Ex Parte Rodriguez et al

Patent Trial and Appeal Board

Apr 25, 2018

12276940 (P.T.A.B. Apr. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/276,940
89941 7590
HONEYWELL/S&S
Patent Services
115 Tabor Road
P.O.Box 377
FILING DATE
11/24/2008
04/27/2018
MORRIS PLAINS, NJ 07950
FIRST NAMED INVENTOR
Manuel I. Rodriguez
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.
H0020768-5548 5096
EXAMINER
CASEY, ALEXIS M
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
04/27/2018 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):
patentservices-us@honeywell.com
pairdocketing@ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MANUEL I. RODRIGUEZ, JAMAL HAQUE,
and KEITH A. SOUDERS
Appeal2017-002297
Application 12/276,940 1
Technology Center 3600
Before ALLEN R. MacDONALD, ADAM J. PYONIN, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4--10, and 21, which are all of the claims in the application that
are not canceled or withdrawn. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Technology
The application relates to "tamper resistant memory devices," such as
"a random access memory (RAM)" with "the ability to destruct ... the
contents stored within [its] memory cells" if an "adversarial party" tries to
inspect the contents of the memory. Spec. Abstract, ,r 12.
1 According to Appellants, the real party in interest is Honeywell
International Inc., of Morristown, New Jersey. App. Br. 3.
Appeal2017-002297
Application 12/276,940
Illustrative Claim
Claim 1 is illustrative and reproduced below with certain limitations at
issue emphasized:
1. A system comprising:
a memory device comprising:
a memory cell that stores digital data, wherein the digital
data includes more sensitive data and less sensitive data, and
wherein the memory cell has a plurality of memory addresses
accessible for read and write operations through a memory
interface; and
a tamper detection circuit coupled to the memory cell,
wherein the tamper detection circuit comprises:
a tamper detection state machine;
a communications decoder coupled to the memory
interface, wherein the communications decoder is
configured to observe sequences of memory access
operations to the memory cell and send signals to the
tamper detection state machine;
at least one timer configured to count a duration of
time and send signals to the tamper detection state
machine; and
a data destruct engine;
wherein the tamper detection state machine is
configured to receive signals from the communications
decoder and the at least one timer and, based on the signals
from the communications decoder and the at least one
timer, send an activation signal to the data destruct engine,
and wherein the data destruct engine is configured to
overwrite digital data stored in the memory cell in a
prioritized order proceeding from more sensitive data to
less sensitive data in response to receiving the activation
signal from the tamper detection state machine.
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Application 12/276,940
Rejections
Claims 1, 2, 4--10, and 21 stand rejected under 35 U.S.C. § 112,
second paragraph as indefinite. Final Act. 2-3.
Claims 1, 2, 4--10, and 21 stand rejected under 35 U.S.C. § I03(a) as
obvious over the combination of Ginter et al. (US 2008/0148056 Al; June
19, 2008) and Mori (US 5,309,387; May 3, 1994). Final Act. 3-9.
ISSUES
1. Did the Examiner err in concluding that "more" and "less"
rendered claim 1 indefinite?
2. Did the Examiner err in concluding that "based on the signals"
rendered claim 1 indefinite?
3. Did the Examiner err in concluding that "completely timing a
watchdog duration without being reset" in claim 5 and "completely timing a
mission duration" in claim 6 rendered those claims indefinite?
4. Did the Examiner err in finding Ginter teaches or suggests "to
overwrite digital data stored in the memory cell in a prioritized order
proceeding from more sensitive data to less sensitive data," as recited in
claim 1?
ANALYSIS
Indefiniteness
A) Claims 1, 2, 4-10, and 21: "more" and "less"
Claim 1 recites "a memory cell that stores digital data, wherein the
digital data includes more sensitive data and less sensitive data." Claim 1
further recites "the data destruct engine is configured to overwrite digital
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Application 12/276,940
data stored in the memory cell in a prioritized order proceeding from more
sensitive data to less sensitive data."
The Examiner concludes the terms "more" and "less" in claim 1 are
each "a relative term" and that the claim and Specification "do[] not provide
a standard for ascertaining the requisite degree." Final Act. 2-3.
Appellants argue "one of ordinary skill in the art would understand
that the point of reference for the phrase 'more sensitive data' is the 'less
sensitive data,' and vice versa." App. Br. 5. Appellants provide an example
in which a single relative term in isolation, such as "more heavy" alone or
"less heavy" alone, may on its own be indefinite, but in combination
"provide the reference points against which the relative terminology is
measured." Reply Br. 3--4.
However, Appellants' example ("more heavy" or "less heavy")
involves a measurement (i.e., an object's mass) that is objective. Given two
objects, everyone can objectively agree which is "more heavy" and which is
"less heavy." Here, the claim terms at issue ("more sensitive data" and "less
sensitive data") are subjective. Ans. 3. Given two pieces of data, persons of
ordinary skill in the art could reasonably disagree over which was more
sensitive. For example, the memory on a company's server might contain
( 1) a list of the company's customers and their credit card numbers and
(2) technical schematics or source code for the company's products. The
sales team might consider the former to be more sensitive, whereas the
product design team might consider the latter to be more sensitive. As the
Federal Circuit has said, "[ w ]hen a claim term depends solely on the
unrestrained, subjective opinion of a particular individual purportedly
practicing the invention, without sufficient guidance in the specification to
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Application 12/276,940
provide objective direction to one of skill in the art, the term is indefinite."
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1260 (Fed. Cir.
2014) (quotation omitted).
Appellants further argue "the specification does provide a standard for
ascertaining the requisite degree" because the Specification provides an
example in which data is deleted based on "priority lists." Ans. 5---6 ( citing
Spec. ,r 16). Specifically, the cited portion of the Specification discloses: "In
one embodiment, data destruct engine 150 deletes data from memory cells
120 based on a priority lists, erasing the most sensitive data first before
proceeding to relatively less sensitive data." Spec. ,r 16. At best, this
discloses "one embodiment," not a definition of a standard. Claim 1 as
presently written is not limited to this one embodiment. See Interval
Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1373 (Fed. Cir. 2014) ("we
decline to cull out a single 'e.g.' phrase from a lengthy written description to
serve as the exclusive definition of a facially subjective claim term"). Thus,
this one example does not resolve the indefiniteness of these subjective
terms.
We also note that Appellants argue indefiniteness under the standard
for issued patents in district court litigation, namely that "a patent is invalid
for indefiniteness if its claims, read in light of the specification delineating
the patent, and the prosecution history, fail to inform, with reasonable
certainty, those skilled in the art about the scope of the invention." Nautilus,
Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). However,
"indefiniteness rejections by the USPTO arise in a different posture from
that of indefiniteness challenges to an issued patent." In re Packard, 751
F.3d 1307, 1312 (Fed. Cir. 2014). "The Office construes claims by giving
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Application 12/276,940
them their broadest reasonable interpretation during prosecution in an effort
to establish a clear record of what the applicant intends to claim. Such claim
construction during prosecution may effectively result in a lower threshold
for ambiguity than a court's determination." MPEP § 2173.02(!). Thus,
during prosecution, "if a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite." Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential); Ex parte McAward, Appeal No. 2015-006416, 2017 WL
3669566, at *12 (PTAB Aug. 25, 2017) (precedential) (holding Nautilus did
not change the tests set forth in Miyazaki and Packard during prosecution).
Regardless, our result would be the same even under the stricter test of
Nautilus, as evidenced by decisions such as Interval Licensing holding a
subjective term not "reasonably certain" under Nautilus.
Accordingly, we sustain the indefiniteness rejection of claim 1, and its
dependent claims 2, 4--10, and 21, which Appellants argue are patentable for
similar reasons. See App. Br. 7; 37 C.F.R. § 4I.37(c)(l)(iv).
B) Claims 1, 2, 4-10, and 21: "based on the signals"
Claim 1 recites "the tamper detection state machine is configured to
receive signals from the communications decoder and the at least one timer
and, based on the signals from the communications decoder and the at least
one timer, send an activation signal to the data destruct engine."
The Examiner determines "[i]t is unclear from the conditional
limitation 'based on the signals' requires, if in response to receipt of the
signals is the 'based on the signals' or if based on limits to something
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Application 12/276,940
identified in the received signals or if based on is not receiving the signals."
Ans. 3.
We agree with Appellants, however, that "breadth is not
indefiniteness." SmithKline Beecham Corp. v. Apotex Corp., 403 F .3d 1331,
1341 (Fed. Cir. 2005) ( quotation omitted); Reply Br. 6. "Merely claiming
broadly does not ... prevent the public from understanding the scope of the
patent." Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d
1339, 1352 (Fed. Cir. 2009). Here, "based on the signals" may be broad,
ranging from simple triggers if any signals are received to sophisticated
algorithms that consider the content and interplay of the signals, but that
does not prevent the public from understanding the scope of the term.
Accordingly, we do not sustain the indefiniteness rejection of claim 1
and its dependent claims 2, 4--10, and 21 on the basis of "based on the
signals."
C) Claim 5: "completely timing a watchdog duration without being
reset" I Claim 6: "completely timing a mission duration"
Claim 6 recites "the mission timer is configured to provide an end of
mission signal to the tamper detection state machine that activates the data
destruct engine in response to the mission timer completely timing a mission
duration." Claim 5 similarly recites "the watchdog timer is configured to
provide a loss of master signal to the tamper detection state machine that
activates the data destruct machine in response to completely timing a
watchdog duration without being reset."
The Examiner determines "it is unclear what this ['completely
timing'] limitation requires." Ans. 3, 4. We agree with Appellants,
however, that in the context of the claims, "one of ordinary skill in the art
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would understand the plain meaning of the terminology." App. Br. 7, 8. For
example, the Specification describes "in one embodiment, the first
(watchdog) timer counts down from the watchdog duration towards zero. In
alternate embodiments, [the] first timer counts up from zero toward the
predetermined watchdog duration." Spec. ,r 29. In either case, the inquiry is
whether the "timer completes counting the watchdog duration." Id. Thus,
"completely timing a watchdog duration" is simply the timer counting the
full watchdog duration, regardless of whether the timer counts forward from
zero to the watchdog duration or instead counts backwards from the
watchdog duration to zero. The Specification provides a substantially
similar description for the mission timer. Id. ,r 30.
Accordingly, we do not sustain the indefiniteness rejection of claims 5
and 6 on the basis of completely timing their respective durations.
Obviousness
Claim 1 recites "the data destruct engine is configured to overwrite
digital data stored in the memory cell in a prioritized order proceeding from
more sensitive data to less sensitive data."
For this limitation, the Examiner relies on portions of Ginter that teach
storing sensitive data (i-f 516), destroying sensitive data upon detection of
tampering (i-f 488), destroying "the header and/or other important parts of the
object" (i-f 1513), a sensitivity security attribute (i-f 2104), and tracking
documents based on a sensitivity attribute (i-f 2126). Ans. 4 ( citing Ginter
,r,r 516, 2126, 2104, 1513); Final Act. 5. Nevertheless, we agree with
Appellants that the Examiner has not sufficiently shown where Ginter
teaches overwriting data "in a prioritized order proceeding from more
sensitive data to less sensitive data." App. Br. 9--14. At best, the cited
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Application 12/276,940
portions teach destroying certain sensitive data, but not a prioritized order of
the destruction of data, such as whether less sensitive data is later also
destroyed. 2
Accordingly, we do not sustain the obviousness rejection of claim 1,
and its dependent claims 2, 4--10, and 21.
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1, 2, 4--10, and 21 under § 112, second paragraph, but we reverse the
Examiner's decision rejecting claims 1, 2, 4--10, and 21 under§ 103.
Because we affirm at least one rejection for every appealed claim, we
designate this Decision an affirmance.
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.
§ 41.50(±).
AFFIRMED
2 In the event of further prosecution, the Examiner may wish to consider
whether destroying data "in a prioritized order proceeding from more
sensitive data to less sensitive data" is disclosed by US 2007 /0086257 Al
(published April 19, 2007). For example, claim 24 of that application recites
"erasing information in the at least one memory in a predefined sequence
such that information that is the most sensitive is erased first." See also
,r 21. We note that the assignee listed on the face of that application is
Honeywell International Inc., which is the same entity identified as the real
party in interest in this appeal. App. Br. 3.
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