Ex Parte Dayka et al

Patent Trial and Appeal BoardMar 7, 2017

12635830 (P.T.A.B. Mar. 7, 2017)

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. 12/635,830 12/11/2009 John C. Dayka POU920090059US1 1088 46429 7590 03/09/2017 C ANTOR mT RT TRN T T P-TRM POT TOHKFFPSTF EXAMINER 20 Church Street HASSAN, AURANGZEB 22nd Floor Hartford, CT 06103 ART UNIT PAPER NUMBER 2184 NOTIFICATION DATE DELIVERY MODE 03/09/2017 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): usptopatentmail@cantorcolbum.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN C. DAYKA and TAMAS VISEGRADY Appeal 2016-004268 Application 12/635,8301 Technology Center 2100 Before JEAN R. HOMERE, JEFFREY S. SMITH, and JON M. JURGOVAN, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 10-15, which constitute all of the claims pending in this appeal. App. Br. 1. Claims 1—9 have been canceled. Claims App’x. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the real party in interest as International Business Machines Corp.App.Br. 1. Appeal 2016-004268 Application 12/635,830 Appellants ’ Invention Appellants invented an entropy generation system (200) that generates entropy streams in response to receiving various inputs. Spec. 127, Fig. 2. In particular, upon detecting an input value from a sample source (accumulator/timer 204), an aggregator (206) provides a first and second signals to wake up a first and second jitter samplers (202) respectively, each of which samples the input value at a different time and sampling frequency. Subsequently, the aggregator (206) receives the difference between each sampled value and an expected value. The aggregator (206) then causes each sampler to go to sleep when the sampler is not sampling. Id. || 28—33. Illustrative Claim Independent claim 10 is illustrative, and reads as follows: 10. A system for providing an entropy seed, the system comprising: a sample source that provides a value; two or more samplers coupled to the sample source, the first sampler having a first sampling frequency and the second sampler having a second sampling frequency different than the first sampling frequency, each of the two or more samplers performing a sampling operation at different times; and an aggregator that causes the samplers to go into a sleep mode when not sampling and that receives a difference between the value sampled by each sampler and an expected value- wherein the first and second samplers are woken at different times by different signals received from the aggregator. 2 Appeal 2016-004268 Application 12/635,830 Rejections on Appeal Claims 10-14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Goren(US 2004/0240478 Al; pub. Dec. 2, 2004) and Camnitz (US 2003/0081667 Al; pub. May 1, 2003). Final Act. 2-4. Claim 15 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Goren, Camnitz, and Clements (US 2005/0203979 Al; pub. Sep. 15, 2005). Final Act. 4~5. ANALYSIS We consider Appellants’ arguments seriatim, as they are presented in the Appeal Brief, pages 3-4, and the Reply Brief, pages 2—3.2 We have reviewed the Examiner’s rejection in light of Appellants’ arguments. We are unpersuaded by Appellants’contentions. Except as otherwise indicated hereinbelow, we adopt as our own the findings and reasons set forth in the Examiner’s Answer in response to Appellants’ Appeal Brief. Ans. 2—5, Final Act. 2—5. However, we highlight and address specific arguments and findings for emphasis as follows. Regarding the rejection of claim 10, Appellants argue that the combination of Goren and Camnitz does not teach or suggest different 2 Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed August 4, 2015), the Reply Brief (filed March 15, 2016), and the Answer (mailed January 15, 2016) for their respective details. We have considered in this Decision only those arguments Appellants actually raised in the Briefs. Any other arguments Appellants could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2012). 3 Appeal 2016-004268 Application 12/635,830 signals received from an aggregator. App. Br. 3, Reply Br. 2. In particular, Appellants argue that although the splitter disclosed in Camnitz can generate different signals, it does not teach the aggregator because it does not cause the samplers to go into a sleep mode when they are not sampling, and it does not receive the difference between the value sampled and the expected value. Id. Further, Appellants argue that Goren is inappropriate because it is not directed to generating an entropy seed, as required by the claim. Id. These arguments are not persuasive. At the outset, we note that claim 10 recites in relevant-parts “a system for providing an entropy” and “the first and second samplers are woken at different times by different signals received from the aggregator.” First, we echo the Examiner’s finding that although the preamble of the claim recites the “system for providing an entropy,” the body of the claim nowhere references the entropy, or particularly details how such entropy is generated. Ans. 5. Accordingly, we agree with the Examiner that because the entropy recitation does not breathe life into the body of the claim, such a recitation merely held in the preamble of the claim is not entitled to any patentable weight. Id? 3 “In general, a preamble limits the [claimed] invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention. See, e.g., Electro Sci. Indus, v. Dynamic Details, Inc., 307 F.3d 1343, 1348 (Fed. Cir. 2002); Rapoportv. Dement, 254 F.3d 1053, 1059 (Fed. Cir. 2001); Pitney Bowes, 182 F.3dat 1306. 4 Appeal 2016-004268 Application 12/635,830 Second, we note that although the claim does require two different signals received from the aggregator, Appellants failed to address the specific findings made by the Examiner regarding how the prior art of record teaches the disputed limitations. In particular, the Examiner relies upon Goren’s generator (310) to teach a controller that provides a signal to wake up a sampler (304). Final Act. 2—3 (citing Goren | 57, Fig. 3). Further, the Examiner relies uponCamnitz’s disclosure of a plurality of samplers, each receiving a different signal at a different time. Id. at 3 (citing Goren || 34, 64). Additionally, the Examiner concludes that one of ordinary skill in the art would have been motivated to combine the teachings of Goren and Camnitz to yield the disputed limitations because the proposed modification would enhance jitter analysis. Id. On the record before us, the Examiner has established a prima facie case of obviousness against the claims on appeal.4 Id. Appellants, in contrast, have not particularly disputed any of the specific findings or the rationale to combine the references as set forth by the Examiner. Because Appellants’ arguments referenced above are directed to solely to Camnitz’s splitter, and nowhere address the cited findings of Goren 4 The P TAB carries its procedural burden of establishing a prima facie case when its rejection satisfies 35 U.S.C. § 132, in “notify[ing] the applicant. .. [by] stating the reasons for [its] rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” 35 U.S.C. § 132. This section‘“is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection. ’” In re Jung 651 F ,3d 1356, 1362 (Fed. Cir. 2011) citing Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). In the instant case, the Examiner has made reasonable, informative findings supported by evidence from the cited references. Appellants have not specifically rebutted these findings. 5 Appeal 2016-004268 Application 12/635,830 and Camnitz, these arguments are not responsive to the Examiner’s afore cited findings. Appellants are reminded that a general allegation as to the purported benefits of the claimed invention, and a general discussion of the prior art relied upon by the Examiner in the rejection are not tantamount to a responsive argument. Such a response to the Examiner’s findings is insufficient to persuade us of Examiner error, as mere attorney arguments and conelusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); Ex parteBelinne,No. 2009-004693, slip op. at 7—8 (BPAI Aug. 10, 2009) (informative); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”); cf. In re Baxter TravenolLabs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”) Accordingly, we are not persuaded of error in the Examiner’s rejection of claim 10 over the combination of Goren and Camnitz. Because Appellants do not make separate arguments for patentability of claim 11—15 above, the cited claims fall with claim 10. See 37 C.F.R. § 41.37(c)(l)(iv). 6 Appeal 2016-004268 Application 12/635,830 DECISION For the above reasons, we affirm the Examiner’s obviousness rejections of claims 10-15. 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 7