Ex Parte Jung et alDownload PDFPatent Trial and Appeal BoardSep 28, 201612321385 (P.T.A.B. Sep. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/321,385 01/16/2009 71484 7590 09/30/2016 IV - SUITER SW ANTZ PC LLO 14301 FNB PARKWAY, SUITE 220 OMAHA, NE 68154 FIRST NAMED INVENTOR Edward K.Y. Jung 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. 0306-007-004-CIP002 9764 EXAMINER PEARSON, DAVID J ART UNIT PAPER NUMBER 2438 NOTIFICATION DATE DELIVERY MODE 09/30/2016 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 EDWARD K.Y. JUNG, ROYCE A. LEVIEN, RICHARDT. LORD, ROBERT W. LORD, MARK A. MALAMUD, JOHN D. RINALDO JR., CLARENCE T. TEGREENE, and LOWELL L. WOOD JR Appeal2015-006840 1 Application 12/321,385 Technology Center 2400 Before ALLEN R. MacDONALD, JOHN P. PINKERTON, and GARTH D. BAER, Administrative Patent Judges. BAER, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants identify Searete, LLC as the real party in interest. Appeal Br. 4. Appellants also indicate that Searete, LLC is wholly owned by Intellectual Ventures Management LLC. Id. Appeal2015-006840 Application 12/321,385 STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from the Examiner's final rejection of claims 1-15, 17-19, 21-27, and 29-32, which are all the pending claims. Appeal Br. 4. Claims 16, 20, and 28 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. BACKGROUND A. The Invention Appellants' invention is directed to "a security-activated operational component involved in [creating, producing, duplicating, processing or testing] one or more objects." Abstract. Claims 1 and 14 are representative and reproduced below, with emphasis added to the disputed elements: 1. A security method for robotic operational tasks, compnsmg: receiving at least one object data file including one or more instructions for performing one or more robotic operational tasks relating to at least one manufacturing process for an object subject to one or more agreements associated with a property interest in the at least one of the manufacturing process, a robotic operational component performing the manufacturing process, or an output of the manufacturing process; receiving at least one digital rights management code governing access to the object data file by the robotic operational component performing the manufacturing process; verifying the at least one digital rights management code; and responsive to the verification, controlling access to the at least one object data file including one or more instructions for performing the one or more robotic operational tasks. 2 Appeal2015-006840 Application 12/321,385 14. The method of claim 1 wherein the verifying the at least one digital rights management code includes: comparing the at least one digital rights management code to a stored list of at least one digital rights management codes accessible to the robotic operational component. Appeal Br. 30, 33. (Claims App.). B. The Rejections on Appeal2 The Examiner rejects claims 1-3, 6, 13-15, 17, 18, 21, 22, 24--27, and 29-32 under 35 U.S.C. § 102(b) as anticipated by Susnjara (US 2006/0064385 Al; Mar. 23, 2006). Final Act. 4. 3 The Examiner rejects claims 4 and 5 under 35 U.S.C. § 103(a) as unpatentable over Susnjara, in view of Ota (US 2001/0025225 Al; Sept. 27, 2001 ). Final Act. 10. 2 The Examiner rejected claim 32 under 35 U.S.C. § 101 as being directed to non-statutory subject matter, but withdrew the rejection in the Advisory Action dated July 16, 2014. Final Act. 3; Ans. 2. Therefore, this rejection is not before us. 3 Appellants argued that the Examiner modified the rationale supporting the rejection in the Advisory Action dated July 16, 2014, and thus, the Examiner's rejection should be designated a new ground of rejection. See Appeal Br. 12-14. Appellants subsequently petitioned to designate the rejection as a new ground, and the Director of the Technology Center ultimately dismissed the petition. See Decision on Petition dated May 11, 2015. Thus, this issue is not before us because: (a) designating a rejection as a new ground of rejection is a petitionable matter rather than an appealable matter; and, (b) the issue is moot in light of the dismissal of Appellants' petition. See 37 C.F.R. § 41.40 (setting forth the exclusive procedure for an appellant to request review of the primary examiner's failure to designate a rejection as a new ground of rejection via a petition to the Director under 37 C.F.R. § 1.181). 3 Appeal2015-006840 Application 12/321,385 The Examiner rejects claims 7-10 and 12 under 35 U.S.C. § 103(a) as unpatentable over Susnjara, in view ofHombeek (US 2004/0093516 Al; May 13, 2004). Final Act. 11. The Examiner rejects claims 11 and 19 under 35 U.S.C. § 103(a) as unpatentable over Susnjara, in view of Hombeek and further in view of Braun (US 2006/0026672 Al; Feb. 2, 2006). Final Act. 13. The Examiner rejects claim 23 under 35 U.S.C. § 103(a) as unpatentable over Susnjara, in view of Osada (US 2007 /0006324 Al; Jan. 4, 2007). Final Act. 15. The Examiner rejects claims 1-15, 17-19, 21-27, and 29-32 under the judicially created doctrine of obviousness-type double patenting as being unpatentable over various claims in several related patents. Final Act. 17. The Examiner provisionally rejects claims 1-15, 17-19, 21-27, and 29-32 under the judicially created doctrine of obviousness-type double patenting as being unpatentable over various claims in several related applications. See Final Act. 18-20. ANALYSIS A. Double Patenting Rejection of Claims 1-15, 17-19, 21-27, and 29-32 Appellants do not provide substantive arguments regarding the double-patenting rejections of claims 1-15, 17-19, 21-27, and 29-32. See Appeal Br. 27-28. If a ground of rejection stated by the Examiner is not addressed in the Appellants' Appeal Brief, Appellants have waived any challenge to that ground of rejection and the Board may summarily sustain it. See Manual of Patent Examining Procedure (MPEP) § 1205.02. 4 Appeal2015-006840 Application 12/321,385 Therefore, we summarily sustain the obviousness-type double patenting rejections. B. Prior Art Rejection of Claims 1-13, 15, 17-19, 21-27, and 29-32 Appellants argue that Susnjara fails to teach verifying a code in any way. Appeal Br. 17-21; Reply Br. 3-9. As argued by Appellants, Susnjara merely describes that a computer checks for the existence of a validation code. Appeal Br. 17-21; Reply Br. 3-9. We do not find this argument persuasive. We agree with the Examiner that Susnjara's checking for the existence of a validation code to determine if a valid license exists for a program teaches the claimed "verifying the at least one digital rights management code." Ans. 3--4 (citing Susnjara i-fi-f 15-16, 19-20). Neither Appellants' claims, nor Appellants' specification, distinguishes the claimed "verifying" from Susnjara' s checking for the existence of a validation code. While Appellants' specification provides examples of the claimed "verifying," Appellants' specification indicates that the disclosed examples are not limiting definitions. See, e.g., Spec. i-fi-f 117, 178. Thus, we agree with the Examiner's interpretation. Accordingly, we sustain the Examiner's rejection of independent claim 1. We further sustain the rejection of claims 2-13, 15, 17-19, 21-27, and 29-32, not argued separately. C. Anticipation Rejection of Claim 14 Appellants argue that Susnjara fails to teach verifying a code by comparing a validation code with a stored list of codes. Appeal Br. 24--27; 5 Appeal2015-006840 Application 12/321,385 Reply Br. 11-12. We find this argument persuasive. We agree with Appellants that Susnjara fails to teach that the computer, when checking for the existence of a validation code, specifically compares the validation code with a stored list of one or more codes. We disagree with the Examiner that, by teaching that the computer checks for the existence of a validation code, Susnjara necessarily teaches comparing the validation code to a list of purchased licenses. See Ans. 6-7. The Examiner fails to consider that checking for the existence of a validation code can involve other techniques such as applying a checksum algorithm to the validation code. See, e.g., Spec. i-fi-f 117, 178. Accordingly, we do not sustain the rejection of claim 14. DECISION We affirm the Examiner's provisional and final double-patenting rejections of claims 1-15, 17-19, 21-27, and 29-32. We affirm the Examiner's rejection of claims 1-3, 6, 13, 15, 17, 18, 21, 22, 24--27, and 29-32 under 35 U.S.C. § 102(b). We affirm the Examiner's rejection of claims 4, 5, 7-12, 19, and 23 under 35 U.S.C. § 103(a). We reverse the Examiner's rejection of claim 14 under 35 U.S.C. § 102(b). 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 6 Copy with citationCopy as parenthetical citation