Ex Parte Bell et al

Patent Trial and Appeal Board

Mar 21, 2014

11042901 (P.T.A.B. Mar. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROBERT T. BELL and DOUGLAS Q. DEXTER1
____________________

Appeal 2011-009008
Application 11/042,901
Technology Center 2400
____________________

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, 3-7, 9, 12-16, 18-21, 23, 24, and 26-29. The
Examiner objected to claims 2, 8, 10, 11, 17, 22, and 25 for their dependence
upon a rejected base claim, but are otherwise allowable if rewritten in
independent form. Ans. 9. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Real Party in Interest is Cisco Technology, Inc. App. Br. 3.
Appeal 2011-009008
Application 11/042,901

2
STATEMENT OF THE CASE2
The Invention
Appellants’ invention relates to a system and method for obtaining a
digital certificate for an endpoint in which a connection is established
between a proxy function module and the endpoint. See Abstract.
Exemplary Claims
Claims 1 and 29, reproduced below, are representative of the subject
matter on appeal (emphases added):
1. A method of establishing a digital certificate on an
endpoint, the method comprising:
establishing a connection between a proxy function
module and the endpoint, the proxy function module remotely
located from the endpoint, and the proxy function module
operable to communicate with the endpoint and a certificate
authority, wherein the establishing the connection between the
proxy function module and the endpoint further comprises
authenticating the proxy function module by:
generating digitally signed information at the
proxy function module,
communicating the digitally signed information
to the endpoint, and
authenticating the digitally signed information
at the endpoint;
generating certification information at the endpoint;

2 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed
Oct. 25, 2010); Reply Brief (“Reply Br.,” filed Mar. 22, 2011); Examiner’s
Answer (“Ans.,” mailed Jan. 25, 2011); Final Office Action (“FOA,” mailed
May 27, 2010); and the original Specification (“Spec.,” filed Jan. 25, 2005).
Appeal 2011-009008
Application 11/042,901

3
transmitting at least a portion of the certification
information to the proxy function module, the proxy function
module operable to package the at least the portion of
certification information in a certificate request and operable to
obtain a digital certificate from a certificate authority based on
the certificate request;
receiving the digital certificate at the endpoint from the
proxy function module; and
transmitting a request to the proxy function module to
obtain an updated digital certificate, the proxy function module
operable to package the at least the portion of certification
information in a certificate update request and operable to
obtain the updated digital certificate from the certificate
authority based on the certificate update request.
29. The method of Claim 28, wherein the confirmation
information identifies an expiration date of the digital
certificate, the method further comprising:
generating a second request at the proxy function module
at a predetermined time period relative to the expiration date of
the digital certificate, the second request requesting that the
endpoint seek a new digital certificate; and
communicating the second request to the endpoint.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Hind US 6,980,660 B1 Dec. 27, 2005
Kadyk US 6,996,841 B1 Feb. 7, 2006
Appeal 2011-009008
Application 11/042,901

4
Rejection on Appeal3
Claims 1, 3-7, 9, 12-16, 18-21, 23, 24, and 26-29 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Hind and
Kadyk. Ans. 3.
ISSUES AND ANALYSIS
We only consider those arguments actually made by Appellants in
reaching this decision, and we do not consider arguments which Appellants
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 have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
arguments with respect to claims 1, 3-7, 9, 12-16, 18-21, 23, 24, and 26-29,
and we adopt as our own (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 Appellants’ Arguments. However, we highlight and address

3 We note the Examiner indicated allowable subject matter with respect to
claims 2, 8, 10, 11, 17, 22, and 25, but objected to these claims for their
dependence upon rejected base claims. FOA 3; Ans. 9. However,
Appellants state, as one of their “Grounds of Rejection to be Reviewed on
Appeal” (App. Br. 18), “3. Are Claims 2-3, 8, 10-12, 17-18, 22, and 25
properly objected to as being dependent upon rejected base claims?” We
note claim objections are petitionable, not appealable, and therefore this
issue is not before us on appeal. See MPEP § 1002.02(c)(4). Thus, the
relief sought by the Appellants would have been properly presented by a
petition to the Director under 37 C.F.R. § 1.181 instead of by appeal to this
Board.
Appeal 2011-009008
Application 11/042,901

5
specific findings and arguments regarding claims 1 and 29 for emphasis as
follows.
1. § 103 Rejection of Claims 1, 3-7, 9, 12-16, 18-21, 23, 24, and 26-28
Issue 1
Appellants argue (App. Br. 19-23; Reply Br. 2-5) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Hind and Kadyk is in error. These contentions present us
with the following issues:
(a) Did the Examiner err in finding the cited prior art combination
teaches or suggests the limitation of “transmitting a request to the proxy
function module to obtain an updated digital certificate, the proxy function
module operable to . . . obtain the updated digital certificate from the
certificate authority based on the certificate update request,” as recited in
claim 1?
(b) Did the Examiner err in combining Kadyk with Hind because
Kadyk allegedly teaches away from the claimed invention?
Analysis
Issue 1(a)
Appellants contend
Hind discloses “a method [that] is provided to initialize devices
distributed with an embedded radio module which are delivered
to a central point, such as an enterprise, prior to distribution to
end users.” . . . [and] Hind makes clear that the method
described by Figure 1 is a “one-time initialization procedure.”
Appeal 2011-009008
Application 11/042,901

6
App. Br. 20 (quoting Hind col. 8, ll. 45-48; col. 11, ll. 60-61). Further,
Appellants contend “Hind merely discloses that ‘the device’s certificate may
be revoked’ or that ‘the device certificate [may] expire and require the user
of the device to periodically renew the device certificate,’” and “[r]equiring
a user to periodically renew a revoked or expired device certificate,
however, does not disclose, teach, or suggest that the ‘process outline[d] in
[Hind] Col. 9, Line 14-51’ is used to update or renew expired or revoked
certificates.” Id. Appellants reiterate Hind emphasizes the process is used
merely to initialize devices, which does not teach or suggest the disputed
limitations of claim 1, and Kadyk does not make up for the purported
deficiencies of Hind. App. Br. 20-21.
In response, the Examiner finds, and we agree, Appellants’
Specification
describes . . . a process of obtaining a digital certificate for an
endpoint and in the event that a digital certificate for an
endpoint is out-of-date/expired, the expired digital certificate is
updated by obtaining a new digital certificate using the same
method described in the specification for obtaining a digital
certificate.
Ans. 7 (citing Spec. 20:16-23) (emphasis omitted). The Examiner further
finds, “Hind[] teaches a method of using a proxy module (server) to obtain a
certificate for an endpoint (mobile device) from a certificate authority . . . .
[which teaches or suggests] the argued limitation.” Id. (citing Hind col 12,
ll. 4-18). The Examiner also finds Hind teaches or suggests, “an endpoint
certificate may be revoked, expired or out of date and in that case, a
certificate update or renewal is required and the update is achieved by the
Appeal 2011-009008
Application 11/042,901

7
server obtaining a (up-to-date) digital certificate from the CA [(Certificate
Authority)] for the mobile device.” Ans. 7-8.
We find Hind teaches or suggests the limitation in dispute because the
claim merely requires
transmitting a request to the proxy function module to
obtain an updated digital certificate, the proxy function module
operable to package the at least the portion of certification
information in a certificate update request and operable to
obtain the updated digital certificate from the certificate
authority based on the certificate update request.
Claim 1. We find Hind teaches or suggests this limitation because not only
does Hind teach sending a request to obtain a digital certificate to the CA,
but also teaches or suggests requesting renewal of revoked digital
certificates by the user, as cited by the Examiner. Hind col. 12, ll. 4-18.
Appellants argue
[A]ttempting to use Hind’s one-time initialization procedure to
update certificates would be unnecessarily disruptive to the end
user [and o]ne of ordinary skill in the art would not use Hind’s
one-time initialization procedure to update certificates because
it presumably would require pulling the device out of service,
returning the device to an off-line administrator, and forcing the
device’s user to go without service as the administrator resets
and reinitializes the device.
Reply Br. 4. We disagree with Appellants’ contentions because Appellants’
assertions amount to unsupported attorney argument, and therefore we give
them little weight. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997);
see also In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996).
In addition, Appellants do not provide any arguments with respect to
the specific teachings of Kadyk relied upon by the Examiner, i.e., “Kadyk
Appeal 2011-009008
Application 11/042,901

8
teaches a method of establishing a secure connection between a client and a
proxy by authenticating a digital certificate sent from the proxy to the
client.” Ans. 4.
Therefore, we find the combination of Hind and Kadyk teaches or
suggests all the limitations of claim 1.
Issue 1(b)
Appellants contend Kadyk “teaches away from various elements of
Appellants’ Claims.” App. Br. 21. In particular, Appellants contend a client
as taught by Kadyk only establishes a secure proxy connection that
determines where data should be sent, and otherwise merely operates as a
transparent byte forwarder which teaches away from the claimed proxy
function module that is “operable to package the at least the portion of
certification information in a certificate update request and operable to
obtain the updated digital certificate from the certificate authority based on
the certificate update request.” Therefore, Appellants argue, the Examiner’s
combination of Kadyk and Hind is improper. App. Br. 22.
In response, the Examiner finds:
The use of the secondary reference in this rejection is to show
that a secure connection/authentication can be established
between the mobile device and server using the authentication
process (using digitally signed information sent by the proxy
and authenticated by the endpoint) that is disclosed by Kadyk
and also well known in the art. Hind as the primary reference
discloses all the limitation [sic] of the independent claim
including the secure connection/authentication between the
mobile and the server. The secondary reference (Kadyk) was
used to teach that the claimed authentication process is well
known in the art and one of ordinary would have modified
Appeal 2011-009008
Application 11/042,901

9
Hind’s teaching to use such authentication process as presented
in the Final Office Action.
Ans. 9. We do not agree with Appellants’ contention Kadyk teaches away
from the claimed invention. “A reference may be said to teach away when a
person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.” Ricoh
Co., Ltd. v. Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008)
(citations omitted). A reference does not teach away if it merely expresses a
general preference for an alternative invention from amongst options
available to the ordinarily skilled artisan, and the reference does not discredit
or discourage investigation into the invention claimed. In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004).
One of ordinary skill in the art would have understood Kadyk’s
authentication process to be an alternative to Hind’s teaching of a secure
connection between the mobile device (endpoint) and the server (proxy
module) before the server obtains a digital certificate for the mobile device.
See Hind col. 9, ll. 23-30. In the absence of persuasive evidence to the
contrary, we fail to find that Kadyk teaches away from “establishing the
secure connection or authentication by generating digitally signed
information at the proxy function module, communicating the digitally
signed information to the endpoint and authenticating the digitally signed
information at the endpoint.” Ans. 8.
In the Reply, Appellants argue “[t]he Examiner’s Answer does not
respond to any of Appellants’ teach away arguments with any coherent
rebuttal. . . . [and t]he Examiner’s argument is irrelevant [because]
Appeal 2011-009008
Application 11/042,901

10
Appellants’ Appeal Brief presents reasons why Kadyk teaches away from
the claimed invention, and the Examiner’s Answer effectively ignores those
reasons.” Reply Br. 5 (emphasis omitted). We disagree with Appellants’
assertions in the Reply, and we are not persuaded by Appellants’ arguments
cited above in either of the Appeal or Reply Briefs regarding the purported
“teaching away” of Kadyk.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner’s obviousness rejection of independent claim 1. As Appellants
have not provided separate, substantive arguments with respect to
independent claims 6, 9, 16, 20, 23, 26, and 27 and dependent claims 3-5, 7,
12-15, 18, 19, 21, 24, and 28, all rejected on the same basis as claim 1, we
similarly sustain the Examiner’s rejection of these claims under 35 U.S.C.
§ 103(a). Arguments not made are considered waived. See Hyatt v. Dudas,
551 F.3d 1307, 1314 (Fed. Cir. 2008) (“When the appellant fails to contest a
ground of rejection to the Board, section 1.192(c)(7) [(now section
41.37(c)(1)(vii))] imposes no burden on the Board to consider the merits of
that ground of rejection . . . . [T]he Board may treat any argument with
respect to that ground of rejection as waived.”).
2. § 103 Rejection of Dependent Claim 29
Issue 2
Appellants argue (App. Br. 23-24; Reply Br. 6) the Examiner’s
rejection of dependent claim 29 under 35 U.S.C. § 103(a) as being
Appeal 2011-009008
Application 11/042,901

11
unpatentable over the combination of Hind and Kadyk 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 the limitations of “generating a second request at the proxy
function module at a predetermined time period relative to the expiration
date of the digital certificate, the second request requesting that the endpoint
seek a new digital certificate; and communicating the second request to the
endpoint,” as recited in claim 29?
Analysis
Appellants contend Hind “[r]equir[es] a user of a device to
periodically renew a device certificate by providing a validity period field in
the certificate,” but does not teach or suggest the limitations in dispute.
App. Br. 23 (citing Hind col. 12, ll. 11-18).
In response to Appellants’ arguments in the Appeal Brief, the
Examiner finds
claim [29] is directed to renewal or updating of an expired
digital certificate which was addressed . . . above. . . . [with
respect to claim 1, and such a] request to update/renew an
expired digital certificate [teaches] applicant’s “second request
requesting that the endpoint seek a new digital certificate” and
Hind discloses periodic renewal of expired or out-of-date
certificates.
Ans. 9 (citing Hind col. 12, ll. 4-18). In the Reply, Appellants allege “[t]he
Examiner’s Answer effectively ignores the language of Claim 29 and[,] . . . .
while Hind states that a user may be required to periodically renew a device
certificate, Hind does not disclose, teach, or suggest any method for how to
periodically renew a device certificate.” Reply Br. 6.
Appeal 2011-009008
Application 11/042,901

12
We agree with the Examiner’s finding
the claim is directed to renewal or updating of an expired digital
certificate . . . [as] in the response to argument A [claim 1]
above. This request to update/renew an expired digital
certificate [teaches or suggests] . . . “second request requesting
that the endpoint seek a new digital certificate” and Hind
discloses periodic renewal of expired . . . certificates.
Ans. 9 (citing Hind col. 12, ll. 4-18).
We note Appellants’ arguments are not commensurate with the scope
of claim 29, which does not recite the precise mechanism of “how” an
expired certificate is periodically renewed. Instead, claim 29 merely recites
a “second request” is generated “at the proxy function module at a
predetermined time period relative to the expiration date of the digital
certificate,” which requests “the endpoint seek a new digital certificate.” We
note Hind teaches
the most effective method of revocation and denial of access is
to have the device certificate expire and require the user of the
device to periodically renew the device certificate [and a]
validity period field is provided in the certificate for this
purpose . . . . FIG. 5 depicts this in further detail.
Hind col. 12, ll. 13-18. As pointed out by the Examiner (Ans. 4), we find
administrative server 1001 and/or first resource 5001 in Hind performs the
recited certificate renewal function. See Hind col. 9, ll. 41-48; Fig. 1A,
reference 1001; Fig. 5A, reference 5001.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner’s obviousness rejection of dependent claim 29.
Appeal 2011-009008
Application 11/042,901

13
CONCLUSION
The Examiner did not err with respect to the rejection of claims 1, 3-7,
9, 12-16, 18-21, 23, 24, and 26-29 under 35 U.S.C. § 103(a) over the
combination of Hind and Kadyk, and we sustain the rejection.
DECISION
We affirm the Examiner’s decision rejecting claims 1, 3-7, 9, 12-16,
18-21, 23, 24, and 26-29.
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) (2011).
AFFIRMED

bab