Ex Parte Droege et alDownload PDFBoard of Patent Appeals and InterferencesApr 29, 200910256105 (B.P.A.I. Apr. 29, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte HARTMUT DROEGE and MARTIN WITZEL ____________ Appeal 2008-3192 Application 10/256,105 Technology Center 2100 ____________ Decided: 1 April 29, 2009 ____________ Before JOHN C. MARTIN, JOSEPH L. DIXON, and HOWARD B. BLANKENSHIP, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date. Appeal 2008-3192 Application 10/256,105 2 I. STATEMENT OF THE CASE A Patent Examiner rejected claims. The Appellant appeals therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. A. INVENTION The invention at issue on appeal relates to a method of accessing a shared subroutine of computer system (Spec. 1.) B. ILLUSTRATIVE CLAIM Claim 1, which further illustrates the invention, follows. 1. A computer-implemented method of accessing a shared subroutine being part of a shared library of a computer system, characterized by the following steps: encrypting an original parameter list to obtain an encrypted parameter list; calling the shared subroutine with the encrypted parameter list; executing the shared subroutine, wherein executing the shared subroutine further comprises: decrypting the encrypted parameter list in the shared subroutine to obtain a decrypted parameter list corresponding to the original parameter list; and processing the decrypted parameter list. C. REFERENCES The Examiner relies on the following references as evidence: Sigbjornsen US 6,266,416 B1 Jul. 24, 2001 Appeal 2008-3192 Application 10/256,105 3 (hereinafter referred to as Sig) Alfred J. Menezes, et al., Handbook of Applied Cryptography 397-403 (1997). D. REJECTIONS The Examiner makes the following rejections. Claims 1-6, 14, and 16 are rejected under 35 U.S.C. 102(e) as being anticipated by Sig. Claim 7 is rejected under 35 U.S.C. 103(a) as being unpatentable over Sig. Claims 8-13, 15, and 17 are rejected under 35 U.S.C. 103(a) as being unpatentable over Sig, and further in view of Menezes. II. ISSUE Have Appellants shown the Examiner erred in rejecting the claims under anticipation? Have Appellants shown the Examiner erred in rejecting the claims under obviousness? III. PRINCIPLES OF LAW 35 U.S.C. § 102 "[A]nticipation of a claim under § 102 can be found only if the prior art reference discloses every element of the claim . . . ." In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)). "[A]bsence from the reference of any claimed element negates anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571 Appeal 2008-3192 Application 10/256,105 4 (Fed. Cir. 1986), overruled on other grounds by Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337 (Fed. Cir. 2004). “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987) (citation omitted). Analysis of whether a claim is patentable over the prior art under 35 U.S.C. § 102 begins with a determination of the scope of the claim. We determine the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citing In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) (citation omitted)). The properly interpreted claim must then be compared with the prior art. Appellants have the opportunity on appeal to the Board to demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006). In rejecting claims under 35 U.S.C. § 102, “[a] single prior art reference that discloses, either expressly or inherently, each limitation of a claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted). 35 U.S.C. § 103(a) Section 103 forbids issuance of a patent when 'the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.' Appeal 2008-3192 Application 10/256,105 5 KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 405 (2007). In KSR, the Supreme Court emphasized "the need for caution in granting a patent based on the combination of elements found in the prior art," id. at 401, 415, and discussed circumstances in which a patent might be determined to be obvious. Id. (citing Graham v. John Deere Co., 383 U.S. 1, 12 (1966)). The Court reaffirmed principles based on its precedent that "[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." Id. at 416. The operative question in this "functional approach" is thus "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id. at 415, 417. The Federal Circuit recently recognized that "[a]n obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). The Federal Circuit relied in part on the fact that Leapfrog had presented no evidence that the inclusion of a reader in the combined device was “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art." Id. at 1162 (citing KSR, 550 U.S. at 417- 418). One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appeal 2008-3192 Application 10/256,105 6 VI. ANALYSIS 35 U.S.C. § 102 The Examiner rejects independent claims 1, 14, and 16 as anticipated by Sig. While we find the Examiner's statement of the rejection at page 3 of the Answer to be somewhat confusing by the references to the disclosed invention and limited citations to the Sig reference, the Examiner clarifies the rejection and claim interpretation at pages 7-11 in the responsive arguments. The Examiner has clarified the Examiner’s claim interpretation with respect to "shared subroutine" and "shared library" as corresponding to the programs identified in column 8 of Sig which are stored on the smartcard which may be shared at various individuals and applications/programs. We find the Examiner’s claim interpretation and correlation to the claimed invention to be clear, reasonable, and supported by Sig. Therefore, we look to Appellants’ Briefs to show error in the Examiner’s claim interpretation or correlation of the claimed invention to the teachings of Sig. Appellants maintain that the portions of Sig do not disclose accessing a shared subroutine being part of a shared library of a computer system. (App. Br. 13.) Appellants argue the merits of figures 10A and 10B and maintain that Sig does not show accessing a shared subroutine. (App. Br. 14-15.) Appellants further contend that the encrypted program(s) of Sig is not a subroutine and hence cannot teach accessing a shared subroutine. (App. Br. 15.) Throughout all of the numerous arguments posed by Appellants, we find no reference to Appellants’ disclosure with which to more properly interpret the argued claim limitations, nor do we find presentation of extrinsic evidence with which to show error in the Appeal 2008-3192 Application 10/256,105 7 Examiner’s claim interpretation or reasonableness thereof. Therefore, we do not find Appellants' arguments to show error in the Examiner's initial showing of anticipation of independent claim 1. Appellants argue that Sig does not teach encrypting an original parameter list. (App. Br. 15.) The Examiner maintains that Sig teaches that parameters were encrypted and decrypted in Sig. (Ans. 10.) We agree with the Examiner that the encrypted parameters may be deemed to be an original parameter list of one or more parameters. We find no definition of the "original parameter list" in Appellants' Specification and Appellants have not identified any express definition. Furthermore, we find no claim language in independent claim 1 which sets forth any characteristics or context for the "original parameter list." Therefore, we find Appellants' argument to be unpersuasive of the error in the Examiner's initial showing of anticipation. Appellants argue that Sig does not teach calling the shared subroutine with the encrypted parameter list (App. Br. 16) and executing a shared subroutine (App. Br. 17). Appellants maintain that the portion of Sig relied upon by the Examiner teaches only that a program may contain one or more encrypted parameters. The Examiner maintains that figure 10 and corresponding disclosure clearly shows calling and executing a shared subroutine in Sig. (Ans. 11.) We agree with the Examiner that the encrypted parameter(s) would have been used in calling the subroutine on the smartcard and used in executing this shared subroutine in the shared library upon the smartcard. From our review of the Examiner’s claim interpretation and application of the prior art thereto, while there is no word for word or “ipsis Appeal 2008-3192 Application 10/256,105 8 verbis” correlation of the prior art teachings, the Examiner has set forth detailed explanations concerning how the claims are being interpreted and how the prior art applies thereto. Clearly, this is the goal of patent prosecution to generate a clear understanding of the claimed invention, the application of the prior art thereto, presentation of arguments thereto by Appellants and/or modification of the prior claim language. Here, Appellants have chosen to merely assert that they disagree with the Examiner’s claim interpretation which has been clearly set forth. Since we find no persuasive showing thereof by Appellants, which is based upon evidence in the record, we will sustain the Examiner’s rejection of independent claim 1. Therefore, we will sustain the rejection of representative independent claim 1 and dependent claims 5 and 6 which have not been argued separately. Appellants have not presented separate arguments for independent claims 14 and 16. Therefore, we will group claims 14 and 16 with representative claim 1. With respect to dependent claim 2 (“Group B”), the Examiner maintains that Sig teaches the use of an auxiliary parameter is added to an original parameter list at page 3 of the Answer and further explains the reliance upon inherency. Therefore, the unencrypted authentication key, which was "added" to an empty parameter list, and was passed to the encryptor in order for the key to be encrypted would meet the claim limitation. (Ans. 11, see responsive arguments). Appellants contend in pages 6-7 of the Reply Brief that even if the Examiner’s interpretation of the original parameter list is proper, no portion of Sig actually teaches that an Appeal 2008-3192 Application 10/256,105 9 auxiliary parameter is added to the original parameter list before encrypted in the original parameter list. Appellants have not shown how the Examiner’s interpretation at page 11 of the Answer is in error or unreasonable. Therefore, we will sustain rejection of dependent claim 2 and dependent claims 3 and 4 which are grouped therewith by Appellants. 35 U.S.C. § 103 With respect to dependent claim 7 (which depends from dependent claim 5 and ultimately on independent claim 1), the Examiner maintains that dependent claim 7 would have been obvious to one of ordinary skill in the art in light of Sig alone where multiple smart cards containing the same authentication format and algorithms would have random number generators on each smartcard. Appellants contend in pages 7-9 of the Reply Brief that the requests for random numbers are made only to the random number generators in the same smartcard as the protected software application and consequently Sig does not teach or fairly suggest the random number generator is contained in a separate shared library. We agree with Appellants’ contention and find that the Examiner’s position to be speculative and unsupported when claim 7 is read as depending from claim 5 and claim 1. Therefore, we find the Examiner has not set forth a sufficient initial showing of obviousness of dependent claim 7, and we cannot sustain rejection of dependent claim 7. With respect to independent claim 8, again Appellants argue that Sig fails to teach or suggest a "shared subroutine." (App. Br. 31.) As discussed Appeal 2008-3192 Application 10/256,105 10 above, we find the Examiner’s reliance upon the teachings of Sig to be reasonable as applied with respect to independent claim 1 and further as expressed with respect to independent claim 8 at pages 5-6 and 13-16 of the Answer. Therefore, we look to Appellants' Briefs to show error in the Examiner’s initial showing of obviousness. Appellants contend that Sig does not teach or suggest "deriving a security level from the result of the comparison." (App. Br. 32-33.) Appellants contend that Sig does not teach that the security level is "derived from a result of the comparison of a first security information to a second security information" as recited in independent claim 8. Appellants argue that the security levels in Sig are pre-placed into an access table by a software producer rather than derived. (App. Br. 33.) The Examiner explains the rationale and correlation of the claim language to the disclosure of Sig at page 13 of the Answer. We find the Examiner’s embellished explanation in the Answer to be reasonable in light of the broad recitation in independent claim 8. Moreover, we find that independent claim 8 does not detail the "comparing", the "deriving", or the "processing" steps to differentiate from the Examiner’s stated interpretation. Additionally, we find no argument in the Reply Brief to respond to the Examiner’s stated interpretation. Therefore, find Appellants' argument to be unpersuasive of error in the Examiner’s initial showing of obviousness of independent claim 8. With respect to Appellants' arguments concerning a lack of showing by the Examiner for the proposed combination of Sig and Menezes, we find most of Appellants’ arguments and contentions to be seemingly persuasive if those arguments were supported by the express language of independent Appeal 2008-3192 Application 10/256,105 11 claim 8. (App. Br. 33-38; Reply Br. 9-10). With that said, we find Appellants' arguments to be unpersuasive in light of the broad language of independent claim 8 and the Examiner’s reliance upon the broad teachings of Sig and Menezes in combination. Therefore, we will sustain the rejection of representative independent claim 8 and independent claims 15 and 17 grouped therewith by Appellants since no separate arguments for patentability were presented. Additionally, we will sustain the rejection of dependent claims 9-13 which are grouped with independent claim 8 since no separate arguments for patentability were presented. V. CONCLUSION For the aforementioned reasons, the Examiner has shown a prima facie case of anticipation and obviousness for claims 1-6 and 8-17 and Appellants have not made a persuasive showing of error in the Examiner’s showing. Appellants have shown error in the Examiner’s showing of obviousness with respect to dependent claim 7. VI. ORDER We affirm the anticipation rejection of claims 1-6, 14 and 16, and the obviousness rejections of claims 8-13, 15 and 17. We reverse the obviousness rejection of claim 7. 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)(1)(iv) (2007). AFFIRMED-IN-PART Appeal 2008-3192 Application 10/256,105 12 erc IBM CORP (YA) C/O YEE & ASSOCIATES PC P.O. BOX 802333 DALLAS, TX 75380 Copy with citationCopy as parenthetical citation