Ex Parte YONGDownload PDFPatent Trial and Appeal BoardJan 23, 201712505752 (P.T.A.B. Jan. 23, 2017) Copy Citation 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. 12/505,752 07/20/2009 Tuck Cheong YONG 42792-0058 (10046.0066) 2852 38881 7590 Infineon Technologies AG c/o Schiff Hardin LLP 666 Fifth Avenue Suite 1700 NEW YORK, NY 10103 01/25/2017 EXAMINER ABYANEH, ALI S ART UNIT PAPER NUMBER 2437 NOTIFICATION DATE DELIVERY MODE 01/25/2017 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): lbrutman @ schiffhardin.com patents-NY @ schiffhardin.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TUCK CHEONG YONG Appeal 2016-000059 Application 12/505,752 Technology Center 2400 Before JEAN R. HOMERE, JOHN A. EVANS, and DANIEL J. GALLIGAN, Administrative Patent Judges. Per Curiam. DECISION ON APPEAL1 Appellant2 seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1—24. Claims App’x. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Our Decision refers to Appellant’s Appeal Brief filed June 19, 2015 (“App. Br.”); Appellant’s Reply Brief filed September 18, 2015 (“Reply Br.”); the Examiner’s Answer mailed August 19, 2015 (“Ans.”); the Final Office Action mailed December 12, 2014 (“Final Act.”); and original Specification filed July 20, 2009 (“Spec.”). 2 Appellant identifies Infineon Technologies AG as the real party in interest. App. Br. 1. Appeal 2016-000059 Application 12/505,752 STATEMENT OF THE CASE Claims on Appeal Claims 1, 11, 20, and 23 are independent claims. Claim 1 is reproduced below (with disputed limitations in italics): 1. A secure system, comprising: a peripheral device; and a Trusted Platform Module (TPM) coupled between the peripheral device and a host such that all communication between the peripheral device and the host passes through and is controlled by the TPM. Challener et al. Fruhauf et al. Paaske et al. Crews et al. Mao et al. References US 2003/0138105 Al US 2007/0239990 Al US 7,774,619 B2 US 8,100,323 B1 US 8,176,336 B1 July 24, 2003 Oct. 11,2007 Aug. 10, 2010 Jan. 24, 2012 May 8, 2012 Examiner’s Rejections Claims 1, 11, 20, and 23 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 5. Claims 1, 11, 20, and 23 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicants regard as the invention. Final Act. 6. 2 Appeal 2016-000059 Application 12/505,752 Claims 1, 11, 20, and 23 stand rejected under 35 U.S.C. § 112, second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. Final Act. 6—7. Claims 1,4, 11, 13, and 23 stand rejected under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Paaske. Final Act. 7—9. Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Paaske and Fruhauf. Final Act. 9-10. Claims 3, 20—22, and 24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Paaske and Crews. Final Act. 10-12. Claims 5—10 and 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Paaske and Official Notice. Final Act. 13. Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Paaske and Challener. Final Act. 13—14. Claims 15—19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Paaske and Mao. Final Act. 14—15. ANALYSIS Rejection of Claims 1, 11, 20, and 23 under 35 U.S.C. § 112, First Paragraph The Examiner finds Appellant’s Specification describes configuration data between the peripheral device and the host, but the Examiner finds not all data as recited in independent claims 1, 11, 20, and 23, passes through and is controlled by the TPM. Final Act. 5 (citing Spec. 134, Fig. 5, blocks 520, 530). The Examiner further finds that, although Appellant’s Specification describes communication transmitted between different 3 Appeal 2016-000059 Application 12/505,752 peripheral devices and the TPM, the Specification does not recite that all communication passes through the TPM and the illustrated connection lines between components do not support the recited passage of all data through the TPM. Ans. 2—3 (citing Spec. 15, 19, Figs. 1A—F). Appellant argues the Specification describes that the only communication path between the peripheral device and the host is through the TPM. App. Br. 3 (citing Spec. Figs. 1A—F); Reply Br. 2—3. Appellant contends the TPM is described as arranged to control communication between the peripheral and the host. App. Br. 3 (citing Spec. 119); Reply Br. 2—3. We are persuaded by Appellant’s arguments because Figures 1A through IF depict communication paths between the host and peripheral devices through the TPM and depict no other path for communication to take between the peripheral and the host than that through the TPM. Spec., Figs. 1 A—F. We additionally agree with Appellant that the Specification’s disclosure of the TPM configured to control communication with different types of peripheral devices describes the TPM controlling all communication between any peripheral device and the host. App. Br. 3 (citing Spec. 119). As such, the Specification, including the Figures, provide written description support for the limitation reciting that “all communication between the peripheral device and the host passes through and is controlled by the TPM.” Thus, Appellant persuades us of Examiner error in the rejection of independent claims 1, 11, 20, and 23 as not complying with the written description requirement. Accordingly, we decline to sustain the Examiner’s rejection of independent claims 1, 11, 20, and 23 under 35 U.S.C. § 112, first paragraph. 4 Appeal 2016-000059 Application 12/505,752 Rejection of Claims 1, 11, 20, and 23 under 35 U.S.C. § 112, Second Paragraph The Examiner concludes “all communication,” recited in independent claims 1,11, 20, and 23, renders the claims indefinite. Final Act. 6. The Examiner explains “all communication” is a relative term for which one of ordinary skill in the art could not be apprised from the claim or Appellant’s Specification of the scope of the invention. Final Act. 6; Ans. 3. The Examiner further concludes that the claims are incomplete for omitting essential elements of a positive recitation of communication taking place between the peripheral device and the host device. Final Act. 6—7. Appellant asserts the absoluteness of “all communication” in that “it can be seen that the only communication path between the peripheral 120/130/140/150/160/170 and the host is through the trusted platform module (TPM) 110.” App. Br. 3. We agree with Appellant that “all communication” is definite as being an absolute term rather than a relative term in that there is either all communication or less than all communication. We further agree with Appellant that the claims are complete as arranged to accommodate all communication between any peripheral device and the host. Thus, Appellant persuades us of Examiner error in the rejection of independent claims 1, 11, 20, and 23 as being indefinite. Accordingly, we decline to sustain the Examiner’s rejection of independent claims 1, 11, 20, and 23 under 35 U.S.C. § 112, second paragraph. Rejections of Claims 1, 4, 11, 13, and 23 under 35 U.S.C. § 102(b) or, in the alternative, § 103(a) The Examiner finds Paaske describes that “all communication between the peripheral device and the host passes through and is controlled 5 Appeal 2016-000059 Application 12/505,752 by the TPM,” as recited in claim 1. Final Act. 8 (citing Paaske, col. 5,11. 58—62). In the alternative, the Examiner concludes the subject matter of claim 1 would have been obvious to a person of ordinary skill in the art based on the disclosure of Paaske. Final Act. 8. In particular, the Examiner explains that “[o]ne of ordinary skill in the art would have been motivated to pass all communication through and controlled by TPM in order to achieve the predictable result of providing security for every communication[].” Final Act. 8. Appellant argues Paaske does not describe “all communication between the peripheral device and the host passes through and is controlled by the TPM” because Paaske discloses an alternative path for communication to travel between the flash memory 206 and the host processing device 208 that does not include the TPM 202. App. Br. 4, 5 (citing Paaske Fig. 2); Reply Br. 2. In response to the Examiner’s conclusion of obviousness, Appellant argues that “all communication passing through a TPM would not have been obvious in light of Paaske” because “[i]n fact, Paaske teaches away from this feature by disclosing the alternative path that does not include the TPM 202.” App. Br. 5. We are not persuaded of error in the Examiner’s conclusion that the subject matter of claim 1 would have been obvious in view of the teachings of Paaske. In particular, Appellant has not persuaded us that the existence of the alternative path in Paaske teaches away from having all communication pass through the TPM. App. Br. 5. Paaske neither indicates a preference for the alternative path through the other processing component 222 nor discourages the path through the TPM. See Paaske col. 5,11. 3—8; see In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“[T]he prior art’s mere 6 Appeal 2016-000059 Application 12/505,752 disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed . . . Furthermore, Paaske discloses that “the integrated circuit 204 may include one or more other processing component(s) 222 that may operate independently of the TPM 202.” Paaske col. 5,11. 6—8 (emphasis added). Based on this, the Examiner finds that the alternative path from the processing device to the flash memory through the other processing device 222 is optional. Ans. 4 (citing Paaske col. 5,11. 6—8). In response to this finding, Appellant argues: The application drafter [of Paaske] does not appear to have intended for the processing component 222 to be an optional element. Reading Paaske as a whole, the drafter appears to have used the word “may” as meaning there could be one processing component 222, or alternatively, there could be more than one processing component 222. In either case, there is an alternative path between the flash memory 206 and the host processing device. There is no explicit or implicit disclosure or suggestion of a processing component 222 not being included. Reply Br. 2. We are not persuaded because Appellant does not direct us to disclosure in Paaske stating that one processing component 222 is required and additional ones are optional. Rather, Paaske expressly uses permissive language, i.e., “may include,” before “one or more other processing component(s) 222.” In the absence of components 222, it is not clear that Paaske would include an alternative path. In any event, at the very least, Paaske’s use of permissive language contradicts Appellant’s contention that 7 Appeal 2016-000059 Application 12/505,752 Paaske teaches away from having all communication pass between the host and the flash memory through the TPM. We find that the Examiner has provided articulated reasoning underlying the conclusion of obviousness, supported by evidence in the record. See Final Act. 8 (“One of ordinary skill in the art would have been motivated to pass all communication through and controlled by TPM in order to achieve the predictable result of providing security for every communication[].”); Ans. 4—5 (“It would have been obvious and predictable to one of ordinary skill in the art at the time of the invention to include in Paaske’s system, passing all communication between the peripheral device and a host through TPM, in order to optimize the security of the system by verifying and validating all communications or connections to the system.”). For example, Paaske describes the security benefits of verifying information using the TPM prior to loading the information into the flash memory. Paaske col. 5,1. 63—col. 6,1. 6. Appellant does not rebut the motivation proffered by the Examiner, other than to say that Paaske teaches away, which we find unpersuasive for the reasons explained above. As such, we are not persuaded of Examiner error that Paaske renders claim 1 obvious. Based on the foregoing, we sustain the rejection of claim 1 under 35 U.S.C. § 103(a). We likewise sustain the rejections of claims 2—24 under 35 U.S.C. § 103(a) for which no additional persuasive arguments have been presented. DECISION The rejection of claims 1, 11, 20, and 23 under 35 U.S.C. § 112, first paragraph is REVERSED. 8 Appeal 2016-000059 Application 12/505,752 The rejection of claims 1, 11, 20, and 23 under 35 U.S.C. § 112, second paragraph is REVERSED. The rejections of 1—24 under 35 U.S.C. § 103(a) are AFFIRMED.3 Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). 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 3 Because we sustain the rejection of claims 1,4, 11, 13, and 23 under 35 U.S.C. § 103(a) over Paaske, we need not reach the Examiner’s alternative rejection of these claims as anticipated by Paaske. 9 Copy with citationCopy as parenthetical citation