Ex Parte Yuk et alDownload PDFPatent Trial and Appeal BoardFeb 13, 201511270176 (P.T.A.B. Feb. 13, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HOWARD YUK, TONY T. LI, and ALBERT LEE ____________ Appeal 2012-009603 Application 11/270,176 Technology Center 2600 ____________ Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and JAMES R. HUGHES, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s final decision rejecting claims 1–5, 8, 9, and 11–15. (Final Act. 2; App. Br. 2, 17–20.)1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We refer to Appellants’ Specification (“Spec.”), filed November 9, 2005; Appeal Brief (“App. Br.”) filed February 14, 2012; and Reply Brief (“Reply Br.”) filed June 11, 2012. We also refer to the Examiner’s Answer (“Ans.”) mailed May 3, 2012, and Final Office Action (Final Rejection) (“Final Act.”) mailed December 29, 2011. Appeal 2012-009603 Application 11/270,176 2 Appellants’ Invention The invention at issue on appeal concerns security systems, security system device keys, and methods for enabling and disabling security system features. The security system includes a removable device key that enables and/or disables features of the security system. And, the device key includes a configuration file that configures security system features in a processor of the device during initialization of the processor. (Spec. 1:9–16; 1:18–3:18; Abstract.) Representative Claim Independent claim 1, reproduced below with the key disputed limitations emphasized, further illustrates the invention: 1. A security system platform comprising: a plurality of connectors carried by a chassis for connecting to security devices; a motherboard; a control processor disposed on the motherboard; a removable electronic device key that enables or disables one or more security system features of the security system platform; an interface port on the motherboard that only connects with the removable electronic device key so that the removable electronic device key directly connects to the motherboard, where the interface port provides power and a ground to the removable electronic device key upon connecting the electronic device key to the interface port; and a configuration file disposed within the removable electronic key, wherein the removable electronic device key is configured to electronically mate with the interface port, to establish communication between the electronic device key and Appeal 2012-009603 Application 11/270,176 3 the control processor and to transmit the configuration file to the control microprocessor, wherein the configuration file configures the one or more security system features on the control microprocessor during initialization of the control microprocessor and stores present data configured to control the one or more security system features on the control microprocessor, and wherein the control processor writes a unique identifier to a protected memory location on the removable electronic device key thereby configuring the removable electronic device key to function exclusively with a particular security system platform or to function with a plurality of security system platforms. Rejections on Appeal 1. The Examiner rejects claims 1, 5, 9, 11, 12, 14, and 15 under 35 U.S.C. § 103(a) as being unpatentable over Henson (US 6,826,457 B2, issued Nov. 30, 2004) and Tello (US 6,463,537 B1, issued Oct. 8, 2002). 2. The Examiner rejects claims 2, 3, 8, and 13 under 35 U.S.C. § 103(a) as being unpatentable over Henson, Tello, and Stouffer (US 6,697,719 B2, issued Feb. 24, 2004). 3. The Examiner rejects claim 4 under 35 U.S.C. § 103(a) as being unpatentable over Henson, Tello, and Cotichini (US 5,715,174, issued Feb. 3, 1998). ISSUE Based upon our review of the administrative record, Appellants’ contentions, and the Examiner’s findings and conclusions, the pivotal issue before us follows: Appeal 2012-009603 Application 11/270,176 4 Does the Examiner err in finding that the combination of Henson and Tello collectively would have taught or suggested “a removable electronic device key that enables or disables one or more security system features of the security system platform,” “a configuration file disposed within the removable electronic key,” “wherein the configuration file configures the one or more security system features on the control microprocessor during initialization of the control microprocessor and stores present data configured to control the one or more security system features on the control microprocessor” within the meaning of Appellants’ claim 1 and the commensurate limitations of claims 12 and 15? FINDINGS OF FACT We adopt the Examiner’s findings in the Answer and the Final Office Action mailed December 29, 2011, as our own, except as to those findings that we expressly overturn or set aside in the Analysis that follows. ANALYSIS Based on Appellants’ arguments, we find Appellants argue claims 1– 5, 8, 9, and 11–15 together as a group and do not separately argue with particularity the patentability of independent claims 1, 12, and 15. (App. Br. 10–15.) Appellants also do not separately argue dependent claims 2–5, 8, 9, 11, 13, and 14. (Id.) Accordingly, we select independent claim 1 as representative of Appellants’ arguments and grouping with respect to claims 1–5, 8, 9, and 11–15. 37 C.F.R. § 41.37(c)(1)(vii) (2011). We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 2–7), and Appeal 2012-009603 Application 11/270,176 5 (2) the reasons set forth by the Examiner in the Examiner’s Answer (Ans. 2– 6) in response to Appellants’ Appeal Brief. We concur with the findings and conclusions reached by the Examiner and we provide the following for emphasis. Appellants contend that Henson and Tello do not teach the disputed features of claim 1 and that one skilled in the relevant art would not “have been led by the references or common sense to make the claimed invention.” (App. Br. 10–12, 15; Reply Br. 2–6.) Specifically, Appellants contend that “[n]either reference is directed to security systems or to methods or apparatus for enabling or disabling features of a security system” (App. Br. 11), “the claimed enablement or disablement of the one or more security system features in the security system platform serves an entirely different function than the updating of Henson” (id.), “Tello merely discloses the use of smart cards for ‘controlling access to a computer system and sensitive data stored on its data storage devices at the pre-boot phase and during operation of the computer’” (App. Br. 13 (quoting Tello, col. 4, ll. 58–61)), and “the combination of Henson . . . and Tello fail[s] to disclose software that is not enabled” (App. Br. 13). Appellants misconstrue the Examiner’s rejection. We address each of Appellants’ contentions in turn. First, with respect to the teaching of “security systems,” Appellants do not define, either in claim 1 or their Specification, what a security system entails. (See e.g., Spec. 5:15–17 (describing the “security system platform (100)” connecting to “various security devices” such as “alarms, keypads,” and “electronic door locks”)). We give claim language its “broadest reasonable interpretation consistent with the [S]pecification” in accordance with our mandate that “claim Appeal 2012-009603 Application 11/270,176 6 language should be read in light of the [S]pecification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations and internal quotation marks omitted). As pointed out by the Examiner (Ans. 3), Henson at least suggests that “vehicle system platforms have electrical devices that provide some element of security to the vehicle operator, e.g., door lock(s) . . . .” and determines if the dongle (removable key) contains valid data (a security function) (see e.g., Henson, col. 11, ll. 33–35). Further, Tello describes a computer security engine and security configuration (Ans. 4–5; Tello, col. 6, ll. 15–20; col. 14, ll. 47–56; col. 26, ll. 50–54, 63–65; col. 27, ll. 3–6, 13– 15). Thus, contrary to Appellants’ contentions, we find that the references and Tello in particular, describe “security systems.” Second, both Henson and Tello describe enabling and/or disabling system (security system) features. Henson describes a removable dongle (device key) having configuration data which configures (enables and/or disables) system features (functionality of push buttons) during initialization. (Ans. 2–3; Henson, col. 5, ll. 5–11; col. 11, ll. 53–57.) Tello describes a smart card (removable device key) that identifies, authenticates, authorizes, and controls levels of access to a computer system, as well as enabling computer system peripheral devices (i.e., features). (Ans. 4–5; Tello, col. 14, ll. 47–60; col. 26, ll. 8–11, 18–25; col. 27, ll. 3–15.) Additionally, Appellants’ arguments are unpersuasive of Examiner error because they fail to address the Henson-Tello combination and are incommensurate with the scope of claim 1. Appellants argue Henson and Tello individually and fail to appreciate the collective teachings of Henson and Tello as a whole. One cannot show nonobviousness by attacking Appeal 2012-009603 Application 11/270,176 7 references individually where the rejections are based on combinations of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Appellants also contend that Henson’s enabling/disabling “serves an entirely different function” than the recited enabling/disabling (supra) and the combination of Henson and Tello fails to “disclose software that is not enabled” (supra). Contrary to Appellants’ arguments, claim 1 does not recite any function or purpose in addition to enabling or disabling system (security system) features or require disabling software (“software that is not enabled”). Further, we disagree with Appellants that one would not combine the references (would not have been led to the references) (supra). Henson at least suggests enabling/disabling security-related features in a vehicle electrical system and Tello describes a security system that enables/disables features in a computer system. We find that it would have been well with the skill of one skilled in the art to combine such known techniques. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill” (citations omitted)). We are not persuaded that combining the respective familiar elements of the cited references in the manner proffered by the Examiner would have been “uniquely challenging or difficult for one of ordinary skill in the art” at the time of Appellants’ invention. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Thus, for all the reasons supra, Appellants do not persuade us of error in the Examiner’s obviousness rejection of Appeal 2012-009603 Application 11/270,176 8 representative independent claim 1. Accordingly, we affirm the Examiner’s obviousness rejection of representative claim 1, independent claims 12 and 15, and dependent claims 2–5, 8, 9, 11, 13, and 14, not separately argued with particularity (supra). CONCLUSION Appellants have not shown that the Examiner erred in rejecting claims 1–5, 8, 9, and 11–15 under 35 U.S.C. § 103(a). DECISION We affirm the Examiner’s rejections of claims 1–5, 8, 9, and 11–15. 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). AFFIRMED msc Copy with citationCopy as parenthetical citation