Ex Parte Hogan

Board of Patent Appeals and Interferences

Aug 25, 2009

09783112 (B.P.A.I. Aug. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOSH N. HOGAN
____________________

Appeal 2008-005209
Application 09/783,112
Technology Center 2400
____________________

Decided: August 26, 2009
____________________

Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

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Application 09/783,112

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 26-28. Claims 1-25 have been canceled.1 We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
We affirm.

Appellant’s Invention
Appellant invented a data transmission system for providing XOR
encryption of error code correction (ECC) encoded data such as DVD
(digital video disk) and CD (compact disk) data. (Spec. 4, l. 24 to 5, l. 17.)2

Claim
Independent claim 28 further illustrates the invention. It reads as
follows:
28. A data controller comprising a processor for
performing a bitwise XOR of an encryption mask and a block
of ECC-encoded data, a product of the bitwise XOR being an
encrypted block.

References
The Examiner relies on the following references as evidence of
unpatentability:

1 We refer to Appellant’s Supplemental Response filed January 3, 2008.
2 We refer to Appellant’s Specification (“Spec.”) and Appeal Brief (“App.
Br.”) filed August 17, 2007. We also refer to the Examiner’s Answer
(“Ans.”) mailed November 16, 2007.
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Koford US 4,377,862 Mar. 22, 1983

Hibi US 4,527,273 Jul. 2, 1985

Rejections
The Examiner rejects claim 28 under 35 U.S.C. § 102(b) as
anticipated by Koford.3
The Examiner rejects claims 26 and 27 under 35 U.S.C. § 103(a) as
unpatentable over Koford and Hibi.

Appellant’s Contentions
Appellant contends that the Examiner improperly rejected the claims.
Specifically, Appellant contends that claim 28 is not anticipated by Koford
because Koford does not disclose, teach, or suggest “encryption of ECC
blocks,” using XOR encryption. (App. Br. 6.) Appellant also contends that
the Examiner failed to establish a proper prima facie case of obviousness for
claims 26 and 27 because the Koford and Hibi references “do not teach or
suggest a bitwise XOR of an encryption mask and a block of ECC-encoded
data,” and thus, “do not produce a system having all of the limitations of
claim 26 or a drive having all of the limitations of claim 27.” (App. Br. 7.)

3 Appellant incorrectly asserts the ground of rejection as anticipation under
35 U.S.C. § 102(a), instead of 35 U.S.C. § 102(b). (App. Br. 4.) This error
does not affect our analysis and will, therefore, be ignored.
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Examiner’s Findings and Conclusions
The Examiner found that Koford discloses each feature of Appellant’s
claim 28. (Ans. 3, 5-8.) In particular, the Examiner found that Koford
discloses performing a XOR encryption (bitwise XOR encryption) of an
encryption mask (secret key) and a block of data. (Ans. 3, 5.) Koford also
discloses transmitting blocks of ECC-encoded data. (Ans. 3, 6.) Koford
does not disclose XOR encryption of ECC-encoded data. The recitation of
“ECC-encoded” data, however, does not structurally or functionally
distinguish the claimed invention over the described prior art. (Ans. 6-8.)
The Examiner also found that Koford and Hibi teach each feature of
Appellant’s claims 26 and 27. (Ans. 3-5, 9.) The Examiner provided a
rationale for the reference combinations as required by 35 U.S.C. § 103(a),
and determined that it would have been obvious for one of skill in the art to
combine the references. (Ans. 4, 5.)

ISSUES
Based on Appellant’s contentions, as well as the findings and
conclusions of the Examiner, the issue before us is as follows.
Did Appellant establish the Examiner erred in determining Koford
discloses each feature of Appellant’s invention, in particular, a bitwise XOR
of an encryption mask and a block of ECC-encoded data?

FINDINGS OF FACT (FF)
We find that the following enumerated findings are relevant to the
rejections under review and are supported by at least a preponderance of the
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evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Office).

Koford Reference
1. Koford describes an apparatus and method for encrypting and
adding error control information to data transmitted in an asynchronous
communication system. (Col. 2, ll. 54-56.) Koford discloses a data
controller including a processor for performing the method for encrypting
and adding error control information. (Col. 8, ll. 3-8; col. 9, ll. 1-10; Fig. 3,
element 54 (CPU).)
2. Koford describes exclusive OR (XOR) encryption of a secret
key or enciphering characters (an encryption mask) and blocks of data. The
XOR function encrypts data on a bit by bit (bitwise) basis through a gate
arrangement. (Col. 8, ll. 55-67; col. 10, ll. 15-30.)
3. Koford describes adding error correction code (ECC)
information to blocks of data to produce ECC-encoded blocks of data. (Col.
4, ll. 35-40; col. 5, ll. 43-55; col. 6, ll. 40-46; Fig. 2, element 32.)

PRINCIPLES OF LAW
Burden on Appeal
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
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prima facie case with evidence of secondary indicia of nonobviousness.”)
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).

Anticipation
Anticipation is a question of fact. In re Schreiber, 128 F.3d 1473,
1477 (Fed. Cir. 1997). Under 35 U.S.C. § 102, “[a] claim is anticipated only
if each and every element as set forth in the claim is found, either expressly
or inherently described, in a single prior art reference.” Verdegaal Bros.,
Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987); see
Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005)
(citation omitted).

ANALYSIS
Initially, we note the following claim groupings and waiver issues.
Appellant briefly contends that the Examiner failed to establish a proper
prima facie case of obviousness for claims 26 and 27, restating the argument
made with respect to claim 28 and the Koford reference – that the references
“do not teach or suggest a bitwise XOR of an encryption mask and a block
of ECC-encoded data,” (the argument made with respect to the Koford
reference and claim 28) and thus, “do not produce a system having all of the
limitations of claim 26 or a drive having all of the limitations of claim 27.”
(App. Br. 7.) However, this statement is insufficient to rise to the level of a
separate argument requiring our consideration. See Hyatt v. Dudas, 551
F.3d 1307, 1313-14 (Fed. Cir. 2008) (“When the appellant fails to contest a
ground of rejection to the Board, section 1.192(c)(7) [(now section
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41.37(c)(1)(vii))] imposes no burden on the Board to consider the merits of
that ground of rejection . . . the Board may treat any argument with respect
to that ground of rejection as waived.” Id. at 1314); see also In re Guess,
2009 WL 1598475 at *1 (Fed. Cir. 2009) (citing In re Watts, 354 F.3d 1362,
1367 (Fed. Cir. 2004)) (“Appellants failed to argue that any limitations
unique to [the claims] survive [the rejection]. Appellants have therefore
waived any such arguments on appeal.”).
We find that Appellant argues the merits of only independent claim
28. We will, therefore, treat claims 26-28 as standing or falling together.
We accept Appellant’s grouping of the claims. See 37 C.F.R.
§ 41.37(c)(1)(vii) (“Notwithstanding any other provision of this paragraph,
the failure of appellant to separately argue claims which appellant has
grouped together shall constitute a waiver of any argument that the Board
must consider the patentability of any grouped claim separately.”).
Accordingly, we address only those arguments that Appellant presents in the
Briefs. Arguments that Appellant could have made but chose not to make in
the Briefs are waived.

Rejection of the Claims under 35 U.S.C. § 102(b)
We decide the question of whether Appellant establishes the
Examiner erred in determining Koford discloses each feature of Appellant’s
invention, in particular, a bitwise XOR of an encryption mask and a block of
ECC-encoded data. We will affirm the Examiner’s rejection of claims 26,
27, and 28 for the reasons set out above, as well as the reasons that follow.
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We initially note disagreement between the Examiner and the
Appellant concerning the definition of “ECC-encoded data.” (App. Br. 6;
Ans. 6-7.) We determine the scope of the claims in patent applications not
solely based on the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations omitted). Accordingly, giving the term “ECC-encoded data” its
broadest reasonable interpretation, we find ECC-encoded data would be
commonly understood to mean data containing ECC information.
We find unpersuasive Appellant’s contention that Koford does not
disclose XOR encryption of an encryption mask and a block of ECC-
encoded data. Koford describes an apparatus (data controller) for encrypting
and adding error control information a including a processor. The processor
performs XOR encryption of a secret key or enciphering characters (an
encryption mask) and blocks of data. The processor also adds error
correction code (ECC) information to blocks of data to produce ECC-
encoded blocks of data. (FF 1, 2, 3.) Although Koford describes performing
the XOR encryption on blocks of data prior to ECC encoding – rather than
ECC-encoded data being XORed (col. 4, ll. 43-56; col. 10, ll. 15-59) – the
description of data as “ECC-encoded” does not impact how the data is
processed, i.e., the function or structure of the processor.
In this instance, merely reciting that data corresponds to a particular
type of data – “ECC-encoded” data (as opposed to some other unique
identifier) – essentially constitutes non-functional descriptive material as it
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does not further limit the claimed invention either functionally or
structurally. Such non-functional descriptive material does not patentably
distinguish claims over the prior art that otherwise renders the claims
unpatentable. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also
Ex parte Nehls, 88 USPQ2d 1883, 1887-89 (Bd. Pat. App. & Int. 2008)
(precedential) (discussing cases pertaining to non-functional descriptive
material).
We agree with the Examiner that Koford discloses XOR encryption of
data, which is equivalent to the function of Appellant’s claimed “bitwise
XOR of an encryption mask and a block of ECC-encoded data.” The
Examiner explains at length how XOR encrypting standard ASCII characters
is identical to XOR encrypting ASCII characters with additional characters
added as error correction code (ECC) information. (Ans. 6-8.)
Appellant did not file a reply brief, nor did Appellant point out any
alleged error in the Examiner’s position. Accordingly, Appellant provides
no persuasive evidence supporting the assertions, and has not met the burden
to show reversible error in the Examiner’s finding that Koford discloses a
bitwise XOR of an encryption mask and a block of ECC-encoded data.
The Examiner properly explains where each feature of Appellant’s
claim 28 is shown in the Koford reference. Accordingly, we find Koford
discloses each feature of Appellant’s claim 28, anticipating the claim. For
all the reasons noted above, we will sustain the Examiner’s rejection of
claim 28, as well as claims 26 and 27.

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CONCLUSION OF LAW
On the record before us, we find Appellant has not established that the
Examiner erred in determining Koford discloses each feature of Appellant’s
invention, in particular, a bitwise XOR of an encryption mask and a block of
ECC-encoded data.

DECISION
We affirm the Examiner's rejection of claim 28 under 35 U.S.C.
§ 102(b).
We affirm the Examiner's rejection of claims 26 and 27 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).

AFFIRMED

dal

Hewlett-Packard Company
Intellectual Property Administration
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Fort Collins, CO 80527-2400