Ex Parte Hardacker

Patent Trial and Appeal Board

Sep 27, 2012

11036932 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROBERT HARDACKER
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Appeal 2010-004767
Application 11/036,932
Technology Center 2100
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Before ALLEN R. MacDONALD, DAVID M. KOHUT, and
JASON V. MORGAN, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 – 17. We have jurisdiction under 35 U.S.C. § 6(b)(1).
We affirm-in-part and enter new grounds of rejection.
Invention
The invention relates to a method and system for wireless digital
communication in which data is sent from a transmitter to a receiver along
with encryption information on a forward channel wireless link operating at
60 GigaHertz. The receiver uses the encryption information to encrypt
control signals sent over a reverse channel wireless link operating at a
different frequency. See Abstract.
Exemplary Claims (Emphases Added)
1. A system, comprising:
a transmitter of multimedia data; and
a receiver of multimedia data, the transmitter wirelessly
transmitting the multimedia data on a forward channel link in
the sixty GigaHertz (60GHz) band, the transmitter and receiver
exchanging Encryption information on the forward channel
link, the encryption information being used to protect data
transmitted between the transmitter and receiver on a reverse
channel link, the reverse channel link not being in the sixty
GigaHertz (60GHz) band, control information being transmitted
on the reverse link, the control information including at least
one information selected from: communication capabilities,
reception conditions.
5. The system of Claim 4, wherein the unique identifier is
[exclusively] “OR’ed” with the control information prior to
sending the control information over the reverse channel link.
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6. A method for transmitting data, comprising:
establishing a forward channel link and a reverse channel
link between a wireless transmitter and a wireless receiver, the
forward channel link being inherently more directional and
shorter range than the reverse channel link;
communicating encryption information and video data
over the forward channel link, the encryption information being
needed to decode the video data;
altering data using the encryption information; and
communicating the data from the receiver to the
transmitter over the reverse channel link.
12. A computer comprising:
means for communicating unencrypted multimedia data
from a transmitter to a receiver using a wireless forward
channel link in the 60GHz band;
means for altering control information using encryption
information communicated over the forward channel link; and
means for communicating altered control information
over a reverse channel link not in the 60GHz band from the
receiver to the transmitter, wherein the altered control
information cannot be easily used by a recipient without access
to the encryption information.
Rejections
The Examiner rejects claims 1 and 3 – 5 under 35 U.S.C. § 103(a) as
being unpatentable over Tehranchi (US 7,242,772 B1; July 10, 2007; filed
Sept. 7, 2000) and Nesic (US 6,593,895 B2; July 15, 2003), and Saints (US
6,374,085 B1; Apr. 16, 2002). Ans. 4 – 6.
The Examiner rejects claim 2 under 35 U.S.C. § 103(a) as being
unpatentable over Tehranchi, Nesic, Saints, and Farber (US 6,486,907 B1;
Nov. 26, 2002). Ans. 9 – 10.
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The Examiner rejects claims 6, 12, and 15 – 17 under 35 U.S.C.
§ 103(a) as being unpatentable over Tehranchi, Nesic, and Rabowsky (US
6,141,530; Oct. 31, 2000). Ans. 6 – 9.
The Examiner rejects claims 7 – 11, 13, and 14 under 35 U.S.C.
§ 103(a) as being unpatentable over Tehranchi, Nesic, Rabowsky, and
Wright (US 6,522,867 B1; Feb. 18, 2003). Ans. 10 – 11.
The Examiner rejects claims 6 – 10 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Ans. 3.
The Examiner rejects claims 6 – 10 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention.
Ans. 3 – 4.
ISSUES
1. Did the Examiner err in finding that the combination of Tehranchi
and Saints teaches or suggests “control information being transmitted on the
reverse link, the control information including at least one [class of]
information selected from: communication capabilities [and] reception
conditions,” as recited in claim 1?
2. Does Tehranchi teach away from “communicating encryption
information and video data over the forward channel link, the encryption
information being needed to decode the video data,” as recited in claim 6?
3. Did the Examiner err in finding that claim 6 fails to comply with
the written description requirement?
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4. Did the Examiner err in finding that claim 6 fails to particularly
point out and distinctly claim the subject matter which Appellant regards as
the invention?
5. Did the Examiner err in finding that the combination of Tehranchi,
Nesic, and Rabowsky teaches or suggests the recitations of claim 12?
6. Did the Examiner err in finding that Tehranchi teaches or suggests
“wherein the unique identifier is [exclusively] ‘OR’ed’ with the control
information prior to sending the control information over the reverse channel
link,” as recited in claim 5?
ANALYSIS
Claim 1 (§ 103(a))
Claim 1 recites “control information being transmitted on the reverse
link, the control information including at least one [class of] information
selected from: communication capabilities [and] reception conditions.” The
Examiner finds that Tehranchi, which is directed to an encryption apparatus
and method for synchronizing multiple encryption keys with a data stream,
teaches transmitting block synchronization information on a different
wireless channel, and thus teaches transmitting information on a reverse
link. See Ans. 5 (citing Tehranchi Fig. 1, col. 8, ll. 24 – 30, and col. 9, ll. 10
– 13). The Examiner finds that Saints discloses that such information can be
control information. See id. (citing Saints col. 2, ll. 41 – 49). Specifically,
the Examiner finds that because the quality and error messages from Saints’
mobile stations are used to adjust the forward link power level thresholds,
and thus provide control information including reception conditions, these
quality and error messages communicate reception conditions. See Ans. 11 –
12.
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Appellant contends that the Examiner erred because “Saints’ frames
may have poor quality/power level independent of reception conditions,
since reception conditions may be perfect but the transmitter may be
malfunctioning.” App. Br. 5 (emphasis added). However, neither the
Specification nor claim 1 provides a definition for “reception conditions.”
Thus, a broad, but reasonable interpretation of “reception conditions”
includes the quality or power level of received frames, regardless of the
factors that affect the quality or power level. Thus, Saints’ quality and error
messages, which provide information on the quality or power level of
received frames, teaches or suggests control information that includes
reception conditions.
Furthermore, the content of the control information being transmitted
on the reverse link in claim 1 is merely non-functional descriptive material,
which is generally not given patentable weight when determining
patentability of an invention over the prior art. See In re Gulack, 703 F.2d
1381, 1385 (Fed. Cir. 1983); see also Ex parte Mathias, 84 USPQ2d 1276,
1279 (BPAI 2005) (informative) (“nonfunctional descriptive material cannot
lend patentability to an invention that would have otherwise been anticipated
by the prior art”), aff’d, 191 Fed.Appx. 959 (Fed. Cir. 2006) (Rule 36); and
Ex parte Curry, 84 USPQ2d 1272, 1275 (BPAI 2005) (informative)
(“[n]onfunctional descriptive material cannot render nonobvious an
invention that would have otherwise been obvious”), aff’d No. 06-1003
(Fed. Cir. Jun. 12, 2006) (Rule 36). Therefore, the Examiner did not err in
finding that the combination of Tehranchi and Saints teaches or suggests
“control information being transmitted on the reverse link, the control
information including at least one [class of] information selected from:
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communication capabilities [and] reception conditions,” as recited in claim
1.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 1, and claims 2 – 4, which are not argued separately.
Claim 6 (§ 103(a))
Claim 6 recites “communicating encryption information and video
data over the forward channel link, the encryption information being needed
to decode the video data.” That is, claim 6 recites communicating both
encrypted data (video data) and the key for decrypting the encrypted data
(encryption information) on a single channel. Appellant argues that
Tehranchi teaches away from communicating both encrypted data and the
key for decrypting the encrypted data by teaching that “‘[f]or maximum data
security and for overall decryption speed, it is preferable to provide both
keys or key generation data and key indexing and synchronization
information separately from the data stream.’” App. Br. 5 (citing Tehranchi
col. 3, ll. 47 – 50).
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). “A known or obvious composition does not become
patentable simply because it has been described as somewhat inferior to
some other product for the same use.” Id. Tehranchi merely teaches that
providing encryption information separately from the data stream is
preferable, but fails to teach that providing encryption information on the
same data stream would not work. Therefore, we find that Tehranchi does
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not teach away from “communicating encryption information and video data
over the forward channel link, the encryption information being needed to
decode the video data,” as recited in claim 6.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 6, and dependent claims 7 – 11, which are not argued separately.
Claim 6 (§ 112, first paragraph)
Claim 6 recites that the encryption information communicated over
the forward channel link is “needed to decode the video data,” which is also
communicated over the forward channel link. The Examiner finds that the
Specification “does not support the claim amendment that requires the
encryption information being needed to decode the video data,” Ans. 3, and
thus fails to meet the written description requirement of 35 U.S.C. § 112,
first paragraph.
Appellant contends that the Examiner erred because the Specification
discloses that “‘[i]n addition to carrying the multimedia data proper, the
forward channel link 22 may carry encoding information such as encoding
keys and/or a unique identifier that may be multiplexed within the
multimedia data, so that the decoder 48 can decode the streams and obtain
the encoding information.’” App. Br. 8 (citing Spec. 7, ll. 8 – 11). Appellant
argues that this teaches passing keys, not only just for encryption of control
information transmitted on the reverse channel link, but also for decrypting a
stream of video data transmitted on the forward channel link. See id.; see
also Reply Br. 3. The Examiner disagrees, finding that the Specification
merely “refers to the ability of the decoder 48 to demultiplex the encoding
information from the streams.” Ans. 14.
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The written description “need not recite the claimed invention in haec
verba but [it] must do more than merely disclose that which would render
the claimed invention obvious.” ICU Medical, Inc. v. Alaris Medical
Systems, Inc., 558 F.3d 1368, 1377 (Fed. Cir. 2009). That is, the
Specification must convey with reasonable clarity to an artisan of ordinary
skill that Appellant, at the time the application was filed, was in possession
of the invention, as now claimed. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1563 – 64 (Fed. Cir. 1991).
Here, the Specification discloses that received multimedia data, being
encoded by forward channel encoder 34, has an encoding. See Spec. 6, l. 11
and Fig. 2. This multimedia data encoding can include an encoding key (i.e.,
an encryption key). See Spec. 7, l. 9. The encoding information, which can
include the encoding key, is multiplexed with the multimedia data on the
forward channel link. See Spec. 7, ll. 8 – 10. This enables a decoder to both
obtain the encoding information and decode the multimedia data, which, if
the encoding information includes an encoding key, entails decrypting the
encrypted multimedia data. See Spec. 7, ll. 10 – 11. Therefore, the
Specification conveys with reasonable clarity to an artisan of ordinary skill
that Appellant was in possession of encryption information communicated
over a forward channel link being needed to decode video data.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112, first
paragraph, rejection of claim 6, and claims 7 – 10 which depend thereon.
Claim 6 (§ 112, second paragraph)
Claim 6, as amended, recites “communicating . . . video data over the
forward channel link” and “altering data using the encryption information.”
The Examiner finds that with the addition of the recitations directed to
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“video data,” it is unclear what data is being altered by the encryption
information. See Ans. 4.
Appellant contends that the Examiner erred in rejecting claim 6 under
35 U.S.C. § 112, second paragraph, because the rejection is based on the
Examiner’s findings with respect to the 35 U.S.C. § 112, first paragraph,
rejection of claim 6. See App. Br. 8; Reply Br. 3. However, we do not agree
with Appellant that the Examiner’s 35 U.S.C. § 112, second paragraph,
rejection is predicated on the Examiner’s 35 U.S.C. § 112, first paragraph,
reject.
The Examiner correctly finds that it is unclear whether the recitation
of “altering data using the encryption information” means altering the “video
data” (e.g., by decrypting the video data) or altering some other data (e.g., by
encrypting information to be sent back on a reverse channel link). See Ans.
4. Appellant does not set forth arguments or evidence showing error in the
Examiner’s finding. A claim is indefinite if it possesses a claim recitation
that is amenable to two plausible definitions and therefore ambiguous. See
Ex parte Miyazaki, 89 USPQ2d 1207, 1215 (BPAI 2008) (precedential).
Since claim 6 is amenable to at least two plausible definitions (i.e.,
decryption of encrypted video data or alteration of other data), we agree with
the Examiner that claim 6 is indefinite.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 112, second
paragraph, rejection of claim 6, and claims 7 – 10, which depend thereon.
Claim 12 (§ 103(a))
Claim 12 recites a computer comprising “means for communicating
unencrypted multimedia data . . .”; “means for altering control information
. . .”; and “means for communicating altered control information . . .”
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Appellant argues that the Examiner erred because claim 12 invokes 35
U.S.C. § 112, sixth paragraph, but the Examiner failed to provide a claim
construction for the recitations of claim 12. See App. Br. 6 – 7; Reply Br. 2 –
3.
For “means for communicating unencrypted multimedia data,”
Appellant directs our attention to the disclosure of a forward channel
encoder, modulator, and upconverter that transmit encoded data over a link
22 at about 60GHz through a first source antenna. See App. Br. 3 (citing,
e.g., Spec. Fig. 2, refs 34, 36, and 38 and p. 6, ll. 9 – 20). For “means for
altering control information,” Appellant directs our attention to the
disclosure of a processor either exclusively ORing a unique ID with data or
otherwise encrypting data. See id. (citing, e.g., Spec. Fig. 2, ref 30, Figs. 3
and 4, and p. 6, l. 10). And for “means for communicating altered control
information,” Appellant directs our attention to the disclosure of a processor
transmitting data on a reverse channel or link. See App. Br. 3 – 4 (citing,
e.g., Spec. Fig. 2, ref 30, Figs. 3 and 4, and p. 6, l. 10).
The Examiner finds that Tehranchi teaches or suggests digital video
data being transmitted over a wireless data transmission channel from a
transmitter to a receiver, that Nesic teaches or suggests communication
systems that operate in the frequency band of 59 GHz – 64 GHz, and that
Rabowsky teaches or suggests transmitting data over a reverse link from a
receiver to a transmitter in an encrypted fashion. See Ans. 8. We agree with
the Examiner that the combination of Tehranchi and Nesic teaches or
suggests a forward channel encoder, modulator, and upconverter that
transmit encoded data over a link (which is taught or suggested by data
being transmitted over a wireless data transmission channel) operating at
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about 60GHz (as taught or suggested by Nesic) through a first source
antenna. We also agree with the Examiner that Rabowsky teaches or
suggests a processor encrypting data and transmitting the encrypted data
over a reverse channel (i.e., transmitting data from a receiver to a transmitter
in an encrypted fashion). Therefore, we find that the Examiner properly
construed each of the means-for limitations of claim 12 to its associated
structure in the references.
Appellant also argues that Tehranchi teaches away from “encryption
information communicated over the forward channel link” by disclosing that
“‘. . . for overall decryption speed, it is preferable to provide both keys or
key generation data and key indexing and synchronization information
separately from the data stream.’” App. Br. 5 (citing Tehranchi col. 3, ll. 47
– 50) (emphasis provided by Appellant). However, for the reasons discussed
supra with respect to claim 6, we find that Tehranchi does not teach away
from the recitations of claim 12. Therefore, we find that the Examiner did
not err in finding that the combination of Tehranchi, Nesic, and Rabowsky
teaches or suggests the recitations of claim 12.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 12 and dependent claims 13 – 17, which are not argued separately.
Claim 5 (§ 103(a))
Claim 5 recites “wherein the unique identifier is [exclusively]
‘OR’ed’ with the control information prior to sending the control
information over the reverse channel link.” This recitation is directed to
encrypting the control information with a unique identifier as a key using the
well-known XOR (“exclusive OR”) cipher (which relies on the property of
modulo 2 addition that A ⊕ B ⊕ B = A). The Examiner finds that the use of
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DES (data encryption standard) or Triple-DES for encryption in Tehranchi
teaches or suggests the claimed method of encryption. See Ans. 6 and 13 –
14 (citing, e.g., Tehranchi col. 10, ll. 64 – 67). However, we agree with
Appellant that the Examiner’s findings do not show that DES or Triple-DES
teach or suggest using the XOR cipher. Accordingly, we do not sustain the
Examiner’s 35 U.S.C. § 103(a) rejection of claim 5, and commensurately
recited claims 11 and 17.
While we do not sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claims 5, 11, and 17, we newly reject claims 5, 11, and 17 under 35
U.S.C. § 103(a). The XOR cipher would have been well-known to an artisan
of ordinary skill at the time of the invention. See Kubota (US 5,034,980;
July 23, 1991), col. 4, 46 – 49. This technique for encrypting data has been
known since at least 1919 when Gilbert S. Vernam was issued a patent on a
secret signaling system that relied on modulo 2 addition. See Vernam (US
1,310,719; Jul. 22, 1919), p. 3, ll. 4 – 121. The Vernam patent is “perhaps
one of the most important in the history of cryptography.” M. Klein,
Securing Record Communications: The TSEC/KW-26, p. 3 (2003), available
at http://www.nsa.gov/about/_files/cryptologic_heritage/publications/misc/
tsec_kw26.pdf. Since the XOR cipher was well-known in the art, it would
have been obvious to an artisan of ordinary skill to exclusively OR the
unique identifier with the control information prior to sending the control
information over the reverse channel link. This application of the XOR
cipher would have merely represented the combination of familiar elements
according to known methods to produce predictable results. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
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Accordingly, we newly reject (1) claim 5 under 35 U.S.C. § 103(a) as
being unpatentable over Tehranchi, Nesic, Saints, and Kubota, (2) claim 11
under 35 U.S.C. § 103(a) as being unpatentable over Tehranchi, Nesic,
Rabowsky, Wright, and Kubota, and (3) claim 17 under 35 U.S.C. § 103(a)
as being unpatentable over Tehranchi, Nesic, Rabowsky, and Kubota.
Vernam is not relied upon, but is considered pertinent to the invention of
claims 5, 11, and 17.
DECISION
The Examiner’s decision to reject claims 1 – 4, 6 – 10, and 12 – 16 is
affirmed.
The Examiner’s decision to reject claims 5, 11, and 17 is reversed.
We newly reject claims 5, 11, and 17 under 35 U.S.C. § 103(a).
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record. . . .
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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-IN-PART;
37 C.F.R. § 41.50(b)

ELD