Ex Parte Paatero

Board of Patent Appeals and Interferences

Aug 11, 2010

10090426 (B.P.A.I. Aug. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/090,426 02/28/2002 Lauri Paatero 944-005.5 6252
4955 7590 08/11/2010
WARE FRESSOLA VAN DER SLUYS & ADOLPHSON, LLP
BRADFORD GREEN, BUILDING 5
755 MAIN STREET, P O BOX 224
MONROE, CT 06468
EXAMINER
HERRING, VIRGIL A
ART UNIT PAPER NUMBER
2432
MAIL DATE DELIVERY MODE
08/11/2010 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)
Appeal 2009-006277
Application 10/090,426
1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LAURI PAATERO
____________

Appeal 2009-006277
Application 10/090,426
Technology Center 2400
____________

Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD, JR., and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006277
Application 10/090,426

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-27, 35-43, 45 and 47-50. App. Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b) (2002). We affirm.

Claim 1, which further illustrates the invention, follows:
1. A method, comprising:
embedding a role certificate in a device, wherein the role
certificate identifies at least one permitted activity that at least one
party is allowed to perform with respect to the device, and wherein
the role certificate is generated by a certification authority;
embedding at least information regarding a public key in
said device, the public key corresponding to the private key used
by the certification authority to sign the role certificate; and
running the device so as to verify the role certificate using
said information regarding the certification authority public key so
that said at least one permitted activity can be activated within the
device by said at least one party if the role certificate is verified,
wherein the at least one party communicates with the device
to perform the permitted activity, only after the role certificate is
embedded in said device,
wherein the at least one party performs the at least one
permitted activity by establishing a wireless connection to the
device, and
wherein the role certificate also identifies the at least one
party.
Appeal 2009-006277
Application 10/090,426

The Rejection
Claims 1-27, 35-43 and 47-50 stand rejected under 35 U.S.C. §
102(e), as being unpatentable over Doyle (U.S. Patent 6,968,453 B2;
November 22, 2005). See Ans. 5-9.
Rather than repeat Appellant’s arguments or the Examiner’s positions
in their entirety, we refer to the Appeal Brief (filed October 22, 2007), Reply
Brief (filed May 9, 2008) and the Answer (mailed January 9, 2008) for their
respective details. In this decision, we have considered only those
arguments actually made by Appellant. Arguments which Appellant could
have made but did not make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2008).

ISSUE
Does the Doyle reference properly incorporate the Hind reference for
the purposes of anticipating the Appellant’s independent claims?

FINDINGS OF FACTS
1. Column 11, lines 18-40 of Doyle discloses:
Furthermore, the referenced inventions describe selective
enablement of functionality that is pre-stored in a device.
For example, as discussed therein, a manufacturer might
20 choose to ship a single code base that is capable of
providing multiple levels of device functionality, and
based on what the consumer pays for, a particular level of
this pre-stored functionality will be made available by
modifying the firmware on the consumer's device. This
selective enablement 25 approach may also be used
advantageously with the components of the present
invention whereby an attached component may initially be
Appeal 2009-006277
Application 10/090,426

configured for (and authenticated for) providing one set of
functionality, and then this initial functionality may
subsequently be revised or upgraded 30 (using the
teachings of the related inventions) to allow access to
other functionality. According to the present invention, the
revised or upgraded functionality may either be presumed
authentic by the already-established authentication of the
component in which it resides, provided that 35
component remains attached to the security core.
(Alternatively, an implementation of the present invention
may be configured such that this type of firmware revision
requires an additional authentication process for the
attached component.)

PRINCIPLES OF LAW
A § 102 rejection based on the subject matter of an incorporated-by-
reference document can be sustained only if the primary reference that
incorporates-by-reference the document refers to a particular part of the
incorporated-by-reference document. In re Saunders, 444 F.2d 599, 602
(CCPA 1971).
[A]n incorporation by reference must be set forth in the
specification and must:
(1) Express a clear intent to incorporate by
reference by using the root words “incorporate(e)” and
“reference” (e.g., “incorporate by reference”); and
(2) Clearly identify the referenced patent,
application, or publication.
37 C.F.R. § 1.57(b).
“To incorporate material by reference, the host document must identify with
detailed particularity what specific material it incorporates and clearly
indicate where that material is found in the various documents.” Zenon
Appeal 2009-006277
Application 10/090,426

Environmental, Inc. v. United States Filter Corp., 506 F.3d 1370, 1378 (Fed.
Cir. 2007), reh’g en banc denied Feb. 12, 2008 (internal citations omitted).

ANALYSIS
Appellant argues the Doyle reference relied upon by the Examiner
improperly incorporated the Hind reference (Application number 09/614,983
now US Patent 6,976,163 B1) for purposes of anticipating the limitations of
the independent claims because Doyle never directs attention to any specific
portions of Hind that are relied upon by the Examiner to reject claim 46 in
the Final Office Action2. See Appeal Brief 5; see also Reply Brief 2-3. The
Examiner asserts that Hind is properly incorporated and relies upon 37
C.F.R. §1.57 for support. See Answer 10-11.
The Examiner relied upon line 18, column 11 of Doyle for
“enablement of functionality that is pre-stored in a device” to reject claim
46. See Final Rejection 16; see also FF1. The Appellant argues that it is the
Examiner’s reliance upon line 18 of Doyle that is not sufficient for purposes
of anticipating the limitations of the independent claims because Doyle fails
to indentify and provide the location for the Hind material being
incorporated. See Appeal Brief 5. However, in the Answer, the Examiner
did not limit his reliance upon Doyle to just line 18 but expanded his
reliance to lines 18-40 to address the newly amended independent claims

2 Claim 46 was filed by Appellant on February 15, 2006 and was originally
dependent upon claim 1. In an Advisory Action mailed June 29, 2007, the
Examiner indicated that Appellant’s Amendment After Final, received June
11, 2007, would be entered for purposes of an appeal. In the Amendment
After Final, the Appellant incorporated the limitation of claim 46 into the
independent claims. See After Final Amendment 2-9, 11.
Appeal 2009-006277
Application 10/090,426

that included the limitations of claim 46. See Answer 5-9. It is in column
11, lines 20-40, that Doyle provides a detailed example of the selective
enablement of the functionality that is pre-stored in a device that was cited in
line 18. See FF 1.
A § 102 rejection based on the subject matter of an incorporated-by-
reference document can be sustained only if the primary reference that
incorporates-by-reference the document refers to a particular part of the
incorporated-by-reference document. In re Saunders, 444 F.2d 599, 602
(CCPA 1971). We find that Doyle does incorporate-by-reference the Hind
teaching regarding the selective enablement of the functionality that is pre-
stored in a device with particularity by explicitly describing the incorporated
subject matter (see col. 11, ll. 18-40) and by identifying the referenced
patent applications (see col. 8, ll. 1-15).
Appellant contends that “clearly identifying where [the incorporated]
material is found in the various documents” in accordance with Zenon
Environmental requires that the incorporated material be referenced with
more specificity than merely pointing to the entire document that is being
incorporated (e.g., the material must be referenced with a pinpoint citation).
App. Br. 5. We are not persuaded by Appellant’s argument.
The decision of Zenon Environmental does not require pinpoint
citations in order for the incorporation to be effective. In Zenon
Environmental, the application at bar contained the following incorporation
by reference language:
The vertical skein is not the subject matter of this
invention and any prior art vertical skein may be used. Further
details relating to the construction and deployment of a most
preferred skein are found in the parent U.S. Pat. No. 5,639,373,
and in Ser. No. 08/690,045, the relevant disclosures of each of
Appeal 2009-006277
Application 10/090,426

which are included by reference thereto as if fully set forth
herein.
Zenon Environmental Inc., 506 F.3d at 1379. The court did not find any
deficiencies attributable to the fact that the incorporation language failed to
include pinpoint cites. Rather, the court merely found that the incorporation
was ineffective with respect to the parent patent’s gas distribution system
because the parent patent disclosed that the skein and gas-distribution
system were separate. Id. at 1379-82.
Furthermore, in reaching its decision, the Zenon Environmental court
noted that the following incorporation language had been previously found
to be sufficient to incorporate a method for preparing a tissue graft
composition from a segment of the small intestine: “The preparation of UBS
from a segment of urinary bladder is similar to the procedure for preparing
intestinal submucosa detailed in U.S. Patent No. 4,902,508 [“the 508
patent”], the disclosure of which is expressly incorporated herein by
reference.” Id. at 1381 (internal citation omitted). The fact that this
language contains no pinpoint citation further evidences that disclosing a
particular patent document in its entirety can be sufficient to “clearly
indicate[] where that material is found in the various documents” as required
by Zenon Environmental.
Appellant additionally argues that the Manual for Patent Examining
Procedure (M.P.E.P.) also requires that Doyle’s incorporation by reference
statement identify the specific portions of Hind that are being incorporated.
Reply Br. 3. Specifically, Appellant cites to M.P.E.P. § 608.01(p)(I)(A),
which states: “Particular attention should be directed to specific portions of
the referenced document where the subject matter being incorporated may
Appeal 2009-006277
Application 10/090,426

be found” (emphasis added). This argument is not persuasive either. The
M.P.E.P. is not binding authority. Furthermore, regardless of what
deference is to be afforded the M.P.E.P., the use of the words “should be” in
M.P.E.P. § 608.01(p)(I)(A) indicates that this provision is merely laudatory
– not mandatory.
Accordingly, we will affirm the Examiner’s rejection of claim 1 and,
for similar reasons as those articulated supra, the rejections of claims 2-27,
35-43 and 47-50.

DECISION
We affirm the Examiner’s 35 U.S.C. § 102(e) rejection of claims 1-
27, 35-43, 45 and 47-50 as anticipated Doyle.

TIME PERIOD
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).

ORDER
AFFIRMED
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WARE FRESSOLA VAN DER SLUYS & ADOLPHSON, LLP
BRADFORD GREEN, BUILDING 5
755 MAIN STREET, P O BOX 224
MONROE CT 06468