Ex Parte Asipov

Patent Trial and Appeal Board

Nov 9, 2018

14935400 (P.T.A.B. Nov. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/935,400 11/07/2015
69316 7590 11/14/2018
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Boris Asipov
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.
321174-US-CNT 1934
EXAMINER
SHAW, BRIAN F
ART UNIT PAPER NUMBER
2491
NOTIFICATION DATE DELIVERY MODE
11/14/2018 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):
usdocket@microsoft.com
chriochs@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BORIS ASIPOV 1
Appeal2018-001084
Application 14/935,400
Technology Center 2400
Before MICHAEL J. STRAUSS, MICHAEL M. BARRY, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Final Rejection of
claims 1-20, all the pending claims in the present application. See
Appeal Br. 5. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant names Microsoft Technology Licensing, LLC and Microsoft
Corporation, as the real parties in interest. See Appeal Br. 2.
Appeal2018-001084
Application 14/935,400
STATEMENT OF THE CASE
Invention
Appellant indicates the invention relates to "using a flash storage
device to prevent unauthorized use of software." Spec. ,r 5. 2
Exemplary Claims
Claims 1, 11, and 16 are independent claims. Claims 1, 2, and 9 are
exemplary and are reproduced below with limitations at issue in italics:
1. A machine-implemented method of employing a
flash storage device in selectively controlling use of software,
the machine-implemented method comprising:
accessing license information encoded in the flash
storage device, wherein writeability or non-writeability of
respective sectors of a plurality of sectors of the flash storage
device, as determined through at least one attempted or actual
write operation, corresponds to values of a plurality of data bits
of at least a portion of the license information; and
selectively controlling the use of the software based at
least in part on the accessed license information.
2. The machine-implemented method of claim 1,
wherein accessing the license information includes:
reading the portion of the license information from the
flash storage device by performing at least one write operation
to each of multiple sectors of the plurality of sectors.
2 This Decision refers to: (1) Appellant's Specification ("Spec.") filed
November 7, 2015; (2) the Final Office Action ("Final Act.") mailed August
26, 2016; (3) the Appeal Brief ("Appeal Br.") filed April 25, 2017; (4) the
Examiner's Answer ("Ans.") mailed September 11, 2017; (5) the
Examiner's Supplemental Answer ("Supp. Ans.") mailed September 13,
2017; and ( 6) the Reply Brief ("Reply Br.") filed November 10, 2017.
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9. The machine-implemented method of claim 1,
wherein a writeable sector of the plurality of sectors represents
a value of "one" for a particular data bit of the plurality of
data bits and a non-writeable sector of the plurality of sectors
represents a value of "zero " for another data bit of the
plurality of data bits.
Appeal Br. 18, 20.
REFERENCES
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Bisbee et al. ("Bisbee")
DeMello et al. ("DeMello")
Lee et al. ("Lee")
Oh et al. ("Oh")
Den Hollander et al.
("Den Hollander")
US 6,367,013 Bl
US 2005/0108556 Al
US 2005/0193161 Al
US 2006/0059194 Al
US 2008/0304389 Al
Apr. 02, 2002
May 19, 2005
Sept. 01, 2005
Mar. 16,2006
Dec. 11, 2008
Tomoji et al. ("Tomoji") JP 06-348535 Dec. 22, 1994
0. Shalitin, Security Made Solid with Non-Volatile NOVeA®,
http://docshare02.docshare.tips/files/6226/62267088.pdf
("Shalitin").
REJECTI0NS 3
Claims 1, 3, 6-10, 13, and 16-17 are rejected under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of Shalitin, Den
Hollander, Oh, Lee, and Appellant's Admitted Prior Art ("AAPA"). Final
Act. 9--18.
3 The Final Office Action incorrectly indicates that claim 4 is objected to but
not rejected. See Final Act. 1. Claim 4, however, although not rejected
under 35 U.S.C. § I03(a), is rejected on the ground of obviousness-type
double patenting. See Final Act. 4.
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Application 14/935,400
Claims 2, 11, 12, 15, and 18-20 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Shalitin, Den Hollander, Oh,
Lee, AAPA, Bisbee, and Tomoji. Final Act. 18-23.
Claims 5 and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Shalitin, Den Hollander, Oh, Lee,
AAP A, and DeMello. Final Act. 23-21.
Claims 1-20 are rejected on the ground of obviousness-type double
patenting over claim 1 of U.S. Patent 8,452,967 B2 and over claim 1 of U.S.
Patent 9,213,846 B2. Final Act. 4--8.
Our review in this appeal is limited only to the above rejections and
the issues raised by Appellant. Arguments not made are waived. See
Manual of Patent Examining Procedures (MPEP) § 1205.02; 37 C.F.R.
§§ 4I.37(c)(l)(iv), 4I.39(a)(l).
ANALYSIS
Rejection under§ 103 (a) of Claim 1
Issue 1: Does the Examiner err in finding the cited combination of
references teaches or suggests
wherein writeability or non-writeability of respective
sectors of a plurality of sectors of the flash storage device, as
determined through at least one attempted or actual write
operation, corresponds to values of a plurality of data bits of at
least a portion of the license information,
as recited in claim 1?
The Examiner relies on the combination of Den Hollander, Lee, and
AAP A to teach or suggest the limitation at issue. See Ans. 3; Final Act. 10-
12.
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Application 14/935,400
Appellant disputes the Examiner's factual findings. Appellant argues
Den Hollander does not teach writeability of respective sectors because "it is
not particularly relevant to ... Den Hollander ... where the encoded data
is stored. Rather, such data may be stored in 'sectors[,]' but ... Den
Hollander ... [does not] discuss the particular sectors that may be used."
Appeal Br. 9; see Reply Br. 2-3.
We are unpersuaded of Examiner error because Appellant's argument
that Den Hollander does not teach writeability of respective sectors is not
responsive to the Examiner's factual findings, which rely on the combined
teachings of Den Hollander, Lee, and AAPA. See Ans. 3; Final Act. 10-12.
The Examiner finds, and we agree, that AAP A and Lee, in combination with
Den Hollander, teaches or suggests writeability of sectors. Id. In particular,
the Examiner relies on AAP A and Lee for teaching or suggesting the argued
writeability or non-writeability and Hollander for teaching sectors such that
the combination of the references teaches or suggests the disputed limitation,
not Hollander standing alone. Id.
Appellant next argues "the applied art simply do not disclose, teach,
or suggest any technology for testing or otherwise determining 'writeability
or non-writeability' of any sector 'through at least one attempted or actual
write operation[.]"' Appeal Br. 9 (brackets in original).
The Examiner responds by finding that AAP A teaches this limitation
because AAP A teaches that a sector becomes unusable after approximately
one million writes and "it is determined the sector is writeable for every
attempt up to the approximately one millionth write where it is determined
the sector is no longer usable/writeable." Ans. 4. The Examiner notes" it is
at least implicitly determined the sector is writeable for every attempt up to
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the approximately one millionth write where it is at least implicitly
determined the sector is no longer usable/writeable." Supp. Ans. 4.
Appellant responds that "the Supplemental Answer did not provide
the [necessary] 'articulated reasoning"' because "the examiner did not point
to any specific portion of any reference for the claimed the determination or
determining referred to [in] the 'determined' portion of this claim
recitation." Reply Br. 4.
We are unpersuaded of Examiner error because Appellant fails to
specifically address the Examiner's finding that AAP A implicitly determines
the sector is writeable or unwriteable as it transitions from "the
approximately one millionth write" to the following write "where it is at
least implicitly determined the sector is no longer usable/writeable." Supp.
Ans. 4. "The question under [35 U.S.C. § 103(a)] is not merely what the
references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made." Merck & Co. v.
Biocraft Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (emphasis
added) (quoting In re Lamberti, 545 F.2d 747, 750 (Fed. Cir. 1976); see also
MPEP § 2123. We agree with the Examiner's finding that AAPA's
discussion of a writeability threshold of one million writes teaches, or at
least suggests, determining writeability or non-writeability of respective
sectors through at least one attempted or actual write operation, as recited in
claim 1. See Spec. ,r 13.
For the reasons discussed, we sustain the Examiner's 35 U.S.C.
§ 103(a) rejection of claim 1. We also sustain, for similar reasons, the
Examiner's§ 103(a) rejection of independent claims 11 and 16, which are
only argued nominally separately from claim 1. See Appeal Br. 14--15.
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Dependent claims 3, 5-8, 10, 12-15, and 17-20, which either are not argued
separately or are only argued nominally, fall with their respective
independent claims. See Appeal Br. 12-16.
Rejection under§ 103 (a) of Claim 2
Issue 2: Does the Examiner err in finding the combination of
Shalitin, Den Hollander, Oh, Lee, AAP A, Bisbee, and Tomoji teaches or
suggests "reading the portion of the license information from the flash
storage device by performing at least one write operation to each of multiple
sectors of the plurality of sectors," as recited in claim 2?
The Examiner relies primarily on the combination of Den Hollander,
Bisbee, and Tomoji to teach the limitation at issue. Final Act. 29-30. In
interpreting claim 2, the Examiner concludes that the claimed write
operation is "considered extra-solution activity" because the claim does not
specify "any details regarding the write operation." See Final Act. 18-19.
On that basis, the Examiner indicates the extra-solution portion need not be
given patentable weight in the interpretation of claim 2. Id.
Appellant argues that the Examiner does not provide support for the
conclusion that the omitted recitation is "'extra-solution activity' [and]
would be per se obvious" and asserts the Examiner must consider all words
in the claim. Appeal Br. 11 (citing MPEP § 2143.03).
We find Appellant's argument persuasive. Extra-solution or post-
solution activity is generally discussed in the context of determining
patentable subject matter under 35 U.S.C. § 101. See Bilski v. Kappas, 561
U.S. 593, 610-11 (2010). We are aware ofno legal basis premised on post-
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solution activity, for ignoring specific limitations when interpreting the
claim to determine obviousness under 35 U.S.C. § 103(a).
Accordingly, on this record we do not sustain the Examiner's
35 U.S.C. § 103(a) rejection of claim 2.
Rejection under§ 103 (a) of Claim 9
Issue 3: Does the Examiner err in finding the combination of
Shalitin, Den Hollander, Oh, Lee, and AAP A teaches or suggests "wherein a
writeable sector of the plurality of sectors represents a value of 'one' for a
particular data bit of the plurality of data bits and a non-writeable sector of
the plurality of sectors represents a value of 'zero' for another data bit of the
plurality of data bits," as recited in claim 9?
The Examiner finds Den Hollander teaches the limitation at issue.
Specifically, the Examiner relies on Den Hollander's discussion of a
recorded pattern consisting "of a sequence of first areas 13, interleaved by
second areas 14" wherein "[ t ]he first areas 13 and the second areas 14 are
present along a recording track 15, and correspond respectively to the logical
values 1 and 0, or vice-versa." Final Act. 17 (citing Den Hollander ,r 51).
Appellant argues "Den Hollander's paragraph [0051] does not refer to
a 'sector[,]' much less a 'writeable" or 'non-writeable' or sectors, but
instead "refers to 'areas' ... , [which] are not sectors." Appeal Br. 13.
The Examiner, in tum, revises the rejection to rely on the combination
of Den Hollander, AAP A, and Lee to teach the disputed limitation and
specifically finds that AAP A and Lee teach a writeable sector. Ans. 5---6. In
response, Appellant argues "the Examiner has not addressed the fact that
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Application 14/935,400
'areas of the recording track' [in Den Hollander] are not ... sectors."
Reply 6-7.
We are unpersuaded of Examiner error because Appellant's argument
distinguishing Den Hollander is not responsive to the Examiner's factual
findings, which rely on the combined teachings of Den Hollander AAP A,
and Lee. See Ans. 5---6.
We, therefore, sustain the Examiner's 35 U.S.C. § 103(a) rejection of
claim 9. Appellant only nominally argues claim 10 separately, noting that
"[t]he rejection of claim 10 appears to mirror the rejection of claim 9 except
for the different logical values for 'writeable' or 'non-writeable' sectors."
Appeal Br. 14. We, therefore, sustain the rejection of claim 10 for reasons
similar to those provided for claim 9.
Non-Statutory Double Patenting Rejection
Appellant does not challenge the Examiner's non-statutory double-
patenting rejection. Rather, Appellant requests "that the double patenting
rejections be held in abeyance until the Office is otherwise ready to allow
this application." Appeal Br. 6. The Examiner, however, dispels any
suggestion that the double-patenting rejection is not an issue for
consideration by asserting that "[ e ]very ground of rejection set forth in the
Final Rejection Office action dated November 02, 2016 from which the
appeal is taken is being maintained." Ans. 3. Despite being on notice that
the double-patenting rejection is not being held in abeyance, Appellant does
not challenge the rejection in the Reply Brief. Nor has Appellant filed a
terminal disclaimer as ofNovember 1, 2018.
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Because Appellant presents no arguments pertaining to this pending
obviousness double patenting rejection (see generally Appeal Br.), we
summarily sustain this rejection. See MPEP § 1205.02 ("If a ground of
rejection stated by the examiner is not addressed in the appellant's brief, that
ground of rejection will be summarily sustained by the Board.).
Accordingly, we summarily sustain the Examiner's non-statutory
double-patenting rejection of claims 1-20.
DECISION
We affirm the Examiner's decision to reject claims 1, 3, and 5-20
under 35 U.S.C. § 103(a).
We reverse the Examiner's decision to reject claim 2 under 35 U.S.C.
§ 103(a).
We affirm the Examiner's decision to reject claims 1-20 on the
ground of obviousness-type double patenting.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's decision rejecting
claims 1-20. See 37 C.F.R. § 4I.50(a)(l).
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).
AFFIRMED
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