Marking, Aaron et al.

Patent Trials and Appeals Board

Dec 31, 2019

12839105 - (D) (P.T.A.B. Dec. 31, 2019)

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.
12/839,105 07/19/2010 Aaron Marking 258.0005USU1 7564
106450 7590 12/31/2019
Gates & Copper LLP - SCSA
Secure Content Storage Association LLC
Howard Hughes Center
6060 Center Drive, Suite 830
Los Angeles, CA 90045
EXAMINER
MANDEL, MONICA A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
12/31/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing-us@gates-cooper.com
gates-cooper@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte AARON MARKING, KENNETH GOELLER, and JEFFREY
BRUCE LOTSPIECH
____________________

Appeal 2019-000528
Application 12/839,105
Technology Center 3600
____________________

Before ROBERT E. NAPPI, ERIC S. FRAHM, and JOHN A. EVANS,
Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 13 through 21 and 23 through 79. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, Secure Content Storage Association LLC
is the real party in interest. Appeal Br. 2.
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INVENTION
The invention is directed to a method of validating a memory device.
Spec. Abstract. Claim 13 is illustrative of the invention and is reproduced
below.
13. A method of validating a content memory device
after coupling the content memory device to a playback
device having a controller, the method performed using
the controller, comprising:
reading a unique data pattern from a region of the
content memory device, the region having content
memory device inherent random physical
manufacturing defects identified in a defect map, the
unique data pattern being a first data pattern written
to the region and altered by the content memory
device inherent random physical manufacturing
defects in the region identified in the defect map; and
validating the content memory device based at
least in part upon the unique data pattern, the written
data pattern, and the defect map.

EXAMINER’S REJECTIONS2
The Examiner rejected claims 13 through 21 and 23 through 79 under
35 U.S.C. § 101 for being directed to patent-ineligible subject matter. Final
Act. 4–6.
The Examiner rejected claims 54 through 57, 68 through 71, and 73
under 35 U.S.C. § 112 second paragraph as being indefinite. Final Act. 6–8.
The Examiner rejected claims 13 through 20, 23 through 27, 30
through 37, 39 through 44, 47, 49 through 52, 54 through 57, 59, 61, 63

2 Throughout this Decision we refer to the Appeal Brief filed February 15,
2018 (“Appeal Br.”); Final Office Action mailed June 14, 2017 (“Final
Act.”); and the Examiner’s Answer mailed July 20, 2018 (“Ans.”).
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through 71, 73, and 75 through 79 under 35 U.S.C. § 103 as being
unpatentable over Roberts (US 2006/0200414 A1; published Sept. 7, 2006)
and Noble (US 6,782,458 B1; issued Aug. 24, 2004). Final Act. 8–29.
The Examiner rejected claims 21, 38, 48, 53, and 62 under 35 U.S.C.
§ 103 as being unpatentable over Roberts, Noble, and Suzuki (US
2002/0023248 A1; published Feb. 21, 2002). Final Act. 29–33.
The Examiner rejected claims 28, 29, 45, and 46 under 35 U.S.C.
§ 103 as being unpatentable over Roberts, Noble, and Ono (US
2002/0052053 A1; published May 2, 2002). Final Act. 33–34.
The Examiner rejected claims 58 and 72 under 35 U.S.C. § 103 as
being unpatentable over Roberts, Noble, and Vishwanath (US 2005/0149759
A1; published July 7, 2005). Final Act. 35–36.
The Examiner rejected claims 60 and 74 under 35 U.S.C. § 103 as
being unpatentable over Roberts and Noble. Final Act. 36–37.

ANALYSIS
Initially, we note Appellant presents arguments directed to objections
to the Specification and the claims. These arguments are directed to
petitionable issues and not an appealable issues. See In re Schneider, 481
F.2d 1350, 1356–57 (CCPA 1973) and In re Mindick, 371 F.2d 892, 894
(CCPA 1967). See also Manual of Patent Examining Procedure
§ 1002.02(c), item 4 and § 1201. Accordingly, we have not considered any
of the issues raised by these arguments.

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Rejection under 35 U.S.C. § 101

PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: “[l]aws of
nature, natural phenomena, and abstract ideas.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 70 (2012).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In
accordance with that framework, we first determine what concept the claim
is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims
before us are drawn to the concept of intermediated settlement, i.e., the use
of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561
U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the
basic concept of hedging, or protecting against risk.”)
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
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mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
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patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The United States Patent and Trademark Office “USPTO” published
revised guidance on the application of § 101. USPTO’s 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Memorandum”). Under that guidance, we first determine
whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev. 08.2017, Jan.
2018)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
DISCUSSION
The Examiner determined the claims are not patent eligible because
they are directed to a judicial exception without reciting significantly more.
Final Act. 4–6. Specifically, the Examiner finds the claims are directed to
the abstract idea of data recognition and storage. Final Act. 4 (citing
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n,
776 F.3d 1343, 1347 (Fed. Cir. 2014)).
Appellant argues the claim is “not directed to an abstract idea or a
generic computer performing conventional steps to implement the abstract
idea, but instead a device that has interconnected physical and tangible
elements that solves a technical problem.” Appeal Br. 16. Further,
Appellant argues that “claim 30 solves the technical problem of validating
the content memory of a memory device, and it accomplishes this by using
operations that modify the characteristics of the region of the memory device
itself.” Appeal Br. 16 (DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014). Further, Appellant asserts the Examiner has not
established that the claimed elements are well known and conventional.
Appeal Br. 25–26.
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of independent claims 13, 30, 47, 61, and 75 under 35 U.S.C.
§ 101, because the record does not support the Examiner’s determination
that the claims do not recite an improvement in a computer related
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technology.
Each of the independent claims recite limitations directed to reading a
unique pattern (a data gathering or observation element), and validating a
device based upon the unique pattern, the written data pattern and the defect
map (a data analysis or evaluation element). Thus, the claims include
limitations which recite an abstract mental process. However, the remainder
of each independent claim recites that the validation is for a memory device,
and that the unique pattern is read from a region of the memory device
which has inherent and random defects that alter a data pattern written
thereto which creates the unique data pattern. As such, the claims are
directed to an improvement in a computer-related technology, i.e., providing
the ability to verify the authenticity of the memory device.
We concur with Appellant that the claimed invention is necessarily
rooted in computer technology and improves the operation of the computer
network, as were the claims in DDR Holdings. In DDR Holdings, the
claimed invention created a hybrid web page that combined advantageous
elements from two web pages, bypassing the expected manner of sending a
visitor to another party’s web page, in order to solve the internet-centric
problem of retaining website visitors. DDR Holdings, 773 F.3d at 1257–
1259. Here the verification of the memory devices is to prevent the use of
cloned memory devices, by using inherent random defects in the memory
device in the validation process. See Specification para. 22. Thus, similar to
DDR Holdings, the instant claims overcome a problem specifically arising in
computer memory devices, solves it in a manner specific to the computer
memory and, thus, are necessarily rooted in computer technology and
improve the operation of the computer. As such, the independent claims,
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and the claims which depend thereupon, recite patent-eligible subject matter.
Accordingly, we do not sustain the Examiner’s rejection of independent
claims 13, 30, 47, 61, 75, and the claims which depend thereupon, under
35 U.S.C. § 101 for being directed to patent-ineligible subject matter.
Rejection under 35 U.S.C. § 112
Appellant acknowledges the deficiency in claims 54 through 57, 68
through 71, and 73 and do not identify any error in the Examiner’s rejection
of these claims under 35 U.S.C. § 112. App. Br. 19. As such, there are no
issues for us to decide with respect to this rejection and we sustain it pro
forma.

Rejection under 35 U.S.C. § 103
Independent claims 13, 30, 47, 61, and 75
Appellant argues that the Examiner’s rejection is in error as Roberts
does not disclose a pattern written to a region having inherent defects, to
produce a unique data pattern as claimed. Appeal Br. 22. Appellant argues
that Noble teaches inherent defects in memory devices exist, but does not
teach validation using a unique pattern as claimed. Appeal Br. 23–24.
Further, Appellant argues
even when combined, Roberts/Noble do not teach the notion of
the controller writing data to a medium having inherent defects
and using the data read back to validate the device. Noble
teaches that inherent defects exist, but the medium of Roberts
itself would also have inherent defects, yet Roberts still
expressly teaches that the memory blocks be deliberately
altered or purposefully corrupted.

Appeal Br. 24.
The Examiner finds that Roberts teaches validating by reading a
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unique pattern from a memory region where the region has defects identified
in a defect map, and the unique pattern being from a first data pattern written
and altered by the defects in the region of memory. Final Act. 9 (citing
Roberts ¶¶ 44, 45.) The Examiner finds that Noble teaches memory has
inherent defects and that they are mapped. Final Act. 9 (citing Noble col. 6,
ll. 23–30), Ans. 4. The Examiner finds it would have been obvious to the
skilled artisan to use the inherent memory defects in the system of Roberts
(Final Act. 9–10). Further, in response to Appellant’s arguments, the
Examiner states
the Examiner does not see why Roberts cannot teach both
inherent and deliberate defects. In fact, while Roberts does not
explicitly recite inherent defects, one having ordinary skill in
the art at the time the invention was made would know and as
taught by Noble, that naturally occurring defects are
commonplace in memory devices.

Ans. 4.
We concur with the Examiner’s findings and are not persuaded of
error by Appellant’s arguments. Appellant’s argument that the Examiner’s
rejection “cannot overcome the express teaching of Roberts to use
deliberately altered or purposefully corrupted memory” is a teaching away
argument and is not persuasive. “‘A reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.’”
Ricoh Co., Ltd. v. Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir.
2008) (quoting Optivus Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d
978, 989 (Fed. Cir. 2006)). A reference does not teach away if it merely
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expresses a general preference for an alternative invention from amongst
options available to the ordinarily skilled artisan, and the reference does not
discredit or discourage investigation into the invention claimed. In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, we find no teaching in
Roberts that using inherent defects would not work or should not be used.
Further, we consider the manner in which the defect is created, either
inherent or deliberately made, does not result in a non-obvious difference
between the two system, rather is substitution one known type of defect for
another. “The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Accordingly, Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of independent claim 13. Appellant did not present
separate augments directed to similarly rejected claims 15, 16, 18, 23, 27,
30, 32, 33, 35, 39, 41, 44, 47, 49, 54 through 57, 59, 61, 63, 67 through 70,
73, 75, 76, 78, and 79. Accordingly, we sustain the rejection of these claims
for the same reason as claim 13.

Dependent claims 14, 17, 19, 31, 34, 36, 37, and 77
Appellant argues on pages 25 and 26 of the Appeal Brief that the
Examiner’s rejection of dependent claims 14 and 31 is in error. Appellant
argues that claims 14 and 31 recite that the written data pattern is also stored
in the device memory and that teachings of Noble, which the Examiner
relies upon to teach this limitation, merely teaches the defect list is stored in
the device memory not the written pattern. Appeal Br. 25 (citing Final Act.
10 and Noble col. 6, ll. 29–30)
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The Examiner has not responded to this argument by Appellant and
the rejection cites to Noble col. 6, ll. 25–30 to teach this limitation. Final
Act. 10. We have reviewed the cited teachings of Noble and agree with
Appellant that it discusses device memory storing the defect list but not the
written pattern. Accordingly, we do not sustain the Examiner’s rejection of
claims 14 and 31. We similarly do not sustain the Examiner’s rejection of
clams 17, 19, 34, 36, 37, and 77, which depend upon claims 14 and 31.

Dependent claims 20 and 37
Appellant argues on page 27 of the Appeal Brief that the Examiner’s
rejection of depend claims 20 and 37 are in error. Appellant argues that
claim 20
recites that the controller accesses the content memory device
to retrieve the defect map itself. The Office Action indicates
that this is disclosed by Roberts at [0044]-[0045], however, that
portion of Roberts merely says that the defective program
pattern is “known to the program” ... it does not say how that
defective program pattern becomes known to the program.

Appeal Br. 27.
As discussed above, claim 37 is dependent upon claim 31,
accordingly, we do not sustain the Examiner’s rejection of claim 37. With
regard to claim 20, we are not persuaded of error. While Roberts teaches
that the pattern is known to the program, Noble in column 6, line 29 teaches
that the defect list is stored on the media. Thus, we are not persuaded of
error in the Examiner’s rejection and sustain the rejection of claim 20.

Dependent claims 24, 40, 50, and 64
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Appellant argues on page 27 of the Appeal Brief that the Examiner’s
rejection of depend claims 24, 40, 50, and 64 is in error. Appellant argues
that these claims recite the expected data pattern is computed using the
controller by altering the written data pattern using the defect map, whereas
Roberts teaches comparing expected data pattern with error messages.
Appeal Br. 27.
We are persuaded of error by Appellant’s arguments. The Examiner’s
rejection identifies that Roberts teaches the limitations of claim 24. Final
Act. 13 (citing Roberts ¶¶ 44 and 45.) The Examiner has not addressed
Appellant’s argument regarding altered data pattern vs error messages. We
have reviewed the cited teachings of Roberts and do not find that the cited
paragraphs teach the controller computes the pattern. Thus, we do not
sustain the Examiner’s rejection of claims 24, 40, 50, and 64.

Dependent claims 25, 42, 51, and 65
Appellant argues on page 28 of the Appeal Brief that the Examiner’s
rejection of depend claims 25, 42, 51, and 65 is in error. Appellant argues
each of these claims recite a step of error correcting the unique data pattern
and that Roberts does not teach this feature. Appeal Br. 28.
The Examiner cites to Roberts as teaching the error correction in
paragraphs 22, 44, and 45. Further, in response to Appellant’s arguments
the Examiner states Roberts teaches the error correcting as “correlating the
bits written onto the device with the defective program pattern is essentially
error ‘correcting.’” Ans. 5.
We have reviewed the cited teaching of Roberts and disagree with the
Examiner that Roberts teaches the claimed error correction as claimed. Each
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of the claims recite error correction as a separate step from the comparing
the written data pattern to the unique data pattern. We consider the
correlation of bits, discussed by the Examiner as meeting the claimed
comparing written data to the unique pattern and not the error correction.
Thus, we do not sustain the Examiner’s rejection of claims 25, 42, 51, and
65.

Dependent claims 26, 43, 52, 66, and 71
Appellant argues on pages 28 and 29 of the Appeal Brief that the
Examiner’s rejection of dependent claims 26, 43, 52, 66, and 71 is in error.
Appellant argues each of these claims recite that the location of the region is
unknown to an unauthorized user of the content memory, and that the
portion of Roberts cited by the Examiner does not teach this feature. Appeal
Br. 28–29.
The Examiner responds by citing paragraph 45 of Roberts as teaching
this disputed feature. Ans. 5. We have reviewed paragraph 45 of Roberts
and do not find that Roberts discusses that the location of the region of the
memory device, with known defects, is unknown to the user. Accordingly,
we do not sustain the Examiner’s rejection of claims 26, 43, 52, 66, and 71.

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
13–21, 23–79 101 Eligibility 13–21, 23–79
54–57, 68–
71, 73
112 2nd
par
Indefiniteness 54–57, 68–71,
73

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Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
13–21, 23–79 101 Eligibility 13–21, 23–79
13–20, 23–
27, 30–37,
39–44, 47,
49–52, 54–
57, 59, 61,
63–71, 73,
75–79
103 Roberts, Noble 13, 15, 16, 18,
20, 23, 27, 30,
32, 33, 35, 39,
41, 44, 47, 49,
54–57, 59, 61,
63, 67–70, 73,
75, 76, 78, 79
14, 17, 19, 24,
25, 26, 31, 34 36,
37, 40, 42, 43,
50, 51, 52, 64,
65, 66, 71, 77
21, 38, 48,
53, 62
103 Roberts, Noble,
Suzuki
21, 38, 48, 53,
62

28, 29, 45, 46 103 Roberts, Noble,
Ono
28, 29, 45, 46
58, 72 103 Roberts, Noble,
Vishwanath
58, 72
60, 74 103 Roberts, Noble 60, 74
Overall
Outcome
13, 15, 16, 18,
20, 21, 23,
27–30, 32, 33,
35, 38, 39, 41,
44–47, 48, 49,
53–63, 67–72,
73–76, 78, 79,
14, 17, 19, 24,
25, 26, 31, 34 36,
37, 40, 42, 43,
50, 51, 52, 64,
65, 66, 77

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-IN-PART