Ex Parte Cottrell et al

Patent Trial and Appeal Board

Jun 22, 2018

11026813 (P.T.A.B. Jun. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111026,813 12/29/2004 Andrew Cottrell
22429 7590 06/26/2018
HAUPTMAN HAM, LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
T5077-075 5799
EXAMINER
RUTTEN, JAMES D
ART UNIT PAPER NUMBER
2197
NOTIFICATION DATE DELIVERY MODE
06/26/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@ipfirm.com
pair_lhhb@firsttofile.com
EAnastasio@IPFirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW COTTRELL, JITHENDRA BETHUR,
TIMOTHY J. MARKEY, M. SRIKANT, and
LAKSHMANAN SRINIVASAN
Appeal 2016-005143
Application 11/026,813
Technology Center 2100
Before MAHSHID D. SAADAT, BRUCE R. WINSOR, and
MINN CHUNG, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 19--38, which constitute all the claims pending in this application. 1
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest identified by Appellants is Kinglite Holdings Inc.,
Singapore. App. Br. 2.
Appeal 2016-005143
Application 11/026,813
STATEMENT OF THE CASE
Appellants' invention relates to "securely updating firmware" in
electronic devices. (Spec. i-f 1.) Claim 19, which is illustrative, reads as
follows, with the disputed limitation emphasized in italics:
19. A method for updating an electronic device having
a nonvolatile memory, comprising:
receiving a digitally signed container encrypted with a
private encryption key, the private encryption key
corresponding to a public encryption key forming an encryption
key pair, the digitally signed container including a firmware
update image coming from a source and a first hash code
derived from the firmware update image with a hash function;
authenticating the source of the firmware update image
using the public encryption key to decrypt the digitally signed
container to obtain the firmware update image and the first hash
code;
authenticating the firmware update image by hashing the
firmware update image with the hash code[2] to derive a second
hash code and determining the first hash code matches the
second hash code;
replacing a current firmware image with the firmware
update image if the source of the firmware update image is
authenticated and the firmware update image is authenticated,
wherein the public key is embedded in the nonvolatile
memory of the electronic device.
2 In the event of further prosecution, Appellants and the Examiner may wish
to consider whether this instance of the phrase "the hash code" has as its
antecedent basis the previously recited "a first hash code" or the previously
recited "a hash function."
2
Appeal 2016-005143
Application 11/026,813
The Examiner relies on the following prior art in rejecting the claims.
Grimmer
Leeper
Zimmer
us 5,774,552
US 2003/0195935 Al
US 2005/0021968 Al
June 30, 1998
Oct. 16, 2003
Jan.27,2005
Claims 19-38 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zimmer, Grimmer, and Leeper. (Ans. 2.)
Rather than repeat the arguments here, we refer to the Appeal Brief
("App. Br." filed Sept. 16, 2015), the Reply Brief ("Reply Br." filed Apr. 12,
2016), the Answer ("Ans." mailed Feb. 29, 2016), and the Final Rejection
("Final Act." mailed Apr. 16, 2015) for the respective positions of
Appellants and the Examiner.
ISSUE
The dispositive issue presented by Appellants' contentions is as
follows:
Did the Examiner err in in combining Zimmer with Grimmer to
teach, suggest, or render obvious "replacing a current firmware image
with the firmware update image if the source of the firmware update
image is authenticated and the firmware update image is
authenticated" (the "disputed limitation"), as recited in claim 19?
ANALYSIS
In rejecting claim 19, the Examiner finds that the combination of
Zimmer and Grimmer teaches, suggests, or renders obvious the disputed
limitation set forth above. See Final Act. 3---6. First, the Examiner finds that
3
Appeal 2016-005143
Application 11/026,813
Zimmer teaches replacing the current firmware with the firmware update
image "if the signature check passes." Id. at 6 (citing Zimmer i-f 5 2). As the
Examiner explains, Zimmer' s signature check on the firmware update image
authenticates the source of firmware update image. Id. at 4--5 (citing
Zimmer, Abstract ("the authentication credential will identify a
manufacture"), i-fi-1 4, 21-22, 48). Hence, the Examiner finds that Zimmer
teaches or suggests "replacing a current firmware image with the firmware
update image if the source of the firmware update image is authenticated,"
as recited in claim 19. Id. at 4--6; Ans. 3--4. With respect to the recitation of
authenticating the firmware update image, the Examiner relies on
Grimmer' s disclosure of validating the integrity of message data by hashing
the data (Final Act. 4 (citing Grimmer, 3:46-60, 3:66--4:4, Fig. 3)) and finds
that applying Grimmer's hashing of data to Zimmer's firmware update
image teaches, suggests, or renders obvious authenticating the firmware
update image by hashing the image data and matching hash codes (id. at 5---6
( citing Grimmer, 3 :46-57, Fig. 3)). Having found that Zimmer teaches or
suggests "authenticating the source of firmware update image" and the
combination of Zimmer and Grimmer teaches, suggests, or renders obvious
"authenticating the firmware update image," the Examiner further cites
Grimmer's disclosure that "[a] digital signature can be used for both
message and sender authentication" (id. at 6 (emphases added) (citing
Grimmer, 3:34--35)) and finds that the combined teachings from Grimmer
and Zimmer of using digital signatures for authentication teaches, suggests,
or renders obvious replacing the firmware image with an update image "if
the source of the firmware update image is authenticated" and "the firmware
4
Appeal 2016-005143
Application 11/026,813
update image is authenticated," as recited in claim 19. Id. at 6; Ans. 4--5
(citing Grimmer, 3 :34--35).
Appellants contend that the Examiner failed to show how the
proposed combination of Zimmer and Grimmer would have suggested
"replacing a current firmware image with the firmware update image if the
source of the firmware update image is authenticated and the firmware
update image is authenticated" (i.e., the "disputed limitation"). 3
App. Br. 10. Although Appellants concede "[paragraph 52] of Zimmer ...
discusses that existing firmware is updated 'if the signature check passes,'"
Appellants assert "there is no discussion in Grimmer that [Grimmer's
authentication of both message and sender] would trigger the replacement of
a current firmware image as recited in claim 19." Id. (emphasis added);
Reply Br. 2. Appellants further argue "Grimmer merely discusses that if
both encryption and digital signature techniques are to be used, the message
is first encrypted using RSA, then signed using a digital signature, and then
the encrypted data and digital signature would be sent to the recipient," not
replace data. App. Br. 10 (citing Grimmer, 3:66-4:3); Reply Br. 5.
Appellants' argument is unpersuasive because claim 19 does not
recite "trigger[ing]" the replacement of a current firmware image.
Furthermore, the Examiner relies on Zimmer, not Grimmer, to teach
replacing the current firmware with the firmware update image "if the
signature check passes." See Final Act. 6. Appellants' argument is
unpersuasive because Appellants do not address the combination of Zimmer
3 Appellants refer to the "if ... and ... "clause of the disputed limitation as
the "two-part if/then test." App. Br. 11.
5
Appeal 2016-005143
Application 11/026,813
and Grimmer as proposed by the Examiner in the Examiner's rejection. In
addition, Appellants' argument is unpersuasive because Appellants focus on
the individual teaching of Grimmer when the Examiner's rejection is based
on the combined teachings of Zimmer and Grimmer. Nonobviousness
cannot be established by attacking the references individually when the
unpatentability challenge is based on a combination of prior art disclosures.
See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Focusing on the Examiner's Answer addressing the purported "two-
part if/then test" of the disputed limitation, Appellants further contend that
"the Examiner did not show how one of ordinary skill would have modified
Zimmer to incorporate an authentication ... such that the authentication
discussed in Grimmer is used to replace data." Reply Br. 5---6 (citing
Ans. 4). Appellants' argument is unpersuasive because Appellants do not
fully address the Examiner's rejection of claim 19 as a whole.
As discussed above, the Examiner finds that Zimmer teaches or
suggests the limitation of claim 19 reciting "authenticating the source of
firmware update image" (Final Act. 4--5) and the combination of Zimmer
and Grimmer teaches, suggests, or renders obvious the limitation reciting
"authenticating the firmware update image" (id. at 5---6). The purported
"two-part if/then test," i.e., updating the firmware image "if the source of the
firmware update image is authenticated and the firmware update image is
authenticated," includes essentially the same recitations. Hence, the
Examiner refers to his findings regarding the limitations reciting
"authenticating the source of firmware update image" and "authenticating
the firmware update image" (see Ans. 3-5) to find, as discussed above, the
combination of Zimmer and Grimmer teaches, suggest, or renders obvious
6
Appeal 2016-005143
Application 11/026,813
the disputed limitation, including "both parts" of the purported "two-part
if/then test." Id. at 4--5. We agree with the Examiner that the proposed
combination of Zimmer and Grimmer teaches, suggests, or renders obvious
the disputed limitation. Appellants' argument is unpersuasive because
Appellants take the Examiner's discussion of the disputed limitation out of
the context of the Examiner's rejection of claim 19 as a whole and do not
address the Examiner's findings regarding the other limitations of claim 19,
which include essentially the same recitations as the "two-part" conditional
clause of the disputed limitation. See App. Br. 10; Reply Br. 5---6.
Appellants further assert that the Examiner made no assertion as to
why or how Grimmer and Zimmer would have been combinable to render
the disputed limitation obvious. App. Br. 10. Appellants contend that "the
Examiner merely asserted that individual features recited in the claims were
separately described in Zimmer and Grimmer" and "made no attempt to
logically link what is allegedly described in Zimmer with what is allegedly
described in Grimmer." Id. at 10-11; Reply Br. 3. We disagree with
Appellants' arguments.
Contrary to Appellants' contentions, the Examiner explains that the
references themselves provide suggestions to make the combination. For
example, the Examiner finds that a person of ordinary skill in the art at the
time of the invention would have been motivated to use Zimmer's update
image with Grimmer's hash function "in order to provide authentication
and/or validation as suggested by Grimmer." Final Act. 4 (emphasis added)
(citing Grimmer, 3 :46---60). Similarly, the Examiner finds that it would have
been obvious to one of ordinary skill to use Zimmer's authentication with
Grimmer's encryption "in order to secure data contents and be confident of
7
Appeal 2016-005143
Application 11/026,813
the identity of the sender as suggested by Grimmer." Id. at 5 (emphasis
added) (citing Grimmer, 2 :42--46, 3 :27-29).
The portions of Grimmer cited by the Examiner describe that
"[ d] igital signature authentication allows the receiver of the message to be
confident of the identity of the sender and/or the integrity of the message"
(Grimmer, 3:27-29 (emphasis added)) and that "[t]he digital signature
process is shown in FIG. 3," which illustrates the process to "validate the
integrity of the data" and "authenticat[ e] that the message is from who it
says it is from" (id., 3:46-60 (emphasis added)). As discussed above, the
Examiner explains that Zimmer's authentication involves a "digital
signature" and performing a "signature check" on the firmware update
image by using an encryption key. Final Act. 4--5 (citing Zimmer, Abstract,
i-fi-1 4, 21, 22, 48). As also discussed above, the Examiner finds that Zimmer
teaches replacing the current firmware with the firmware update image "if
the signature check passes." Id. at 6 (emphasis added) (citing Zimmer i1 52).
The Examiner also relies on Grimmer's disclosure that "[a] digital signature
can be used for both message and sender authentication" (id. at 6 (emphases
added) (citing Grimmer, 3 :34--35)) to find that the combined teachings of
Grimmer's and Zimmer's use of digital signatures for authentication teaches,
suggests, or renders obvious "both parts" of the purported "two-part if/then
test" of the disputed limitation. Ans. 4--5 (citing Grimmer, 3:34--35); Final
Act. 6. Hence, the Examiner has provided sufficient explanation and
supporting evidence that Zimmer and Grimmer disclose closely related
subject matter relating to the use of digital signatures for authenticating data
and the source of the data. Therefore, we agree with the Examiner that the
suggestions to combine Zimmer and Grimmer as proposed by the Examiner
8
Appeal 2016-005143
Application 11/026,813
are found in the references themselves and the "logical link" between the
Zimmer's and Grimmer's disclosures is described in the references. See
Ans. 3--4.
In a related argument, Appellants assert the Examiner relied on
impermissible hindsight reasoning in finding claim 19 obvious over the
combination of Zimmer, Grimmer, and Leeper. App. Br. 11; Reply Br. 6.
In response, the Examiner explains that the Examiner's rejection does not
include any knowledge gleaned only from the disclosure in Appellants'
application but, rather, relies only on the knowledge known to a person of
ordinary skill in the art at the time of the invention. Ans. 5. The Examiner
further explains that the references themselves provide the reasons and basis
for finding claim 19 obvious. Id. For the reasons discussed above, we agree
with the Examiner and disagree with Appellants' argument that the
Examiner relied on impermissible hindsight reasoning.
We have reviewed the remainder of Appellants' arguments and find
them unpersuasive. For example, Appellants assert that the Examiner's
rejection failed to consider claim 19 as a whole. We disagree with
Appellants' argument. Contrary to Appellants' contention, as discussed
above, the Examiner addresses the disputed limitation in the context of claim
19 as a whole, including other limitations reciting "authenticating the source
of the firmware update image" and "authenticating the firmware update
image," whereas Appellants' arguments do not fully address the Examiner's
rejection of claim 19 as a whole.
Accordingly, we are not persuaded that the Examiner erred in
rejecting claim 19 and therefore sustain the Examiner's rejection of claim
19. Regarding independent claims 26 and 33, Appellants acknowledge that
9
Appeal 2016-005143
Application 11/026,813
claims 26 and 33 each recite limitations similar to those discussed above
with respect to claim 19 and rely on the same arguments Appellants
advanced concerning claim 19. See App. Br. 13. Thus, we sustain the
Examiner's rejection of independent claims 26 and 33 for the same reasons
discussed above with respect to claim 19.
Appellants have not separately argued any of the rejections of the
following dependent claims: claims 20-25, 27-32, and 34--3 8, which
depend from claims 1, 26, and 33, respectively. We, therefore, sustain the
Examiner's rejection of these dependent claims for the same reasons
discussed above with respect to claim 19.
DECISION
The decision of the Examiner to reject claims 19-38 is 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)(l )(iv).
AFFIRMED
10