Ex Parte Schneck et al

Patent Trial and Appeal Board

Dec 2, 2016

10219890 (P.T.A.B. Dec. 2, 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.
3059.7080006 6096
EXAMINER
AGWUMEZIE, CHINEDU CHARLES
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
10/219,890 08/16/2002 Paul B. Schneck
26111 7590 12/02/2016
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
12/02/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL B. SCHNECK and MARSHALL D. ABRAMS
Appeal 2014-008425
Application 10/219,890
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Paul B. Schneck and Marshall D. Abrams (Appellants) seek review
under 35 U.S.C. § 134 of a non-final rejection of claims 2—21, 24—29, and
97—102, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed February 14, 2014) and Reply Brief (“Reply Br.,” filed July 21,
2014), and the Examiner’s Answer (“Ans.,” mailed May 21, 2014), and
Non-Final Action (“Non-Final Act.,” mailed November 14, 2013).
Appeal 2014-008425
Application 10/219,890
The Appellants invented a way to control distribution and access of
digital property and the payment therefor. Specification 1:8—10.
An understanding of the invention can be derived from a reading of
exemplary claim 2, which is reproduced below (bracketed matter and some
paragraphing added).
2. A method, performed by a computer device having a
memory and a processor, of distributing data for subsequent
controlled use of the data on at least one apparatus, the method
comprising:
[1] protecting portions of the data;
[2] preventing access to the protected portions of the data other
than in a non-useable form;
[3] determining, by the processor,
rules concerning access rights to the data,
wherein the rules include validity information and
identification information;
[4] protecting the rules including protecting the validity
information and identification information;
[5] distributing the protected portions of the data and the
protected rules to the at least one apparatus,
wherein the at least one apparatus
comprises a tamper detection mechanism
and
permits only controlled access to the data,
the controlled access being permitted only in
accordance with the rules as enforced by the
tamper detection mechanism;
and
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[6] in response to detecting tampering by the tamper detection
mechanism,
destroying the protected rules.
The Examiner relies upon the following prior art:
Rosenow US 5,128,996 July 7, 1992
Carter ’192 US 5,161,192 Nov. 3, 1992
Stefik US 5,629,980 May 13, 1997
Carter ’175 US 5,787,175 July 28, 1998
Koyama US 6,424,385 B1 July 23,2002
Claims 2—19 and 24—29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Carter ’175 and Rosenow.
Claims 97, 100, and 102 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Carter ’175, Rosenow, and Carter ’192.
Claims 20, 21, 98, and 99 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Carter ’175, Rosenow, and Stefik.
Claim 101 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Carter ’175, Rosenow, Stefik, and Koyama.
ISSUES
The issues of obviousness turn primarily on whether Rosenow
describes destroying its rules when tampering is detected.
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Application 10/219,890
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of “rule.”
Facts Related to the Prior Art
Carter ’175
02. Carter ’ 175 is directed to controlling a work group document,
and more particularly to allowing each member of a specified
group to encrypt and/or decrypt a document or to digitally sign
and/or authenticate the document by using a key that is unique to
the member in question, and to preventing access to the document
by persons who are not currently members of the group.
Carter ’175, 1:5—13.
03. Carter ’175 configures a document as having a data portion and
a prefix portion. Carter ’175 describes a collaborative encryption
method which uses structures in the prefix portion to restrict
access to the information stored in the data portion. Users who are
currently members of a collaborative group can readily access the
information, while users who are not currently members of the
group cannot. Carter’175, 6:5—15.
04. Carter ’ 175 ’ s prefix portion of the work group document
includes at least one member definition. The member definitions
may be located in the same file as the data portion or in one or
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Application 10/219,890
more separate files. The member definitions define a
collaborative group of computer system users which have access
to the data portion of the work group document. Carter ’175
12:25-32.
Rosenow
05. Rosenow is directed to electronic transaction processing, and
more specifically, to a microcomputer-based encryption system
which provides multiple encryption channels in a single unit.
Rosenow 1:5—9.
06. FIG. 12 is a flow diagram of the TAMPER S WITCH_
INTERRUPT routine. The DS5000 generates an interrupt when
the contents of its RAM are being tampered with, as when the
encapsulation module has been broken. When this occurs, the
tamper switch opens and interrupts the DS5000. This interrupt is
referred to as the tamper switch interrupt. The
TAMPER__SWITCH__INTERRUPT routine processes such an
interrupt. When the tamper switch interrupt occurs, the routine
zeros out the application program and data portions of memory.
Rosenow 30:4—23.
ANALYSIS
We are not persuaded by Appellants’ argument that the cited
references do not disclose the limitation of “in response to detecting
tampering by the tamper detection mechanism, destroying the protected
rules.” App. Br. 7—8. Appellants contend the claim allows targeting of only
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Application 10/219,890
the rules allowing the data to be recovered. Id. The claim is broader than
that. The claim does not recite that the data is left unharmed when the rules
are destroyed. Rosenow destroys both the application program and the data
upon detecting tampering. Such a self-destruct form of enforcement is
within the scope of the limitation as drafted. As the Examiner did not cite
this portion of Rosenow, we will afford the Appellants an opportunity to
respond by denominating this as a new ground.
We are not persuaded by Appellants’ argument that the cited
references do not disclose the limitation of rules. App. Br. 8—11. Appellants
do not lexicographically define rules, but proffer a dictionary definition as a
statement that tells you what is or is not allowed in a particular game,
situation, etc.; a statement that tells you what is allowed or what will happen
within a particular system. App. Br. 10. We agree this is consistent with
most dictionary definitions.
What Appellants omit is that computers store data, not rules. Even a
computer program is data. It is this data that is interpreted as various items
including rules, and how that interpretation occurs is a matter of
implementation. Thus there are many ways of implementing what we
perceive to be rules in a computer.
Carter ’175 describes adding a prefix to its data that defines which
members may access that data. Such a definition is within the scope of a
statement that tells you what is allowed or what will happen within a
particular system with regard to such access. Presumably Appellants are
contending that the logic to implement this is in the program rather than the
data. But the implementation is that of a generic rule in the program that is
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Application 10/219,890
then instantiated as a specific rule by the criteria in the data. Thus, the prefix
data that are distributed are implementations of the specific rules that are
actually applied. That they depend on the implementing program for
interpretation and execution does not diminish their status as such
statements. Indeed any rule that is distributed, as recited in the claims, is
data that must rely on the implementing program for interpretation and
execution. It is only a matter of how much detail is included in the
statement. Carter ’175 happens to use a concise implementation. Appellants
do not impose any limitation on how the rules are implemented.
CONCLUSIONS OF LAW
The rejection of claims 2—19 and 24—29 under 35 U.S.C. § 103(a) as
unpatentable over Carter ’175 and Rosenow is proper.
The rejection of claims 97, 100, and 102 under 35 U.S.C. § 103(a) as
unpatentable over Carter ’175, Rosenow, and Carter ’192 is proper.
The rejection of claims 20, 21, 98, and 99 under 35 U.S.C. § 103(a) as
unpatentable over Carter ’175, Rosenow, and Stefik is proper.
The rejection of claim 101 under 35 U.S.C. § 103(a) as unpatentable
over Carter ’175, Rosenow, Stefik, and Koyama is proper.
DECISION
The rejection of claims 2—21, 24—29, and 97—102 is affirmed.
This affirmance is denominated as a new ground of rejection.
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Our decision is not a final agency action.
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.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
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 prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
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and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can
be found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
See 37 C.F.R. § 1.136(a)(l)(iv) (2011).
AFFIRMED;
37 C.F.R, $ 41.50(b)
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