Ex Parte Droege et al

Board of Patent Appeals and Interferences

Apr 29, 2009

10256105 (B.P.A.I. Apr. 29, 2009)

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.

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Application 10/256,105

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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
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(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
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(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.'
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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).
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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
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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
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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
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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
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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
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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

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