Ex Parte Andersson et al

Patent Trial and Appeal BoardJun 17, 2016

13382364 (P.T.A.B. Jun. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/382,364 01/05/2012 58342 7590 06/21/2016 WARREN A, SKLAR (SOER) RENNER, OTTO, BOISSELLE & SKLAR, LLP 1621 EUCLID AVENUE 19THFLOOR CLEVELAND, OH 44115 FIRST NAMED INVENTOR Stefan Andersson 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 ATTORNEY DOCKET NO. CONFIRMATION NO. SSTRP0191WOUS1 2826 EXAMINER VU, QUOC THAI NGOC ART UNIT PAPER NUMBER 2642 NOTIFICATION DATE DELIVERY MODE 06/21/2016 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): ipdocket@rennerotto.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEP AN ANDERSSON and HANS W ACHTMEISTER Appeal2014-008128 Application 13/382,3641 Technology Center 2600 Before ROBERT E. NAPPI, NATHAN A. ENGELS, and JOHN D. HAMANN, Administrative Patent Judges. HAMANN, Administrative Patent Judge. DECISION ON APPEAL Appellants file this appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-9 and 11-20. Claim 10 was canceled. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm-in-part. THE CLAIMED INVENTION Appellants' claimed invention relates to "changing an operating mode of a mobile device." Spec. i-f 4. Claim 9 is illustrative of the subject matter 1 According to Appellants, the real party in interest is SONY MOBILE COMMUNICATIONS AB. App. Br. 2. Appeal2014-008128 Application 13/382,364 of the appeal and is reproduced below with emphasis added to disputed limitations. 9. A mobile device, comprising: an input device for receiving input information from a user of the mobile device, an output device for outputting output information to the user, and a processing unit adapted to receive via the input device a request from the user to change from a first operating mode of the mobile device to a second operating mode of the mobile device, request a credential from the user in response to the received request, receive a credential from the user, validate the received credential, and if the received credential is valid, set the second operating mode, set an indication of the mobile device indicating that the second operating mode has been set, prohibit resetting the indication indicating that the second operating mode has been set, and refuse access to a hardware unique key stored on the mobile device. REJECTIONS ON APPEAL (1) The Examiner rejected claims 1-5, 9, 11-15, 19, and 20 under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Mendonca (US 2010/0229219 Al; Sept. 9, 2010) and Ordogh (US 2010/0219979 Al; Sept. 2, 2010), collectively referred to as the "combination." (2) The Examiner rejected claims 6 and 16 under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Mendonca, Ordogh, and Li (US 2011/0034211 Al; Feb. 10, 2011). 2 Appeal2014-008128 Application 13/382,364 (3) The Examiner rejected claims 7, 8, 17, and 18 under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Mendonca, Ordogh, and Jobst et al. (US 6,707,915 Bl; Mar. 16, 2004) (hereinafter "Jobst"). (4) The Examiner rejected claims 19 and 20 under 35 U.S.C. Â§ 112, first paragraph, written description requirement, for claiming subject matter which was not described in the Specification in such a way as to reasonably convey to one skilled in the art that Appellants, at the time the application was filed, had possession of the claimed invention. ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' contentions that the Examiner erred. In reaching our decision, we consider all evidence presented and all arguments made by Appellants. We below address specific findings and arguments relating to each of the Examiner's rejections Appellants are appealing. (1) Conditional method steps Appellants argue the Examiner errs in finding the combination of Ordogh and Mendonca teaches or suggests four specific limitations2 recited among the four independent claims on appeal - claims 1, 9, 19, and 2 0. See App. Br. 7-12. Appellants' arguments group these claims in various combinations (e.g., (1, 9, 19, 20) and (1, 9)) depending upon the specific disputed limitation recited in the particular claim. See id. However, claims 1 and 19' s recitation of the disputed limitations occurs within conditional 2 We do not reach Appellants' argument concerning the claimed "hardware unique key" because (i) for claim 1, it appears in a conditional step and (ii) for claim 9, we do not sustain the Examiner'sÂ§ 103 rejection due to another argument. 3 Appeal2014-008128 Application 13/382,364 steps. See Claim Appendix 15, 20. Claim 1 recites the conditional method step of: "if the second operating mode has been set, prohibiting a reset of the indication indicating that the second operating mode has been set and refusing access to a hardware unique key stored on the mobile device." See id. at 15. Claim 19 recites two conditional steps: (i) "setting the second operating mode and setting an indication of the mobile device indicating that the second operating mode has been set, if the received credential is valid," and (ii) "if the second operating mode has been set, prohibiting a reset of the indication indicating that the second operating mode has been set." See id. at 20. As we address below, the conditional method steps do not need to be performed under the broadest reasonable interpretation of the claims. During examination, claims are given their broadest reasonable interpretation consistent with the specification. See In re Am. A cad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The broadest reasonable interpretation of claims 1 and 19 encompass instances in which the methods end when the prerequisite condition for the step is not met (e.g., if the second operating mode has not been set, or if the received credential is invalid). Thus, the broadest reasonable interpretation encompasses methods where only the non-conditional steps are performed. Such a finding follows from the direct inverse relationship between invalidity and infringement. "[I]t is axiomatic that that which would literally infringe if later anticipates if earlier." Bristol-Myers Squibb Co. v. Ben Venue Labs, Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001). As to infringement, conditional method steps need not be performed for infringement to be found. See, e.g., Applera Corp. v. Illumina, Inc., 375 Fed. Appx. 12, 21 (Fed. Cir. 2010) (unpublished) (affirming a district court's interpretation of a 4 Appeal2014-008128 Application 13/382,364 method claim as including a step that need not be practiced if the condition for practicing the step is not met); Cybersettle, Inc. v. Nat'! Arbitration Forum, Inc., 243 Fed. Appx. 603, 607 (Fed. Cir. 2007) (unpublished) ("It is of course true that method steps may be contingent. If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed."). Likewise, as to invalidity, conditional method steps need not be shown in establishing invalidity. (2) Prohibit resetting the indication Appellants argue the combination, and Ordogh in particular, fails to teach or suggest "prohibit[ing] resetting the indication indicating that the second operating mode has been set," as recited in claims 9 and 20. See App. Br. 7-9. Specifically, Appellants argue Ordogh does not teach or suggest prohibiting a reset of the lost status determiner (80) and that the permanent storage medium having the lost status determiner (80) "may also be accessed and maybe even reset. It is just that, in Ordogh, such access and/or reset may destroy the processor (52) and thus disable the mobile terminal (10)." See App. Br. 8 (citing Ordogh i-fi-133-34); see also Reply Br. 2-3 (citing Ordogh i-fi-132-34). The Examiner finds Ordogh teaches or suggests protecting data - including a loss status flag which, if set, indicates a stolen condition, and corresponds to the claimed second operating mode - by storing the loss status flag in a permanent storage medium. See Ans. 3 (citing Ordogh i-fi-133-34). The Examiner also finds an example of such permanent storage medium includes read only memory ("ROM"), "which allows data to be written one time" and stored until destroyed. See Ans. 3 (citing Ordogh 5 Appeal2014-008128 Application 13/382,364 if 32). The Examiner further finds "'permanent storage medium' indicates that data cannot be written on more than once .... " Ans. 3. The Examiner then concludes Ordogh's teaching of "loss status" being stored on a permanent storage medium teaches the disputed limitation "because 'loss status' cannot be changed to indicate 'not lost."' See id. We agree with the Examiner's findings and adopt them as our own. Ordogh teaches the disputed limitation by teaching storing a loss status flag which, if set, indicates a stolen condition, in a permanent storage medium, which allows data to be written one time. See Ordogh iii! 32-34. (3) Refuse access to a hardware unique key Appellants argue the combination fails to teach or suggest "refus[ing] access to a hardware unique key stored on the mobile device," as recited in claim 9. App. Br. 9-10. Appellants first argue "refus[ing] access" must mean refusing read or refusing read and write capabilities in light of the Specification. Reply Br. 5. According to Appellants, "the purpose of refusing access to the hardware unique key on a rooted device includes preventing this sensitive material [(e.g., usemames and passwords, etc.)] from being known to [a] hacker." See Reply Br. 4--5 (citing Spec. 7, 11. 29- 34). Appellants add this sensitive information "would clearly be useful to the hacker by the hacker merely knowing the contents of these materials regardless of whether the hacker may write over them." Reply Br. 5. Appellants thus contend "'refusing access' must be construed as refusing the sensitive material at least from being read ... [,and] must be construed as refusing read or refusing read and write, but not as refusing only write as the Examiner proposes." See id. Appellants then argue Ordogh's teaching of writing data to a ROM "does not refuse a read of that data." Id. 6 Appeal2014-008128 Application 13/382,364 The Examiner finds Ordogh teaches this disputed limitation. See Ans. 4. The Examiner begins by finding one of ordinary skill in the art would understand "access" means "(1) 'read' data from memory or (2) 'write' data onto the memory .... " See id. The Examiner then finds the Specification "does not define a specific type of 'access,"' and thus, "it is reasonable to interpret 'access' as data 'write,"' which includes "[c]hanging or deleting data .... " See Ans. 4. The Examiner concludes Ordogh's teaching of storing a unique finger-print type ID (i.e., the hardware unique key) on a permanent storage medium teaches the disputed limitation because the unique finger-print type ID "cannot be changed or deleted once it is stored on the permanent storage medium." Id. We find Appellants' arguments persuasive. We agree with Appellants that the broadest reasonable interpretation of "refus[ing] access" in light of the Specification includes refusing a read of the hardware unique key. See Spec. 7, 11. 29-34. Accordingly, we do not sustain the Examiner'sÂ§ 103 rejection of claim 9, as well as claims 11-18, which depend from claim 9 and incorporate the disputed limitation. (4) Motivation to combine Ordogh and Mendonca Appellants argue the Examiner fails to show that combining Ordogh and Mendonca is appropriate. See App. Br. 12-13. Appellants argue "a person of ordinary skill in the art would not have any motivation to combine the teachings of Ordogh with the teachings of Mendonca when looking for a solution to the problem underlying the claimed invention." See id. at 12. Appellants argue the claimed invention relates to the problem of changing an operating mode of a mobile device and granting secure access to a user of the mobile device while avoiding modification of the mobile 7 Appeal2014-008128 Application 13/382,364 device by a hacker. See id. at 12-13 (citing Spec. "Background of the Invention"). Appellants then contend Ordogh, in contrast, relates to device recovery by enabling the device to provide information indicative of a location in response to a determination that the device has been lost or stolen. See id. at 13 (citing Ordogh i17, Abstract). The Examiner cites Mendonca for, inter alia, receiving a request to change from a first operating mode to a second operating mode and effectuating that request, if the requestor is properly credentialed. See Final Act. 4--5 (citing Mendonca i1i138, 44, 48, 50, 53-57 (finding for the refusing access to a hardware unique key stored on the mobile device limitation that Mendonca teaches that "there is no interface to access to secret keys"), 68, 80, 94, 96, 101, 107-108). The Examiner combines Ordogh with Mendonca for Ordogh's additional teachings, including concerning prohibiting a reset of the indication indicating that the second operating mode has been set, if so set. See id. 5 (citing Ordogh i1i133-34) (finding Ordogh teaches, inter alia, storing a loss status flag in a permanent storage medium to prevent tampering of the data). The Examiner concludes it would have been obvious to one of ordinary skill in the art to include Ordogh's teachings concerning prohibiting a reset of the indication indicating that the second operating mode has been set, if so set, to Mendonca' s teachings to protect Mendonca' s secret data keys from being tampered with. See id. (citing Ordogh i1 33). We find Appellants' arguments unpersuasive and find the Examiner provides "articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006). The Examiner reasons a person of ordinary skill in the art would have been motivated to combine Mendonca and Ordogh to protect the secret 8 Appeal2014-008128 Application 13/382,364 data keys from being tampered with (i.e., prohibit the secret data keys from being changed or reset). See Final Act. 5 (citing Ordogh i-f 33); see also supra ((2) Prohibit resetting the indication); KSR Int'! 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."). We also find Appellants' argument that Ordogh is directed to a different problem unpersuasive. See Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1368 (Fed. Cir. 2012) ("We have repeatedly held that the motivation to modify a prior art reference to arrive at the claimed invention need not be the same motivation that the patentee had.") (citing KSR, 550 U.S. at 420 that it is error to look "only to the problem the patentee was trying to solve"). Appellants also contend "combining Ordogh with Mendonca as suggested by the Examiner ... would render Mendonca unsatisfactory for its intended purpose and Mendonca's basic principle of operation would be changed." Reply Br. 6-8 (emphasis omitted). This argument, however, is waived as it was raised for the first time in the Reply Brief without a showing of good cause. See 37 C.F.R. Â§ 41.41(b)(2) (2012); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) ("[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not."). (5) Written description (or claims 19 and 20 Appellants contend the Specification complies with the written description requirement of 35 U.S.C. Â§ 112, first paragraph, with respect to 9 Appeal2014-008128 Application 13/382,364 claims 19 and 20 because it discloses "that the credential is stored permanently." See App. Br. 13. Specifically, Appellants first argue the Specification discloses storing the credential in a "trim area." See id. (citing Spec. 6, 11. 26-28; 7, 11. 16-32, Fig. 2 (22 ("TA"))). Appellants then argue "[a] person skilled in the art knew at the time of invention that the 'trim area' is a permanent storage location in memory of, for example, a Sony Mobile telephone." App. Br. 13. Appellants thus contend information stored in the trim area is permanently stored. See id. The Examiner finds the Specification does not disclose that the trim area is permanent storage. Ans. 10. The Examiner also questions whether one of ordinary skill in the art would understand that "trim area" storage is permanently stored. Id. We are not apprised of error based on Appellants' arguments because Appellants do not provide evidence to support the asserted views as to how one of ordinary skill in the art at the time of the invention would understand the "trim area" disclosure. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the place of evidence."); see also Spec. 6, 11. 26-28; 7, 11. 16-32, Fig. 2 (22 ("TA")). We find there is no evidence of record that one skilled in the art would have reasonably concluded that Appellants had possession of permanently storing the credential at the time the Specification was filed. See In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989). Accordingly, we sustain this rejection. DECISION (1) We affirm the Examiner'sÂ§ 103(a) rejections of claims 1-8, 19, and 20. 10 Appeal2014-008128 Application 13/382,364 (2) We reverse the Examiner'sÂ§ 103(a) rejections of claims 9 and 11-18. (3) We affirm the Examiner's rejection of claims 19 and 20, under 35 U.S.C. Â§ 112, first paragraph, for failing to meet the written description requirement. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 11