Ex Parte Lawrence

Patent Trial and Appeal Board

Nov 30, 2016

11495618 (P.T.A.B. Nov. 30, 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.
11/495,618 07/31/2006 Richard Anthony Lawrence 82182467 2907
22879
HP Tnr
7590 12/02/2016 EXAMINER
3390 E. Harmony Road
Mail Stop 35
ROJAS, HAJIME S
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
12/02/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD ANTHONY LAWRENCE
Appeal 2014-0093231
Application 11/495,618
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 2, 5—12, 14, and 16—21. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM but denominate the affirmed rejection as a NEW
GROUND OF REJECTION.
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed May
16, 2014), Reply Brief (“Reply Br.,” filed Nov. 2, 2014), the Examiner’s
Answer (“Ans.,” mailed July 3, 2014), and the Final Office Action (“Final
Act.,” mailed Jan. 13, 2014).
2 Appellant identifies the real party in interest as Hewlett-Packard
Development Company, LP (App. Br. 2).
Appeal 2014-009323
Application 11/495,618
CLAIMED INVENTION
The claimed invention relates to a memory tag that stores a service
history of the component (Spec. 1). Claims 1 and 11 are the independent
claims (App. Br. 16—19). Claim 1, reproduced below, is illustrative of the
subject matter on appeal.
1. A method of maintaining a data record for an object, the
method comprising:
associating a memory tag with an object, the memory tag
being arranged to store data relating to the object;
encrypting data such that only a read/write device having
an appropriate encryption key has access to the encrypted data
and can write additional data to the memory tag;
writing the encrypted data to the memory tag with the
read/write device by receiving from the read/write device data to
be stored on the memory tag at an encryption engine on the
memory tag and encrypting the data using the encryption engine;
in which the writing of data is done subsequent to
associating the memory tag with the object and at subsequent
times thereafter;
in which the encrypted data comprises an XML tag and a
historical record of the object;
in which the section of data partitioned by the XML tag is
retrieved by an XML parser; and
in which the encrypted data on the memory tag is protected
from being subsequently amended or deleted.
App. Br. 16, Claims Appendix.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Muehl et al. US 2004/0024501 A1 Feb. 5, 2004
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Appeal 2014-009323
Application 11/495,618
(“Muehl”)
Nishio US 2005/0273616 A1 Dec. 8,2005
The following rejection is before us for review:
Claims 1, 2, 5—12, 14, and 16—21 stand rejected under 35 U.S.C. § 103
as being unpatentable over Muehl and Nishio.
ANALYSIS
Independent claim 1
Regarding independent claim 1, the Examiner finds the “memory tag”
in Muehl in paragraph 8, “encrypting data” in Muehl in paragraph 70, the
“XML tag” in Muehl in paragraphs 9 and 12, the “encryption key” in Nishio
in Figure 10, and the “encryption engine” in Nishio in paragraph 44 (Final
Act. 2^4; see also Ans. 3—10). In particular, the Examiner finds the
“encrypting data” limitation of claim 1 in Muehl which discloses “securing
certain information” using a “closed format” to “prevent unauthorized users
from reading and writing maintenance records” (Muehl, para. 70).
According to the Examiner, “[gjiven the broadest reasonable interpretation,
‘encrypting data’ could be interpreted as securing data, protecting data,
restricting data etc. which Muehl discloses” (Final Act. 8) (citing Spec. 5).
Appellant contends that the Examiner’s rejection should be withdrawn
because one of ordinary skill would not reasonably interpret encrypting data
as storing records in a closed format as described by Muehl (App. Br. 9—14;
Reply Br. 4—9). According to Appellant, “the term ‘closed standard’ as
being defined by the Examiner in light of the Muehl reference does not teach
encryption but instead merely defines the type of proprietary software used
to save data: software that can eventually be reverse engineered.” {id. at 11).
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Appeal 2014-009323
Application 11/495,618
We find the Examiner’s position inconsistent because the Examiner
interprets “encrypting data” as storing data in Muehl’s closed format, and
“writing the encrypted data to the memory tag.. .comprising an XML tag” in
Muehl’s open standard (Final Act. 3 (citing Muehl, “XML Tag”). The
Examiner, however, has not provided any rationale for combining these
distinct embodiments.
Nevertheless, the Examiner finds that Nishio teaches
a device for reading/writing data on a memory in the form of
encrypted XML data [0041 ]-[0042] using encryption keys
(Figure 10). Nishio further teaches writing the encrypted data to
the memory by receiving from the read/write device data to be
stored on the memory at an encryption engine on the memory
and encrypting the data using the encryption engine ([0044]).
Final Act. 3. And we find that the XML-encryption processor 9 of
Nishio (see, e.g., paragraphs 42 and 44) performs the “encrypting
data” limitation of claim 1. Thus, it would have been obvious to
modify the memory tag disclosed in Muehl, which can store data in
the XML format (see, paragraph 39 of Muehl) to include the XML-
encryption processor 9 for the reason indicated by the Examiner,
namely “in order to make the maintenance and history records more
secure” (Final Act. 4) as suggested by Muehl in paragraph 70
(“prevent unauthorized users from reading and writing maintenance
records”).
Accordingly, we sustain the rejection of rejection of independent
claim 1 as obvious over Muehl and Nishio, albeit denominated as a new
ground of rejection given that our reasoning differs from that of the
Examiner.
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Appeal 2014-009323
Application 11/495,618
Claims 2, 5—12, 14, and 16—21
Appellant relies on arguments presented with respect to claim 1 in
contesting the rejection of independent claim 11 (see App. Br. 11; see also,
Reply Br. 9—10). Therefore, we sustain the rejection of claim 11 for the
same reasons as claim 1. We also sustain the rejection of dependent claims
2, 5—10, 12, 14, and 16—21, which are not separately argued except based on
their dependence on each respective independent claim (see App. Br. at 9—
14).
DECISION
The Examiner’s decision to reject claims 1, 2, 5—12, 14, and 16—21 is
affirmed but the affirmed rejection is denominated as a new grounds of
rejection.
NEW GROUND
This decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[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(s), WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal 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 § 41.52 by the Board upon the same record ....
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Appeal 2014-009323
Application 11/495,618
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED; 37 C.F.R, $ 41.50(b)
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