Ex Parte Bhatt et al

Patent Trial and Appeal BoardNov 28, 2012

10988913 (P.T.A.B. Nov. 28, 2012)

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. 10/988,913 11/15/2004 Dhiraj Bhatt ITL.1681US (P19891) 2340 21906 7590 11/28/2012 TROP, PRUNER & HU, P.C. 1616 S. VOSS ROAD, SUITE 750 HOUSTON, TX 77057-2631 EXAMINER LE, CANH ART UNIT PAPER NUMBER 2439 MAIL DATE DELIVERY MODE 11/28/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte DHIRAJ BHATT and ERIC AUZAS _____________ Appeal 2010-005260 Application 10/988,913 Technology Center 2400 ______________ Before ROBERT E. NAPPI, BRYAN F. MOORE, and MICHAEL J. STRAUSS, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005260 Application 10/988,913 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-3, 6-13, and 19-26. App. Br. 2. Claims 4-5 and 14-18 are canceled. Id. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. INVENTION The invention is directed to security verification and, more particularly, to preventing software modification via secure booting. See Spec. ¶ [0001]. Claims 1 is representative of the invention and reproduced below: 1. A system, comprising: a memory including a unique identifier that uniquely identifies the memory; and a package communicatively coupled to the memory and including: a processor, an identifier storage to store the unique identifier, said storage being incapable of being reprogrammed, and a boot storage including instructions to control booting of the processor based on the unique identifier in the identifier storage. REFERENCES Schwartz US 2003/0084316 A1 May 1, 2003 Casto US 6,791,157 B1 Sep. 14, 2004 Rosenbloom US 2004/0221044 A1 Nov. 4, 2004 Scott III US 2005/0267949 A1 Dec. 1, 2005 Tahan US 2005/0283601 A1 Dec. 22, 2005 Merkin EP 0656587 A1 June 7, 2005 Appeal 2010-005260 Application 10/988,913 3 REJECTION AT ISSUE Claims 1, 3, and 22 are rejected as indefinite under 35 U.S.C. § 112, second paragraph, for failing to particularly point out and distinctly claim the subject matter. Ans. 5-6. Claims 1-2, 6-7, 19-22, and 26 are rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of Casto and Schwartz. Ans. 6-12. Claim 3 is rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of Casto, Schwartz, and Rosenbloom. Ans. 12. Claims 8 and 23 are rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination Casto, Schwartz, and Merkin. Ans. 13-14. Claims 9-10 and 13 are rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of Schwartz and Casto. Ans. 15-16. Claims 11-12 are rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of Schwartz, Casto, and Tahan. Ans. 16-18. Claims 24-25 are rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of Schwartz, Casto, and Scott III. Ans. 18-19. Appeal 2010-005260 Application 10/988,913 4 ISSUES1 1. Did the Examiner err in finding that there is no antecedent basis for the recitation of “storage” in claim 1? 2. Did the Examiner err in finding that claim 3 is indefinite because of the limitation to “a range from about 32 bits to about 128 bits [?]” 3. Did the Examiner err in finding claim 22 is indefinite because the limitation to “one time programmable storage” cannot include an EEPROM which is capable of being reprogrammed? 4. Did the Examiner err in finding that Casto and Schwartz collectively teach the following limitation: “a package . . . including: a processor, an identifier storage to store the unique identifier, said storage being incapable of being reprogrammed, and a boot storage” (independent claim 1)? 5. Did the Examiner err in finding that Casto and Swartz can be combined because the combination would be impractical? 1 We do not consider Appellants’ arguments regarding claim 1, presented for the first time in the Reply Brief (see Reply Br. 3-4 – specifically, the third and fifth paragraph on page 3 and the first full paragraph of page 4), since these arguments are untimely. “Any bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived.” Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (internal citation omitted) (informative); see Optivus Tech., Inc. v. Ion Beam Appl’ns S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by an appellant in its opening brief . . . is waived.”) (citations and quotation marks omitted); see also Fuji Photo Film Co. v. Jazz Photo Corp., 394 F.3d 1368, 1375 n.4 (Fed. Cir. 2005) (noting that arguments first raised in the reply brief and not properly raised in the opening brief are not addressed). Appeal 2010-005260 Application 10/988,913 5 ANALYSIS 35 U.S.C. § 112 – second paragraph Claims 1, 3, and 22 Claim 1 We are persuaded that the Examiner erred in asserting that aspects of claim 1 lack antecedent basis, and thus do not meet the definiteness requirement of 35 U.S.C. § 112, second paragraph. See App. Br. 11. The Examiner finds that there is no antecedent basis for the recitation of “storage” in claim 1. Ans. 20. Appellants suggest that the term “identifier storage” in claim 4 serves as a proper antecedent basis for “storage” stating “[t]here is no confusion between an identifier storage and the subsequent reference to that storage as said storage.” App. Br. 11. We note that claim 1 also recites “boot storage,” however, the recitation of “boot storage” is subsequent to the recitation of “storage.” There is no storage other than “identifier storage” recited prior to the generic recitation of “storage.” Therefore, one of ordinary skill can ascertain Appellants’ intended meaning of claim 1. See Energizer Holdings, Inc. v. Int'l Trade Comm'n, 435 F.3d 1366 (Fed. Cir. 2006) (holding that “anode gel” provided by implication the antecedent basis for “zinc anode”). Accordingly, we do not sustain the rejection of claim 1. Claim 3 The Examiner finds that claim 3 is indefinite in the limitation “a range from about 32 bits to about 128 bits” because the Specification does not define the term, nor does it provide a standard for ascertaining the requisite Appeal 2010-005260 Application 10/988,913 6 degree. Ans. 21. Appellants argue that “[o]ne skilled in the art would have no difficulty with this.” App. Br. 11. We agree with the Appellants. We acknowledge that the phrase “at least about 160,000” has been held to be indefinite based on a specific set of facts, see Amgen Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1218 (Fed. Cir. 1991). However, the Amgen court specifically “caution[ed] that [its] holding that the term ‘about’ renders indefinite claims 4 and 6 should not be understood as ruling out any and all uses of this term in patent claims. It may be acceptable in appropriate fact situations, even though it is not here.” Id. (citation omitted); see also Modine Manufacturing Co. v. United States International Trade Commission, 75 F.3d 1545 (Fed. Cir. 1996). Here, the Specification states that [i]n some implementations, where a relatively small amount of information (e.g., a single identifier) is to be stored in ID storage 140, it may be around 32 bits in size. Slightly larger sizes for ID storage 140 are also possible, such as 128 bits or 256 bits. In some implementations, where a larger amount of information (e.g., an identifier and other information, such as a cryptographic signature) is to be stored, ID storage may be larger (e.g., around 160 bits to several kilobytes in size). Spec. ¶ [0015]. The Examiner has not explained why the specific facts of this case cause the scope of the claims to be indefinite. Therefore, we cannot sustain the rejection of claim 3 under 35 U.S.C. § 112, second paragraph. Claim 22 Claim 22 further recites that the “one time programmable storage includes an electrically erasable programmable read only memory (EEPROM) or a group of fuses.” The Examiner’s position is that “one time Appeal 2010-005260 Application 10/988,913 7 programmable storage” is indefinite because “[i]t is unclear how one time programmable storage can include EEPROM because the one time programmable storage is incapable of being reprogrammed.” Ans. 21 (emphasis omitted). Appellants argue “an EEPROM can be modified so that it is no longer reprogrammable.” App. Br. 11 (citing Spec. ¶¶ [0003], 0014]). We are not persuaded by this argument. Appellants cite to the Specification paragraphs [0003] and [0014] for the proposition that “an EEPROM can be modified so that it is no longer reprogrammable.” App. Br. 11. However, those portions of the specification do not explicitly state that EEPROM can be modified or how it would be modified such that it is no longer reprogrammable. Additionally, claim 22 does not recite that the claimed EEPROM has been modified. The Examiner contends that according to a definition “EEPROM” of Microsoft Computer Dictionary, Fifth Edition, 2002, page 186, an EEPROM is A type of Acronym for electrical erasable programmable read only memory. A type of EEPROM that can be erased with an electrical signal. It is useful for stable storage for long periods without electricity while still allowing reprogramming. EEPROMs contains less memory than RAM, take longer to reprogram, and can be reprogrammed only a limited a number of times before wearing out. Ans. 21. In other words, an EEPROM can be reprogrammed. Appellants have not presented any evidence to show that the Examiner’s definition of EEPROM is incorrect or that the Specification imposes a different definition. We therefore affirm the rejection of claim 22 under 35 U.S.C. § 112, second paragraph. Appeal 2010-005260 Application 10/988,913 8 35 U.S.C. § 103(a) - Casto and Schwartz 1-2, 6-7, 19-22, and 26 Appellants present arguments only with respect to claim 1 thus the remaining pending claims fall with claim 1. Claim 1 recites “a package . . . including: a processor, an identifier storage to store the unique identifier, said storage being incapable of being reprogrammed, and a boot storage.” Appellants argue that Casto and Schwartz do not disclose this limitation. App. Br. 11. Specifically, Appellants argue that “Schwartz teaches an identifier security memory 42 which is plainly separate from the processor 22, as shown in Figure 1. While they are connected on the same motherboard 14 in Figure 1, there is no way they are within the same processor package.” Id. We are not persuaded by this argument. Casto explicitly teaches a “package” including a memory; a processor; storage being incapable of being reprogrammed; one-time programmable element such as a fuse. Casto, Fig. 2; see also Ans. 24. Appellants also argue Casto “has nothing whatsoever to do with booting or preventing erroneous boots.” App. Br. 11. However, the Examiner also relies on Schwartz. Schwartz further teaches a motherboard including boot storage, a processor and a memory. Schwartz [003], [006], and [014]; see also Ans. 24. The Examiner finds that the broadest reasonable interpretation of “package” encompasses a motherboard. We find there is ample support for the Examiner’s finding. Appellants do not identify any description in the original disclosure that provides additional guidance in construing this term, or that precludes the Examiner’s construction. Accordingly, and in view of the record presented, Appellants have not persuasively argued that the Appeal 2010-005260 Application 10/988,913 9 Examiner’s construction is unreasonable in view of, or inconsistent with, Appellants’ Specification. Thus, based on the portions of Casto and Schwartz discussed above, we agree with the Examiner that Casto and Schwartz collectively teach “a package . . . including: a processor, identifier storage to store the unique identifier, said storage being incapable of being reprogrammed, and a boot storage.” See Ans. 24. Appellants further argue that “[w]ith the claimed invention, the entire processor package would have to be removed and replaced. This would certainly be impractical and would remove both the processor and the boot storage which would serve no useful purpose.” App. Br. 11. This argument is not commensurate with the claim scope. The claims do not recite anything about the removability of the processor, the boot storage, or the package in general. Also, to the extent that Appellants suggest that the term package implies lack of removability, Appellants do not cite the Specification, a dictionary, or any other evidence to support such an assertion. SUMMARY Claims 2-3, 6-13, and 19-26 are not argued separately and therefore stand fall with claim 1. Thus, for the reasons stated above, we find no error in the Examiner’s decision to reject claims 1-3, 6-13, and 19-26. DECISION The Examiners decision to reject claims 1 and 3 under 35 U.S.C. § 112, second paragraph is reversed. The Examiners decision to reject claim 22 under 35 U.S.C. § 112, second paragraph is affirmed. The Examiner’s Appeal 2010-005260 Application 10/988,913 10 decision to reject claims 1-3, 6-13, and 19-26 under 35 U.S.C. § 103 is affirmed. 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