Ex Parte Yepez et al

Patent Trial and Appeal Board

Dec 7, 2016

12729157 (P.T.A.B. Dec. 7, 2016)

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.
12/729,157 03/22/2010 Roberto Gabriel Yepez APL-P8148USX1 6690
63975 7590 12/08/2016
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
OBERLY, ERIC T
ART UNIT PAPER NUMBER
2184
MAIL DATE DELIVERY MODE
12/08/2016 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)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERTO GABRIEL YEPEZ, JOSH GRAESSLEY,
PAUL CHINN, and ANAND DALAL
Appeal 2016-003878
Application 12/729,157
Technology Center 2100
Before ALLEN R. MacDONALD, AARON W. MOORE, and
MICHAEL J. ENGLE, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—25. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2016-003878
Application 12/729,157
Exemplary Claim
Claim 1 under appeal reads as follows (emphasis/brackets added):
1. A method, comprising:
[(A)] executing each of the following at a host device while
said host device remains communicatively coupled to a peripheral
device through a local interconnect, said peripheral device not
mechanically integrated with said host device, said local interconnect
being a point-to-point connection between said host device and said
peripheral device:
[(i)] issuing a first query to said peripheral device for a
suggested configuration, said suggested configuration initiated
at said peripheral device, and wherein said suggested
configuration is a selection from a plurality of possible
configuration settings of said peripheral device;
[(ii)] receiving from said peripheral device said
peripheral device’s suggested configuration;
[(iii)] issuing a second query to said peripheral device,
the second query to detect an updated suggested configuration,
said updated suggested configuration initiated at said peripheral
device; and
[(iv)] reconfiguring an interface to said peripheral device
based on said updated suggested configuration.
Rejections
The Examiner rejected claims 1, 4—6, 11, 12, 15, 17—19, 23, and 25
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Scales et al. (US 2002/0152348 Al, published Oct. 17, 2002) and Topp et al.
(US 7,877,788 Bl, issued Jan. 25, 2011).1
1 Separate patentability is not argued for claims 4—6, 11, 12, 15, 17—19, 23,
and 25. Rather, these claims are grouped with claim 1. Thus, the rejection
of these claims turns on our decision as to claim 1. Except for our ultimate
decision, these claims are not discussed further herein.
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Application 12/729,157
The Examiner rejected claims 2, 3, 7—10, 13, 14, 16, 20—22, and 24
under 35 U.S.C. § 103(a) as being unpatentable over various combinations
of Scales, Topp, and other references.2
Appellants ’ Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
[I]n the Topp system, the interface connector is initially coupled
to the interface controller for authentication and then, when
authentication is successful, the interface connector is switched
to being coupled to the interface circuit to enable subsequent
communication with the peripheral device.
App. Br. 10.
2. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Topp is limited to a security module in a device that controls the
connectivity of an interface circuit in the same device (e.g.,
OHC 206) to an interface connector in the device using a switch
based on device descriptor information collected from the
interface circuit. As described above, the interface connector is
switched from being connected to an interface controller to
being connected to an interface circuit, and thus does not remain
communicatively coupled to either of the interface controller or
the interface circuit.
App. Br. 11.
2 Separate patentability is not argued for claims 2, 3, 7—10, 13, 14, 16, 20-
22, and 24. These claims are argued by virtue of their dependence from
claim 1 or other claims grouped with claim 1. App. Br. 12. Thus, the
rejections of these claims turns on our decision as to claim 1. Except for our
ultimate decision, the rejections of these claims are not discussed further
herein.
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Appeal 2016-003878
Application 12/729,157
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief) that the Examiner has erred. We disagree with
Appellants’ conclusions. Except as noted herein, we adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief. We concur
with the conclusions reached by the Examiner. We highlight the following
additional points.
As to Appellants’ above contention 1, we disagree. Appellants’
argument references “initial switching” discussed in Topp at column 3, lines
13—32. However, as the Examiner correctly points out, “[t]he initial
switching alleged by the appellant’s remarks does not relate to the
embodiment cited by the Office Action; in the cited portion (col. 9, lines 25—
35) Topp describes an[] ‘active enquiry’.” Ans. 4.
As to Appellants’ above contention 2, Appellants quote Topp column
9, lines 15—37:
The security module 208 provides methods for configuring the
USB state controller of the OHC 206 using a device policy
configuration signal 254. In one embodiment, the device policy
configuration signal 254 is a read/write-accessible register
interface to configuration and operational registers of the OHC
206 ... the security module 208 performs active enquiry of
device qualifications. In one embodiment, the security
module 208 periodically requests device descriptor
information such as device class or subclass, etc. In another
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Appeal 2016-003878
Application 12/729,157
embodiment, device descriptor information is requested after a
wake-up event ... In one embodiment, the security module 208
provides active intervention when violating devices are detected.
For example, the device policy configuration signal 254 may
force the premature termination of a transfer or endpoint
descriptor. As another example, the release of a port may be
forced.
App. Br. 11. Appellants then argue “the interface connector is switched
from being connected to an interface controller to being connected to an
interface circuit, and thus does not remain communicatively coupled to
either of the interface controller or the interface circuit.” App. Br. 11.
We disagree.
We agree with Appellants that Topp’s initial authentication process
explicitly “switches a port from the AHC 204 [authentication host
controller] to the OHC 206 [operational host controller]” (Topp col. 8,
11. 55—56). Until the peripheral is initially authenticated by the AHC, the
peripheral is not communicatively coupled to the OHC. That is, at the start
of the initial process the peripheral is only coupled to the AHC and is
decoupled from the OHC.
However, as we noted above, this initial switching does not relate to
the embodiment cited by the Office Action. We find no support in Topp for
Appellants’ argument that Topp column 9, lines 15—37 is directed to the
peripheral connection being communicatively decoupled from the OHC
while the security module 208 performs active enquiry of device
qualifications. Instead, our reading of Topp is that the OHC 206 remains
communicatively coupled to the peripheral while the security module 208
performs active enquiry. In particular, lines 27—36 of column 9 indicate the
security module 208 performs active enquiry of device qualifications, the
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Application 12/729,157
security module 208 provides active intervention when violating devices are
detected, and the device policy configuration signal 254 forces the premature
termination of a transfer (i.e., communicatively decouples the OHC). Under
Appellants’ theory, forcing premature termination of the OHC would be
unnecessary, as the OHC would have already been communicatively
decoupled while the security module 208 performs active enquiry of device
qualifications.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1—25 as being
unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1—25 are not patentable.
DECISION
The Examiner’s rejections of claims 1—25 are 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)(l)(iv).
AFFIRMED3
3 As the Examiner has shown that all the claims are unpatentable, we do not
further reject Appellant’s claims 25—29 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
However, should there be further prosecution of these claims, the
Examiner’s attention is directed to our following concerns.
On June 11, 2014, Appellants filed an amendment adding similar
language to each of claims 1—25. Essentially, the word “remains” was
substituted for the word “is.” All pending claims now include language
requiring “while said host device remains communicatively coupled”
(Claim 1, emphasis added). We construe the term “remains” to mean “to
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Application 12/729,157
continue in the same state” (The Random House Dictionary of the English
Language; 2nd Ed.; 1983). We have reviewed Appellants’ Specification as
filed and have not seen either the term “remains” or, alternatively, other
sufficient support for a “continues in the same state” limitation.
Appellants’ Specification does recite “when the peripheral device is
communicatively coupled to the host” flflf 8, 33) and “while the peripheral is
communicatively coupled to the host” flflf 26, 27), but these circumstances
may differ from the “remains” limitation. While the “remains” limitation
may be obvious in view of the “is” description, “a description that merely
renders the invention obvious does not satisfy the [written description]
requirement.” AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1352
(Fed. Cir. 2010).
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