Ex Parte Rooyakkers et al

Patent Trial and Appeal Board

Nov 16, 2018

14446412 (P.T.A.B. Nov. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/446,412
96845 7590
Advent, LLP
The Advent Building
17838 Burke Street
Suite 200
Omaha, NE 68118
FILING DATE FIRST NAMED INVENTOR
07/30/2014 Albert Rooyakkers
11/20/2018
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.
10170.000SUSUl 7408
EXAMINER
!MAS, VLADIMIR
ART UNIT PAPER NUMBER
2831
NOTIFICATION DATE DELIVERY MODE
11/20/2018 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):
uspto@adventip.com
sloma@adventip.com
Boumstein@adventip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALBERT ROOY AKKERS, JAMES G. CAL VIN,
CRAIG MARKOVIC, KEN DOUCETTE, and BRIAN ANDERSON
Appeal2017-010437
Application 14/446,412 1
Technology Center 2800
Before MARK NAGUMO, KAREN M. HASTINGS, and
SHELDON M. McGEE, Administrative Patent Judges.
Opinion of the Board filed by Administrative Patent Judge McGEE
Opinion dissenting filed by Administrative Patent Judge HASTINGS
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant seeks our review of the
Examiner's final rejection claims 1---6, 8-17, and 19-22.
We have jurisdiction. 35 U.S.C. § 6.
We reverse.
1 Appellant is the Applicant, Bedrock Automation Platforms Inc., and is
stated to be the real party in interest. App. Br. 4.
Appeal2017-010437
Application 14/446,412
BACKGROUND
The claimed subject matter relates to a cable containing circuitry that
is configured to authenticate a device to which it is connected (independent
claims 1 and 8), as well as control systems employing such a cable
(independent claims 15 and 19).
The Specification discloses that authentication may involve the cable
performing a "handshake" operation between the cable and the "coupled
module to verify that the cable is mated with an appropriate and/or desired
device." Spec. ,r,r 24, 29. Such authentication of a device connected to the
cable is said to prevent or minimize "the use of counterfeit equipment in an
industrial automation setting." Id. at ,r 25. More particularly, "[b ]ased on
the results of the authentication process, the element being authenticated can
be activated, partial functionality of the element can be enabled or disabled
within the process control system 200," or complete functionality of the
element can be either enabled or disabled. Id. at ,r 53. "For example,
limitations can be placed upon communication (e.g., data transfer) between
that element and other elements of the process control system 200, such that
the element [cannot] work/function within the process control system 200."
Id. at ,r 55. As a result, counterfeit or otherwise unapproved/ unsecure
devices can be prevented from being substituted into a control system, which
may, in tum, prevent introduction of malicious software. Id. at ,r,r 55-56.
Independent claim 8 is illustrative, is copied from the Claims
Appendix of the Appeal Brief, and appears below ( with the key limitation
italicized):
8. A cable comprising:
a wiring assembly comprising a plurality of wires bundled
together by a sleeve;
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Application 14/446,412
a connector assembly compnsmg a connector for
connecting to a device, the connector assembly having a plurality
of connections for respective ones of the plurality of wires, the
connector assembly capturing an end of the wiring assembly; and
a controller configured to authenticate the device
connected to the cable by the connector.
App. Br. 43.
REFERENCES
The Examiner relies on the following references as evidence of
unpatentability:
Ohnuma et al. ("Ohnuma")
Minoo et al. ("Minoo")
Mori
Ku et al. ("Ku")
US 4,079,440 Mar. 14, 1978
US 2009/0061678 Al Mar. 5, 2009
US 7,510,420 B2 Mar. 31, 2009
US 2012/0282805 Al Nov. 8, 2012
REJECTIONS ON APPEAL
I. Claims 8-11 under 35 U.S.C. § I02(a)(l) as anticipated by Minoo.
II. Claims 1-6 under 35 U.S.C. § 103 as unpatentable over Ku in view
ofMinoo.
III. Claims 12 and 13 under 35 U.S.C. §103 as unpatentable over
Minoo in view of Mori.
IV. Claim 14 under 35 U.S.C. §103 as unpatentable over Minoo in
view of Ku.
V. Claims 15-17 and 19-22 under 35 U.S.C. §103 as unpatentable
over Ohnuma in view of Ku and Minoo.
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Appeal2017-010437
Application 14/446,412
OPINION
Beginning with claim construction, we find each appealed apparatus
claim 1, 8, and 15 requires "a controller configured to authenticate [a] device
connected to the cable by the connector." A similar limitation appears in
independent claim 19 which indicates that the second cable has a controller
configured to authenticate a "first control element or subsystem."
Thus, we must first determine the scope of the phrase "configured to"
- namely, whether "a controller configured to authenticate the device" or
"first control element or subsystem" means that the controller is merely
"capable of' or "suitable for" authenticating the device, or whether the
"configured to" phrase has a narrower meaning. See In re Giannelli, 739
F.3d 1375, 1379 (Fed. Cir. 2014) (explaining that while phrases such as
"configured to" and "adapted to" may mean "capable of' or "suitable for,"
the written description can make clear that the phrase "configured to" has a
narrower meaning).
Based on our review of the Specification, we determine that the
written description makes clear that the phrase "configured to" indeed has a
narrower meaning than merely "capable of' or "suitable for. "2 Here, the
Specification instructs that the circuitry contained within the cable is
"configured to" perform an authentication process by including the
necessary hardware, software and/ or firmware to carry out the desired
function----e.g., authentication of a device connected to the cable.
2 Based on our claim construction, it follows that the Examiner's
determination (Ans. 4--5) that the claimed controller need only be
"arranged/designed such that authentication can be done in a device" is
unreasonably broad.
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Appeal2017-010437
Application 14/446,412
Spec. ,r,r 28, 42--45. "In the case of a software implementation," "program
code that performs specified tasks when executed on a processor" is "stored
in one or more computer-readable memory devices." Id. at ,r 43. "The
processor[] provides processing functionality for the controller," and "can
execute one or more software programs that implement techniques" such as
the described authentication process. Id. at ,r 44. Based on this disclosure, it
is clear that, in order for the controller to be "configured to authenticate the
device connected to the cable," the controller must have the software,
firmware and/ or hardware necessary to carry out the authentication process
for the device. Therefore, we construe the "controller" limitation recited in
each independent claim as having the necessary programming and/or
hardware arranged or set up to carry out the recited authentication process
for the device ( claims 1, 8, 15) or control element/subsystem ( claim 19).
Relevant to the appeal of Rejection I, the Examiner finds that Minoo
anticipates claim 8, and various claims dependent therefrom, because Minoo
discloses a cable having, inter alia, a "controller configured to authenticate a
device connected to the cable." Final Act. 2, 14. For support, the Examiner
points to Figures 2, 3, and 4 of Minoo, and accompanying description for
these figures in paragraphs 21, 22, and 28. Id.
Appellant challenges the Examiner's finding that Minoo teaches a
controller that is configured to authenticate a device. App. Br. 21, 25-27.
Specifically, Appellant contends that "Minoo describes cable authentication"
and "nowhere discloses, teaches, or otherwise suggests that a media device
can be authenticated to a cable." Id. at 26.
Thus, the dispositive issue is whether the Examiner has established,
by a preponderance of the evidence, that Minoo 's authentication is for the
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Appeal2017-010437
Application 14/446,412
cable as contended by Appellant, or for the device to which the cable is
attached as found by the Examiner.
We find Minoo discloses a cable 100 with a connector 110. Minoo,
,r,r 17, 21, 22, Figs. 1, 2. Connector 100 contains micro-controller 210 and
authentication coprocessor 220. Id., ,r 21, 22, Fig. 2. "[W]hen connector
110 is connected to a media device, the media device may send an
authentication inquiry to the cable." Id. ,r 22. The micro-controller 210
receives the inquiry and communicates it to the authentication coprocessor
220, where the authentication coprocessor processes the request "using an
authentication algorithm." Id. Afterward, Minoo's authentication result is
communicated from coprocessor 220 to micro-controller 210 and then back
to the media device that sent the authentication inquiry. Id.
Similarly, Minoo also discloses an authentication method set forth in
Figure 4. Minoo's Figure 4 is illustrated below:
.:i,·:{l
R~Q~S:~ir,g t:-.of:. ;:i\.,lt!'tQ~U~t~;::i-; i:1~~::,--y t,y th{? "-./ .::;.30
·:~.::t,)G r"Jon,;I G<'!:n~:r:..img ~n <"ij,1f!'~c~1·,:t-;::-ttic:.-1
f'C-Si)Oil::.e
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Appeal2017-010437
Application 14/446,412
Minoo' s Figure 4 depicts a method for authenticating a cable. Minoo
,r 28. According to Figure 4 and the description thereof, a cable is connected
to an electronic device and powered up (process 410) and the cable circuitry
receives an authentication request from the device (process 420). Id. The
cable then processes the request and generates an authentication response
(process 430) which is then sent back to the device that requested the
authentication (process 440). Id. If the cable is authenticated (process 450),
the cable may then be used to transmit information therethrough (processes
460, 470), but if not, the cable will be rejected and "the cable may be
assumed to be unauthorized and no further communication via that cable
may be allowed" (process 480). Id.
Thus, in the portions of Minoo relied on by the Examiner, Minoo
discloses a combination of hardware ( connector 110, micro-controller 210,
authentication coprocessor 220) and software (authentication algorithm) to
perform an authentication. Consistent with our claim construction, supra, to
establish a prima facie case of anticipation of claim 8, Minoo's
controller 210, in the cable, must have the requisite programming to
authenticate the device connected to the cable. See Typhoon Touch Techs,
Inc. v. Dell, Inc., 659 F.3d 1376, 1380-81 (Fed. Cir. 2011). In Typhoon
Touch, the Federal Circuit upheld the district court's holding that a claim
reciting "a memory for storing at least one data application configured to
determine contents and formats of said inquiries displayed on said screen"
required the memory to perform the recited function, rather than the memory
simply having a capability of carrying out such function should further
modification or programming be made. Id. Also, the predecessor to our
reviewing court has held that a "programmed machine is structurally
different from a machine without that program." In re Noll, 545 F .2d 141,
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Application 14/446,412
148 (CCPA 1976); see also In re Bernhart, 417 F.2d 1395, 1399--1400
( CCP A 1969) ("[I]f a machine is programmed in a certain new and
unobvious way, it is physically different from the machine without that
program; its memory elements are differently arranged. The fact that these
physical changes are invisible to the eye should not tempt us to conclude that
the machine has not been changed.").
The Minoo disclosure identified by the Examiner is insufficient to
establish that Minoo 's cable and authentication process, using a cable
authentication algorithm, evinces the "controller configured to authenticate
the device connected to the cable" as recited in claim 8. In reaching this
determination, we note in particular process steps 450 and 480 where the
cable itself is either authenticated or rejected. Minoo, Fig. 4, ,r 28. The
Examiner has not directed our attention to credible evidence of record that
establishes that Minoo' s cable authentication algorithm is able to also
perform authentication of a device.
We are not persuaded to reach a different conclusion based on the
Examiner's reliance on Minoo's "incorporation by reference" of U.S. Patent
Application 11/051,499 (US 2006/0156415 Al, published July 13, 2006).
Minoo ,r 22; Final Act. 14; Ans. 3, 5. Specifically, we disagree with the
Examiner that this reference's "authentication process is incorporated by
reference in its entirety." Final Act. 14; Ans. 3, 5. Rather, Minoo makes
clear that it is the '499 application as a whole that is "hereby incorporated,"
not any specific authentication process disclosed therein. Such generic
incorporation by reference of the '499 application fails to satisfy our
reviewing court's requirement for "detailed particularity" for the Examiner
to rely on a specific authentication algorithm that may be disclosed therein.
See Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282-
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Appeal2017-010437
Application 14/446,412
83 (Fed. Cir. 2000) (explaining how "[i]ncorporation by reference provides a
method for integrating material from various documents into a host
document-a patent or printed publication in an anticipation
determination-by citing such material in a manner that makes clear that the
material is effectively part of the host document as if it were explicitly
contained therein. 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." ( emphasis added, citations omitted)). See also In re Seversky,
474 F.2d 671, 674 (CCPA 1973) (providing that incorporation by reference
requires a statement "clearly identifying the subject matter which is
incorporated and where it is to be found"). Moreover, even if Minoo's
incorporation by reference was deemed specific enough to identify an
authentication process, Minoo merely states that "authentication techniques
similar to those described" in the '499 application can be implemented.
Minoo ,r 22 (emphasis added). It is unclear how such "similar" (i.e., not
identical) techniques anticipate the programming required to authenticate a
device as claimed.
For these reasons, we do not sustain the Examiner's anticipation
rejection of claims 8-11 (Rejection I). Moreover, because each of the
obviousness rejections before us (Rejections II-V) improperly rely on
Minoo to satisfy the recited limitations requiring authentication of a device
(claims 1 and 15; Final Act. 5, 11) or a control element/subsystem (claim 19;
Final Act. 12), we also do not sustain these rejections.
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Application 14/446,412
CONCLUSION
The decision of the Examiner is reversed.
REVERSED
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Appeal2017-010437
Application 14/446,412
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALBERT ROOYAKKERS, JAMES G. CALVIN,
CRAIG MARKOVIC, KEN DOUCETTE, and BRIAN ANDERSON
Appeal2017-0I0437
Application 14/446,412
Technology Center 2800
Before MARK NAGUMO, KAREN M. HASTINGS, and
SHELDON M. McGEE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge, dissenting.
I respectfully dissent. Specifically, I disagree with my colleagues'
reasoning that the Examiner's reliance on paragraph 22 of Minoo, including
Minoo's "incorporated by reference in its entirety" of U.S. Patent
Application 11/051,499 (US 2006/0156415 Al, published July 13, 2006;
now U.S. Patent 7,823,214) (Minoo ,r 22; Final Act. 14; Ans. 3, 5) is
insufficient to establish anticipation of the claimed invention. I believe that
the Appellant has not shown error in the Examiner's determination that this
reference's "authentication process is incorporated by reference in its
entirety." A preponderance of the evidence supports the Examiner's de
facto position that one of ordinary skill in the art, upon reading paragraph 22
of Minoo and looking at the disclosure of U.S. Patent Application
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11/051,499, which is explicitly directed to authenticating a device, would
have immediately inferred/envisaged that the controller of Minoo may be
configured to authenticate the device connected to the cable as recited in
claims 1, 8, and 15 (as well as the corresponding language of claim 19) (see,
e.g., abstract of 11/051,499 (the herein described "improved techniques can
use cryptographic approaches to authenticate electronic devices")). In re
Preda, 401 F.2d 825, 826 (CCPA 1968) (In determining whether a reference
anticipates the subject matter recited in a claim, "it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom."). Cf In re Schaumann, 572 F.2d 312, 317 (CCPA 1978) (In
order to anticipate, a reference must identify something falling within the
claimed subject matter with sufficient specificity to constitute a description
thereof within the purview of§ 102.).
Thus, I believe that Appellant has not shown error in the Examiner's
rejections of the claims on appeal.
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