Ex Parte Ferren et al

Patent Trial and Appeal Board

Dec 22, 2015

11198939 (P.T.A.B. Dec. 22, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111198,939 08/05/2005
71484 7590 12/24/2015
IV - SUITER SW ANTZ PC LLO
14301 FNB PARKWAY, SUITE 220
OMAHA, NE 68154
FIRST NAMED INVENTOR
Bran Ferren
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.
1103-006-009A-OOOOOO 9802
EXAMINER
HAILU, TESHOME
ART UNIT PAPER NUMBER
2434
NOTIFICATION DATE DELIVERY MODE
12/24/2015 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):
file@suiter.com
srs@suiter.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRAN FERREN and EDWARD K.Y. JUNG
Appeal2013-009932
Application 11/198,939
Technology Center 2400
Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD JR, and
ADAM J. PYONIN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1-3, 11-13, 22, 25-30, 34, 35, 38, and 40-46, which are
all claims pending. App. Br. 46-50. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
Appeal2013-009932
Application 11/198,939
STATEMENT OF THE CASE
Introduction
Appellants' disclosure relates to "methods of retrieving information
from a data storage device previously deactivated by modification or
degradation of at least a portion of the data storage device." Abstract.
Claims 1, 13, and 28 are independent. Claim 1 is reproduced below
for reference:
1. A method performed by a microprocessor for retrieving
information from a deactivated memory device, comprising:
providing, over the Internet, an identification code to a
support entity, the identification code uniquely associated with
a specific deactivated memory device, the deactivated memory
device including at least one region from which read-support
information sufficient to support reading of data of interest
from the memory device is readable prior to deactivation but
not after deactivation; and
receiving, over the Internet, a unique override code from
the support entity, the override code unique to the specific
deactivated memor; device and containing alternative
information sufficient to permit reading of the data of interest
from the deactivated memory device.
The Examiner's Rejections
Claims 1, 2, 11-13, 22, 25, 38, and 40-44 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Fontijn (US 2005/0005142 Al;
Jan. 6, 2005). Final Act. 5.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fontijn and Shirakawa (US 2002/0051536 Al; May 2,
2002). Final Act. 10.
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Application 11/198,939
Claims 26-30, 34, 35, 45, and 46 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Fontijn and Michel (US 5,625,690; Apr.
29, 1997). Final Act. 11.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We agree with Appellants'
conclusion that the Examiner erred in rejecting independent claim 1;
however, we disagree with Appellants' conclusion that the Examiner erred
in rejecting independent claims 13 and 28. We adopt the Examiner's
findings and conclusions as our own, except as to any findings that we
overturn or set aside in the analysis as follows.
A. Independent Claim 1
Appellants argue the Examiner erred in rejecting independent claim 1,
because Fontijn does not disclose "providing, over the Internet, an
identification code to a support entity, the identification code uniquely
associated with a specific deactivated memory device," as claimed. See
App. Br. 15-17; Reply Br. 4--5.
We find Appellants' arguments to be persuasive. Although the
Examiner correctly finds that, in Fontijn, "it is inherent that the content
provider has to authenticate the user using some kind of verification/ID to
provide the content securely" (Ans. 3), Fontijn provides no indication the
identification code is uniquely associated with a specific deactivated
memory device. See Fontijn i-f 22. We thus agree with Appellants that the
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Application 11/198,939
Examiner has not shown "the allegedly inherent characteristic necessarily
flows from the disclosure ofFontijn." App. Br. 17 (citing MPEP § 2112).
Appellants have shown at least one reversible error in the Examiner's
rejection of claim 1; therefore, we do not reach the merits of Appellants'
remaining arguments for this claim (see App. Br. 30-32; Reply Br. 9-10).
Accordingly, we do not sustain the rejections of claim 1, or claims 2, 3, 11,
12, and 3 8, which each ultimately depend from claim 1.
B. Independent Claim 13
Appellants argue the Examiner erred in rejecting independent claim
13, because F ontijn fails to disclose "identifying an override code with the
identification code" and "providing the override code to a receiving entity,"
as claimed. See App. Br. 23-26; Reply Br 7-8. Particularly, Appellants
contend the "Examiner failed to establish how restoring the Examiner
asserted 'identification code' is equivalent to 'identifying an override code
associated with the identification code' (emphasis added) or to 'providing
the override code to a receiving entity' (emphasis added) as recited in claim
13." A B 25 pp. r. .
Appellants' arguments are unpersuasive of error. Appellants have
made conclusory arguments regarding the failure of the Examiner's findings,
and do not explain why the disclosure of Fontijn does not anticipate the
disputed limitations. The Examiner finds, and we agree, that Fontijn
describes:
in order to activate the deactivated CD the user has to restore
(i.e. by getting an override code/re-gaining the decryption key)
from the content provider in a in a secure way through a
network connection. Therefore, the content provider has to
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Application 11/198,939
identify/verify the user to secure the content and provide the
decryption key associated with the user content stored in the
deactivated memory.
Ans. 15; see Fontijn i-f 38. Additionally, the Examiner finds, and we agree,
that the identification code "is inherently disclosed" in F ontijn "to identify
the authorized user and secure the distribution of the content." Ans. 14; see
Fontijn i-fi-122, 38. We find reasonable the Examiner's findings, as Fontijn
will need an identification code to provide for secure distribution of content.
See Fontijn i-f 16. The Examiner's finding of inherency shifts the burden to
Appellants to provide evidence that the system and method of Fontijn does
not identify and provide the code as recited in claim 13. See In re Best, 562
F.2d 1252, 1254--55 (CCPA 1977) (quoting In re Swinehart, 439 F.2d 210
( CCP A 1971) ). Appellants have not offered any evidence we find
persuasive, and, therefore, we are not persuaded that the Examiner erred.
Accordingly, we do not find the Examiner erred in rejecting claim 13,
and dependent claims 22; 25; 40; 41; 43; and 44; which depend therefrom
and were not argued separately with particularity.
We also do not find the Examiner erred in rejecting dependent claims
26, 27, and 42, for similar reasons as discussed above for claim 13.
Particularly, Appellants' arguments essentially repeat the claim limitations
and the Examiner's statements, but otherwise do not persuasively show error
in the rejection. See 37 C.F.R. § 41.37(c)(l)(iv); see also In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011).
C. Independent Claim 28
Appellants argue the Examiner erred in rejecting independent claim
28, because "[t]he Examiner-proffered combination of Fontijn and Michel
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Application 11/198,939
would change the principle of operation ofFontjin." App. Br. 37. With
respect to Fontijn, Appellants additionally state that "[i]f the decryption key
is stored in more than one memory location (i.e., segmented into more than
one memory location), by only restoring the data within the keylocker 24
(i.e., a single segment), how would one obtain the full decryption key?"
App. Br. 39.
Appellants' argument regarding the principle of operation of Fontijn
is predicated on the contention that the combination will "require substantial
reconfiguration" of Fontijn's disc. App. Br. 38. We are not persuaded of
Examiner's error, however, as Appellants have not shown how the
reconfiguration of Fontijn's disc would change Fontijn's principle of
operation; nor do Appellants persuasively show the Examiner's combination
of references was "uniquely challenging or difficult for one of ordinary skill
in the art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007); contra App. Br. 37, 43--44. Further, Appellants'
argument regarding a "full decryption key" (see App. Br. 39) is not
commensurate with the scope of claim 28, because claim 28 does not recite a
full decryption key; in any event, Appellants' argument is not persuasive for
requiring the bodily incorporation of the references, rather than being
responsive to the Examiner's findings. Accordingly, we do not find the
Examiner erred in rejecting claim 28 and claims 30, 34, 35, 45, and 46
which depend therefrom and were not argued separately with particularity.
We also do not find the Examiner erred in rejecting dependent claim
29. Appellants' arguments refer to the specific claim language (see App. Br.
42--43), but do not persuade us the combination of cited references does not
at least suggest the claims, as found by the Examiner (see Ans. 10-11 ). An
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Application 11/198,939
obviousness analysis "need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
DECISION
We reverse the Examiner's rejections of claims 1-3, 11, 12, and 38.
We affirm the Examiner's rejections of claims 13, 22, 25-30, 34, 35,
and 40-46.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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