Ex Parte Etchegoyen

Patent Trial and Appeal Board

Sep 29, 2016

12784380 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121784,380
96051 7590
Uniloc USA Inc.
Legacy Town Center
7160 Dallas Parkway
Suite 380
Plano, TX 75024
05/20/2010
10/03/2016
FIRST NAMED INVENTOR
Craig S. Etchegoyen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
UN-NP-SA-007 8700
EXAMINER
SALEHI, HELAI
ART UNIT PAPER NUMBER
2433
NOTIFICATION DATE DELIVERY MODE
10/03/2016 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):
sean. burdick@unilocusa.com
tkiatkulpiboone@unilocusa.com
kris.pangan@unilocusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG S. ETCHEGOYEN1
Appeal2015-002425
Application 12/784,380
Technology Center 2400
Before KRISTEN L. DROESCH, CATHERINE SHIANG, and
MATTHEW J. McNEILL, Administrative Patent Judges.
DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) from the Final
Rejection of claims 16-25, all of the pending claims in the application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellant indicates the real party-in-interest is Uniloc Luxembourg S.A.
App. Br. 3.
Appeal2015-002425
Application 12/784,380
BACKGROUND
The disclosed invention relates to a method for generating hardware
fingerprint data and providing selected portions of the hardware fingerprint
data to authenticate a device. See Spec. i-fi-1 9-13.
Representative claim 16 reproduced from the Claims Appendix of the
Appeal Brief, reads as follows:
16. A method, comprising:
maintaining a data selection mask at a server, the data
selection mask designed to identify a static portion of data in
different fields of a gross data set comprised of defined data
fields;
transmitting the data selection mask to a client device;
receiving, in response to transmitting the data selection
mask, a selected data file from the client device, selected at the
client device in accordance with the data selection mask from a
gross data set larger than the selected data file; and
using the selected data file to identify the client device.
REJECTION
Claims 16-25 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Endoh (US 2006/0026105 Al; published Feb. 2, 2006).
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
arguments in the Appeal Brief, the Examiner's Answer, and the arguments
in the Reply Brief. We agree with Appellant's arguments. We highlight and
address specific findings and arguments below for emphasis.
Appellant argues that Endoh does not teach data selection and a data
selection mask. See App. Br. 8-10; Reply Br. 5-7. Appellant contends that
Endoh instead discloses device selection which is not identical with, or
functionally equivalent to, data selection. See App. Br. 8; Reply Br. 5.
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Appeal2015-002425
Application 12/784,380
Appellant contends that paragraphs 124--12 7, 174--175, and 19 6 of Endoh,
cited by the Examiner, have nothing to do with data selection or data
selection masking. See App. Br. 9-10 (citing Final Act. 3--4); Reply Br. 5.
Specifically, Appellant contends paragraphs 174--175 teach counting
thresholds devised to keep track of the number of times a client device is
permitted to use license software applications. See App. Br. 9; Reply Br. 5.
We understand Appellant to argue that Endoh does not teach
"receiving ... a selected data file from the client device, selected at the
client device in accordance with the data selection mask from a gross data
set larger than the selected data file," as recited in claim 16. For this
limitation, the Examiner contends that Endoh discloses:
"redistributing license files, license files associated with current
application ID are collected and reinstalled into devices, host
updates license database, 0175-01 77, Install license file, Figure
28, S2809) (a license file indicating amount of usage of the
function or the program allowed on the peripheral device is
produced and transmitted to the device, a unique license file ID
identifying the license file is produced and incorporated, a[ n]
encryption key of the program may be acquired and the
encryption key incorporated into the license file, 0196
(producing license file performed by host computer, license
information and license file ID attribute are encrypted by means
of public key cryptography, 0124-0127, (Figure 21).
Final Act. 3--4. In response to Appellant's arguments, the Examiner further
finds:
Endoh discloses "on the basis of the amount of allowed usage
detected" (0196) and "on the basis of information supplied from
each device" (0178), and therefore the Examiner holds that the
usage status table will change and indicate smaller set of data
(less data/parameters than gross) and this smaller set of data
will be provided and each time requested, the set of data will
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Appeal2015-002425
Application 12/784,380
lessen where allowed operations are not equal to 0. Paragraph
0174 states "that is, of those job types that can be executed", if
that cannot be executed then don't have ability, each devices
ability runs to "O", the license usage status table, Figure 29, will
eventually be down to nothing or smaller. For example, the
table starts with 10 devices with all the numbers of times
allowed operations and then it starts to deplete with usage over
time and now have table with less devices and/or less
operations not equal to 0, indicate smaller set of data (less
data/parameters than gross).
Endoh discloses "In the license usage status table shown
in FIG. 29, of those job types in which all numbers of times of
allowed operations are not equal to 0 (that is, of those job types
that can be executed by the current application ID), the numbers
of times of allowed operations is sorted in descending order for
a job type in the leftmost column" (0174) ... "FIG. 29 shows an
example of the license usage status table indicating the license
usage status for each application ID, produced in step S2801
shown in FIG. 28 on the basis of information supplied from
each device in the system" (0178) ... "On the basis of the
amount of allowed usage detected, a license file indicating the
amount of usage of the function or the program allowed on the
peripheral device is produced and transmitted to the device"
(0196).
Ans. 8-9.
We agree with Appellant that Endoh discloses selecting devices from
which to take back license files. See Endoh i-fi-f 174, 177; Fig. 28: steps
S2804, S2807. Based on the Examiner's citations to Endoh (see Final Act.
3--4; Ans. 8-9), we understand the Examiner to find that Endoh's license
usage status table (see Endoh Fig. 29) corresponds to the claimed data
selection mask, and Endoh' s license files correspond to the claimed selected
data file. The Examiner does not explain sufficiently how or where Endoh
discloses a license file (i.e., selected data file) selected in accordance with
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Appeal2015-002425
Application 12/784,380
the license usage status table (i.e., data selection mask) from a gross data set
larger than the selected license file (i.e., selected data file), as required by
claim 16. For these reasons, we are constrained to reverse the Examiner's
rejection of claims 16-25 as anticipated by Endoh.
DECISION
We REVERSE the rejection of claims 16-25.
REVERSED
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