Ex Parte KurimotoDownload PDFPatent Trial and Appeal BoardAug 11, 201612676496 (P.T.A.B. Aug. 11, 2016) Copy Citation 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. 2 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. 3 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. 4 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 5 Copy with citationCopy as parenthetical citation