Ex Parte Delaney

Patent Trial and Appeal Board

Jan 9, 2017

11554673 (P.T.A.B. Jan. 9, 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.
11/554,673 10/31/2006 William P. Delaney 05-1267 5790
57299 7590
Kathy Manke
Avago Technologies Limited
4380 Ziegler Road
Fort Collins, CO 80525
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
01/11/2017 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):
kathy .manke @ broadcom. com
patent.info@broadcom.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM P. DELANEY
Appeal 2015-0000351
Application 11/554,6732
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 9-11, 15—22, 25, and 26.3 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellant’s Appeal Brief (“Br.,” filed
December 19, 2013) and the Examiner’s Answer (“Ans.,” mailed August 8,
2014) and Final Office Action (“Final Act.,” mailed May 17, 2013).
2 The inventor, William P. Delaney, is assumed to be the real party in
interest. See 37 C.F.R. § 41.37(c)(l)(i).
3 Claims 12—14, 23, 34, and 27 are withdrawn from consideration. See
Final Act. 1.
Appeal 2015-000035
Application 11/554,673
CLAIMED INVENTION
Appellant’s claimed invention “relates generally to distribution of
products and more specifically relates to improved distribution of model
variants of electronics products in a hub-based distribution environment”
(Spec. 11).
Claim 9, reproduced below, is the sole independent claim and
representative of the subject matter on appeal:
9. A method comprising:
manufacturing a product that includes a private key value
and a serial number, the product capable of being configured into
any of multiple sub-models;
generating, via a processor, encrypted authorization codes
for the product that are each determined as a function of the serial
number of the product, the private key value of the product, and
a sub-model indicator, each authorization code corresponding to
a different sub-model;
providing the product and authorization codes to a
customer; and
receiving an encrypted acknowledgment message
indicating that an authorization code has been used to configure
the product into a specific sub-model, the encrypted
acknowledgment message including the product serial number
and an indicator for the specific sub-model, the
acknowledgement message having been encrypted with a public
key value corresponding to the private key value included with
the product; and
decrypting the acknowledgment message via a processor,
based upon the private key value included with the product,
thereby determining the serial number and the sub-model
indicator of the specific sub-model.
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Appeal 2015-000035
Application 11/554,673
REJECTIONS4
Claims 9—11, 15—22, 25, and 26 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement.
Claims 9—11, 15—22, 25, and 26 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter that Appellant regards as the invention.
Claims 9, 15, 18—22, 25, and 26 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Chen et al. (US 7,552,341 B2, iss. June 23, 2009,
hereinafter “Chen”) and Prologo et al. (US 2006/0236097 Al, pub. Oct. 19,
2006, hereinafter “Prologo”).
Claims 10, 11, 16, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Chen, Prologo, and Coley et al. (US 2005/0251490 Al,
pub. Nov. 10, 2005, hereinafter “Coley”).
ANALYSIS
Enablement
The enablement requirement of § 112 demands that the patent
specification enable those skilled in the art to make and use the full scope of
the claimed invention without undue experimentation. Nat 7 Recovery
Techs., Inc. v. Magnetic Separation Systems, Inc., 166 F.3d 1190, 1195
(Fed. Cir. 1999). The enablement requirement, thus, ensures that the public
knowledge is enriched by the patent specification to a degree at least
commensurate with the scope of the claims. The scope of the claims must
be less than or equal to the scope of the enablement. The scope of
4 The rejection of claims 9-11, 15—22, 25, and 26 under 35 U.S.C. §101 has
been withdrawn (Ans. 13).
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Appeal 2015-000035
Application 11/554,673
enablement, in turn, is that which is disclosed in the specification plus the
scope of what would be known to one of ordinary skill in the art without
undue experimentation. Id.
“Whether undue experimentation is needed is not a single, simple
factual determination, but rather is a conclusion reached by weighing many
factual considerations.” In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
Some of these considerations, commonly referred to as “the Wands factors,”
include “(1) the quantity of experimentation necessary, (2) the amount of
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.
Here, in rejecting the claims under § 112, first paragraph, as non-
enabled, the Examiner simply asserts that under a broadest reasonable
interpretation, the claimed “product” could include any conceivable devices
or items, e.g., medical devices or automobile vehicles, which are “beyond
the scope of the ‘product’ defme[d] in [Appellant’s] [Specification” (Final
Act. 5—6; see also Ans. 13—14). The Examiner does not discuss any of the
Wands factors or otherwise explain why a person of ordinary skill in the art,
on reviewing Appellant’s Specification, would have needed to experiment
unduly in order to make and/or use Appellant’s claimed invention.
The Examiner has failed to establish a prima facie case of non­
enablement. Therefore, we do not sustain the Examiner’s rejection of
claims 9-11, 15—22, 25, and 26 under 35 U.S.C. § 112, first paragraph.
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Appeal 2015-000035
Application 11/554,673
Indefiniteness
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting claims 9—11, 15—22, 25, and 26 under 35U.S.C. § 112, second
paragraph (Br. 9-10). Referencing the limitation, “manufacturing a
product. . . capable of being configured into any of multiple sub-models,” as
recited in independent claim 9, the Examiner asserts that “the phrase ‘into
any’ renders the claim indefinite because it is unclear what the scope of the
limitation is.” (Final Act. 6).
We agree with Appellant that a person of ordinary skill in the art
would understand what is claimed when claim 9 is read in light of the
Specification, namely, that the product can be configured into one of
multiple sub-models for the product, e.g., a sub-model with minimal features
or a “deluxe” sub-model with full set of product features (Br. 9). Therefore,
we do not sustain the Examiner’s rejection of claims 9-11, 15—22, 25, and
26 under 35 U.S.C. § 112, second paragraph. See Orthokinetics, Inc. v.
Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test
for definiteness under 35 U.S.C. § 112, second paragraph is whether “those
skilled in the art would understand what is claimed when the claim is read in
light of the specification.”).
Obviousness
Independent Claim 9 and Dependent Claims 15, 18—22, 25, and 26
We are persuaded that the Examiner erred in rejecting independent
claim 9 under 35 U.S.C. § 103(a) because Chen, on which the Examiner
relies, fails to disclose or suggest a product that can be configured into any
one of a number of sub-models where multiple authorization codes are
generated for the product, with each authorization code corresponding to a
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Appeal 2015-000035
Application 11/554,673
different sub-model, i.e., “manufacturing a product that includes a private
key value and a serial number, the product capable of being configured into
any of multiple sub-models” and “generating . . . encrypted authorization
codes for the product that are each determined as a function of the serial
number of the product, the private key value of the product, and a sub-model
indicator, each authorization code corresponding to a different sub-model,”
as recited in claim 9 (Br. 10—13).
Chen is directed to a method for licensing software for use on a
particular computing device, and discloses that an unlocking code is
provided from a distribution service to the computing device (directly or via
a user), which unlocks the software or a portion of the software for use with
the associated computing device (Chen, Abstract). Chen discloses that the
unlocking, i.e., authorization, code may be based on a unique identifier of
the computing device and an identifier associated with the software seeking
to be assessed; therefore, the code may only be used by a computing device
having that unique identifier (id.). Chen discloses an exemplary method of
providing a software license with reference to Figure 3 in which the
identifier of the computing device and the software product identifier are
signed with a private key, e.g., using RSA signing, DSA signing, or another
private/public key signing technique; the signed bits may then be
transformed into an activation code with a predetermined number of alpha­
numeric characters (id. at col. 7,11. 1—8). In another exemplary method
shown in Figure 4, an activation control system computes a hash based on a
machine key corresponding to the computing device identifier and the
software product identifier and generates an activation code based on the
hash (id. at col. 8,11. 28-40).
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Appeal 2015-000035
Application 11/554,673
The Examiner takes the position that Chen’s disclosure of providing
an activation code based upon a product identifier, i.e., the identifier
associated with the software seeking to be accessed, is “sufficient to teach
‘generating . . . encrypted authorization codes for the product,” as called for
in claim 9 (Ans. 16). Yet the difficulty with that analysis, as Appellant
observes, is that claim 9 calls for a product that can be configured into any
of multiple different sub-models, and requires that multiple authorization
codes are generated for the product, with each authorization code
corresponding to a different sub-model (Br. 12).
Chen does not disclose or suggest a manufactured product that can be
configured into multiple sub-models; instead, in Chen, each software
product has only a single configuration, i.e., it can be unlocked, and Chen
only creates a single activation code for each software product, which is
applied to activate, i.e., unlock, the software (Br. 12 (citing Chen, col. 1,
1. 66-col. 2,1. 7; col. 8,11. 19—26; col. 8,11. 60-62)). There would no reason
in the Chen system nor, indeed, any need in that system, to generate plural
activation codes for each software product. Because each software product
can only be configured in one way, only one activation code is required.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 9 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the Examiner’s rejection of dependent claims 15, 18—22,
25, and 26. Cf. In reFritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
(“dependent claims are nonobvious if the independent claims from which
they depend are nonobvious”).
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Appeal 2015-000035
Application 11/554,673
Dependent Claims 10, 11, 16, and 17
The Examiner’s rejection of dependent claims 10, 11, 16, and 17 does
not cure the identified deficiency in the Examiner’s rejection of independent
claim 9. Therefore, we do not sustain the rejection of claims 10, 11, 16, and
17 under 35 U.S.C. § 103(a) for the same reasons set forth above with
respect to independent claim 9.
DECISION
The Examiner’s rejection of claims 9-11, 15—22, 25, and 26 under
35 U.S.C. § 112, first paragraph, is reversed.
The Examiner’s rejection of claims 9-11, 15—22, 25, and 26 under
35 U.S.C. § 112, second paragraph, is reversed.
The Examiner’s rejections of claims 9-11, 15—22, 25, and 26 under
35 U.S.C. § 103(a) are reversed.
REVERSED
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