Ex Parte Huang et alDownload PDFPatent Trial and Appeal BoardJun 24, 201310969749 (P.T.A.B. Jun. 24, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/969,749 10/20/2004 Jung-Chih Huang 2139CON1 2907 7590 06/25/2013 Donald E. Schreiber A Professional Corporation Post Office Box 2926 Kings Beach, CA 96143-2926 EXAMINER BROWN, CHRISTOPHER J ART UNIT PAPER NUMBER 2439 MAIL DATE DELIVERY MODE 06/25/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JUNG-CHIH HUANG, BRIAN OH, YISHAO MAX HUANG, STERLING DU, and AARON REYNOSO ____________ Appeal 2010-012297 Application 10/969,749 Technology Center 2400 ____________ Before MAHSHID D. SAADAT, JEAN R. HOMERE, and MATTHEW R. CLEMENTS, Administrative Patent Judges. CLEMENTS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-7 and 9-25. Claim 8 is canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellants invented a security controller in an electronic device, wherein the controller requires a password before the device can be powered Appeal 2010-012297 Application 10/969,749 2 on so that it can boot. See generally Abstract. Claim 1 is illustrative with disputed limitation in italics: 1. An integrated circuit pre-boot security controller adapted for inclusion in an electronic device that includes both a digital computer and a power subsystem for energizing operation of the digital computer, the pre-boot security controller receiving electrical power even though the power subsystem is not energizing operation of the digital computer and being adapted for enabling the power subsystem to energize operation of the digital computer upon receiving a pre- recorded user password by the pre-boot security controller, the integrated circuit pre-boot security controller comprising: a non-volatile password memory that stores at least one user password; a password input circuit for receiving a password that is to be compared with any user passwords recorded in said password memory; a digital logic circuit for comparing, while the pre-boot security controller is in a security operating mode, the password received by said password input circuit with any user passwords recorded in said password memory; and an output circuit that is coupled to said digital logic circuit for transmitting an output signal to the power subsystem that enables the power subsystem to energize operation of the digital computer when the password received by said password input circuit matches a user password recorded in said password memory, while the pre-boot security controller is in the security operating mode said output circuit also continuously providing an output signal for indicating that the pre-boot security controller is in the security operating mode. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Lewis US 4,604,708 Aug. 5, 1986 Appeal 2010-012297 Application 10/969,749 3 Sibigtroth US 5,251,304 Oct. 5, 1993 Chao US 5,313,639 May 17, 1994 Thandiwe US 5,594,319 Jan. 14, 1997 Cyras US 5,889,866 Mar. 30, 1999 THE REJECTIONS 1. Claims 1, 3, 4, 7, 10, 12, 13, 16, 17, and 19-25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lewis, Cyras, and Sibigtroth. Ans. 4-5.1 2. Claims 6 and 15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lewis, Cyras, Sibigtroth, and Chao. Ans. 5-6. 3. Claims 2, 5, 9, 11, 14, and 18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lewis, Cyras, Sibigtroth, and Thandiwe. Ans. 6-7. THE OBVIOUSNESS REJECTION OVER LEWIS, CYRAS AND SIBIGTROTH The Examiner finds that Lewis discloses every recited element of representative claim 1 except for an “integrated circuit” and for an explicit teaching of “an output signal for indicating that the pre-boot security controller is in the security operating mode,” but cites Sibigtroth and Cyras, respectively, as teaching these features in concluding that the claim would have been obvious. Ans. 4-5. Appellants argue that (1) the combination of Lewis and Cyras does not teach the recited “output signal” because the Examiner concedes that 1 Throughout this opinion, we refer to the Appeal Brief filed Apr. 26, 2010 (“Br.”) and to the Examiner’s Answer mailed May 18, 2010 (“Ans.”). Appeal 2010-012297 Application 10/969,749 4 Lewis does not disclose the recited “output signal,” and relies on Cyras only for a “display,” which is not the same as the recited “output signal;” and (2) Lewis is inoperable for its intended purpose and therefore cannot be combined with other references.2 Br. 12-28. ISSUES (1) Under § 103, has the Examiner erred in rejecting claim 1 by finding that Lewis, Cyras, and Sibigtroth collectively would have taught or suggested “an output signal for indicating that the pre-boot security controller is in the security operating mode”? (2) Does Lewis’s operability render its combination with Cyras and Sibigtroth improper? ANALYSIS “an output signal…” On this record, we find no error in the Examiner’s obviousness rejection of representative claim 1 which recites, in pertinent part, “an output signal for indicating that the pre-boot security controller is in the security operating mode.” We are unpersuaded by Appellants’ argument that the Examiner relies on Cyras for a “display.” Br. 13-17. Despite characterizing the reliance on Cyras as “to teach a display and nothing more” (Final Rej. 3), the Examiner relies upon Cyras not for a physical display, but for a visual output signal in 2 While Appellants allege various other “lapses,” Appellants concede that “none … support arguments for patentability” but merely “demonstrate conspicuous carelessness.” Br. 28-33. Appeal 2010-012297 Application 10/969,749 5 the form of “a display asking the user to enter their password to initiate operation.” Ans. 7-8. This is confirmed by the portion of Cyras to which the Examiner cites, which teaches a prompt for password entry: This procedure may include a prompt on the display, asking the user to enter his or her password in order to initiate operation of the IC card. The user may then input his or her password via keyboard 22 (FIG. 1) or other input device, for example. Ans. 5 (citing Cyras, col. 9, ll. 9-13) (emphasis added). The Examiner further clarifies that the password prompt is relied upon because it “shows the system is in a secure operating mode and ready for a password.” Ans. 8. Thus, we are not persuaded of error in the Examiner’s finding. Appellants’ argument that the Examiner “expressly admit[s] that Lewis does not teach an output circuit that provides an output signal…” is equally unavailing. App. Br. 14-15. The Examiner stated that Lewis does not explicitly teach this limitation (Ans. 4) because Lewis “does not explicitly state what the display shows before the password is input.” Ans. 7-8. However, the Examiner contends that such a signal is inherent in Lewis. Ans. 7-8. In any event, the Examiner relies upon Cyras, not Lewis, to show the limitation which Appellants allege was admitted to be missing. Ans. 4-5. Thus, we are not persuaded of error in the Examiner’s finding. We also are unpersuaded by Appellants’ argument that combining Cyras with Lewis would require a fully operational computer, a detachably connectable computer component, and the necessary utility software. App. Br. 16-18. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Appeal 2010-012297 Application 10/969,749 6 Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); and In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). Rather, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Here, it is not necessary that the computer system and IC card of Cyras be bodily incorporated into Lewis. As the Examiner correctly points out, Lewis teaches a physical display that is used without a fully functional computer. Ans. 8; see also Lewis, Fig. 1, element 26. The Examiner relies upon Cyras only for the “visual output signal” in the form of a visual prompt to enter a password, not for the IC card or computer system of Cyras. Ans. 5, 8. Thus, we are not persuaded of error in the Examiner’s finding. Finally, Appellants argue that Cyras does not disclose a “continuous” output signal because the audible alarm does not sound under certain password entry conditions. App. Br. 30-32. However, the Examiner relies upon Cyras’s password prompt, not the audible alarm, as the recited “continuous output signal.” Ans. 5, 7-8. Thus, we are not persuaded of error in the Examiner’s finding. Appeal 2010-012297 Application 10/969,749 7 Lewis’s operability Finally, we are unpersuaded by Appellants’ argument that Lewis is inoperable because it “provides only an illusion of security,” and therefore may not be combined with Cyras and Sibigtroth. App. Br. 22-28. Appellants characterize Lewis as “inoperable,” but do not actually argue that Lewis would not work as described.3 Instead, Appellants argue that the system of Lewis could be compromised by obtaining the password under certain conditions—i.e., that the security provided by Lewis is weak. Br. 24- 26; Oh Decl. ¶ 16. The Examiner acknowledges that the security provided by Lewis may be weak, but correctly points out that the strength of Lewis’s security has no bearing on whether it teaches the recited claim limitations. Ans. 9. The strength of security is not claimed. Even assuming, without deciding, that Lewis’s security is inferior to the present invention, Lewis, Cyras, and Sibigtroth still collectively teach or suggest the recited claim limitations. Thus, we are not persuaded of error in the Examiner’s finding. CONCLUSION The Examiner did not err in rejecting claims 1-7 and 9-25 under § 103. We therefore sustain the Examiner’s rejection of (1) independent 3 Even if Lewis were inoperable, that would not prohibit its lawful combination with Cyras and Sibigtroth. See, e.g., Metso Minerals, Inc. v. Powerscreen Int’l Distr., Ltd., et al., ___ F.3d ___, ___ 2013 WL 1969309, at *4 (slip op., 11) (Fed. Cir. 2013) (“A prior art reference does not need to be fully functional to qualify as prior art; indeed, a prior art reference ‘need not work’ and may even be ““‘inoperative.’”) (quoting Geo M. Martin Co. v. Alliance Machine Sys. Int’l LLC, 618 F.3d 1294, 1302 (Fed. Cir. 2010) (quoting Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989))). Appeal 2010-012297 Application 10/969,749 8 claim 1; (2) independent claims 10 and 19-25 which recite commensurate limitations; and (3) dependent claims 2-7, 9, and 11-18 not separately argued with particularity. DECISION The Examiner’s decision rejecting claims 1-7 and 9-25 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED rwk Copy with citationCopy as parenthetical citation