Ex Parte Refstrup

Patent Trial and Appeal Board

Oct 31, 2016

12994979 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/994,979 11/29/2010
22879 7590 11/02/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Jacob Grundtvig Refstrup
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
82564391 7190
EXAMINER
MCLEAN, NEIL R
ART UNIT PAPER NUMBER
2676
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACOB GRUNDTVIG REFSTRUP
Appeal2015-002983
Application 12/994,979
Technology Center 2600
Before MAHSHID D. SAADAT, ROBER E. NAPPI, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 2, and 16-33, which are all the claims pending
in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Hewlett-Packard
Development Company (App. Br. 2).
Appeal2015-002983
Application 12/994,979
STATEMENT OF THE CASE
Introduction
Appellant's disclosed invention relates to printing systems including
replaceable printer components having on-board memory to communicate
information to a printer (Spec. 1: 19-24).
Exemplary claim 1 under appeal reads as follows:
1. A printing system to receive a replaceable printer
component, said printing system comprising:
a printer controller;
a first memory device storing a first secret; and
a communication link configured to communicatively
link the replaceable printer component to the printer controller
when the replaceable printer component is installed in a
printing system,
wherein the printer controller of the printing system is
programmed to request a component session-key identifier,
based on a second secret; from the replaceable printer
component.
The Examiner's Rejection
Claims 1, 2, and 16-33 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kimura (US 2007/0160204 Al; July 12, 2007) and
Walmsley (US 7,246,098 Bl; July 17, 2007) (see Final Act. 4--10).
ANALYSIS
Claim 1
The Examiner finds Kimura discloses the recited elements of the
printing system recited in claim 1 except for "wherein the printer controller
of the printing system is programmed to request a component session-key
2
Appeal2015-002983
Application 12/994,979
identifier, based on a second secret, from the replaceable printer
component," for which the Examiner relies on Walmsley (Final Act. 4--6).
The Examiner specifically finds Walmsley teaches the recited printer
controller as system 21, in Figure 2, which requests a component session-
key identifier as challenge 24 from consumable 22 and returns response 26
based on a second secret in chip 20 (Final Act. 5).
Appellant argues the proposed combination does not teach or suggest
"printer controller of the printing system is programmed to request a
component session-key identifier, based on a second secret, from the
replaceable printer component" because Walmsley "does not distinguish
between sessions or use a session-key or session-key identifier" (App. Br.
10-11 (citing Walmsley col. 29, 1. 56- col. 30, 1. 3)). Referring to Figure 2
of Walmsley, Appellant asserts
Walmsley then describes Protocol 3 in which, as described in
the Abstract; a "random number is encrypted using a first key
and sent to an untrusted chip. In the untrusted chip it is
decrypted using a secret key and re-encrytped together with a
data message read from the untrusted chip. This is decrypted so
that a comparison can be with the generated random number
and the read data message."
(App. Br. 12 (citing Walmsley Abstract)).
In response, the Examiner further finds the recited "session-key
identifier" is not explicitly defined in Appellant's disclosure and explains
that "a 'response' which can contain the message, a random number and a
time stamp is functionally equivalent to the Applicant's use of the term
'session-key identifier"' (Ans. 4). The Examiner also finds "Walmsley
discloses 'wherein the printer controller of the printing system (Fig. 2,
element 21) is programmed to request a component session-key identifier
3
Appeal2015-002983
Application 12/994,979
(Fig. 2; challenge 24 and response 26), based on a second secret (contained
in second authentication chip 20), from the replaceable printer component
(consumable 22)" (id.).
We are not persuaded by Appellant's contention that the Examiner
erred because the rejection is based on the broadest reasonable interpretation
of the phrase "request a component session-key identifier, based on a second
secret," as recited in claim 1. Additionally, as found by the Examiner (Ans.
4), to the extent Appellant's disclosure defines a component session-key
identifier as a component that, along with the request for a session, is used to
generate a session-key to be passed on to the printer controller (see e.g.,
Spec. i-fi-f 16, 26), Walmsley's challenge 24 and response 26 meet the recited
"component session-key identifier, based on a second secret."
Furthermore, Appellant attempts to individually distinguish Walmsley
and Kimura, rather than addressing the combined teachings of the references
(see App. Br. 9-13). Each reference must be read, not in isolation, but for
what it fairly teaches in combination with the prior art as a whole. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981) ("The test for obviousness is not ...
that the claimed invention must be expressly suggested in any one or all of
the references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art."). In
KSR, the Supreme Court criticized a rigid approach to determining
obviousness based on the disclosures of individual prior art references, with
little recourse to the knowledge, creativity, and common sense that a skilled
artisan would have brought to bear when considering combinations or
modifications. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 415--422
(2007); see also Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013).
4
Appeal2015-002983
Application 12/994,979
As found by the Examiner (Ans. 2-3), the cited portions of Walmsley in
columns 29 and 30 describe an authentication process that includes
requesting a component session-key identifier based on a second key. The
Examiner specifically explains the authentication process of Walmsley
provides a more secure process in combination with the authentication
method of Kimura (Ans. 5---6).
Accordingly, Appellant's arguments have not persuaded us that the
Examiner erred in finding the combination of Kimura and Walmsley teaches
or suggests the disputed limitations of claim 1. We therefore sustain the
35 U.S.C. § 103(a) rejections of claim 1.
Claim 27
Appellant contends the Examiner erred in rejecting claim 27 over the
combination of Kimura and Walmsley based on the same reasons stated for
claim 1 and further adds that neither reference teaches or suggests "with a
printer controller of the printing system, requesting, from the replaceable
printer component, a component session-key identifier corresponding to a
component session-key that is based on a second secret that is associated
with the replaceable printer component" (App. Br. 13-14) (emphasis
original). The Examiner explains the combination of Kimura and Walmsley
teaches or suggests the method steps of claim 27 because the operation
resulting from combining the references meets the disputed claim limitation
(Ans. 5---6). The Examiner finds Walmsley specifically teaches the recited
printer controller as element 21 shown in Walmsley's Figure 2 and the
recited component session-key identifier as the challenge 24 and response
26, shown in Walmsley's Figure 2 (Ans. 6). Additionally, the Examiner
finds Walmsley's Figure 2 discloses the recited "based on a second secret"
5
Appeal2015-002983
Application 12/994,979
from "the replaceable printer component" as the secret contained in
authentication chip 20 within the consumable 22 (id.).
We are not persuaded that the Examiner erred. We agree with and
adopt as our own the findings and reasoning of the Examiner. Contrary to
Appellant's assertion, the Examiner did not simply rely on the findings
related to the limitations recited in claim 1, but mapped the recited
limitations of claim 27 to the teachings of the applied prior art (Final Act.
1 O; Ans. 5---6). We, thus, sustain the Examiner's obviousness rejection of
claim 27 in view of Kimura and Walmsley.
Remaining Claims
Appellant contends the patentability of the remaining claims based on
arguments similar to those presented for claim 1 (App. Br. 14--23). The
Examiner has provided sufficient findings and comprehensive response to
the arguments raised for each claim, which we agree with and adopt as our
own (see Ans. 6-17). Accordingly, we are not persuaded by Appellant;s
arguments that the Examiner erred in finding the combination of Walmsley
with Kimura teaches or suggests the recited features of these claims and
sustain their rejections under 35 U.S.C. § 103(a).
DECISION
We affirm the decision of the Examiner to reject claims 1, 2, and 16-
33.
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
6