Ex Parte Krishna

Patent Trial and Appeal Board

May 27, 2014

11102363 (P.T.A.B. May. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RAVI KRISHNA1
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Appeal 2011-009061
Application 11/102,363
Technology Center 2400
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Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-4 and 7-27. Appellant has previously canceled claims
5 and 6. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE the rejection of claims 1-4 and 7-27, and enter a new
ground of rejection of claims 22-24 pursuant to our authority under 37
C.F.R. § 41.50(b).

1 The Real Party in Interest is NetApp, Inc. App. Br. 1.
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STATEMENT OF THE CASE2
The Invention
Appellant’s invention relates to network authentication, and more
particularly to authentication of a client with a proxy server, for example, a
cookie-based acceleration of an authentication protocol. Spec. ¶ [0001], and
Title.
A cache server may receive a request from a client for network
services and authenticate the client with an authentication
protocol that does not support caching. The cache server may
then set a cookie for the authenticated client and authenticate
the client for additional requests for network services on the
basis of the cookie, and not through the standard authentication
procedure of the authentication protocol.
Spec. ¶ [0008] (“SUMMARY”).
Exemplary Claims
Claims 1 and 22, reproduced below, are representative of the subject
matter on appeal (emphasis added to contested limitations):
1. A method for authentication comprising;
receiving a request from a client for a network service at
a cache server;
authenticating the client at the cache server for the
request according to a non-cacheable authentication protocol,
the non-cacheable authentication protocol specifying that the
client be authenticated for each separate request with client
credentials and additional, non-cacheable information that is

2 Our decision relies upon Appellant’s Appeal Brief (“App. Br.,” filed
Oct. 12, 2010); Reply Brief (“Reply Br.,” filed Mar. 14, 2011); Examiner’s
Answer (“Ans.,” mailed Jan. 12, 2011); Final Office Action (“FOA,” mailed
June 3, 2010); and the original Specification (“Spec.,” filed Apr. 8, 2005).
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invalid for authentication after use, which prevents caching the
information necessary to authenticate the client for subsequent
requests, the authenticating including passing client credentials
to a client database manager;
setting a cookie at the cache server for the authenticated
client to access a domain of the network service;
receiving a subsequent request from the client for an
additional network service of the domain at the cache server,
the request including the cookie; and
authenticating the client at the cache server for the
subsequent request with the cookie by bypassing the non-
cacheable authentication protocol, and without passing client
credentials to the client database manager.
22. An article of manufacture comprising a computer
readable storage medium having content stored thereon, which
when accessed, provides instructions to
receive a client request for an access to content within a
part of a network domain;
authenticate the client for the client request for the entire
network domain with a non-cacheable, challenge-based
authentication protocol at a proxy server, the non-cacheable
authentication protocol specifying that the client be
authenticated for each separate client request with client
credentials and additional, non-cacheable information that is
invalid for authentication after use, which prevents caching the
information necessary to authenticate the client for subsequent
access to the domain, the authenticating including the proxy
server accessing a domain controller;
issue a cookie for the entire network domain from the
proxy server to the authenticated client; and
authenticate the client at the proxy server with the cookie
for subsequent access to the domain by bypassing the non-
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cacheable authentication protocol and not sending client
credentials to the domain controller.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Grantges, Jr. 6,324,648 B1 Nov. 27, 2001
Chan US 2004/0123144 A1 June 24, 2004
Sandhu US 2008/0052775 A1 Feb. 28, 2008
(filed Sep. 28, 2007)
Lownsbrough US 7,343,398 B1 Mar. 11, 2008
(filed Sep. 4, 2002)
Ramachandran US 7,370,351 B1 May 06, 2008
(filed Mar. 22, 2001)
Rejections on Appeal
1. Claims 1-4, 7, 11, 15-16, 22, 25 and 26 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Chan,
Ramachandran, and Grantges, Jr. Ans. 3-4.
2. Claims 8-10, 13, 14, 18-21, 24, and 27 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Chan,
Ramachandran, Grantges, Jr., and Sandhu. Ans. 19.
3. Claims 12, 17, and 23 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Chan, Ramachandran,
Grantges, Jr., and Lownsbrough. Ans. 26.
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ISSUE
Appellant argues (App. Br. 7-10; Reply Br. 4-9) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of the cited prior art is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a “non-cacheable authentication protocol specifying that the
client be authenticated for each separate request with client credentials and
additional, non-cacheable information that is invalid for authentication after
use, which prevents caching the information necessary to authenticate the
client for subsequent requests,” as recited in claim 1?
ANALYSIS
We only consider those arguments actually made by Appellant in
reaching this decision, and we do not consider arguments which Appellant
could have made but chose not to make in the Briefs so that any such
arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii).
We agree with Appellant’s arguments with respect to claim 1, and we
disagree with (1) the findings and reasons set forth by the Examiner in the
action from which this appeal is taken and (2) the reasons and rebuttals set
forth by the Examiner in the Examiner’s Answer in response to Appellant’s
Arguments. We highlight and address specific findings and arguments
regarding claim 1 for emphasis as follows.
Appellant contends claim 1 requires bypassing the non-cacheable
authentication protocol, and not passing authentication credentials for any
subsequent authentication. App. Br. 8. Appellant further contends, “[e]ven
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assuming a non-cacheable authentication protocol and a cookie set by a
cache server are shown in the cited references, there is no disclosure or
suggestion of bypassing a non-cacheable authentication protocol at a cache
server with a cookie.” Id. Appellant also contends, “use of a cookie in Chan
does not eliminate the need to pass client credentials.” Id. In the Reply,
Appellant contends,
Chan discloses a non-cacheable authentication protocol. As
recited in Appellant’s claims, a non-cacheable authentication
protocol requires the use of “client credentials and additional,
non-cacheable information that is invalid for authentication
after use, which prevents caching the information necessary to
authenticate the client for subsequent requests.” However, in
contrast to what is asserted by the Office, Chan actually teaches
caching and reusing information for subsequent access requests.
Reply Br. 4; and see Chan ¶¶ [0037]-[0039].
The Examiner finds Chan teaches or suggests a non-cacheable
authentication protocol for authenticating a client by its disclosure of a
challenge-response type of authentication process using a physical hardware
token. Ans. 30 (citing Chan ¶ [0045], lines 1-23).
We disagree with the Examiner’s finding cited above that Chan
teaches or suggests the claimed non-cacheable authentication protocol,
particularly a non-cacheable authentication protocol which “specif[ies] that
the client be authenticated for each separate request with client credentials
and additional, non-cacheable information that is invalid for authentication
after use, which prevents caching the information necessary to authenticate
the client for subsequent requests,” as recited in claim 1. We disagree with
the Examiner because Chan discloses, inter alia,
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Using the information that is extracted from the form, the
proxy server is able to retrieve the authentication information
that is appropriate for the authentication form. For example, the
proxy server is able to determine if a username/password
combination is required by the authentication form. If so, then
given the fact that the proxy server has already authenticated
the user and has verified identity information for the user, the
proxy server can retrieve the user’s username/password
information from an authentication database. In a similar
manner, other types of information may be retrieved as required
by the requested fields in the authentication form in accordance
with the user’s known identity. However, it should be noted
that the forms-based single-sign-on operation could be
configured to supply a standard, hardcoded username and
password for all users, including users who have not been
authenticated.
Chan ¶ [0054] (emphasis added). We find this disclosure of Chan to run
counter the requirements of claim 1, i.e., which prohibits “additional, non-
cacheable information that is invalid for authentication after use, which
prevents caching the information necessary to authenticate the client for
subsequent requests.”
Therefore, based upon the findings above, on this record, we are
persuaded of error in the Examiner’s reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 1. We therefore find error in the Examiner’s
resulting legal conclusion of obviousness.
Accordingly, Appellant has provided sufficient evidence or argument
to persuade us of reversible error in the Examiner’s reading of the contested
limitations on the cited prior art. Therefore, we reverse the Examiner’s
obviousness rejection of independent claim 1.
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For essentially the same reasons argued by Appellant as cited above,
we reverse the Examiner's rejection of independent claims 11, 16, 22, and
25, which recite the disputed limitation in commensurate form. For the
same reasons, we also reverse the rejections of all claims 2-4 and 7-27 that
depend therefrom.
NEW GROUND OF REJECTION
We enter a new ground of rejection of article of manufacture claims
22-24 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter.
Claim 22 recites, in pertinent part, “[a]n article of manufacture
comprising a computer readable storage medium having content stored
thereon.” Appellant’s Specification states:
An article of manufacture may include a machine
accessible/readable medium having content to provide
instructions, data, etc. The content may result in an electronic
device, for example, cache server 200, performing various
operations or executions described herein. A machine
accessible medium includes any mechanism that provides (i.e.,
stores and/or transmits) information/content in a form
accessible by a machine (e.g., computing device, electronic
device, electronic system/subsystem, etc.). For example, a
machine accessible medium includes recordable/non-recordable
media (e.g., read only memory (ROM), random access memory
(RAM), magnetic disk storage media, optical storage media,
flash memory devices, etc.), as well as electrical, optical,
acoustical or other form of propagated signals (e.g., carrier
waves, infrared signals, digital signals, etc.), etc.
Spec. ¶ [0035] (emphases added).
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Under a recent precedential opinion, the scope of the recited
“computer readable storage medium” (claim 22) encompasses transitory
media such as signals or carrier waves, where, as here, the Specification
does not limit the computer readable storage to non-transitory forms. Ex
parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential)
(holding recited machine-readable storage medium ineligible under § 101
since it encompasses transitory media). Here, the recited “computer
readable storage medium” is not claimed as non-transitory, and the
disclosure does not expressly and unambiguously limit that medium to
solely non-transitory forms via a definition or similar limiting language. In
fact, Appellant’s disclosure specifically indicates the recited medium
encompasses propagating signals. Therefore, the medium encompasses
transitory forms and is ineligible under § 101. Claims 23-24 inherit the
same defect as independent claim 22 from which these claims depend.
CONCLUSIONS AND DECISION
(1) The Examiner erred with respect to the rejections of claims 1-4
and 7-27 under 35 U.S.C. § 103(a) over the cited combinations of the prior
art of record, and we reverse the rejections.
(2) We impose a new ground of rejection of claims 22-24 under 35
U.S.C. § 101.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
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one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims
so rejected or new evidence relating
to the claims so rejected, or both, and
have the matter reconsidered by the
examiner, in which event the
proceeding will be remanded to the
examiner. . . .
(2) Request rehearing. Request that
the proceeding be reheard under
§ 41.52 by the Board upon the same
record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
REVERSED
37 C.F.R. § 41.50(b)

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