellant’s grouping of the claims. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2008).

ISSUE 1
35 U.S.C. § 103(a): claim 4
Appellant asserts the invention is not obvious over Candelore, Honda
and Fischer (Br. 10). Specifically, Appellant contends Honda does not teach
a timer for measuring response times associated with the one or more
requests but instead, “merely describes a response time measurement section
50 that measures the response time between a moving image request” (id.).
Further, Appellant contends Fischer merely describes (1) providing location
certificates and (2) a location certification unit (LCU) that includes a
position determination unit (PDU) that has a conventional positioning
determining apparatus for receiving Loran and/or GPS signals and
computing its position (id.). According to Appellant, Fischer does not teach
response times being correlated to a physical proximity between a verifier
and a first request source and between the verifier and a second request
source as recited in claim 4.
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The Examiner finds Honda clearly discloses a time measurement unit,
which reads on the "timer" as claimed, that is used to measure one or more
responses to one or more request (Ans. 14). Further, the Examiner finds
“[t]he feature of ‘the response times are correlated to a physical proximity
between the verifier and a first source of the one or more requests, and
between the verifier and second source of the one or more request’ is not
recited in the rejected claim(s)” (id. at 15). However, the Examiner points to
Fischer as disclosing this feature, if the limitation argued by Appellant was
in the claim (id.).
Issue 1A: Has Appellant shown the Examiner erred in finding Honda
teaches a timer for measuring response times associated with the one or
more requests?
Issue 1B: Has Appellant shown the Examiner erred in finding Fischer
teaches response times that are correlated to a physical proximity between
the verifier and a first source of the one or more requests, and between the
verifier and a second source of the one or more requests?

PRINCIPLES OF LAW
Obviousness
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 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
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Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).

ANALYSIS
In our review, we find that the Examiner has made specific findings,
with respect to claim 4 (Ans. 4). Appellant first argues Candelore does not
teach or suggest the specific limitations; however, the Examiner did not cite
Candelore for teaching these limitations. Appellant then restates elements of
the claim language and discusses the teachings of Honda and Fischer but
fails to respond to the specifics of the Examiner’s rejection (see Br. 9-11;
and Ans. 3-5).
However, Appellant does not present any arguments or evidence to
show error in the Examiner’s specific fact finding regarding Candelore,
Honda, and Fischer. We note that a statement which merely points out what
a claim recites will not be considered an argument for separate patentability
of the claim. See 37 C.F.R. § 41.37(c)(1)(vii). Moreover, Appellant has
failed to comply with the requirements of 37 C.F.R. § 1.111(b) (2000) by
merely reciting the language of the claim and asserting that such language is
not taught by the reference. Therefore, we find Appellant has not met the
burden of coming forward with evidence or argument to overcome the
Examiner's findings that (1) Honda teaches a timer for measuring response
times associated with the one or more requests and (2) Fischer teaches
response times that are correlated to a physical proximity between the
verifier and a first source of the one or more requests, and between the
verifier and a second source of the one or more requests (Ans. 4-5).
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Accordingly, we sustain the Examiner's conclusion of obviousness with
respect to claim 4.

ISSUE 2
35 U.S.C. § 103(a): claim 5
The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Candelore, Honda, Fischer, and Dillenberger (Ans. 5).
Appellant argues that none of these references, taken alone or in
combination, teaches “the verifier determines the authorization based at least
in part on an assessment of the response times, and wherein the assessment
of the response times forms an assessment of whether the one or more
responses were communicated locally to the verifier or via a network
connection” (Br. 11-12).
The Examiner finds Candelore teaches comparing/checking a time
generated by a GPS receiver that has a secure time source and using this
result to verify validities of content player locations (Ans. 5). The
Examiner further finds Honda discloses a time measurement unit that
measures times between responses; Fischer discloses permitting sensitive
devices to only operate at specified locations; and Dillenberger discloses
generating performance metrics (an assessment) including response times to
control cooperation between network computers (Ans. 6-7).
Issue 2: Has Appellant shown the Examiner erred in finding the
combination of Candelore, Honda, Fischer, and Dillenberger teaches the
verifier determines the authorization based at least in part on an assessment
of the response times, and wherein the assessment of the response times
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forms an assessment of whether the one or more responses were
communicated locally to the verifier or via a network connection?

ANALYSIS
In our review, we find that the Examiner has made extensive fact
finding with respect to each of the limitations of claim 5 (see Ans. 15-17).
Appellant's argument with regard to claim 5 merely restates elements of the
claim language 2 and simply argues that the elements are missing from the
reference (see Br. 11-12 and 16). However, we again find Appellant has not
responded to the Examiner’s explicit fact finding. We note that again
Appellant has failed to comply with the requirements of 37 C.F.R. §
1.111(b) (2000).
Therefore, we conclude Appellant has not met the burden of
presenting evidence or argument to rebut the Examiner's conclusion of
obviousness based on Candelore, Honda, Fischer, and Dillenberger with
respect to claim 5. Accordingly, we sustain the Examiner's conclusion of
obviousness with respect to independent claim 5.

ISSUE 3
35 U.S.C. § 103(a): claims 7-10
Appellant asserts their invention is not obvious over Serret-Avila,
Honda and Hershey because "the signature verification engine of Serret-
Avila does not preclude 'the rendering corresponding to the selected data

2 A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim (see 37 C.F.R.
§ 41.37(c)(1)(vii) (2008)).
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item in dependence upon whether other data items of the plurality of data
items are available to the renderer'" (Br. 14). Appellant concedes Serret-
Avila includes a form of verifier (i.e., the signature verification engine) (id.).
However, Appellant contends the signature verification engine of Serret-
Avila checks whether the selected data set includes the digital signature (id.
at 15). Further, Appellant argues dependent claims 8, 9, and 10 for the same
reasons presented for independent claim 7 (see id.).
The Examiner finds “Serret-Avila discloses a system for managing the
uses of electronic data that are stored in CD, DVD, the Internet, or other
source” (Ans. 19). Further, the Examiner concludes that “[i]n Serret-Avila's
system, a block of the electronic data is prohibited from rendering in
responsive un-authorization access detection” (id.).
Issue 3: Has Appellant shown the Examiner erred in concluding the
combination of Serret-Avila, Honda and Hershey teaches or suggests a
verifier that precludes the rendering corresponding to the selected data item
in dependence upon whether other data items of the plurality of data items
are available to the renderer?

ANALYSIS
We find that the Examiner has made specific findings with respect to
claim 7 (Ans. 19). Appellant's argument with regard to claim 7 merely
restates elements of the claim language3 without providing any arguments
except for “Serret Avila checks whether the selected data set includes the

3 A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim (see 37 C.F.R.
§ 41.37(c)(1)(vii) (2008).
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digital signature” (Br. 15). However, this is a broad statement without any
specific argument or evidence as to why the signature verification engine
does not preclude the recited rendering. Appellant has not responded to the
Examiner’s explicit fact finding. We thus find Appellant has failed to
comply with the requirements of 37 C.F.R. § 1.111(b). Therefore, we
conclude Appellant has not met the burden of presenting evidence or
argument to rebut the Examiner’s explicit fact findings regarding the
teachings of Serret-Avila, Honda, and Hershey.
Accordingly, we sustain the Examiner's conclusion of obviousness
with respect to claim 7. Claim 9 which depends from claim 7 and was
argued on the same basis, thus falls with claim 7. Neither claim 8, rejected
as being unpatentable over Serret-Avila, Honda, Hershey and Vered, nor
claim 10, rejected under 35 U.S.C. § 103(a) as being unpatentable over
Serret-Avila, Honda, Hershey and van Zoest, were argued independently but
instead were argued on the basis of claim 7 from which they depend.
Therefore, claims 8 and 10 fall with claim 7.

ISSUE 4
35 U.S.C. § 103(a): claim 6
The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Hershey and Fischer. Appellant argues none of these
references, taken alone or in combination, teaches “the verifier determines
the authorization based at least in part on an assessment of the response
times, and wherein the assessment of whether the one or more responses
were immediately available, or whether the one or more responses were a
result of a determination” (Br. 16).
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The Examiner finds Fischer discloses a secure authorization unit
(verifier) that determines beacons/sensitive devices authorizations for
specific locations using synchronized communication between secure clocks
to correlate response times to positions of the devices (Ans. 21).
Issue 4: Has Appellant shown the Examiner erred in finding the
combination of Honda and Fischer teaches “the verifier determines the
authorization based at least in part on an assessment of whether the one or
more responses were immediately available, or whether the one or more
responses were a result of a determination”?

ANALYSIS
Again, we find that the Examiner has made extensive fact finding with
respect to each of the limitations of claim 6 (see Ans. 20-21). Appellant's
argument with regard to claim 6 is based on the reasons set forth for claims 4
and 5. As discussed above with respect to claims 4 and 5, we find Appellant
has failed to comply with the requirements of 37 C.F.R. § 1.111(b) (2000).
Therefore, we conclude Appellant has not met the burden of
presenting evidence or argument to rebut the Examiner's conclusion of the
obviousness of the invention recited over Hershey and Fischer.
Accordingly, we sustain the Examiner's conclusion of obviousness with
respect to independent claim 6.

CONCLUSION
Appellant has not shown the Examiner erred in finding Honda teaches
a timer for measuring response times associated with the one or more
requests or that Fischer teaches response times that are correlated to a
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physical proximity between the verifier and a first source of the one or more
requests, and between the verifier and a second source of the one or more
requests. Therefore, Appellant has not shown the Examiner erred in
rejecting claim 4 under 35 U.S.C. § 103(a) as obvious over Candelore,
Honda and Fischer.
Additionally, Appellant has not shown the Examiner erred in finding
the combination of Candelore, Honda, Fischer, and Dillenberger teaches the
verifier determines the authorization based at least in part on an assessment
of the response times, and wherein the assessment of the response times
forms an assessment of whether the one or more responses were
communicated locally to the verifier or via a network connection.
Therefore, Appellant has not met the burden of showing the Examiner erred
in rejecting claim 5 under 35 U.S.C. § 103(a) as obvious over Candelore,
Honda, Fischer, and Dillenberger.
Further, Appellant has not shown the Examiner erred in concluding
the combination of Serret-Avila, Honda and Hershey teaches or suggests a
verifier that precludes the rendering corresponding to the selected data item
in dependence upon whether other data items of the plurality of data items
are available to the renderer. Therefore, Appellant has not shown the
Examiner erred in rejecting claim 7 (and claims 8, 9 and 10 which depend
therefrom) under 35 U.S.C. § 103(a) as obvious over Serret-Avila, Honda,
and Hershey.
Also, Appellant has not shown the Examiner erred in finding the
combination of Hershey and Fischer teaches that the verifier determines the
authorization based at least in part on an assessment of the response times,
and wherein the assessment of whether the one or more responses were
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immediately available, or whether the one or more responses were a result of
a determination. Therefore, we find that Appellant has not met the burden of
showing the Examiner erred in rejecting claim 6 as obvious over Hershey
and Fischer.

DECISION
The Examiner’s rejection of claim 4 under 35 U.S.C. § 103(a) as
being obvious over Candelore, Honda and Fischer is affirmed.
The Examiner’s rejection of claim 5 under 35 U.S.C. § 103(a) as
being obvious over Candelore, Honda, Fischer, and Dillenberger is affirmed.
The Examiner’s rejection of claims 7 and 9 under 35 U.S.C. § 103(a)
as being obvious over Serret-Avila, Honda, and Hershey is affirmed.
The Examiner’s rejection of claims 6 under 35 U.S.C. § 103(a) as
being obvious over Hershey and Fischer is affirmed.
The Examiner’s rejection of claim 8 under 35 U.S.C. § 103(a) as
being obvious over Serret-Avila, Honda, Hershey and Vered is affirmed.
The Examiner’s rejection of claim 10 under 35 U.S.C. § 103(a) as
being unpatentable over Serret-Avila, Honda, Hershey and van Zoest is
affirmed.
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) (2009).

AFFIRMED
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