NXP B.V.

Patent Trials and Appeals Board

Sep 21, 2020

2019002754 (P.T.A.B. Sep. 21, 2020)

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.
14/596,165 01/13/2015 Thomas E. F. Wille 81587305US03 2990
65913 7590 09/21/2020
Intellectual Property and Licensing
NXP B.V.
411 East Plumeria Drive, MS41
SAN JOSE, CA 95134
EXAMINER
HAILU, TESHOME
ART UNIT PAPER NUMBER
2434
NOTIFICATION DATE DELIVERY MODE
09/21/2020 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):
ip.department.us@nxp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THOMAS E.F. WILLE
____________________

Appeal 2019-002754
Application 14/596,165
Technology Center 2400
____________________

Before ROBERT E. NAPPI, BETH Z. SHAW, and
JAMES W. DEJMEK, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 5–7, 9–11, and 13–20. Appellant has canceled claims 3, 4, 8,
and 12. See Appeal Br. 14–19. We have jurisdiction over the remaining
pending claims under 35 U.S.C. § 6(b).
We affirm in part.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant does not
identify by name the real party in interest in the Appeal Brief. Accordingly,
we assume that the real party in interest is the named inventor, Thomas E.F.
Wille. See 37 C.F.R. § 41.37(c)(1)(i).
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to a data
processing device executing an application in a secure mode. Spec. 1:6–7,
4:16–23, 6:21–24. In a disclosed embodiment, when the data processing
device is executing an application in a secure mode, access to the user input
interface and the user output interface are restricted. Spec. 6:30–7:1. More
particularly, while operating in a secure mode, access to the user input
interface and user output interface is permitted only to the secure
application. Spec. 7:14–17.
Claim 1 is exemplary of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. A data processing device configured to execute an
application, the data processing device comprising:
a processing unit comprising a user interface access
controller that is configured to control access to both a user input
interface and a user output interface, wherein the access to the
user input interface is restricted by setting at least one control
register in the processing unit to a value indicative of a secure
access mode;
a secure element configured to control the user interface
access controller in the secure access mode, wherein the secure
element is further configured to load a user interface access
control program into the processing unit before switching the
user interface application controller to the secure access mode
and cause the user interface access controller in the processing
unit to restrict access to the user input interface and the user
output interface during execution of the application in the secure
access mode, wherein a security driver function resides in the
secure element.

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The Examiner’s Rejection
Claims 1, 2, 5–7, 9–11, and 13–20 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Delfs et al. (US 2006/0195907 A1;
Aug. 31, 2006) (“Delfs”); Levin et al. (US 5,432,934; July 11, 1995)
(“Levin”); and Holm et al. (US 2009/0055637 A1; Feb. 26, 2009)
(“Holm”).2 Final Act. 4–9.

ANALYSIS3
A. Claims 1, 5–7, 9, 10, and 13–19
Appellant argues the Examiner erred in finding Delfs teaches a user
interface access controller that is configured to control access to both a user
input interface and a user output interface. Appeal Br. 7–8; Reply Br. 2–3.
More particularly, Appellant asserts that Delfs is limited to controlling
access to only a user input interface rather than controlling access to both a
user input interface and a user output interface. Appeal Br. 7–8; Reply
Br. 2–3 (citing Delfs ¶¶ 31–32).
As an initial matter, we note the Examiner relies on the combined
teachings of Delfs and Levin to teach the claimed user interface access

2 We note that in the statement of rejection, the Examiner identifies Kim (US
2008/0280636 A1; Nov. 13, 2008) instead of Holm. However, in the body
of the rejection, the Examiner relies on Holm, rather than Kim. See Final
Act. 6. Appellant notes that Holm was omitted from the list of references,
but does not otherwise assert being prejudiced by the omission. Appeal
Br. 6. Accordingly, we treat the Examiner’s typographical error as harmless.
3 Throughout this Decision, we have considered the Appeal Brief, filed
October 23, 2018 (“Appeal Br.”); the Reply Brief, filed February 19, 2019
(“Reply Br.”); the Examiner’s Answer, mailed January 23, 2019 (“Ans.”);
and the Final Office Action, mailed July 19, 2018 (“Final Act.”), from which
this Appeal is taken.
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controller that controls access to both a user input interface and a user output
interface. See Final Act. 4–5. In particular, the Examiner explains Delfs
does not “clearly disclose” controlling access to both a user input interface
and user output interface and relies on Levin for a more express teaching.
See Final Act. 5 (citing Levin, Abstract). As relied on by the Examiner,
Levin teaches an access restriction system that restricts (i.e., controls) “user
input through the user interface apparatus [(i.e., the user input interface)] and
computer output through the user interface apparatus [(i.e., the user output
interface)].” Levin, Abstract. Thus, Appellant’s arguments do not apprise
us of Examiner error because, at least, they are not responsive to the
Examiner’s rejection, which relies on both Delfs and Levin to teach a user
interface access controller that controls access to both a user input interface
and a user output interface.
Moreover, the Examiner responds to Appellant’s arguments with
respect to Delfs and finds that Delfs describes the data input unit as being “a
keyboard, a data communication interface or an input/output interface to a
communication network or to another peripheral device of the data
processing device, a touchpad, a touch screen, a computer mouse or a
microphone.” Ans. 9 (quoting Delfs ¶ 115) (emphases omitted). The
Examiner explains that it is known that an input and output interface may be
included in a single interface such as a touch screen of a device. Ans. 9.
Accordingly, the Examiner finds Delfs teaches a processor controlling
access to both a user input interface and a user output interface. Ans. 9.
Appellant does not persuasively rebut the Examiner’s findings or
technical reasoning that a touch screen is known to be used to an input
interface and as an output interface to the user. See Reply Br. 2.
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Accordingly, we are unpersuaded of Examiner error. Further, contrary to
Appellant’s assertion, the Examiner’s explanation does not amount to a new
ground of rejection as the thrust of the rejection has not changed. Rather,
the Examiner is merely responding to Appellant’s arguments.4 Cf. In re
Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011).
Appellant also argues that Levin’s access restriction system teaches
away from restricting access by setting at least one control register in a
process unit to a value indicative of a secure mode “because Levin places
user restrictions on workspaces.” Appeal Br. 7–8 (citing Levin, col. 6,
ll. 13–14); Reply Br. 3.
“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) (citations omitted).
“[T]he ‘mere disclosure of more than one alternative’ does not amount to
teaching away from one of the alternatives where the reference does not
‘criticize, discredit, or otherwise discourage the solution claimed.’”

4 To the extent that Appellant believes the Examiner set forth an
undesignated new ground of rejection in the Answer (see Reply Br. 2), that
is a petitionable matter not properly before the Board. See 37 C.F.R.
§ 41.40(a) (“Any request to seek review of the primary examiner's failure to
designate a rejection as a new ground of rejection in an examiner’s answer
must be by way of a petition to the Director”); see also Manual of Patent
Examining Procedure (“MPEP”) § 706.01 (9th ed., Rev. 10.2019, June
2020) (“[T]he Board will not hear or decide issues pertaining to objections
and formal matters which are not properly before the Board.”); see also
MPEP § 1201 (“The Board will not ordinarily hear a question that should be
decided by the Director on petition . . . .”).
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SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1320 (Fed. Cir. 2015)
(quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).
We disagree with Appellant that Levin teaches away from the claimed
solution. We note that the Examiner does not rely on Levin, but rather
Delfs, to teach a user access controller configured to control access to the
user input (and output, see above) by setting at least one control register to a
value indicative of a secure access mode. See Final Act. 4 (citing Delfs
¶ 170, Fig. 8). As relied upon by the Examiner, Delfs teaches data stored in
a control register generates a switch state control signal to drive a switch unit
that places the device (e.g., keyboard peripheral block) into a secure mode.
See Delfs ¶¶ 170–173, Figs. 1, 8.
Regarding Appellant’s arguments that Levin teaches away from the
claimed solution “because Levin places user restrictions on workspaces”
(see Appeal Br. 7–8 (citing Levin, col. 6, ll. 13–14)), we disagree. Rather,
Levin generally describes access restrictions as a means of configuring a
user interface. See Levin, Title. Levin describes the access restrictions may
be filtered by a particular user mode. See Levin, col. 19, ll. 46–47. Levin
describes a “new proprietary mode construct” in which restrictions (e.g.,
user restrictions or class restrictions) may be specified in a table. See, e.g.,
Levin, col. 25, l. 16–col. 26, l. 46, Fig. 13D. We disagree that Levin’s
approach criticizes, discredits, or discourages one of ordinary skill in the art
from setting a value in a control register indicative of a secure mode as a
means of setting a particular user access restriction setting. Accordingly,
Levin does not teach away from the claimed solution.
Appellant also argues that Holm, as relied on by the Examiner, fails to
teach a secure element configured to load a user interface access control
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program into the processing unit before switching into a secure access mode.
Appeal Br. 8–9; Reply Br. 3–4. In particular, Appellant argues Holm’s
teaching of placing a chip in a secure mode of operation fails to teach
loading a user interface access control program into the processing unit.
Appeal Br. 8–9; Reply Br. 3–4. Appellant argues “Holm’s chip cannot be
reasonably interpreted as equivalent to the recited user interface application
controller.” Appeal Br. 8. Moreover, Appellant asserts the language of
claim 1 requires that a user interface access control program be loaded into
the claimed processing unit rather than the user interface application
controller. Reply Br. 4.
As an initial matter, we note that claim 1 recites the processing unit
comprises a user interface access controller. Thus, even if (without
deciding) Holms teaches loading a user interface access control program into
a user interface access controller, Holms would still teach that the user
interface access control program has been loaded into the processing unit.
In addition, Holm describes a secure power-on reset engine for a
processor chip, “which guarantees a secure initialization of the chip to
enable secure code execution.” Holm, Abstract. As relied on by the
Examiner, Holm teaches that on power-on, security and configuration
information are read from security and configuration information storage
devices to place the chip in a secure mode of operation. Holm ¶¶ 74–76,
Fig. 7. Accordingly, the Examiner’s finding that Holm teaches a secure
element is configured to load a user interface access control program into the
processing unit, as claimed, is supported by a preponderance of the
evidence.
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For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 1. For similar reasons, we also sustain the Examiner’s rejection of
independent claims 10 and 15, which recite similar limitations and were
argued collectively with independent claim 1. See Appeal Br. 7–9; see also
37 C.F.R. § 41.37(c)(1)(iv). Additionally, we sustain the Examiner’s
rejection of claims 5–7, 9, 13, 14 and 16–19, which depend directly or
indirectly therefrom and were not argued separately. See Appeal Br. 12; see
also 37 C.F.R. § 41.37(c)(1)(iv).

B. Claims 2 and 11
Claim 2 depends from claim 1 and recites “restricting the access to the
user input interface and the user output interface to instructions comprised in
said application.” Claim 11 recites a commensurate limitation.
Appellant argues “Delfs cannot restrict access to both user input and
output interfaces to instructions comprised in said application because Delfs
only places a restriction on a data input mode.” Appeal Br. 10 (emphases
omitted); Reply Br. 4.
For similar reasons to those discussed with respect to claim 1, we
disagree that the combined teachings of Delfs, Levin, and Holm are limited
only to restricting access on a data input mode (i.e., the user input interface).
Further, as explained by the Examiner Delfs teaches a second processor
operating as a secure-mode processor that has control over the data input
unit (which, as discussed above, may include a touch screen and, therefore
data input and output interfaces). Thus, Delfs teaches the instructions
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comprised in an application running on the second (secure) processor restrict
access to the user input and output interfaces.
Additionally, as the Examiner finds (see Ans. 11), Holm teaches that
once the chip in the secure mode, no external access to the resources of the
chip is permitted. Thus, access to the user input and user output interfaces
are restricted to the instructions comprised in the application running on the
chip.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of claims 2 and 11.

C. Claim 20
Claim 20 depends indirectly from claim 1 and recites the processing
unit further comprises “a plurality of TrustZone control registers, each
TrustZone control register configured to control a respective TrustZone
function.”
In rejecting claim 20, the Examiner relies on the same teaching of a
control register of Delfs as was relied on in rejecting claim 1. See Final
Act. 8–9. Further, in response to Appellant’s arguments that the rejection
fails to show a plurality of registers wherein each register is associated with
a respective TrustZone function (see Appeal Br. 11), the Examiner explains
that having a plurality of control registers “does not have any patentable
weight unless a new and unexpected result is produced.” Ans. 12 (citing
MPEP § 2144).
Appellant replies that each of the plurality of TrustZone control
registers are different rather than duplicative because each is configured to
control a respective TrustZone function. Reply Br. 5.
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At the outset, we note that “apparatus claims cover what a device is,
not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909
F.2d 1464, 1468 (Fed. Cir. 1990). Our reviewing court guides that the
patentability of an apparatus claim “depends on the claimed structure, not on
the use or purpose of that structure.” Catalina Mktg. Int’l Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002); but cf. In re
Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014) (explaining that when
supported by the specification, recited elements of an apparatus “adapted to”
or “configured to” perform a function have a narrower meaning than merely
an intended use of the elements themselves).
Although we note that, as drafted, the claim does not define or use the
respective TrustZone functions or even preclude duplicative TrustZone
functions, when read in light of the Specification (see, e.g., Spec. 8:29–9:5),
we construe claim 20 to recite a plurality of TrustZone control registers
wherein each TrustZone control register is configured to a TrustZone
function distinct from the other TrustZone functions controlled by the other
TrustZone control registers.
Accordingly, we disagree with the Examiner that claim 20 merely
recites a duplication of parts (i.e., control registers). Constrained by the
record before us, we do not sustain the Examiner’s rejection of claim 20.

CONCLUSION
We affirm the Examiner’s decision rejecting claims 1, 2, 5–7, 9–11,
and 13–19 under 35 U.S.C. § 103.
We reverse the Examiner’s decision rejecting claim 20 under
35 U.S.C. § 103.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 5–7, 9–
11, 13–20
103 Delfs, Levin, Holm 1, 2, 5–7,
9–11, 13–
19
20

TIME PERIOD FOR RESPONSE
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). See
37 C.F.R. § 41.50(f).

AFFIRMED IN PART