Ex Parte Locker et al

Patent Trial and Appeal Board

May 7, 2013

11403752 (P.T.A.B. May. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HOWARD JEFFREY LOCKER, DARYL CARVIS CROMER,
RANDALL SCOTT SPRINGFIELD, and ROD DAVID WALTERMANN
____________________

Appeal 2011-007151
Application 11/403,752
Technology Center 3600
____________________

Before BIBHU R. MOHANTY, MICHAEL W. KIM, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants 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).

STATEMENT OF THE DECISION
We AFFIRM-IN-PART.1

BACKGROUND
Appellants’ invention relates to rental computers (Spec. 1, l. 2).
Claims 1 and 9, reproduced below, are representative of the subject
matter on appeal:
1. A method for a computer having a motherboard and a
time card having a counter and plugged into a memory socket
of the motherboard, comprising:
using a computer processor to alter a value of the counter
to reflect purchased rental time;
responsive to a determination that the time card is
plugged into the memory socket based at least in part on a
register address, booting a main operating system into a main
memory; and
permitting operation of the computer until the counter
reaches a predetermined value.

9. A method comprising:
plugging a time card having a counter into a DIMM
socket of a computer motherboard, the counter being
configured to be changed in a first temporal direction to reflect
purchased rental time and to be changed in a second temporal
direction in response to clocking signals; and

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Sep. 23, 2010) and Reply Brief (“Reply Br.,” filed Jan. 4, 2011)
and the Examiner’s Answer (“Ans.,” mailed Dec. 22, 2010).
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encrypting, with a private key of the computer
motherboard, information related to the time card.

THE REJECTIONS
The following rejections are before us for review:
Claims 15-17 stand rejected under 35 U.S.C. § 112, second paragraph,
as failing to particularly point out and distinctly claim the subject matter
which Appellants regard as the invention.
Claims 1-17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dirie (US 6,618,810 B1, iss. Sep. 9, 2003) in view of
Kalail (US 5,345,902, iss. Sep. 13, 1994).

ANALYSIS
Indefiniteness
Claims 15-17 depend from independent system claim 11, and recite
that the processor associated with the motherboard “increments the counter
in response to a user purchasing additional time” (claim 15); or “generates a
warning signal that rental time is about to elapse when the counter reaches a
predetermined value” (claim 16); and that “if the time card is removed from
the socket during computer operation, the computer returns to a boot loader
operating system” (claim 17).
Appellants maintain that the Examiner erred in rejecting claims 15-17
under 35 U.S.C. § 112, second paragraph, for failing to particularly point out
and distinctly claim the subject matter of the invention (App. Br. 4 and
Reply Br. 1-2). In contrast, the Examiner maintains that the rejection is
proper because each of claims 15-17 “is alleged to be an apparatus type of
claim but there are recited steps of doing acts in the body of the claim”
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(Ans. 3 and 11). The Examiner asserts that “[t]his appears to be mixing of
both process and apparatus statutory classes and renders the claims
indefinite.” Id.
We do not agree that claims 15-17 are indefinite by virtue of claiming
both an apparatus and a method. Claim 15, for example, recites that the
processor associated with the motherboard “increments the counter in
response to a user purchasing additional time.” A person of ordinary skill in
the art would understand that claim 15 recites a computer system having a
processor programmed to perform a particular function when the program is
executed, namely, to increment a counter in response to a user purchasing
additional time and would understand that claims 16 and 17 similarly recite
functions that the processor is programmed to perform.
In our view, one of ordinary skill in the art would thus readily
understand what is claimed when claims 15-17 are read in light of the
Specification. 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). Therefore, we will not sustain the Examiner’s rejection of
claims 15-17 under 35 U.S.C. § 112, second paragraph.
Obviousness
Independent claim 1 and dependent claims 5-7
Appellants argue that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because neither Dirie nor Kalail discloses or suggests
booting a main operating system into a main memory “responsive to a
determination that the time card is plugged into the memory socket based at
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least in part on a register address,” as recited in claim 1 (App. Br. 5 and
Reply Br. 2-3). The Examiner concedes that Dirie does not explicitly
disclose this feature, and cites column 3, line 54 of Kalail as curing the
deficiency of Dirie (Ans. 4-5 and 11-12).
Kalail discloses a device, provided as part of a fuel cut-off system,
which includes a switch for selectively opening and closing the flow of fuel
to an engine (Kalail, Abstr.). A processor controls the operation of the
device, and includes a CPU and a program for carrying out the operations of
the device (Kalail, col. 3, ll. 36-39). Kalail describes at column 3,
lines 54-61, on which the Examiner relies, that “information relating to the
time for actuation of switch 12, may be stored in a combination RAM/timer
integrated circuit 26 which includes a volatile memory (RAM) portion 28
and a clock 30. Preferably, a RAM/timer integrated circuit, such as an 8156
available from Intel Corporation of Dallas, Tex. . . . is employed.”
We agree with the Examiner that it would have been obvious to one of
skill in the art to modify Dirie to include time card/memory socket
functionality, as taught by Kalail, “in order to provide for an easily
replaceable random access memory and timer” (Ans. 5). Modifying Dirie in
this way constitutes nothing more than a combination of prior art elements
according to their established functions, and yields a predictable result.
Therefore, it would have been obvious at the time of Appellants’ invention.
See KSR Int’l Co. v. Teleflex, Inc., 550 U. S. 398, 416 (2007) (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results”).
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In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s
rejection of dependent claims 5-7, which were not separately argued.
Independent claims 9 and 11 and dependent claims 10, 12, and 16
Appellants argue claims 9 and 11 together (App. Br. 5-7). We select
claim 9 as representative. Claim 11 stands or falls with claim 9.
Appellants argue that the Examiner erred in rejecting claim 9 under
35 U.S.C. § 103(a) because neither Dirie nor Kalail discloses or suggests
“plugging a time card having a counter into a DIMM socket of a computer
motherboard, the counter being configured to be changed in a first temporal
direction to reflect purchased rental time and to be changed in a second
temporal direction in response to clocking signals,” as recited in claim 9
(App. Br. 5-7 and Reply Br. 3). The Examiner maintains that the rejection is
proper, and cites column 1, line 45 and column 4, line 20 of Dirie as
disclosing this feature (Ans. 7-8).
Dirie discloses a system, method, and program product for disabling
operation of a computer system upon expiration of an authorized period of
time, and for re-enabling operation of the computer system when an
extension of time is authorized by the provider of the system (Dirie, Abstr.).
Dirie describes at column 1, lines 45-53 that the computer system includes a
data processor, a read only memory (“ROM”), a security timer, and a basic
input/output operating system (BIOS), and further describes that the method
includes storing a first portion of the BIOS in the ROM that includes
program instructions for initializing the system, updating the security timer,
determining whether the security timer has expired, and disabling the
computer system when the security timer has expired.
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At column 4, lines 13-20, Dirie describes that to enable updates to the
BIOS while the device is in the field, at least a portion of the BIOS firmware
is implemented using volatile ROM, i.e., flash ROM. This allows on-board
updates and changes to be made to the BIOS program where the flash ROM
remains physically attached to the motherboard.
Appellants argue that the rejection of claim 9 cannot be sustained
because Dirie has nothing to do with DIMM sockets and the Dirie ROM is
part of the permanent firmware of the computer and, as such, is not plugged
into a memory socket of the motherboard (App. Br. 5-7 and Reply Br. 3-4).
Yet the mere existence of differences between the prior art and the claim
does not establish nonobviousness. See Dann v. Johnston, 425 U.S. 219,
230 (1976).
The relevant question in considering obviousness is not whether the
claimed invention is different from the prior art but rather “whether the
difference between the prior art and the subject matter in question is a
[difference] sufficient to render the claimed subject matter unobvious to one
skilled in the applicable art.” Dann, 425 U.S. at 228 (internal quotations and
citations omitted). Indeed, the Supreme Court made clear in KSR that when
considering obviousness, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
Here, Appellants argue that Dirie is different in that the ROM is part
of the permanent firmware of the computer, rather than a memory module
that can be plugged into a socket on a printed circuit, i.e., a motherboard.
But Appellants do not explain, for example, why it would have been non-
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obvious to replace the firmware ROM with a removable memory module,
particularly in view of the disclosure at column 4, lines 13-20 of Dirie that at
least a portion of the BIOS firmware can be implemented using volatile
ROM, i.e., flash ROM, which is physically attached to the motherboard.
Moreover, it is clear that at some point, e.g., during assembly of the
motherboard, the time card/memory is physically attached to, i.e., plugged
into, the motherboard.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 9 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s
rejection of claim 11, which stands or falls with claim 9.
Claim 10 and claims 12 and 16 depend from claims 9 and 11,
respectively. Appellants did not present any arguments for the separate
patentability of these claims. Therefore, we will sustain the Examiner’s
rejection of claims 10, 12, and 16 under 35 U.S.C. § 103(a).
Dependent claims 2 and 13
We are persuaded that the Examiner erred in rejecting claims 2 and 13
under 35 U.S.C. § 103(a) by Appellants’ argument that neither Dirie nor
Kalail discloses or suggests “if during boot a processor associated with the
motherboard does not detect the time card, the processor ensures that
booting is not completed,” as recited in claims 2 and 13 (App. Br. 7 and
Reply Br. 3-4).
The Examiner cites column 2, lines 29-37 of Dirie as disclosing this
feature (Ans. 13). But we find nothing in the cited portion of Dirie that
discloses or suggests that a processor associated with the motherboard
ensures that booting is not completed if during boot the processor does not
detect the time card.
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Therefore, we will not sustain the Examiner’s rejection of claims 2
and 13 under 35 U.S.C. § 103(a).
Dependent claim 3
Claim 3 recites “encrypting, with a private key of the computer
motherboard, information related to the time card.” Appellants argue that
the Examiner erred in rejecting claim 3 under 35 U.S.C. § 103(a) because
the “relied-upon portion of Dirie [col. 2, ll. 36-37] teaches that encryption
can be used to receive and authenticate updates to the timer and says nothing
about the private key of a motherboard” (App. Br. 7).
We agree with the Examiner that the feature is disclosed inasmuch as
the timer in Dirie resides in a memory affixed to the motherboard (Ans. 13).
Therefore, we will affirm the Examiner’s rejection of claim 3 under
35 U.S.C. § 103(a).
Dependent claims 4 and 14
We are not persuaded that the Examiner erred in rejecting claims 4
and 14 under 35 U.S.C. § 103(a) by Appellants’ argument that neither Dirie
nor Kalail discloses or suggests “the socket is a DIMM socket or a
SODIMM socket,” as recited in these claims (App. Br. 8). Appellants
acknowledge in the “BACKGROUND OF THE INVENTION” section of
the Specification that memory modules, including, e.g., dual in-line memory
modules (DIMM) and small outline DIMM (SODIMM), that plug into a PC
motherboard to serve as computer memory were known in the art at the time
of Appellants’ invention (see Spec. 1).
Therefore, we will sustain the Examiner’s rejection of claims 4 and 14
under 35 U.S.C. § 103(a).
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Dependent claims 8 and 17
We are persuaded that the Examiner erred in rejecting claims 8 and 17
under 35 U.S.C. § 103(a) by Appellants’ argument that neither Dirie nor
Kalail discloses or suggests “if the time card is removed from the socket
during computer operation, the computer returns to a boot loader operating
system,” as recited in these claims (App. Br. 8).
The Examiner cites Figure 4 and the description of the figure at
column 3, lines 36-40 of Dirie as disclosing this feature:
FIG. 4 is a flow diagram for disabling operation of a computer
system upon expiration of a license to use the computer system
and re-enabling operation of the computer system upon renewal
of the license to use the computer system.

(Ans. 7).

However, we agree with Appellants that there is nothing in this portion of
Dirie that discloses the claimed feature.
Therefore, we will not sustain the Examiner’s rejection of claims 8
and 17 under 35 U.S.C. § 103(a).
DECISION
The Examiner’s rejection of claims 15-17 under 35 U.S.C. § 112,
second paragraph, is reversed.
The Examiner’s rejection of claims 1, 3-7, 9-12, and 14-16 under
35 U.S.C. § 103(a) is affirmed.
The Examiner’s rejection of claims 2, 8, 13, and 17 under 35 U.S.C.
§ 103(a) is reversed.

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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).

AFFIRMED-IN-PART

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