Ex Parte Felton et al

Patent Trial and Appeal Board

Aug 15, 2013

11141689 (P.T.A.B. Aug. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DONALD FELTON and JAMES I. McNIVEN
____________________

Appeal 2011-003176
Application 11/141,689
Technology Center 2400
____________________

Before: JOSEPH F. RUGGIERO, DAVID M. KOHUT, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-003176
Application 11/141,689

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-3, 6, 7, 11-18, 22, and 24. Claims 4, 5, 8-10, 19-21 and 23 are canceled.
We have jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm-in-part.

The claims are directed to a secure operation indicator. Claim 1 and 6,
reproduced below, are illustrative of the claimed subject matter:
1. An apparatus for processing data comprising:
a display for displaying data
a processor operating in a secure domain; wherein
said processor is configured within said secure domain to
generate a user specific image;
said processor is configured to access said user specific
image only from said secure domain; and
said processor is configured to indicate operation within
said secure domain by displaying said user specific image on at
least a portion of said display;
said apparatus is configured to receive signals from, and
send signals to, a remote server, said apparatus configured to
receive said user specific image from said remote server over a
secure link; and wherein
said user specific image comprises a user specific image
fabricated by a user in conjunction with said remote server.

6. An apparatus for processing data comprising:
a display for displaying data
a processor having a secure domain of operation; wherein
said processor is configured to generate a user specific
image from said secure domain;
said processor is configured to access said user specific
image only from said secure domain; and
said processor is configured to indicate operation within
said secure domain by displaying said user specific image on at
least a portion of said display, wherein said apparatus further
Appeal 2011-003176
Application 11/141,689

3
comprises a camera and camera driving software, said camera
and camera driving software being arranged such that operation
of said camera occurs within said secure domain, said user
specific image comprising a photo taken by said camera.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Jalili
Proudler
US 6,209,104 B1
US 7,302,585 B1
Mar. 27, 2001
Nov. 27, 2007
Steinberg US 2003/0159042 A1 Aug. 21, 2003

REJECTIONS
The Examiner made the following rejections:
Claims 1-3, 71 -12, 14-17, 22, and 24 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Proudler. Ans. 3.2
Claims 13 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Proudler and Jalili. Ans. 9.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Proudler and Steinberg. Ans. 11.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We

1 The inclusion of claim 7 among the claims rejected under 35 U.S.C.
§ 102(e) appears to be an inadvertent error and, instead, should have been
listed together with its base claim 6 as rejected under 35 U.S.C. § 103(a)
over Proudler and Jalili.
2 Although the Examiner’s Answer lists claims 1-5, 7-12, 14-17 and 21-24,
claims 4, 5, 8-10, 21 and 23 have been canceled.
Appeal 2011-003176
Application 11/141,689

4
agree with Appellants’ conclusions as to claims 1- 3, and 11-16. However,
we disagree with the Appellants’ conclusions in connection with claims 6, 7,
17, 18, 22 and 24 and, in connection therewith, adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to the Appellants’ Appeal Brief and we
concur with the conclusion reached by the Examiner. We highlight the
following arguments for emphasis.

35 U.S.C. §102(e)
Claims 1- 3, 7, 11, 12 and 14-16
Appellants contend that “Proudler does not disclose a secure channel
from the remote server to the host computer [as required by claim 1].” Reply
Br. 3 (emphasis omitted).3 We agree. In particular Appellants argue that,
while Proudler discloses a host computer communicating with a remote
server storing a trusted image, it fails to disclose a secure channel from the
remote server to the host computer. App. Br. 8-10; Reply Br. 3. The
Examiner responds that Proudler discloses image data passed to host
computer 100 over a secure channel, citing Proudler col. 6, ll. 37-56. Ans.
12-13. However, the secure channel described in the cited portion of
Proudler is between a smartcard and a host computer, not between the host
computer and the network server disclosed at col. 11, ll. 20-24. Therefore,
in the absence of a specific disclosure that the apparatus is configured to
receive a user specific image from a remote server over a secure link, we

3. Appellants make additional arguments with respect to independent claim
1. App. Br. 13-14; Reply Br. 5-6, 9. We do not reach these additional issues
since this issue is dispositive of the rejection of claim 1.
Appeal 2011-003176
Application 11/141,689

5
find that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 102(e) as
being anticipated by Proudler and reverse that rejection.
Appellants further assert that “the Examiner’s rejection of claim 1
over the Proudler reference, whether under § 102 or § 103, is simply
unsupported and is reversible error.” App. Br. 10 (emphasis added). While
we agree that the rejection of claim 1 under 35 U.S.C. § 102(e) is reversible
error, because the Examiner has not rejected claim 1 under 35 U.S.C.
§103(a), this issue is not before us at this time. We leave to the Examiner to
consider whether claim 1 is obvious under 35 U.S.C. § 103(a) over Proudler.
Since claims 2, 3, 11, 12 and 14-16 depend from claim 1, we further
reverse the rejection of these claims. Claim 7 is addressed infra in
connection with its independent claim 6.

Claims 17, 22 and 24
Claim 17 recites “[a] server configured to receive information from a
data processing apparatus according to claim 1, . . .” Thus, the server of
claim 17 does not incorporate the limitations of claim 1, only requiring that
it be configured to receive information from the apparatus of claim 1.
Therefore Appellants’ arguments for the patentability of claim 1 do not
apply to claim 17. Since claim 17 is not separately argued, we summarily
sustain the rejection of claim 17. For the same reasons, we sustain the
rejection of method claim 22 and dependent claim 24, these claims also not
separately argued.4

4 Should prosecution be continued, we leave to the Examiner to consider
whether claims 22 and 24 are indefinite. See MPEP § 2173.05(p)(II) and
IPXL Holdings v. Amazon.com, Inc., 430 F.2d 1377, 1384 (Fed. Cir. 2005).
Appeal 2011-003176
Application 11/141,689

6
35 U.S.C. § 103(a)
Claim 6
In connection with claim 6, Appellants contend that Proudler fails to
disclose an “image comprising a photo taken by said camera.” App. Br. 10.
Appellants’ contention is unpersuasive of error because Appellants are
responding to the rejection by attacking the Proudler reference individually,
even though the rejection is based on the combined teachings of the
references. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). The Examiner relies on Steinberg, not Proudler, for
teaching the disputed limitation. Ans. 13, citing Steinberg, pg. 1, ¶6. Absent
sufficient evidence or argument that the Examiner’s reliance on Steinberg is
misplaced, we find Appellants’ contention unpersuasive of error.
Appellants further contend that the combination of Proudler and
Steinberg is improper for failure of the Examiner “to provide any ‘reasons’
or explicit ‘analysis’ of why he picks and chooses elements from the cited
references and combines them in the manner of Appellants’ claims.” App.
Br. 11 (emphasis omitted); see also App. Br. 17. The Examiner responds
that
Proudler’s (US 7,302,585) invention relates to a data processing
system that comprises a secure reader for reading image from
and/or writing image to a storage component (host
computer/remote server). Also Steinberg’s (US Pub. No.
2003/0159042) invention relates to digital still and video
cameras and the transfer of data from a digital camera to a
computer, and more particularly to an apparatus for
transparently providing embedded security of data within a
storage device and of securing data while being transferred
Appeal 2011-003176
Application 11/141,689

7
from a digital camera to a computer. Therefore, it would have
been obvious to one of ordinary skill in the art, at the time of
the invention was made, to modify the teaching of Proudler and
include the camera and camera driving software using the
teaching of Steinberg in order to securely generate an image
using the camera and securely transfer the generated image
from the digital camera to a computer.
Ans. 14.
We find that the Examiner has articulated reasoning with rational
underpinnings sufficient to justify the legal conclusion of obviousness. In
other words, we find an ordinary artisan would be motivated to use the
camera and camera driving software of Steinberg with the system of
Proudler to securely generate an image using the camera and securely
transfer the generated image from the digital camera to a computer.
Therefore, Appellants’ assertion that the references were improperly
combined is not persuasive of error and accordingly, the Examiner has
properly relied upon the combination of Proudler and Steinberg in
formulating the disputed rejections under 35 U.S.C. § 103(a).
Appellants also contend that “Examiner does not indicate how or
where Proudler or Steinberg teaches a processor ‘configured to generate a
user specific image from said secure domain’ or that the processor can
access ‘said user specific image only from said secure domain.’” App. Br.
12. The Examiner responds that “[c]laim 6 is rejected under the same reason
set forth in rejection of claim 1. . .” Ans. 11. Thus, the Examiner finds that
the disputed claim language is disclosed by Proudler col. 4, ll. 30-35. Ans. 4.
We agree with the Examiner. In the absence of sufficient evidence or
argument that the Examiner’s analysis is erroneous, we find Appellants’
contention unpersuasive of reversible error.
Appeal 2011-003176
Application 11/141,689

8
Appellants further contend that “[t]he Examiner does not allege
specifically that the ‘image comprising a photo taken by said camera’ recited
in claim 6 as evidence ‘to indicate operation within said secure domain’ is
disclosed in the Steinberg reference.” App. Br. 16. We disagree since the
Examiner details where the disputed limitations are disclosed in connection
with claim 1. See Ans. 4. Thus, the Examiner relies on Proudler, col. 4, ll.
30-35 for disclosing that “said processor is configured to indicate operation
within said secure domain by displaying said user specific image on at least
a portion of said display” (Ans. 4, 11) and Steinberg, pg. 1, ¶6 for disclosing
the camera and camera driving software (Ans. 11).
Therefore, in the absence of sufficient evidence or argument that the
Examiner’s findings are in mistaken or inaccurate, Appellants’ contentions
are not persuasive of Examiner error. Accordingly, we sustain the rejection
of claim 6. Since claim 7, which depends from claim 6, is not separately
argued, we also sustain the rejection of claim 7.

Claims 13 and 18
In connection with claim 13, because we find Appellants’ arguments
persuasive in connection with independent claim 1 and since the Jalili
reference was not cited by the Examiner to cure the deficiency in the base
rejection addressed supra, we do not sustain the rejection of claim 13. Since
this issue is dispositive as to the rejection of claim 13, we need not reach the
remaining arguments presented by Appellants.
In connection with claim 18, Appellants argue that it is patentable
based on its dependency from claim 1. App. Br. 14-15. However, claim 18
depends from claim 17 which, as discussed supra, does not include the
Appeal 2011-003176
Application 11/141,689

9
limitations of claim 1. That is, while configured to receive information for a
data processing apparatus according to claim 1, the server of claim 18 does
not incorporate the apparatus structure defined by claim 1. Therefore
Appellants’ arguments for patentability in reliance on claim 1 are not
applicable and not persuasive of error in connection with the rejection of
claim 18.
Appellants further contend that the combination of Proudler and Jalili
is improper. App. Br. 15. We disagree. With reference to pages 11 and 15 of
the Answer, we find that the Examiner has articulated reasoning with
rational underpinnings sufficient to justify the legal conclusion of
obviousness. Therefore, Appellants’ assertion that the references were
improperly combined is not persuasive of error and accordingly, the
Examiner has properly relied upon the combination of Proudler and Jalili in
formulating the disputed rejections under 35 U.S.C. § 103(a). Therefore we
sustain the rejection of claim 18.

CONCLUSIONS
(1) The Examiner erred in rejecting claims 1-3, 11, 12 and 14-16
under 35 U.S.C. § 102(e) as being anticipated by Proudler.
(2) The Examiner has not erred in rejecting claims 7, 17, 22 and 24
under 35 U.S.C. § 102(e) as being anticipated by Proudler.
(3) The Examiner has erred in rejecting claim 13 under 35 U.S.C.
§ 103(a) over Proudler and Jalili.
(4) The Examiner has not erred in rejecting claim 18 under 35
U.S.C. § 103(a) over Proudler and Jalili.
Appeal 2011-003176
Application 11/141,689

10
(5) The Examiner has not erred in rejecting claim 6 under 35
U.S.C. § 103(a) over Proudler and Steinberg.
(6) Claims 6, 7, 17, 18, 22 and 24 are not patentable.
(7) The rejections of claims 1-3 and 11-16 are reversed.

DECISION
The rejections of claims 1-3 and 11-16 are reversed.
The rejections of claims 6, 7, 17, 18, 22 and 24 are affirmed.

AFFIRMED-IN-PART

msc