Ex Parte Spencer

Patent Trial and Appeal Board

Feb 3, 2014

10835719 (P.T.A.B. Feb. 3, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ANDREW M. SPENCER
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Appeal 2011-007040
Application 10/835,719
Technology Center 2100
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Before, JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and
CATHERINE SHIANG, Administrative Patent Judges

Per Curiam.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 3, 5 through 13, 16 through 21, 26 and 29 through 41.
We affirm.
INVENTION
The invention is directed to a system for using the processor of a
peripheral device to perform functionality unrelated to the primary
functionality of the peripheral device. Spec. 2-3. Claim 1 is illustrative of
the invention and is reproduced below:
Appeal 2011-007040
Application 10/835,719

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1. A system comprising:
computing devices; and
a peripheral device communicatively coupled to the
computing devices and having a processor to process a primary
functionality of the peripheral device, wherein the primary
functionality involves storing or outputting information by the
peripheral device,
wherein the peripheral device receives at least one of data
and commands from at least one of the computing devices for
processing by the processor to perform functionality in
response to the at least one of data and commands unrelated to
the primary functionality of the peripheral device, wherein the
unrelated functionality is unrelated to the information stored or
output by the peripheral device as part of the primary
functionality.

REJECTION AT ISSUE
The Examiner has rejected independent claims 1, 9, 17, 19 and 26
under 35 U.S.C. § 112 first paragraph as failing the written description
requirement. Answer 5-71.
The Examiner has rejected claims 1 through 3, 6, 7, 9 through 13, 16,
32, 34, and 35 under 35 U.S.C. § 103(a) as unpatentable over Northway (US
2002/0180767 A1) and Nagamasa (WO 02099742 A1, equivalent to US
2004/0177215 A1, publ. Sep. 9, 2004). Answer 7-12.
The Examiner has rejected claims 17 through 20, 26, 29 through 31,
and 36 through 39 under 35 U.S.C. § 103(a) as unpatentable over Nagamasa
and Tanaka (US 5,408,671, iss. Apr. 18, 1995). Answer 12-19.

1 Throughout this opinion we refer to the Appeal Brief dated December 28,
2009 and the Examiner’s Answer mailed on November 26, 2010.
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Application 10/835,719

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The Examiner has rejected claims 5 and 33 under 35 U.S.C. § 103(a)
as unpatentable over Northway, Nagamasa and Kasai (US 2001/0021251
A1, publ. Sep. 13, 2001). Answer 20.
The Examiner has rejected claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Northway, Nagamasa and Evans (US 2003/0135742 A1,
publ. Jul. 17, 2003). Answer 20.
The Examiner has rejected claim 21 under 35 U.S.C. § 103(a) as
unpatentable over Nagamasa, Tanaka, and Evans. Answer 21.
The Examiner has rejected claims 40 and 41 under 35 U.S.C. § 103(a)
as unpatentable over Northway, Nagamasa and Tanaka. Answer 21-22.

ISSUES
Rejections 35 U.S.C. § 112 first paragraph
Appellant argues, on pages 8 through 11 of the Appeal Brief, that the
Examiner’s rejection under 35 U.S.C. § 112, first paragraph is in error.
These arguments present us with the issues:
With respect to independent claims 1 and 9, did the Examiner err in
finding that the Specification fails to demonstrate Appellant had possession
of multiple computing devices communicatively coupled to a peripheral?
With respect to independent claims 17, 19 and 26, did the Examiner
err in finding that the Specification fails to demonstrate Appellant had
possession of the peripheral device and the computing device, performing
second functionality as claimed?
Rejections under 35 U.S.C. § 103(a)
Appellant argues, on pages 11 through 15 of the Appeal Brief, that the
Examiner’s rejection of under 35 U.S.C. § 103(a) as unpatentable over
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Application 10/835,719

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Northway and Nagamasa is in error. The issue presented by these arguments
is: did the Examiner err in finding that Nagamasa teaches a peripheral
device where the secondary functionality of the peripheral device, with a
second functionality, does not involve the information stored or output as
part of the primary functionality?
Appellant’s arguments directed to the other rejections under 35 U.S.C.
§ 103(a) present us with the same issues.

ANALYSIS
Rejections 35 U.S.C. § 112 first paragraph
We have reviewed Appellant’s arguments in the Briefs, Examiner’s
rejection, and the Examiner’s response to the Appellant’s arguments. We
disagree with Appellant’s conclusion that the Examiner erred in finding the
Specification fails to demonstrate Appellant had possession of: multiple
computing devices communicatively coupled to a peripheral, and the
peripheral device and the computing device, performing second functionality
as claimed. The Examiner has provided a comprehensive response to each
of Appellant’s arguments on page 23 of the Answer. We have reviewed the
Appellant’s arguments and the portions of the Specification cited by the
Appellant and we are not persuaded of error in the Examiner’s rationale to
support the rejection. Accordingly, we sustain the Examiner’s rejection of
independent claims 1, 9, 17, 19 and 26 under 35 U.S.C. § 112 first
paragraph.

Appeal 2011-007040
Application 10/835,719

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Rejections under 35 U.S.C. § 103(a)
We have reviewed Appellant’s arguments in the Briefs, Examiner’s
rejection and the Examiner’s response to the Appellant’s arguments. We
disagree with Appellant’s conclusion that the Examiner erred in finding that
Nagamasa teaches a peripheral device with a secondary functionality,
wherein the second functionality does not involve the information stored or
output as part of the primary functionality. The Examiner has found that
Nagamasa teaches a flash memory that also has an IC chip 150 that performs
security related transactions. Answer 24. The Examiner finds that the
primary functionality of the device is to store data, and the secondary
functionality is executing security processes, which the Examiner considers
to be unrelated as they are separate processes. Answer 24.
Further, the Examiner finds that though security data is stored in the
chip 130, this data is stored in locations separate from the locations
associated with no security process and as such the unrelated (security)
functionality is unrelated to the information stored or output by the
peripheral device. Answer 25. As such, the Examiner finds that Nagamasa
teaches the disputed limitations. We concur with the Examiner’s findings
and conclusions. Accordingly, we sustain the Examiner’s rejection of
claims 1 through 3, 6, 7, 9 through 13, 16, 32, 34, and 35 under 35 U.S.C.
§ 103(a) as unpatentable over Northway and Nagamasa.
As Appellant’s arguments directed to the other rejections under 35
U.S.C. § 103(a) similarly assert that the Examiner erred in finding that
Nagamasa teaches the second functionality as claimed, we similarly sustain
the Examiner’s rejections of claims 5, 8, 17 through 21, 26, 29 through 31,
33, and 36 through 41.
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Application 10/835,719

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DECISION
The decision of the Examiner to reject claims 1 through 3, 5 through
13, 16 through 21, 26 and 29 through 41is affirmed.

AFFIRMED

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