Ex Parte Von Wendorff

Patent Trial and Appeal Board

Aug 20, 2013

10926713 (P.T.A.B. Aug. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WILHARD CHRISTOPHORUS VON WENDORFF
____________________

Appeal 2011-003047
Application 10/926,713
Technology Center 2100
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Before DEBRA K. STEPHENS, MICHAEL J. STRAUSS, and
CATHERINE SHIANG, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-13 and 15-22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Introduction

According to Appellants, the invention relates to an arrangement
having a data processing device and a memory for storing data required by
the data processing device (Abstract; Spec. 2, [0002]).

Exemplary Claim

Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An arrangement comprising a data processing device and
a memory for storing data which is required by the data
processing device, wherein the arrangement comprises a
checking device operable to

generate signature data when data is read out of the
memory,

compare the generated signature data with signature data
which is fed to the checking device and is assigned to the
data which is output from the memory, and operable to

determine, as a function of the result of this comparison,
whether the data which is output from the memory can be
released for use by the data processing device, wherein
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the signature data which is fed to the checking device
contains the signature of an access control code, the
access control code representing conditions under which
the data to which the signature data is assigned can be
accessed or cannot be accessed.

REFERENCES
Bannatyne US 6,496,946 B2 Dec. 17, 2002
McAllister US 2003/0196048 Al Oct. 16, 2003

REJECTIONS
The Examiner made the following rejection:

Claims 1-13 and 15-22 stand rejected under 35 U.S.C § 103(a) as
being unpatentable over Bannatyne and McAllister (Ans. 3-7).

GROUPING OF CLAIMS

Based upon Appellant’s arguments, we select representative claim 1
to decide this appeal for the group consisting of claims 1-13 and 15-22. (See
App. Br. 3-8).
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii)(2011).

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ISSUE 1
35 U.S.C. § 103(a): Claims 1-13 and 15-22
Appellant asserts the invention as recited in claim 1 is not obvious
over Bannatyne and McAllister because (i) the combination of references
does not teach or suggest an access control code representing multiple
conditions under which data to which signature data is assigned can be
accessed or cannot be accessed (App. Br. 4) and (ii) an ordinarily skilled
artisan would not have been motivated to modify the method of Bannatyne
that confirms memory operation with the method of McAllister that ensures
copies of shared data are identical to data in memory (App. Br. 6).
Specifically, Appellant contends “[t]he access control code represents
conditions (plural) under which the data….” can or cannot be accessed
(App. Br. 4)(emphasis added). According to Appellant, in light of the
disclosure in the Specification, the signature data containing the signature of
an access control code allows for access to the data “based on fulfillment of
various different conditions (plural) that extend beyond merely whether
useful data is verified as accurate” (App. Br. 5). In contrast, Appellant
argues, McAllister teaches only a single condition whereby two signatures
are compared and not the recited access control code (App. Br. 5-6).
Appellant additionally contends one of ordinary skill in the art would
not have been motivated to modify the method of Bannatyne with the
method of McAllister (App. Br. 6). Specifically, Appellant argues
Bannatyne teaches generating an interrupt to disregard a normal output of a
digital controller when it is determined data in non-volatile memory is
corrupt, while McAllister teaches making this determination before a request
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to access a shared location of a memory is granted (App. Br. 7-8). Thus,
according to Appellants, modifying Bannatyne to determine a memory
corruption before a granted memory access would change the principle of
operation - negate the “fail-safe” strategy of Bannatyne (App. Br. 7-8). As
a result, Appellants assert, no motivation exists for an ordinarily skilled
artisan to modify the method of Bannatyne with the method of McAllister
(App. Br. 8).

Issue 1a: Has the Examiner erred in finding the combination of
Bannatyne and McAllister teaches or suggests the invention as recited in
independent claim 1?
Issue 1b: Has the Examiner improperly combined the teachings and
suggestions of Bannatyne and McAllister?

ANALYSIS
Issue 1a:
We find Appellant’s arguments unpersuasive. Appellant’s arguments
for patentability are that the combination of Bannatyne and McAllister does
not teach or suggest “the signature data which is fed to the checking device
contains the signature of an access control code, the access control code
representing conditions under which the data to which the signature data is
assigned can be accessed or cannot be accessed” (App. Br. 4-6). However,
we find Appellant’s arguments are predicated on non-functional descriptive
material. In particular, Appellant’s arguments urging patentability are
directed to the content of the data (id.). We determine the content of the
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claimed signature data is not functionally related to the recited functions of
“generating,” “comparing,” and “determining.”
The labels or content of this nonfunctional descriptive material is not
entitled to weight in the patentability analysis. Such nonfunctional
descriptive material does not further limit the claimed invention either
functionally or structurally. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004). See also Ex parte Nehls, 88 USPQ2d 1883, 1887-89 (Bd. Pat. App. &
Int. 2008) (precedential) (discussing cases pertaining to non-functional
descriptive material).
Therefore, the claimed content of the signature data is not accorded
patentable weight in our analysis (see Claim 1). As a result, Appellant’s
arguments directed to the recitation of “access control code representing
conditions under which the data to which the signature data is assigned can
be accessed or cannot be accessed” (App. Br. 4-6) are not persuasive, as the
claim does not require the accessing to be performed or the conditions to
occur (see Claim 1). Instead, Claim 1 recites comparing data and
determining as a function of the result of the comparison, whether the data
output from memory can be released for use by the data processing device.
Nevertheless, even if we were to accord the signature data weight,
Appellant’s have not persuaded us the Examiner erred. Initially, we note
Appellant has not explicitly defined “condition” or “access code” in their
Specification. In light of this, we agree with the Examiner’s findings (Ans.
7-8) and further emphasize the following.
Appellant is arguing McAllister only teaches comparison of one
condition as opposed to the recited “conditions” (App. Br. 4-6; Reply Br. 2).
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According to Appellant, while “at any one instant, the claimed access
control code represents a single condition, in another instant, the access
control code may represent a single, different condition” (Reply Br. 2).
However, claim 1 does not recite this limitation of checking one condition
and then another – i.e., checking conditions at different times - and we will
not import limitations from the Specification into the claims.
Further, we are not persuaded that even if McAllister were to teach
only one condition, modifying the combination of Bannatyne and McAllister
to compare data that contains the signature of the access control code which
represents more than one condition would have been “uniquely challenging
or difficult for one of ordinary skill in the art” or “represented an unobvious
step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Thus, we
are not persuaded an ordinarily skilled artisan would not have found it
obvious to combine the teachings of Bannatyne and McAllister.

Issue 1b:
We are also not persuaded one of ordinary skill in the art would not
have been motivated to modify the method of Bannatyne with the teachings
of McAllister because the principles of operation of Bannatyne would be
changed as argued by Appellants (see App. Br. 7-8). As set forth above,
Appellant is arguing modifying the content of signature data.
Further, even if we were to consider the content, we determine the
Examiner sets forth Bannatyne does not teach the signature data which is fed
to the checking device that contains the signature of an access control code
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that represents one of multiple different conditions under which the data to
which the signature data is assigned can be accessed or cannot be accessed
and instead, relies on McAllister as teaching this limitation (Ans. 4-5).
Appellant’s argument that modifying Bannatyne with the teachings of
McAllister to make a determination before a granted request to access a
shared location of a memory, would negate the “fail-safe” strategy taught by
Bannatyne (App. Br. 7-8) is not persuasive. Appellant’s arguments are
based on bodily incorporating the teachings of McAllister into the method of
Bannatyne (id.).
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.

In re Keller, 642 F.2d 413 (CCPA 1981)(citations omitted).
Thus, we are not persuaded that incorporating McAllister’s teaching
of the contents of signature data would have changed the principle of
operation of Bannatyne. We are not persuaded the Examiner erred in
finding an ordinarily skilled artisan would have been motivated to modify
the method of Bannatyne to include the teachings of McAllister (Ans. 5 and
9).

CONCLUSION
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Bannatyne and McAllister teaches or suggests the limitations
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as recited in claim 1 and claims 2-13 and 15-22, not separately argued. We
are also not persuaded the Examiner improperly combined Bannatyne and
McAllister. Therefore, the Examiner did not err in rejecting claims 1-13 and
15-22 under 35 U.S.C. § 103(a) for obviousness over Bannatyne and
McAllister.

DECISION
The Examiner’s rejection of claims 1-13 and 15-22 under 35 U.S.C.
§ 103(a) as being unpatentable over Bannatyne and McAllister is affirmed.
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) (2011).

AFFIRMED

ELD