Ex Parte Jung et alDownload PDFPatent Trial and Appeal BoardMay 26, 201612079921 (P.T.A.B. May. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/079,921 03/27/2008 71484 7590 05/31/2016 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. IV 11-4-lA 2315 EXAMINER ABEDIN, SHANTO ART UNIT PAPER NUMBER 2436 NOTIFICATION DATE DELIVERY MODE 05/31/2016 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, ROBERT W. LORD, MARK A. MALAMUD, JOHN D. RINALDO JR., CLARENCE T. TEGREENE, and LOWELL WOOD JR. Appeal2014-007927 Application 12/079 ,921 Technology Center 2400 Before CATHERINE SHIANG, MELISSA A. HAAPALA, and MONICA S. ULLAGADDI, Administrative Patent Judges. RAAP ALA, 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 1-51, 62---64, 75, and 76, which are all of the claims currently pending in the application. 1 We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 1 Claims 52---61, 65-74, and 77 have been canceled. App. Br. 45--47. Appeal2014-007927 Application 12/079,921 INVENTION Appellants' invention is directed to security-activated production systems, devices, and processes. Spec. i-f 6. Claim 1 is exemplary of the subject matter on appeal: 1. A method for securely operating a production device, the method comprising: verifying a compliance of an authorization code associated with an object data file with one or more predetermined conditions; and enabling the production device to interface with the object data file in response to a verification of compliance of the authorization code with the one or more predetermined conditions with a controller device. REJECTIONS ON APPEAL Claims 1-51, 62-64, 75, and 76 stand rejected on the ground of nonstatutory obviousness-type double patenting over claims 1-57 of U.S. 8,286,236 B2 (Oct. 9, 2012). Final Act. 23-24. Claims 1-51, 62-64, 75, and 76 were provisionally rejected on the ground ofnonstatutory obviousness-type double patenting over claims 1-51 of co-pending US application 12/287,704 and claims 1---65 of co-pending application 12/005,162. Final Act. 24--26. The '704 application issued as US 8,752,166 B2 (June 10, 2014) and the '162 application issued as US 8,429,754 B2 (Apr. 23, 2013); thus both rejections are no longer provisional. Claims 1-51, 62-64, 75, and 76 stand provisionally rejected on the ground of nonstatutory obviousness-type double patenting over claims 1-26 of co-pending US application 12/287,719 and claims 1-29 of co-pending US application 12/288,336. Final Act. 25-27. 2 Appeal2014-007927 Application 12/079,921 Claims 1-51, 62-64, 75, and 76 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Muehl (US 2004/0084520 Al; May 6, 2004) and Baker (US 2008/0134319 Al; June 5, 2008). Final Act. 3-23. ANALYSIS We have reviewed the Examiner's rejections in consideration of Appellants' contentions and the evidence of record. 2 Appellants have persuaded us the Examiner has failed to establish that the claims are unpatentable under 35 U.S.C. § 103(a) over the cited prior art. However, for the reasons stated below, we affirm the double patenting rejections. Double Patenting Rejections Appellants do not submit any arguments contesting the double patenting rejections, but instead request the rejections be held in abeyance. App. Br. 30. The Examiner indicates the pending provisional rejections are heid in abeyance, but does not withdraw the rejections. Ans. 39. Thus, the rejections are before us on appeal. See 37 C.F.R. § 41.39(a)(l). 2 In addition to the contentions discussed infra, Appellants contend the Examiner's refusal to enter the amendment after final was improper and the Examiner's Answer contains an undesignated new grounds of rejection because the thrust of the rejection was changed. App. Br. 16-18; Reply Br. 4---6. We remind Appellants that the Board normally only considers matters affecting the merits of the invention, i.e., the rejections of claims. See 37 C.F .R. § 41.31 ( c ). Matters not affecting the merits of the invention, such as failure to designate a new ground of rejection or allegations of procedural errors by the Examiner, are to be raised by petition to the Director or to the PTO official to whom the Director has delegated the authority to determine the petition. See 37 C.F.R. §§ 1.181-183. However, we note the Answer indicates the objections to the claims are withdrawn and did not indicate the amendment after final had been entered. Ans. 39. 3 Appeal2014-007927 Application 12/079,921 As originally set forth in the Final Action, the double patenting rejections include one non-provisional double patenting rejection over the 8,286,236 patent of all of the currently pending claims. Final Act. 23-24. We decline to hold this non-provisional rejection in abeyance and summarily sustain it. See Hyatt v. Dudas, 551F.3d1307, 1314 (Fed. Cir. 2008) ("When the appellant fails to contest a ground of rejection to the Board, ... the Board may treat any argument with respect to that ground of rejection as waived."). Because we affirm one rejection of all the pending claims, the remaining double patenting rejections, set forth as provisional rejections in the Final Action, are not the only rejections remaining in the application. Therefore, we also decline to hold these rejections in abeyance and summarily sustain them. 3 Obviousness Rejection Independent claim 1 recites enabling the production device to interface with the object data file in response to a verification of compliance of the authorization code ("enabling production device" limitation). The Examiner relies on Baker to teach this limitation. Final Act. 3--4; Ans. 26- 36. In particular, the Examiner finds the manufacturing fixture 104 described by Baker can be interpreted as the claimed production device; the device specific image can be interpreted as the object data file; and the digital signal can be interpreted as the authorization code. Ans. 28-29. Using this mapping, the Examiner finds Baker teaches the digital signal is 3 In the event of further prosecution, we leave it to the Examiner to address the provisional double patenting rejections as specified in MPEP § 804(I)(B). 4 Appeal2014-007927 Application 12/079,921 used to authenticate the device under test and production device (manufacturing fixture) interfaces with the object data file (device specific image) upon authentication by the manufacturing fixture. Ans. 29, 31 (citing e.g., Baker iii! 22-23, 27, 32, 51). The cited sections of Baker describe a manufacturing fixture 104 attempts to authenticate a device under test 102 with a digital signature, and if the device under test is authenticated, the manufacturing fixture 104 enables functionality of the device 102 by sending an image to the device. Baker if 22. If the device 102 does not include an appropriate digital signature, the manufacturing device may be able to provide an appropriate digital signature by sending a device specific image 107 to the device 102. Id. at if 23. We agree with Appellants that the cited sections do not describe enabling the manufacturing device (production device) to interface with the device specific image (object data file) in response to verification of the authentication information (authentication code). See Reply Br. 13. We note Baker describes the manufacturing fixture 104 is enabled to access the device specific image 107 even in cases in which the device 102 does not include an appropriate digital signature (is not authenticated). Baker if 23. Appellants have persuaded us that the Examiner has not established the combination of Muehl and Baker teaches or suggest the "enabling production device" limitation. Accordingly, we do not sustain the 35 U.S.C. § 103(a) rejection of: (i) claim 1; (ii) independent claims 25 and 51, which recite limitations substantially similar to the "enabling production device" limitation; and (iii) the remaining claims, which depend from claim 1, 25, or 51. 5 Appeal2014-007927 Application 12/079,921 DECISION We affirm the Examiner's decision rejecting claims 1-51, 62---64, 75, and 76 on the ground of non-statutory obviousness-type double patenting and reverse the Examiners' decision to reject the claims under 35 U.S.C. § 103(a). Because we affirm at least one ground of rejection with respect to each claim on appeal, we affirm the Examiner's decision rejecting claims 1- 51, 62---64, 75, and 76. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(±). AFFIRMED 6 Copy with citationCopy as parenthetical citation