Ex parte Stein et al.

Board of Patent Appeals and Interferences

Sep 14, 2000

08413040 (B.P.A.I. Sep. 14, 2000)

An amendment after the final rejection was filed as paper1
no. 10, which was allowed entry (paper no. 11). However, this
amendment made no changes to the claims.
1
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte WILLIAM STEIN, III
and
WILLIAM STEIN, IV
_____________
Appeal No. 1998-0183
Application No. 08/413,040
______________
ON BRIEF
_______________
Before KRASS, LALL, and BARRY, Administrative Patent Judges.
LALL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the final rejection of claims 1 to 3, 6 to 10, and 12 to1
14. Claims 4, 5, 11, and 15 have been canceled.
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The invention is related to a device for protecting data
transmitted by a facsimile machine. The device is a
self-contained unit comprising a lightweight, detachable,
portable housing which can be attached to a free standing
facsimile machine or directly to a telephone line. Mounted
within the housing is a keypad and a visual display associated
with the keypad for transmitting command signals to electronic
circuitry mounted within the housing. The electronic
circuitry allows encryption of the data received by the
facsimile machine and storage of the encrypted data for
subsequent retrieval upon command of the user of the device.
When a retrieval signal is transmitted to the electronic
circuitry, the data are either transmitted in an encrypted
form to a receiving facsimile, where they are decrypted in
accordance with the matching code, or are decrypted by a
similar device attached to a remote (receiving) facsimile
machine. The invention is further illustrated by claim 1
below.
1. A device for protecting data transmitted by a
facsimile machine, comprising:
a lightweight self-contained detachable, portable
housing provided with means for encrypting
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and decrypting data converted to a binary code;
a means for storing encrypted data for subsequent
retrieval upon demand;
a means for selectively storing the transmitted data
in a decrypted form for subsequent retrieval upon
demand; and
a means mounted in said housing for transmitting
program signals to said means for encrypting
and decrypting the data, said means comprising a
keypad with a plurality of command keys and a
visual display operationally connected to the keypad.
The Examiner relies on the following references:
Morgan et al. (Morgan) 4,229,817 Oct. 21, 1980
Goss 4,956,863 Sep. 11, 1990
Claims 1 to 3, 6 to 10, and 14 stand rejected under
35 U.S.C. § 103 over Goss and Morgan, whereas claims 12 to
13 stand rejected over Goss alone.
Rather than repeat the positions and the arguments of
Appellants or the Examiner, we make reference to the briefs
and the answer for their respective positions.
OPINION
We have considered the rejections advanced by the
Examiner. We have, likewise, reviewed Appellants' arguments
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Application No. 08/413,040
A reply brief was filed as paper no. 14 and was approved2
for entry without any further response from the Examiner
(paper no. 15).
5
against the rejection as set forth in the briefs.2
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It is our view, after consideration of the record before
us, that the rejection under 35 U.S.C. § 103 is sustained with
respect to claims 12 to 14, but not with respect to claims 1
to
3 and 6 to 10. Accordingly, we affirm-in-part.
Rejection under 35 U.S.C. § 103
In our analysis, we are guided by the general proposition
that in an appeal involving a rejection under 35 U.S.C. § 103,
an examiner is under a burden to make out a prima facie case
of obviousness. If that burden is met, the burden of going
forward then shifts to the applicant to overcome the prima
facie case with argument and/or evidence. Obviousness is then
determined on the basis of the evidence as a whole and the
relative persuasiveness of the arguments. See In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In
re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir.
1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1051, 189
USPQ 143,
147 (CCPA 1976). We are further guided by the precedence of
our reviewing court that the limitations from the disclosure
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are not to be imported into the claims. In re Lundberg, 244
F.2d 543, 548, 113 USPQ 530, 534 (CCPA 1957); In re Queener,
796 F.2d 461, 464, 230 USPQ 438, 440 (Fed. Cir. 1986). We
also note that the arguments not made separately for any
individual claim or claims are considered waived. See 37 CFR
§ 1.192 (a) and (c). In re Baxter Travenol Labs., 952 F.2d
388, 391, 21 USPQ2d 1281,
1285 (Fed. Cir. 1991) (“It is not the function of this court
to examine the claims in greater detail than argued by an
appellant, looking for nonobvious distinctions over the prior
art.”); In re Wiechert, 370 F.2d 927, 936, 152 USPQ 247, 254
(CCPA 1967) (“This court has uniformly followed the sound rule
that an issue raised below which is not argued in this court,
even if it has been properly brought here by reason of appeal
is regarded as abandoned and will not be considered. It is
our function as a court to decide disputed issues, not to
create them.”)
Analysis
Claims 12 and 13
Both these claims have been rejected as being obvious
over Goss. We take claim 12 first. After matching the
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claimed features against the Goss reference (answer, pages 3
to 4), the Examiner makes a prima facie case by asserting that
“Goss discloses the data as ‘digital’ rather than ‘binary’.
The use of binary data, . . . would be an expedient obvious to
one of ordinary skill in the art.” Appellants present various
arguments thereagainst (brief, pages 4 to 9). However, like
the Examiner (answer, pages 6 to 8), we find that claim 12
does not recite any storage step and the arguments relating
to the storage means or steps are not commensurate with the
scope of the claim. We find no specific arguments rebutting
the above prima facie case of obviousness. Therefore, we
sustain the obviousness rejection of claim 12 over Goss.
With respect to claim 13, Appellants argue (reply brief,
pages 2 to 3) that “[t]here is no suggestion in Goss that a
[sic] step[s] of decrypting . . . and transmitting the
decrypted data for printing . . . are to be contained in a
portable housing
. . . . ” The Examiner contends (answer, pages 4 and 9),
that Goss does teach the concept of placing an
encryption/decryption unit between a facsimile machine and its
telephone line and such a unit is of the “connectable” type
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(col. 3, lines 21 to 26). We are not persuaded by Appellants’
implication that since Goss calls this arrangement as being
carried out “ideally” (id.), (and thus implying a mere
fiction), it is not suggested by Goss. On the contrary, Goss
shows such a configuration in fig. 4. We, therefore, sustain
the obviousness rejection of claim 13 over Goss.
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Claims 1 to 3, 6 to 10, and 14
We consider the two independent claims in this group,
namely claims 1 and 8. Claim 1 contains the limitations of
(1), “a means for storing encrypted data for subsequent
retrieval upon demand,” and (2), “means for selectively
storing the transmitted data in a decrypted form for
subsequent retrieval upon demand.” The Examiner’s assertion
that the combination of Goss and Morgan (answer, pages 4 and
5) meets these two limitations is not supported as Appellants
have argued (brief, pages 9 to 16 and reply brief, pages 3 to
5). The Examiner has not presented any evidence which shows
these two limitations, or given any line of reasoning along
those lines. We conclude that the Examiner has not made out a
prima facie case to reject claim 1 and its dependent claims 2
to 3, and 6 to 7. Therefore, we do not sustain the
obviousness rejection of claims 1 to 3, and 6 to 7. The other
independent claim, 8, also contains limitations similar to
those discussed above. Therefore, for the same reasons, we do
not sustain the obviousness rejection of claim 8 and its
dependent claims 9 to 10.
However, we reach a different conclusion as to claim 14.
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First of all, we note that Appellants have not specifically
argued claim 14. The limitations argued above regarding
independent claims 1 and 8 are not contained in claim 14 since
it depends on claim 12. The Examiner asserts (answer, page 5)
that “[r]e claims 1, 8, and 14, Goss does not disclose the use
of
a keypad. Morgan et al. discloses [sic] . . . a keypad for
transmitting key information to its operating electronics,
. . . . The use of such a keypad [of Morgan] in Goss in
order to provide this extra security against unauthorized use
would be an expedient obvious to one of ordinary skill in the
art.” We conclude that the Examiner has established a prima
facie case to reject claim 14. We do not agree with
Appellants (brief, pages 10 to 14) that there is no motivation
to combine. We think that Appellants’ view in this respect is
misplaced. There does not have to be a specific teaching in
the prior art for the suggested combination. It is well
established that while there must be some teaching, reason,
suggestion, or motivation to combine existing elements to
produce the claimed device, it is not necessary that the cited
references or prior art specifically suggest making the
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combination (see B.F. Goodrich Co. v.
Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d
1314,
1318 (Fed. Cir. 1996), and In re Nilssen, 851 F.2d 1401, 1403,
7 USPQ2d 1500, 1502 (Fed. Cir. 1988)) as the Appellants would
apparently have us believe. Rather, the test for obviousness
is what the combined teachings of the references would have
suggested to one of ordinary skill in the art. See In re
Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir.
1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). Moreover, in evaluating such references, it is
proper to take into account not only the specific teachings of
the references, but also the inferences which one skilled in
the art would reasonably be expected to draw therefrom. In re
Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
Here, we are of the opinion that an artisan would have looked
to both Goss and Morgan to design a portable
encrypting/decrypting device to be used with a facsimile
system. Appellants have not successfully rebutted the
Examiner’s rejection of claim 14. Therefore, we sustain the
obviousness rejection of claim 14 over Goss and Morgan.
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In summary, we have affirmed the Examiner’s decision
rejecting claims 12 to 14, and reversed rejecting claims 1 to
3, and 6 to 10.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
)
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
PSL:hh
Appeal No. 1998-0183
Application No. 08/413,040
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Thomas S. Keaty
Keaty & Keaty
2140 World Trade Center
No. 2 Canal Street
New Orleans, LA 70130