Ex Parte Gammel et alDownload PDFPatent Trials and Appeals BoardMay 30, 201913409369 - (D) (P.T.A.B. May. 30, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/409,369 03/01/2012 Berndt Gammel 57579 7590 06/03/2019 MURPHY, BILAK & HOMILLER/INFINEON TECHNOLOGIES 1255 Crescent Green Suite 200 CARY, NC 27518 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. 1012-0359 I 2011P50201 us 1074 EXAMINER GIROUX, GEORGE ART UNIT PAPER NUMBER 2125 NOTIFICATION DATE DELIVERY MODE 06/03/2019 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): official@mbhiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BERNDT GAMMEL, STEP AN MAN GARD, and STEFFEN SONNEKALB Appeal2018-000827 Application 13/409,369 1 Technology Center 2100 Before JOHN A. JEFFERY, DENISE M. POTHIER, and JOHN P. PINKERTON, Administrative Patent Judges. PINKERTON, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1-15, 25-37, and 44. 2 We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 1 Appellants identify INFINEON TECHNOLOGIES AG, a German company, as the real party in interest. Br. 2. 2 Claims 17-22 are allowed. Claims 16 and 38--43 are objected to and are not before us. Appeal2018-000827 Application 13/409,369 STATEMENT OF THE CASE Introduction Appellants generally describe the disclosed and claimed invention as follows: A signature module calculates a signature during the execution of a program by a central processing unit based on program instructions to the central processing unit, and stores the signature in a signature register of the signature module. The signature module includes: a calculation unit configured to generate a signature value based on program instructions executed on the central processing unit; and an instruction information interface configured to receive at least one item of instruction information from the central processing unit which indicates whether an instruction currently being executed by the central processing unit was jumped to indirectly or directly. Abstract. 3 Claim 1 is representative and reproduced below (with formatting changes and the disputed limitations emphasized): 1. A device for executing a program, the device comprising: a central processing unit; and a signature model configured to calculate a signature on the basis of instructions and to store the signature in a signature register, wherein calls of interrupt routines or subroutines occur during execution of the program by the central processing unit, wherein the device for executing the program is configured if a call of an interrupt routine takes place, to read 3 Our Decision refers to the Final Action mailed Oct. 5, 2016 ("Final Act."); Appellants' Appeal Brief filed Apr. 13, 2017 ("Br."); the Examiner's Answer mailed Aug. 3, 2017 ("Ans."); and the original Specification filed Mar. 1, 2012 ("Spec."). 2 Appeal2018-000827 Application 13/409,369 out the signature assigned to the interrupted program from the signature module by means of a program instruction of the interrupt routine and to store the signature, and to write the stored signature to the signature module before leaving the interrupt routine by means of a program instruction of the interrupt routine, and if a call of a subroutine takes place, to adapt the signature in the signature register to a signature of the subroutine before the call of the subroutine by means of a program instruction that brings about a relative change in the signature, and, after a return from the subroutine, by means of a further program instruction that brings about a relative change in the signature, to adapt the signature in the signature register to a signature of the program section from which the call of the subroutine took place. Br. 9 (Claims App'x). Rejections on Appeal Claims 1-7, 10, 11, 13-15, 25-31, 34, 35, 37, and 44 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Zumkehr et al. (US 5,974,529; issued Oct. 26, 1999) ("Zumkehr") in view of applicants' admitted prior art ("AAPA"). 4 Final Act. 3-16. Claims 8, 9, 12, 32, 33, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Zumkehr, AAPA, and Stahl (US 5,274,817; issued Dec. 28, 1993). Final Act. 16-19. ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments in the Appeal Brief and are not persuaded the Examiner erred. Unless otherwise noted, we adopt as our own the findings and reasons set 4 As explained infra, the Examiner cites a portion of paragraph 5 of Appellants' Specification as AAP A. 3 Appeal2018-000827 Application 13/409,369 forth by the Examiner in the Office Action from which this appeal is taken (Final Act. 3-19) and in the Examiner's Answer (Ans. 2--4), and we concur with the conclusions reached by the Examiner. For emphasis, we consider and highlight specific arguments as presented in the Appeal Brief. Rejection of Claims 1-7, 10, 11, 13-15, 25-31, 34, 35, 37, and 445 under§ 103(a) The Examiner finds the combination of Zumkehr and AAP A teaches or suggests the disputed limitation of claim 1. Final Act. 3-5; Ans. 3. Appellants contend the Examiner erred for two primary reasons. First, Appellants contend that the Examiner erred by identifying the quoted portion of paragraph 5 of the Specification as AAP A because it "contains no explicit statement that the information relied upon in the rejections was well-known and qualified as prior art." Br. 5. Appellants argue that, unlike the cases of Riverwood Int'! Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir. 2003), Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988), and In re Nomiya, 509 F.2d 566, 571 n.5 (CCPA 197 5), in which a statement by an applicant in the specification or during prosecution identifying certain matter as "prior art" was held to be an admission that the matter is indeed prior art, there is no such statement here. Id. at 5---6. Appellants also argue that the Examiner "provides no reasonable 5 Although Appellants' identify these claims in the section of the Appeal Brief labeled "Grounds of Rejection to be Reviewed on Appeal" (see Br. 4), a different group of claims is listed at the beginning of the argument section (see Br. 5). In spite of this discrepancy, we believe Appellants intended to argue these identified claims. We also note that Appellants argue their listing of claims as a group, focusing on independent claim 1. Br. 5-8. We consider claim 1 to be representative and, therefore, we decide the rejection of these claims on the basis of claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv). 4 Appeal2018-000827 Application 13/409,369 basis for concluding that Applicant admitted or intended to admit certain matter not the work of the inventors as prior art." Id. at 6. Second, Appellants contend that the rejections are in error because the cited portion of paragraph 5 does not teach or suggest the disputed limitations of claim 1 : if a call of a subroutine takes place, to adapt the signature in the signature register to a signature of the subroutine before the call of the subroutine by means of a program instruction that brings about a relative change in the signature, and, after a return from the subroutine, by means of a further program instruction that brings about a relative change in the signature, to adapt the signature in the signature register to a signature of the program section from which the call of the subroutine took place. Id. at 7. We are not persuaded by Appellants' arguments that the Examiner erred. First, regarding Appellants' argument that the portion of paragraph 5 of the Specification cited by the Examiner is not AAP A, we agree with the Examiner that a description of the work of another can be treated as an admission of prior art even if the words "prior art" are not used. Ans. 2. Neither the cases cited by Appellants nor the cases cited by the Examiner establish a "bright-line" test that must be met for the description of the work of another to qualify as admitted prior art. Thus, the fact that Appellants did not use the term "prior art" in paragraph 5 of the Specification is not determinative. The Manual of Patent Examining Procedure ("MPEP") § 2129 provides guidance on admissions as prior art. Section I of MPEP § 2129 states that "[a] statement by an applicant in the specification ... identifying the work of another as 'prior art' is an admission which can be relied upon for both anticipation and obviousness," regardless of whether the admitted prior art would otherwise qualify under one of the categories of 35 U.S.C. 5 Appeal2018-000827 Application 13/409,369 § 102. Section I also states that, even if labeled as "prior art," because the work of the same inventive entity cannot be used against the claims unless it falls under one of the statutory categories of 35 U.S.C. § 102, "the examiner must determine whether the subject matter identified as 'prior art' is applicant's own work, or the work of another. In the absence of another credible explanation, examiners should treat such subject matter as the work of another." Consistent with this section of the MPEP, we determine that although the term "prior art" is not used expressly in the Specification to describe the prior work of another, the description can be treated as admitted prior art if the description provides a reasonable basis for the Examiner to conclude that it is the prior work of another. Thus, if the Specification or prosecution proceedings provide a reasonable factual basis for the Examiner to conclude that subject matter described is the prior work of another, the Examiner may treat it as such in the absence of another credible explanation. Once an applicant acknowledges in the Specification or during prosecution that certain matter is the prior work of another, the applicant should not be permitted to later assert that such matter is not known in the art. See, e.g., In re Reuning, 276 F. App'x 983, 986 (Fed. Cir. 2008) ("Having acknowledged that certain claimed elements are taught by the prior art, Reuning cannot now defeat an obviousness rejection by asserting that the cited references fail to teach or suggest these elements.") (non-published). Here, the Examiner finds that paragraph 5 of the Specification teaches it was known in the art that a called subroutine will be checked using its own signature or check value. Ans. 2-3. In that regard, paragraph 5 of the Specification states that "[t]he check value of the subprogram is thus 6 Appeal2018-000827 Application 13/409,369 independent of the check value of the main program." The Examiner also finds that paragraph 5 of the Specification describes using a separate signature for a called subroutine as "conventional" because paragraph 5 also states "[a] further possibility, of which use is made relatively frequently in the [ art of] programming of programs for computer systems" is a specific program calling a function present in another program or subroutine. Thus, we determine that the Examiner had a reasonable factual basis for finding that the description in Appellants' Specification that a called subroutine is checked using its own signature is admitted prior art of another because paragraph 5 of the Specification states that "use is made relatively frequently" in the art of programming of programs for a specific program to call another subroutine or subprogram, in which event it was known that the called subroutine will be checked using its own signature. Second, regarding Appellants' argument that the cited portion of paragraph 5 does not teach or suggest the disputed limitations of claim 1, we are not persuaded because, as the Examiner finds, and we agree, Appellants attack the references individually, whereas the rejection is based on the combined teachings of Zumkehr and AAPA. Ans. 3. Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of the references. See In re Keller, 642 F.2d 413,425 (CCPA 1981). Here, Appellants argue that AAP A does not teach the claimed "adapt the signature in the signature register" in the event of a subroutine call and "adapt the signature in the 7 Appeal2018-000827 Application 13/409,369 signature register" after return from the subroutine. Br. 7. This argument is not convincing because the Examiner relies on Zumkehr as teaching these limitations of claim 1 instead of AAP A. Ans. 3. In particular, the Examiner finds that "Zumkehr teaches that when a program calls a subroutine, the signature register (Zumkehr: col. 9, lines 57-59; claims 23-24) of the program is saved and a new signature is used for a subroutine when the subroutine is called, and that the program's signature is restored upon returning to the program (Zumkehr: col. 8, lines 11-20)." Id. With respect to the new signature used for the subroutine, the Examiner relies on the teaching in AAP A "that a called subroutine will be checked using its own signature when it is called." Id. ( citing Spec. ,r 5). Thus, the Examiner finds, and we agree, that the combination of Zumkehr and AAP A teaches or suggests the disputed limitations of claim 1. Accordingly, we are not persuaded the Examiner erred in (1) finding that the disclosure in paragraph 5 of Appellants' Specification that a called subroutine will be checked using its signature constitutes AAPA, (2) that the combination of Zumkehr and AAP A teach or suggest the disputed limitations of claim 1, and (3) concluding that the combined teachings and suggestions of Zumkehr and AAPA render the subject matter of claim 1 obvious under 35 U.S.C. § 103(a). Thus, we sustain the Examiner's rejection of claim 1, as well as independent claim 25, and dependent claims 2-7, 10, 11, 13-15, 26-31, 34, 35, 37, and 44, under§ 103(a). Rejection of Claims 8, 9, 12, 32, 33, and 36 under§ 103(a) Appellants advance no separate, substantive arguments for claims 8, 9, 12, 32, 33, and 36. Instead, Appellants appear to argue these claims are allowable for the reasons discussed with respect to claim 1. See Br. 5-8. 8 Appeal2018-000827 Application 13/409,369 These arguments are not persuasive because, for the reasons discussed supra, we determine that claim 1 is obvious under § 103 based on the record. Therefore, we sustain the rejection of dependent claims 8, 9, 12, 32, 33, and 36 under§ 103(a). DECISION We affirm the Examiner's rejections of claims 1-15, 25-37, and 44 under 35 U.S.C. § 103(a). 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 9 Copy with citationCopy as parenthetical citation