Ex Parte Anand et al

Patent Trial and Appeal Board

Dec 12, 2013

11301108 (P.T.A.B. Dec. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VAIJAYANTHIMALA K. ANARD, JANICE M. GIROUARD,
and EMILY J. RATLIFF
___________

Appeal 2011-005936
Application 11/301,108
Technology Center 2400
____________

Before CARLA M. KRIVAK, ELENI MANTIS MERCADER, and
DANIEL N. FISHMAN, Administrative Patent Judges.

FISHMAN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-005936
Application 11/301,108

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This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 8-13. App. Br. 3. Claims 1-7 and 14-20 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
THE INVENTION
Appellants’ invention relates to tracking a data processing system
within a communications network by secure transmission of identity data of
the system. See generally Spec. ¶¶ 0001, 0007.
Claim 8, reproduced below, is representative:
8. A data processing system comprising:
a processor;
a security processing element coupled to said processor,
wherein said security processing element includes a
cryptographic engine and a secure storage device for storing a
plurality of cryptographic keys and system identity data; and
an interface for transmitting said system identity data to a
server system during an initial program load period of said data
processing system, wherein said system identity data is utilized
by said server system to identify said data processing system
via a security processing element endorsement key within said
system identity data.

THE REJECTION
Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over Ed
Frauenheim, Stolen PCs can ‘ping’ their real owner, CNET News.com, 1-4
(May 27, 2003)
(http://news.zdnet.co.uk/business/0,39020645,2135251,00.htm) (last visited
Appeal 2011-005936
Application 11/301,108

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Dec. 12, 2005) (hereinafter “TheftGuard”) and Challener (U.S. Patent No.
7,263,608 B2; issued Aug. 28, 2007, filed Dec. 12, 2003). Ans. 4-5.
Claims 9-13 are rejected under 35 U.S.C. § 103(a) as unpatentable
over TheftGuard, Challener, and CGI, Public Key Encryption and Digital
Signature: How do they work?, 1-12 (2004) (hereinafter “CGI”). Ans. 5-9.

ISSUE
Only those arguments actually made by Appellants have been
considered in this decision. Arguments that Appellants did not make in the
Appeal Brief have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appellants’ arguments present us with the following issue:
Has the Examiner erred by finding that the combination of
TheftGuard and Challener teaches or suggests the security processing
element and the interface as recited in claim 8?

ANALYSIS
In rejecting claim 8, the Examiner finds that TheftGuard teaches the
processor and interface features and finds that Challener teaches the security
processing element and articulates a reason for the combination. Ans. 4-5.
In particular, the Examiner finds that Challener’s customer device includes a
cryptographic device because the device hashes (i.e., encrypts) the key
before transmission to the comparison agent. Ans. 5. The Examiner also
finds that TheftGuard discloses that when a computer connects to the
Internet it pings a website to transmit identifying information to a server and
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Application 11/301,108

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therefore the computer of TheftGuard includes an interface for the
transmission. Ans. 4.
Appellants argue that the Examiner characterizes comparison agent 36
as the recited cryptographic engine. App. Br. 4. Appellants further argue
that claim 8 requires that “the claimed cryptographic engine and the claimed
secure storage device are both included within the claimed security
processing element” but argue that Challener’s TPM (trusted platform
module) 28 and comparison agent 36 “are separate entities that are not
contained or related to each other.” Id. 5.
We do not agree. The Examiner finds that Challener’s customer
device 12 includes the recited cryptographic engine by virtue of its
encryption (hashing) of a key prior to transmission to agent 36. Ans. 5
(citing Challener, col. 3, l. 62). The Examiner’s rejection does not rely on
agent 36, per se, of Challener as providing the cryptographic engine.
Challener column 3, line 62 discloses that the key is decrypted by the agent
36 (i.e., because it was previously hashed (encrypted) by the customer
device 12). Rather, the Examiner finds that Challener’s customer device
includes a cryptographic engine to encrypt (hash) the key prior to
transmission to the agent. We agree. Further supporting the Examiner’s
finding, Challener column 3, lines 50-53 clarifies that the customer device
hashes (encrypts) information prior to transmitting to the comparison
agent—and therefore includes a cryptographic engine. The Examiner also
explains that Challener teaches a security module (TPM 28) compliant with
the Trusted Computing Platform Alliance (“TCPA”) and teaches that the
TPM generates Public Key Infrastructure (“PKI”) keys. Id. 10-11. The
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Examiner therefore also finds that the recited cryptographic engine is
disclosed as Challener’s TPM within the customer. Id. We agree.
Appellants further argue that TheftGuard discloses that a computer
pings the website each time it is brought online and contend that “bringing a
computer online is different from ‘an initial program load period of said data
processing system.’” App. Br. 5; see also Reply Br. 3. Appellants contend
that “initial program load” is a term of art well known to the skilled artisan
and that TheftGuard does “not involve any initial program load of a
computer.” App. Br. 5.
We do not agree. The Examiner explains that, by pinging a website
when connected to the Internet, TheftGuard discloses that “there exists an
interface for transmitting the system data.” Ans. 11. We agree. The claim
does not positively recite that the interface is transmitting the system identity
data but rather recites that the data processing system comprises an interface
for transmitting such data. In other words, the claim only requires that an
interface is capable of transmitting the system identity data to the server
system during an initial program load period. Even accepting Appellants’
contention that “initial program load” is a term of art (also known as system
boot or boot up), we agree with the Examiner’s findings. TheftGuard
discloses a computer having an interface that is capable of transmitting
system identity data over the Internet during initial program load because the
identity information of TheftGuard resides “on the underlying components
such as the bios of the system.” Id. 11.1

1 We further observe it is well known that a computer system BIOS (such as
that referred to in TheftGuard) may include a Preboot Execution
Environment boot (“PXE boot”) feature enabling the BIOS to perform boot
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In view of the above discussion, the Examiner did not err in finding
that the combination of TheftGuard and Challener teaches or suggests the
security processing element and the interface as recited in claim 8.
Appellants’ Notice of Appeal indicates that all claims are appealed.
However, Appellants’ Briefs present no arguments regarding patentability of
dependent claims 9-13. We therefore summarily affirm the rejection of
these claims.
DECISION
For the reasons discussed above, the rejection of claim 8 under
35 U.S.C. § 103(a) is affirmed.
For the reasons discussed above, the rejection of claims 9-13 under
35 U.S.C. § 103(a) is summarily affirmed.
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).
AFFIRMED

hh

processing (i.e., initial program load) using a network interface. See, e.g.,
Microsoft Computer Dictionary Fifth Edition; p. 431 (2002).