Ex Parte Chen

Patent Trial and Appeal Board

Sep 16, 2013

11717236 (P.T.A.B. Sep. 16, 2013)

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.
11/717,236 03/13/2007 Richard Chen ITL.1561US (P25618) 8762
21906 7590 09/16/2013
TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
BROWN, ANTHONY D
ART UNIT PAPER NUMBER
2433
MAIL DATE DELIVERY MODE
09/16/2013 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 RICHARD CHEN
____________________

Appeal 2011-011810
Application 11/717,236
Technology Center 2400
____________________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/717,236

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STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Exemplary Claim
Exemplary independent claim 1 under appeal, with emphasis added to
the disputed portion of the claim, reads as follows:

1. A computer system comprising:
a trusted platform module; and
a pre-boot environment theft controller to disable booting
if said theft controller is separated from said computer system,
said theft controller coupled to said module, said module
storing a security certificate for said theft controller.

Examiner’s Rejections
(1) The Examiner rejected claims 1-3, 6-10, and 13 as being
unpatentable under 35 U.S.C. § 103(a) over Lee (US 2006/0010317 A1) and
Cromer (US 2005/0141717 A1).1 Ans. 3-7.
(2) The Examiner rejected dependent claims 4, 5, 11, and 12 as being
unpatentable under 35 U.S.C. § 103(a) over Lee, Cromer, and Rozas (US
2005/0132122 A1).2 Ans. 7-9.

1 Separate patentability is not argued for claims 2, 3, 6, 8-10, and 13, and
Appellant relies on the arguments presented for claim 1 with respect to
claims 2, 3, 6-10, and 13 (see App. Br. 11). We select claim 1 as
representative of the group of claims rejected under § 103(a) over Lee and
Cromer (claims 1-3, 6-10, and 13), pursuant to our authority under 37 C.F.R.
§ 41.37(c)(1)(iv). Accordingly, our analysis herein will only address
representative claim 1 with regard to the rejection over Lee and Cromer.
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Appellant’s Contentions
(1) With regard to independent claims 1 and 7, rejected under 35
U.S.C. § 103(a) over Lee and Cromer, Appellant principally argues (see
App. Br. 10-11; Reply Br. 1-2) that:
(a) the cited references fail to provide a theft controller with a
trusted platform module that includes a security certificate for the
theft controller (App. Br. 11);
(b) the motivation for combining Lee and Cromer provided by
the Examiner is different than the motivation Appellant had in putting
together the recited subject matter (App. Br. 10-11); and
(c) the prior art provides no rationale, reason, or suggestion to
provide a security certificate for a theft controller (Reply Br. 1).
(2) With regard to claims 4, 5, 11, and 12, rejected under 35 U.S.C.
§ 103(a) over Lee, Cromer, and Rozas, Appellant relies (App. Br. 11) on the
arguments made with respect to claims 1 and 7.
Principal Issue on Appeal
Based on Appellant’s arguments in the Appeal Brief (App. Br. 10-11)
and the Reply Brief (Reply Br. 1-2), the following principal issue is
presented on appeal:
Did the Examiner err in rejecting representative claim 1 as being
obvious because Lee and Cromer are not properly combinable, and/or the

2 Separate patentability is not argued for claims 4, 5, 11, and 12, and
Appellant relies on the arguments presented for claims 1 and 7 with respect
to claims 4 and 5 (depending from claim 1), and with respect to claims 11
and 12 (depending from claim 7) (see App. Br. 11). Accordingly, we will
decide the appeal of claims 4, 5, 11, and 12 on the same basis as for claims 1
and 7 from these claims respectively depend.
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combination of Lee and Cromer fails to teach or suggest a computer system
having a trusted platform module and a theft controller coupled thereto, the
module storing a security certificate for the theft controller, as recited in
representative claim 1?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions in the Appeal Brief (App. Br. 10-11) and the Reply Brief (Reply
Br. 1-2) that the Examiner has erred. We disagree with Appellant’s
conclusions. With regard to representative claim 1, we concur with the
conclusions reached by the Examiner, and we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken (Ans. 3-7), as well as the Advisory Action mailed October
28, 2010, and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellant’s Appeal Brief (Ans. 9-11). We highlight
and amplify certain teachings and suggestions of the references, as well as
certain ones of Appellant’s arguments as follows.
We agree with the Examiner’s findings with respect to the individual
references, and with the Examiner’s determination that it would have been
obvious to combine the references based on the rationale set forth by the
Examiner (Ans. 3-11), including that Cromer teaches what is missing from
Lee, i.e., a theft controller coupled to a trusted platform module, the module
storing a security certificate for the theft controller.
We note that each reference cited by the Examiner must be read, not
in isolation, but for what it fairly teaches in combination with the prior art as
a whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (one
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cannot show non-obviousness by attacking references individually where the
rejections are based on combinations of references) (citation omitted).
Appellant makes arguments with regard to claim 1 (App. Br. 10-11)
concerning the individual shortcomings in the teachings of each of the
applied references to Lee and Cromer. We have carefully reviewed these
arguments, however, and they are not convincing of the non-obviousness of
the claimed invention set forth in independent and representative claim 1.
For example, Appellant criticizes Cromer for not teaching or suggesting a
theft controller (App. Br. 11), when the Examiner has relied upon the
combination of Lee and Cromer to teach this feature (Ans. 4-5 and 9-11).
Appellant criticizes Cromer for teaching a removable device instead of a
theft controller (Reply Br. 1), when the Examiner has relied upon Lee (Ans.
4 citing Lee’s ¶¶ [0053] and [0058]) as teaching a theft controller (see Ans.
4, 5, and 10), and Cromer as teaching a removable device 330 (see Fig. 3)
that equates to a theft controller (Ans. 10).
Appellant’s argument (Reply Br. 1) that there is no teaching or
suggestion to provide a security certificate for a theft controller in a
removable device is not persuasive in light of the Examiner’s cogent
reasoning of providing “a digital certificate based theft control system to
render a theft controlled digital asset” (Ans. 4-5).
As long as some motivation or suggestion to combine the references is
provided by the prior art taken as a whole, the law does not require that the
references be combined for the precise reasons contemplated by the
inventor. In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992) (citing In re
Kronig, 539 F.2d 1300, 1304 (CCPA 1976)). In other words, some
motivation to combine is necessary, but it does not have to be the same
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motivation cited by Appellants. “Under the correct [obviousness] analysis,
any need or problem known in the field of endeavor at the time of invention
and addressed by the patent can provide a reason for combining the elements
in the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420
(2007) (italicized emphasis added). In this light, Appellant’s argument
(App. Br. 10-11) that the motivation for combining Lee and Cromer
provided by the Examiner is different than Appellant’s is not persuasive.
We sustain the rejection of representative claim 1, as well as claims 2,
3, 6-10, and 13 grouped therewith under § 103(a) over Lee and Cromer for
the reasons provided by the Examiner (Ans. 3-7 and 9-11), and because
Cromer discloses a trusted platform module and a security certificate (see
Cromer, Fig. 3 and ¶ [0026]). We sustain the rejection of claims 4, 5, 11,
and 12 under § 103(a) over Lee, Cromer, and Rozas for the reasons provided
by the Examiner (Ans. 7-9), and for the same reasons provided as to claims
1 and 7 from which claims 4, 5, 11, and 12 respectively depend.
In view of the foregoing, we conclude that the inventions recited in
claims 1-13 have not been shown to be patentably distinguishable from the
combined teachings of the applied prior art.

CONCLUSION
The Examiner has not erred in determining that the combination of
Lee and Cromer teaches or suggests the computer system having a trusted
platform module and theft controller for storing a security certificate, as
recited in representative claim 1, and as similarly recited in remaining
independent claim 7.

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DECISION
The Examiner’s rejections of claims 1-13 under 35 U.S.C. § 103(a)
are 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

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