Ex Parte YONG

Patent Trial and Appeal Board

Jan 23, 2017

12505752 (P.T.A.B. Jan. 23, 2017)

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.
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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
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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.
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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
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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
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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
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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.
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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.
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