Ex Parte Kurimoto

Patent Trial and Appeal Board

Aug 11, 2016

12676496 (P.T.A.B. Aug. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/676,496 03/04/2010
27562 7590 08/15/2016
NIXON & V ANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Shinji Kurimoto
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.
LB-723-2748 3047
EXAMINER
LA YELLE, GARY E
ART UNIT PAPER NUMBER
2493
NOTIFICATION DATE DELIVERY MODE
08/15/2016 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHINJI KURIMOTO
Appeal2015-000108
Application 12/676,496
Technology Center 2400
Before ALLEN R. MacDONALD, DEBRA K. STEPHENS, and
AMBER L. HAGY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-000108
Application 12/676,496
STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
Exemplary Claims
Exemplary claims 1 and 12 under appeal read as follows (emphasis
and bracketing added):
1. A download security system including a server and an information
processing apparatus for downloading data from said server,
[A.] said information processing apparatus includes
[i.] a central processing unit,
[ii.] a storage to which the data downloaded from said server is
stored, and
[iii.] a controller which controls writing to said storage,
[B.] said server includes
[i.] a transition command transmitter which transmits to said
information processing apparatus a first transition
command to cause said controller to make a transition to
a writable mode for writing said data to said storage, and
[ii.] a data transmitter which transmits said data to said
information processing apparatus,
[C.] wherein said controller includes a writer which writes the data
transmitted by said data transmitter to said storage in said writable mode to
which the transition is made in response to said first transition command,
[D.] wherein said controller makes a transition to a secure mode in
response to a second transition command issued by the central processing
unit of the information processing apparatus and makes a transition from the
secure mode to the writable mode in response to the first transition
command.
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Appeal2015-000108
Application 12/676,496
Examiner's Rejections
The Examiner rejected claims 1, 12, and 17-21under35 U.S.C.
§ 102( a) as being anticipated by Hepper et al. (US 7, 117 ,3 64 B 1 ). 1
The Examiner rejected claims 2-11 and 13-16 as being unpatentable
under 35 U.S.C. § 103(a) as being unpatentable over of Hepper in various
combinations with other references. 2
Appellant's Contention3
1. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(b) because:
Claim 1 recites "said controller makes a transition to a
secure mode in response to a second transition command issued
by the central processing unit of the information processing
apparatus". Hepper fails to teach or suggest this limitation.
App Br. 11, emphasis added.
Hepper's Authenticating part 1 sequence of commands is issued
from the server and causes a response from the client. In
contrast, claim 1 requires "said controller [of the information
processing apparatus] makes a transition to a secure mode in
response to a second transition command issued by the central
processing unit of the information processing apparatus",
1 As to this rejection, our decision as to the rejection of independent claim 1
is determinative. Therefore, except for our ultimate decision, the rejection of
claims 12 and 17-21 is not discussed further herein.
2 As to this rejection, our decision as to the rejection of independent claim 1
is determinative. Therefore, except for our ultimate decision, the rejections
of claims 2-11 and 13-16 are not discussed further herein.
3 This contention is determinative as to the rejections on appeal.
Therefore, Appellant's other contentions are not discussed herein.
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Appeal2015-000108
Application 12/676,496
emphasis added. In Hepper, the controller responds to a
command issued by the server. Message travelling in both
directions is not what is claimed. Instead, what is claimed is
that the controller of the information processing system acts in
response to a command (e.g., gCGH DL MODE, see Fig. 5 of
the present specification) issued by the information processing
system. This does not happen in Hepper.
Moreover, in Hepper, the Authenticating part 1 sequence
of commands is not issued so that the controller which
controls writing to the storage makes a transition to the secure
mode, as recited in the above quoted limitation. Instead, it is
used for starting the authentication process of the card. Only
after the server has checked the response of the card to
Authenticating part 1 sequence of commands, the card is
authenticated.
App Br. 15-16, Appellant's emphasis omitted, Panel emphasis added.
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being anticipated because
Hepper fails to disclose the argued limitation?
ANALYSIS
We agree with the Appellant's above recited contention.
The Examiner finds that "wherein said controller makes a transition to
a secure mode in response to a second transition command issued by the
central processing unit of the information processing apparatus" is taught by
Hepper (column 4, line 53 through column 5, line 2). Final Act. 5. We have
reviewed Hepper at column 4, line 53, through column 5, line 18. We
conclude that the Examiner's finding is not supported by Hepper for the
reasons set forth by Appellant.
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Appeal2015-000108
Application 12/676,496
CONCLUSIONS
(1) Appellant has established that the Examiner erred in rejecting
claims 1, 12, and 17-21 as being anticipated under 35 U.S.C. § 102(a).
(2) Appellant has established that the Examiner erred in rejecting
claims 2-11 and 13-16 as being unpatentable under 35 U.S.C. § 103(a).
(3) On this record, claims 1-21 have not been shown to be
unpatentable.
DECISION
The Examiner's rejections of claims 1-21 are reversed.
REVERSED
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