Ex Parte Chen et al

Patent Trial and Appeal Board

Apr 21, 2016

11558360 (P.T.A.B. Apr. 21, 2016)

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.
11/558,360 11/09/2006 Iue-Shuenn Chen 3875.1310001 2099
26111 7590 04/22/2016
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
HOLMES, ANGELA R
ART UNIT PAPER NUMBER
2497
MAIL DATE DELIVERY MODE
04/22/2016 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 IUE-SHUENN CHEN and XUEMIN CHEN1
____________________

Appeal 2014-005713
Application 11/558,360
Technology Center 2400
____________________

Before CARLA M. KRIVAK, AMBER L. HAGY, and
AARON W. MOORE, Administrative Patent Judges.

HAGY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 5–8, 12–15, and 19–21, which are all claims currently pending.2
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellants identify Broadcom Corporation as the real party in interest.
(App. Br. 3.)
2 Claims 3, 10, and 17 were canceled in an amendment dated May 21, 2012.
Claims 2, 4, 9, 11, 16, and 18 were canceled in an amendment dated October
15, 2012.
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Application 11/558,360

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Introduction
According to Appellants, the claims are directed to “secure
communication systems,” and specifically to “a method and system for
improved fault tolerance in distributed customization controls using
nonvolatile memory.” (Spec. ¶ 4.)

Exemplary Claim
Claim 1, reproduced below, is exemplary of the claimed subject
matter:
1. A method for processing information in a communication
system, the method comprising:
encrypting an input control signal;
mapping said encrypted input control signal to a plurality
of input logic circuits;
routing said mapped encrypted input control signal via at
least a portion of a plurality of independent processing paths
between each of said plurality of input logic circuits and an
output logic circuit, wherein each of said plurality of independent
processing paths comprises at least one logic circuit;
combining outputs of said at least a portion of said
plurality of independent processing paths in said output logic
circuit to re-generate said encrypted input control signal; and
decrypting said encrypted input control signal after said
combining.

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REJECTION3
Claims 1, 5–8, 12–15, and 19–21 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the enablement requirement.
(Final Act. 2–5.)

ISSUE
Whether the Examiner erred in finding the claims fail to comply with
the enablement requirement of 35 U.S.C. § 112, first paragraph.

ANALYSIS
We are persuaded the Examiner erred in asserting that claims 1, 5–8,
12–15, and 19–21 do not comply with the enablement requirement of 35
U.S.C. § 112, first paragraph. (App. Br. 8–20; Reply Br. 2–5.) When
rejecting a claim for lack of enablement, the PTO bears the initial burden of
setting forth a reasonable explanation as to why the scope of the claim is not
adequately enabled by the description provided in the specification. In re
Wright, 999 F.2d 1557, 1561–62 (Fed. Cir. 1993). The test for compliance
with the enablement requirement is whether the disclosure, as filed, is
sufficiently complete to enable one of ordinary skill in the art to make and
use the claimed invention without undue experimentation. In re Wands, 858
F.2d 731, 737 (Fed. Cir. 1988). Factors that may be considered in
determining whether a disclosure would require undue experimentation
include (1) the quantity of experimentation necessary, (2) the amount of

3 The Examiner has withdrawn the rejection of claims 8 and 12–14 under 35
U.S.C. § 112, second paragraph, as being indefinite. (Ans. 2.) The
Examiner has also withdrawn the rejection of claims 5–7 under 35 U.S.C.
§ 112, fourth paragraph, as being in improper dependent form. (Id.)
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direction or guidance presented, (3) the presence or absence of working
examples, (4) the nature of the invention, (5) the state of the prior art, (6) the
relative skill of those in the art, (7) the predictability or unpredictability of
the art, and (8) the breadth of the claims. Id.
In concluding there is no enabling disclosure, the Examiner relies on
two assertions: (1) “there is no definition of what the input control signal is
or what may be required to encrypt or decrypt it”; and (2) “there is no
description of how the mapping or control function may be concealed or
what fault tolerance is” and “[t]he specification provides no direction and
there are no examples.” (Ans. 3) Based on these two assertions, the
Examiner finds “it would require undue experimentation to implement the
claimed invention.” (Id.) In making this finding, however, the Examiner
has not addressed the Wands factors or otherwise explained why one of
ordinary skill in the art would have to engage in undue experimentation to
practice the claimed invention.
In addition, Appellants have made counter-arguments that the
Examiner has not responded to on appeal. (See Ans. 2–3.) In particular, as
to the Examiner’s first assertion, Appellants point out that “any number of
encryption/decryption methods are available to one skilled in the art.” (App.
Br. 10.) We agree, and note the Examiner has provided no explanation of
why one of ordinary skill in the art would have to engage in “undue
experimentation” to perform well-known acts of “encrypting” or
“decrypting” an “input control signal.” Although the Specification does not
provide a “definition” of an “input control signal” or provide examples of
encryption or decryption algorithms, “not everything necessary to practice
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the invention need be disclosed” and “[i]n fact, what is well-known is best
omitted.” In re Buchner, 929 F.2d 660, 661 (Fed. Cir. 1991).
As to the Examiner’s second assertion, Appellants point out that the
additional features challenged by the Examiner—“fault tolerance” and
“conceal[ing]” the “mapping or control function”—are not recited in the
claims, and thus need not be enabled. (App. Br. 10–11.) We agree.
For the foregoing reasons, we conclude the Examiner has failed to
establish a prima facie case of non-enablement of claims 1, 5–8, 12–15, and
19–21, and we reverse the rejection.

DECISION
For the above reasons, the Examiner’s rejection of claims 1, 5–8, 12–
15, and 19–21 is reversed.

REVERSED