Ex Parte Goodman et al

Board of Patent Appeals and Interferences

Feb 18, 2009

09790012 (B.P.A.I. Feb. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVEN DALE GOODMAN,
RANDALL SCOTT SPRINGFIELD, and JAMES PETER WARD
____________

Appeal 2008-1919
Application 09/790,012
Technology Center 2100
____________

Decided: February 18, 2009
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Before LANCE LEONARD BARRY, HOWARD B. BLANKENSHIP, and
JAY P. LUCAS, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 7-20. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
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Application 09/790,012

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A. INVENTION
The invention at issue on appeal is a "sticky latch" that prevents a
cryptographic subsystem's reset block from being unblocked once it has
been set by the subsystem's device driver. When the device driver receives
notification that a powered-off sleep state is being entered, it sets the block
and then sets the latch so that the block setting cannot be altered during entry
to the sleep state. Upon exit from the sleep state, a system reset unlocks the
latch but not the block, thereby allowing the device driver or a basic input/
output system to regain control of the reset. Because the reset to the
subsystem is blocked when the system reset occurs, the subsystem remains
locked, defending against any attack occurring before the device driver
regains control. (Spec. 4.)

B. ILLUSTRATIVE CLAIM
The following claim further illustrates the invention.
7. A method for preventing an unauthorized reset of a
cryptographic subsystem in a personal computer system, the
method comprising:
receiving notification that the personal computer system
is entering a powered off sleep state;
after receiving the notification and prior to the personal
computer entering the powered off sleep state, setting a block
signal for blocking a cryptographic subsystem reset; and
locking the block signal responsive to the block signal
being set to prevent the block signal from being altered, the
block signal remaining locked while the personal computer
system is in the powered off sleep state such that the
cryptographic subsystem is protected from intrusion while the
personal computer system is entering the powered off sleep
state, while the personal computer system is in the powered off
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sleep state, and while the personal computer system is
recovering from the powered off sleep state.

C. PRIOR ART
Kaplan 6,704,871 B1 Mar. 9, 2004

Alsaadi 6,338,142 B1 Jan. 8, 2002

Kou 5,978,923 Nov. 2, 1999

D. REJECTION
Claims 7-20 stand rejected under 35 U.S.C. § 103(a) as obvious over
Alsaadi, Kou, and Kaplan.

II. CLAIM GROUPING
When multiple claims subject to the same ground of rejection
are argued as a group by appellant, the Board may select a
single claim from the group of claims that are argued together
to decide the appeal with respect to the group of claims as to the
ground of rejection on the basis of the selected claim alone.
Notwithstanding any other provision of this paragraph, the
failure of appellant to separately argue claims which appellant
has grouped together shall constitute a waiver of any argument
that the Board must consider the patentability of any grouped
claim separately.

37 C.F.R. § 41.37(c)(1)(vii) (2006).1
Here, the Appellants argue claims 7-20, which are subject to the same
ground of rejection, as a group. (Sub. App. Br2. 6-10). We select claim 7 as

1 We cite to the version of the Code of Federal Regulations in effect at the
time of the Substitute Appeal Brief. The current version includes the same
rules.
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Application 09/790,012

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the sole claim on which to decide the appeal of the group. "With this
representation in mind, rather than reiterate the positions of the parties in
toto, we focus on the issues therebetween." Ex Parte Zettel, No. 2007-1361,
2007 WL 3114962, at *2 (BPAI 2007).

III. COMBINING TEACHINGS OF KAPLAN, ALSADI, AND KOU
The Examiner makes the following conclusion and findings.
[I]t would have been obvious to a person in the art at the time
the invention was made to modify the method disclosed in
Alsaadi to incorporate the use of a cryptographic subsystem
into the method. This modification would have been obvious
because a person having ordinary skill in the art, at the time the
invention was made, would have been motivated to do so since
it is suggested by Kaplan et al. in order to add overall security
to the personal computer to prevent from unauthorized use in
col. 2, lines 5-12.

(Ans. 4-5.) The Appellants argue that "[e]ven, if a cryptographic subsystem
were included within Kou's computer system, Kou does not provide any
teachings of any consumer devices that would require the cryptographic
subsystem from being reset in response to a user pressing a 'sleep' button."
(Sub. App. Br. 9-10.)

A. ISSUE
Therefore, the issue is whether the Appellants have shown error in the
Examiner's reasons for combining teachings of Kaplan with those of Alsaadi
and Kou.

2 We rely on and refer to the Substitute Appeal Brief in lieu of the original
Appeal Brief, because the latter was defective. We have not considered the
original in deciding this appeal.
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B. LAW
The presence or absence of a reason "to combine references in an
obviousness determination is a pure question of fact." In re Gartside, 203
F.3d 1305, 1316 (Fed. Cir. 2000) (citing In re Dembiczak, 175 F.3d 994,
1000 (Fed. Cir. 1999)). A reason to combine teachings from the prior art
"may be found in explicit or implicit teachings within the references
themselves, from the ordinary knowledge of those skilled in the art, or from
the nature of the problem to be solved." WMS Gaming Inc. v. Int'l Game
Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d
1350, 1355 (Fed. Cir. 1998)).

C. FINDINGS OF FACT ("FFS")
1. Kou's "computer system includes one or more 'sleep' buttons which
selectively reduce power consumption to subsystems based on the status of
various consumer devices which share the subsystems with a computer
function of the system." (Abs., ll. 3-7.)

2. Examples of the computer system's consumer devices include a
telephone and a telephone answering machine. (Col. 4, ll. 24-25.)

3. "In addition to these consumer devices, conventional computer
applications can be active within the system at the same time (e.g.,
spreadsheets, word processing programs, e-mail, and the like)." (Id. ll. 30-
33.)

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4. As background to their invention, the Appellants admit that "[w]ith
the advent of personal computer system use in every day personal and
business affairs, the issue of computer security has become critical. To
protect the information contained in the personal computer system, which in
many cases may be highly sensitive and confidential, cryptographic
subsystems have been developed." (Spec. 1.)

5. Kaplan discloses that "[d]igital signal processors (DSP[s]) are
widely used in devices such as modems, cellular telephones and facsimiles.
With an increase in digital communications, data transmission security has
become an issue in numerous DSP applications. A standard DSP is not
capable of providing data transmission security . . . ." (Col. 1, ll. 31-36.)

6. To provide such data transmission security, Kaplan further
discloses "a highly integrated security processor which incorporates a
general purpose digital signal processor (DSP), along with a number of high
performance cryptographic function elements . . . ." (Abs., ll. 2-4.)

D. ANALYSIS
The references themselves, the ordinary knowledge of those skilled in
the art, and the nature of the problem to be solved provide at least two
reasons for combining teachings of Kaplan with those of Alsaadi and Kou.
First, Kou's discloses a computer system (FF 1) that runs spreadsheets, word
processing programs, e-mail, and the like (FF 3). The Appellants admit that
cryptographic subsystems are used to protect information stored in computer
systems. (FF 4.) Therefore, one of ordinary skill in the art would have
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added a cryptographic subsystem to Kou's computer to protect the
information stored therein.

Second, Kou's computer system includes a telephone and a telephone
answering machine. (FF 2.) Kaplan discloses that DSPs are widely used in
telephones and that data transmission security has become an issue in
numerous DSP applications. (FF 5.) The latter reference addresses this
issue by further disclosing a DSP having cryptographic functions. (FF 6.)
Therefore, one of ordinary skill in the art would have added a DSP with a
cryptographic subsystem to Kou's telephone to provide data security.

The Appellants further argue that "Kaplan discloses that whenever a
possible security violation is detected, the DSP and cryptographic function
elements are reset. If Kou' s computer system were allowed to block
Kaplan's reset of the DSP and cryptographic function elements, then
Kaplan's security perimeter can be breached (see col. 9, 32-66)." (Sub. App.
Br. 10.)

"What appellants overlook is that it is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review." In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983)
(citing Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed.
Cir. 1983); In re Andersen, 391 F.2d 953, 958 (CCPA 1968)); see also In re
Nievelt, 482 F.2d 965, 968 (CCPA 1973) ("Combining the teachings of
references does not involve an ability to combine their specific structures.").
The test for obviousness is not whether the features of a reference may be
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bodily incorporated into the structure of another reference but what the
combined teachings of those references would have suggested to one of
ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).

Here, the Examiner does not assert that the Kaplan's DSP and
cryptographic function elements be bodily incorporated into the structure of
Alsaadi and Kou. Instead, she finds that the combined teachings of the
references would have suggested to one of ordinary skill in the art the
Appellants’ invention. The Appellant's argument overlooks "the relevant
combined teachings of the references." Andersen, 391 F.2d at 958
(dismissing the argument that a combination would result in an inoperative
structure).

E. CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Appellants have not shown error in the Examiner's reasons for combining
teachings of Kaplan with those of Alsaadi and Kou.

IV. COMBINED TEACHINGS OF ALSADI, KOU, AND KAPLAN
The Examiner makes the following findings.
Examiner would first like to note the two stages of a reset: (1)
powering down, and (2) powering up. Thus, it is important to
realize that blocking either/both of the 2 stages of a reset results
in blocking a reset. Alsaadi was modified by Kou since Kou
specifically mentioned the use of a method/system which
determines which subsystems of a system are not to be reset
once a sleep state/mode is requested in col. 5, .lines 1-15: "In
various embodiments, a system according to the present
invention transitions among multiple power saving states by
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disabling or slowing down individual subsystems according to
criteria established by the state of active consumer devices and
the state of one of the "sleep" buttons. Whether power will be
reduced or eliminated to a particular one of the subsystems is
determined not only by conventional parameters such as
inactivity during an extended time period, but also by other
parameters such as whether one of the consumer devices (TV,
radio, etc.) is presently being used and whether the user has
pressed a "sleep" button. Power savings can be achieved by
selectively disabling or slowing down clocks associated with
the subsystems, or by issuing commands to individual
subsystems to reduce power." Kou further suggests that this
determination step of which subsystems may or may not be
reset occurs after receiving notification of the system entering a
sleep state, but prior to the computer system entering the
powered off sleep state in col. 5, lines 47-53: "As shown,
certain subsystems are prevented from changing into a power
saving mode depending on the status of various consumer
devices and depending on whether a sleep button has been
pressed. In this embodiment, certain peripheral devices or
subsystems remain active (i.e., not be disabled) to support an
active consumer device." Thus, using the information
mentioned by Kou in combination with the Alsaadi yields the
limitation presented in claims 7, 13, and 15.

(Ans. 13-14.) The Appellants argue that "[t]he Examiner recognizes that
Alsaadi and Kou fail to disclose a cryptographic subsystem reset and,
therefore, Alsaadi and Kou cannot disclose setting a block signal for
blocking a cryptographic subsystem reset after receiving notification and
prior to the personal computer system entering a powered off sleep state."
(Sub. App. Br. 7.)

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A. ISSUE
Therefore, the issue is whether the Appellants have shown error in the
Examiner's findings about what the combined teachings of Alsaadi, Kou,
and Kaplan would have suggested.

B. LAW
"The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art." In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (citing In re Keller, 642 F.2d
413, 425 (CCPA 1981)). "Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references." In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (citing Keller, 642 F.2d at 425). In determining
obviousness, furthermore, a reference "must be read, not in isolation, but for
what it fairly teaches in combination with the prior art as a whole." Id.

C. FINDINGS OF FACT
7. The Examiner rejects claim 7 over the combined teachings of
Alsaadi, Kou, and Kaplan. (Ans. 3-5.)

8. As aforementioned, the Examiner finds that the combined teachings
of Alsaadi and Kou would have suggested setting a signal to block a reset of
a personal computer's ("PC's") subsystem after receiving notification that
the PC is entering, and before the PC enters, a powered off sleep state. (Id.
at 13-14.)

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D. ANALYSIS
The Examiner rejects claim 7 over the combined teachings of Alsaadi,
Kou, and Kaplan. (FF 7.) The Appellants do not contest the Examiner's
finding (FF 8) that the combined teachings of Alsaadi and Kou would have
suggested setting a signal to block a reset of a PC's subsystem after
receiving notification that the PC is entering, and before the PC enters, a
powered off sleep state. Instead, they argue that these two references fail to
disclose that the subsystem for which the reset is blocked is a cryptographic
subsystem. The Examiner, however, relies on Kaplan to teach a
cryptographic subsystem. (FF 6.)

The Examiner has established a prima facie case that the combined
teachings of Alsaadi, Kou, and Kaplan would have suggested setting a signal
to block a reset of a PC's cryptographic subsystem after receiving
notification that the PC is entering, and before the PC enters, a powered off
sleep state. The Appellants' attack on Alsaadi and Kou cannot show non-
obviousness.

E. CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Appellants have shown no error in the Examiner's findings about what the
combined teachings of Alsaadi, Kou, and Kaplan would have suggested.

V. ORDER
We affirm the rejection of claims 7-20.

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No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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