Ex Parte Seethaler et al

Patent Trial and Appeal BoardMar 7, 2019

13051009 (P.T.A.B. Mar. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/051,009 03/18/2011 58127 7590 03/07/2019 FERENCE & ASSOCIATES LLC 409 BROAD STREET PITTSBURGH, PA 15143 FIRST NAMED INVENTOR Kenneth Scott Seethaler 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. RPS9201 l 0004USNP(7 l 0.154) 3 706 EXAMINER KIM, STEVENS ART UNIT PAPER NUMBER 3685 MAIL DATE DELIVERY MODE 03/07/2019 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 KENNETH SCOTT SEETHALER and RANDALL SCOTT SPRINGFIELD 1 Appeal2017-009938 Application 13/051,009 Technology Center 3600 Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and DAVID J. CUTITTA II, Administrative Patent Judges. CUTITTA, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1, 3-5, and 7-20, which are all of the claims pending in the application. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 Appellants identify Lenovo (Singapore) PTE. LTD. as the real party in interest. See App. Br. 3. 2 Claims 2, 6, and 21 have been cancelled. Appeal2017-009938 Application 13/051,009 STATEMENT OF THE CASE According to Appellants, the claims are directed to process of using encryption to control and enable the exchange of power between an electronic device and a corresponding coupled device, e.g., a battery. Abstract. 3 Claims 1 and 15 are independent. Claim 1, reproduced below, is representative the claimed subject matter: 1. Method comprising: incorporating a first cryptographic element into an electronic device; providing second cryptographic elements to be incorporated into devices couplable to the electronic device to suppliers of the couplable devices, each of the second cryptographic elements cooperating with the first cryptographic element and enabling the exchange of encrypted messages between a matched electronic device and a couplable device; distinguishing among a plurality of models of the second cryptographic elements using keys which differ one from another; supplying differing models of the second cryptographic elements to differing suppliers of couplable devices; wherein the supplying of differing models of the second cryptographic elements to differing suppliers comprises providing differing second cryptographic elements based on manufacturer type; and programming the electronic device to execute code in response to each transition from one power state to another power state and initiate an exchange of encrypted messages using said first cryptographic element and one of the second 3 This Decision refers to: (1) Appellants' Specification filed March 18, 2011 (Spec.); (2) the Final Office Action (Final Act.) mailed October 13, 2016; (3) the Appeal Brief (App. Br.) filed March 13, 2017; (4) the Examiner's Answer (Ans.) mailed May 17, 2017; and (5) the Reply Brief (Reply Br.) filed July 17, 2017. 2 Appeal2017-009938 Application 13/051,009 cryptographic elements incorporated into a device coupled to the electronic device during the transition; wherein said programming comprises programming the electronic device, in response to a failure of a matched exchange, to block exchange of electrical power with the device coupled to the electronic device. REFERENCES AND REJECTIONS Claims 1, 3-5, and 7-20 are rejected under 35 U.S.C. Â§ 112, first paragraph as failing to comply with the written description requirement. Final Act. 3-8. Claims 1, 3-5, and 7-20 are rejected under 35 U.S.C. Â§ 112, second paragraph as being indefinite. Id. at 8-12. Claims 1, 3-5, and 7-20 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Schaecher (US 2011/0093714 Al; published Apr. 21, 2011), Little (US 7,667,429 B2; issued Feb. 23, 2010), Buskey (US 2006/0149966 Al; published July 6, 2006), and Admitted Prior Art ("APA"). Id. at 13-19. Our review in this appeal is limited to the above rejections and the issues raised by Appellants. Arguments not made are waived. See MPEP Â§ 1205.02; 37 C.F.R. Â§ 4I.37(c)(l)(iv). ANALYSIS 35 US.C. Â§ 112,first paragraph: Written Description The Examiner finds claim 1, reciting in pertinent part, "wherein said programming comprises programming the electronic device, in response to a failure of a matched exchange, to block exchange of electrical power with the device coupled to the electronic device," and claim 15, reciting similar 3 Appeal2017-009938 Application 13/051,009 subject matter as claim 1, fail to comply with the written description requirement of 35 U.S.C. Â§ 112, first paragraph. Final Act. 3-8. Specifically, the Examiner determines the Specification does not describe "block[ing] [the] exchange of electrical power" for all types of "device[ s] coupled to the electronic device," e.g., "network cards, memory cards, or video driver cards." Ans. 5---6 ( emphasis omitted); Final Act. 7. Appellants argue paragraph 19 of the Specification "extends the ability to detect a match to couplable devices other than a battery," e.g., "a network card," in order to enable or disable the functionality of the coupled device. App. Br. 13; Reply Br. 15. We are not persuaded the Examiner erred. The Specification discloses network interface cards are coupled devices and further discloses "enabl[ing] or disabl[ing] .. . functionality of such coupled devices" (Spec. ,r 19 (emphasis added)), but the claims recite "block[ing] exchange of electrical power." Appellants fail to establish that disabling the functionality of a coupled device discloses blocking the exchange of electrical power with a coupled device. Indeed, the Specification describes that "interfacing to a network through the [network interface] card [is] blocked" (id.), i.e., the Specification describes blocking the ability to interface to a network, not blocking the ability to exchange electrical power. It follows then, the Specification does not disclose blocking the exchange of electrical power for all coupled devices. Rather, the only blocked exchange of electrical power for a coupled device described by the Specification is, specifically, for a battery. Spec. ,r,r 3, 21, 24. As such, although the Specification provides written description support for blocking the exchange of electrical power for batteries, the Specification does not show the inventor had possession of 4 Appeal2017-009938 Application 13/051,009 blocking the exchange of electrical power for all other types of coupled devices. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). Accordingly, we are not persuaded the Examiner erred in finding independent claims 1 and 15, and claims 3-5, 7-14, and 16-20, which depend from claims 1 or 15, fail to comply with the written description requirement under 35 U.S.C. Â§ 112, first paragraph. 35 USCÂ§ 112, second paragraph: Indefiniteness The Examiner concludes claim 1, reciting in pertinent part, "an electronic device," "a device coupled to the electronic device," and "programming the electronic device to execute code in response to each transition from one power state to another power state," and claim 15, reciting similar subject matter as claim 1, are indefinite under 35 U.S.C. Â§ 112, second paragraph. Final Act. 8-12. Specifically, the Examiner determines it is unclear whether the "transition from one power state to another refers to" a transition by "the electronic device or the device coupled to the electronic device." Final Act. 9, 12; Ans. 8. Appellants argue "it is sufficiently clear from the claimed limitation that the electronic device transitions from one power state to another" and "the [S]pecification makes this point clear." App. Br. 14 (citing Spec. ,r 21); Reply Br. 14. We are not persuaded the Examiner erred. The claims recite "the electronic device" is programmed to execute code in response to "each transition from one power state to another power state." At best, the claims recite that "the electronic device" executes code - but, the claims do not 5 Appeal2017-009938 Application 13/051,009 define "each transition from one power state to another power state" as transitions of "the electronic device." As such, as the Examiner points out (Final Act. 9, 12), the claims are reasonably susceptible to at least two interpretations, i.e., the electronic device executes code based on power state transitions of the electronic device itself or the electronic device executes code based on power state transitions of the device coupled to the electronic device. Accordingly, we are not persuaded the Examiner erred in concluding independent claims 1 and 15, and claims 3-5, 7-14, and 16-20, which depend from claims 1 or 15, are indefinite under 35 U.S.C. Â§ 112, second paragraph. 35 US.C. Â§ 103(a): Obviousness "each transition from one power state to another power state" Appellants argue the Examiner erred in finding Little teaches "programming the electronic device to execute code in response to each transition from one power state to another power state and initiate an exchange of encrypted messages," as recited in claim 1 and similarly recited in claim 15. App. Br. 15-20; Reply Br. 19-24. Specifically, Appellants argue "Little does not authenticate the device in response to a transition from one power state to another." App. Br. 17-18; Reply Br. 22. We are not persuaded. Little describes "an authentication process 550 that can be employed by the main processor 102" of an electronic device "to authenticate [a] smart battery 130" coupled to the electronic device. Little 22:46-48. The Examiner finds (Ans. 11), and we agree, Little's disclosure that the "[ a ]uthentication is done each time the mobile device 100 is turned 6 Appeal2017-009938 Application 13/051,009 on" (Little 22:48--49) teaches "in response to each transition from one power state to another power state ... initiate an exchange of encrypted messages." That is, the Examiner finds that Little's "power up" teaches a "transition from one power state [(off)] to another power state [(on)]." Ans. 12. Appellants do not explain why Little's authentication "each time the mobile device 100 is turned on" (Little 22:48--49) does not teach a transition from one power state to another, i.e., between on and off power states (see Reply Br. 22; see also App. Br. 17-18). Further, Appellants' Specification confirms that a power transition includes a transition between on and off power states. Spec. ,r 17 ("The normal operating state and the off state correspond to the typical on and off states of computer systems lacking such multiple state of power management."). To the extent Appellants argue Little does not teach transition between "sleep mode, awoken from sleep mode, and the like" (Reply Br. 22; App. Br. 17-18), that argument is not commensurate with the scope of the claims because the claims do not define transitioning between such power states. Accordingly, we are not persuaded the Examiner erred in finding Little teaches "programming the electronic device to execute code in response to each transition from one power state to another power state and initiate an exchange of encrypted messages," as recited in claim 1 and similarly recited in claim 15. Furthermore, Appellants' arguments that Schaecher and Buskey do not teach the disputed limitation (App. Br. 16-17, 19; Reply Br. 21-23) are not persuasive of Examiner error because, as discussed above, the Examiner finds that Little teaches the disputed limitation. 7 Appeal2017-009938 Application 13/051,009 "block exchange of electrical power" Appellants argue Little does not teach "in response to a failure of a matched exchange ... block exchange of electrical power with the device coupled to the electronic device," as recited in claim 1 and similarly recited in claim 15. App. Br. 18-19; Reply Br. 22-23. In particular, Appellants argue "Little specifically discloses the opposite of blocking exchange of electrical power" and further "teaches away from the claimed limitations." App. Br. 18-19; Reply Br. 22-23. We are not persuaded. The Examiner finds (Ans. 11-12), and we agree, Little's description that the mobile device "will not charge ... a non- authentic battery pack, i.e. a battery pack that fails the authentication process" (Little 23: 8-10) teaches "in response to a failure of a matched exchange ... block exchange of electrical power with the device coupled to the electronic device." Appellants' arguments discuss embodiments in Little that "provide[] that an [ un ]authenticated battery may be charged and used" (App. Br. 18 (citing Little 23:10-23, 23:45-58, 25:3-10); Reply Br. 22), but those arguments do not address the embodiments in Little in which unauthenticated batteries are not charged (Little 23:8-10, 23:23-27 ("in other embodiments, if the battery pack is identified as ... a nonauthorized third party battery pack, then the operating system associated with the main processor 102 can be configured to not allow the normal boot process to proceed.")). Accordingly, Appellants' arguments, directed to embodiments of Little not relied upon by the Examiner, do not persuade us the Examiner erred in finding Little teaches "in response to a failure of a matched exchange ... block exchange of electrical power with the device coupled to 8 Appeal2017-009938 Application 13/051,009 the electronic device," as recited in claim 1 and similarly recited in claim 15. Furthermore, Appellants' arguments that Buskey does not teach the disputed limitation (App. Br. 19; Reply Br. 23-24) are not persuasive of Examiner error because, as discussed above, the Examiner finds that Little teaches the disputed limitation. Further, because Little teaches embodiments that do block the exchange of electrical power, we are not persuaded Little teaches away from such a feature. App. Br. 18-19; Reply Br. 22-23. To teach away, a reference must "criticize, discredit, or otherwise discourage the solution," but Little does not criticize, discredit, or discourage blocking the exchange of electrical power and instead provides alternative embodiments. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Accordingly, we are not persuaded the Examiner erred by relying on Little in combination with Schaecher, Buskey, and AP A in rejecting claims 1 and 15 under 35 U.S.C. Â§ 103(a) as obvious. Appellants do not argue separate patentability for dependent claims 3-5, 7-14, and 16-20, which depend directly or indirectly from claims 1 or 15. See App. Br. 15-20. Accordingly, for the reasons set forth above, we also sustain the Examiner's decision to reject claims 1, 3-5, and 7-20 under 35 U.S.C. Â§ 103(a) as obvious. DECISION For the reasons above, we affirm the Examiner's decision rejecting claims 1, 3-5, and 7-20. 9 Appeal2017-009938 Application 13/051,009 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 41.50(Â±). AFFIRMED 10