Ex Parte DiFalco et al

Board of Patent Appeals and Interferences

Jan 14, 2009

10328957 (B.P.A.I. Jan. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERT A. DIFALCO and THOMAS E. GOOD
____________________

Appeal 2008-0421
Application 10/328,9571
Technology Center 2100
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Decided: January 14, 2009
____________________

Before JAY P. LUCAS, THU A. DANG and STEPHEN C. SIU,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal from a final rejection of claims 1 to 49 under
authority of 35 U.S.C. § 134. The Board of Patent Appeals and Interferences
(BPAI) has jurisdiction under 35 U.S.C. § 6(b).

1 Application filed December 24, 2002. The real party in interest is
Tripwire, Inc of Portland, OR.

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Appellants’ invention relates to a method and apparatus for assuring
the integrity of services distributed across a network from a server to a
requesting client computer. In the words of the Appellants:

In a networked computing environment, a server is equipped to assure
the integrity of the service components of a service, including the
direct service providing component and one or more supporting
components as requested, and a client is equipped to request on behalf
of an application in need of the service the integrity assurance. The
client is further equipped to either request or accept the service, only
upon receiving the integrity assurance. In one embodiment, the
request for integrity assurance, and the subsequent conditional request
or acceptance of the service is performed in real time.

(Abstract; Spec. 32)
Claim 1 is exemplary:
1. In a networked computing environment, a method of operation
comprising:
a client, having a need for a service of a server with the service
to be provided from the server by a plurality of service providing
components residing and to be executed on the server including a
direct service providing component and one or more supporting
components supporting the direct service providing component in
providing the service, requesting the server to assure the integrity of
the service providing components including the direct service
providing component and the one or more supporting components;
and
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the client either requesting the service to be provided or
accepting the requested service only upon receiving the requested
integrity assurance from the server.
PRIOR ART
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ashley 6,909,992 Jun. 21, 2005
Shear 6,157,721 Dec. 5, 2000
McManis 6,067,575 May 23, 2000
Jamroga 6,574,742 Jun. 3, 2003
REJECTIONS
R1: Claims 1 to 3, 7, 11 to 13, 19 to 21, 28 to 30, 37 to 39, 43 to 45,
and 49 stand rejected under 35 U.S.C. § 103(a) for being obvious over
Ashley in view of Shear.
R2: Claims 4 to 5, 8, 14, 16, 22 to 23, 25, 31, 32, 34, 40, 41, 46 and
47 stand rejected under 35 U.S.C. § 103(a) for being obvious over Ashley
and Shear in view of McManis.
R3: Claims 9 to 10, 17 to 18, 26 to 27, and 35 to 36 stand rejected
under 35 U.S.C. § 103(a) for being obvious over Ashley and Shear further in
view of Jamroga.
R4: Claims 6, 15, 24, 33, 42 and 48 stand rejected under 35 U.S.C.
§ 103(a) for being obvious over Ashley and Shear further in view of
McManis and Jamroga.
The claims will be consider together, as two issues are dispositive of
all of the claims.
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Appellants contend that the claimed subject matter is not rendered
obvious by Ashley and Shear alone, or in combination with McManis or
Jamroga, for failure of Ashley and Shear to teach key limitations. The
Examiner contends that each of the claims is properly rejected.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
this opinion. Arguments which Appellants could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
We affirm the rejections.
ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a). The issue turns on whether
Shear (and Ashley) teach that the server, on which the software to be
distributed resides, is requested by a client to assure the integrity of the
software being distributed. Also at issue is whether Shear and Ashley teach
a client “either requesting a service to be provided or accepting a requested
service only upon receiving the requested integrity assurance from the server
since there is no disclosure or even suggestion related to requesting the
integrity assurance in the first place.” (App. Br. 8, middle).
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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants have invented a secure method (and apparatus) for
distributing services and objects from a server across a network to such
clients as phones, personal digital assistants and computers. (Spec. 9,
middle). The client receiving these services from a server may request an
integrity assurance from the server, and if such assurance is not granted
decline to accept the service. (Id. at 11, middle).
2. [Further findings of fact are presented in the Analysis section below.]
PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
“What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
Teleflex, Inc., 127 S. Ct. 1727, 1742 (2007). To be nonobvious, an
improvement must be “more than the predictable use of prior art elements
according to their established functions.” Id. at 1740.
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The analysis begins with an interpretation of the claims: “Both
anticipation under § 102 and obviousness under § 103 are two-step inquiries.
The first step in both analyses is a proper construction of the claims . . . . The
second step in the analyses requires a comparison of the properly construed
claim to the prior art.” Medichem S.A. v. Rolabo S.L., 353 F.3d 928, 933
(Fed. Cir. 2003) (internal citations omitted).
Our reviewing court states in In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989) that “claims must be interpreted as broadly as their terms reasonably
allow.” Our reviewing court further states that "the words of a claim 'are
generally given their ordinary and customary meaning.'" Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations
omitted). The "ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the
patent application." Id. at 1313.
ANALYSIS
From our review of the administrative record, we find that Examiner
has presented a prima facie case for the rejections of Appellants’ claims
under 35 U.S.C. § 103. The prima facie case is presented on pages 3 to 7 of
the Examiner’s Answer. In opposition, Appellants present the following
arguments.

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Arguments with respect to the rejection
of claims 1 to 49
under 35 U.S.C. § 103

Appellants have presented two arguments against the rejection of
claim 1 and those claims rejected with that claim under R1. (App. Br. 7-9).
Appellants have repeated those arguments, with minor variations, for those
claims rejected under R2, R3 and R4. (App. Br. 9-12). As such, all the
claims 1 to 49 will be considered together.
Appellants contend that the Examiner has erred in rejecting the claims
under 35 U.S.C. § 103 for failure of the key reference Shear to teach “the
server on which the [software to be distributed] resides being requested, by a
client, to assure the integrity of the [software to be distributed]”. (App. Br. 8,
middle). Appellants interpret Shear to be teaching that the software to be
distributed is the integrity verifying software itself. (Id.).
The Shear reference is used by the Examiner to supplement the
teachings of the Ashley reference in rejecting the claims under appeal.
Ashley teaches the claimed distribution of a service from a server including
a direct service providing component and one or more supporting
components supporting the direct service providing component. (Col. 9,
bottom paragraph). Shear is used to contribute the teaching of the claimed
limitations “requesting the server to assure the integrity of the service
providing components . . . .” and “the client either requesting the service to
be provided or accepting the requested service only upon receiving the
requested integrity assurance from the server.” (See claim 1 above.)
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Appellants contend that Shear does not teach that the client in that
patent requests the server to assure the integrity of the software being
distributed. (App. Br. 8, middle). We do not read Shear in that manner.
Shear teaches the secure distribution of objects #54 (software, video, etc.)
from a server of provider #52 to various users #56a, b, and c. (Fig. 1, Col. 8,
l. 14 to 29). The objects are sent by secure means to a “protected processing
environment” #108 in the devices #57 of the client users. The objects, in
one embodiment of the patent, are released to the users only on the
presentation of a public key #124, sometimes called a second key #124, by
the user to the protected processing environment #108. Upon presentation
of that key, the object is released to the user. (Col. 13, l. 63).
We find that a broad but fair reading of the claims allows one to read
the user’s presentation of the key to release the object #54 as the claimed
“requesting the server to assure the integrity of the service providing
components”. The key is part of the Public Key Infrastructure system
disclosed by Shear, which encrypts not only the substance of the object #54
(the video or software being distributed) but also the included specification
#110, which is protected by a digital signature. (Col. 10, l. 13). The digital
signature contains elements that assure the integrity of the object being
distributed. (Col. 10, l. 15). Thus the presentation of the key is a request to
unlock the assurance of integrity.
We thus decline to find error in the Examiner’s application of Shear to
teach the limitation of the server being requested to assure the integrity of
the delivered software.
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Appellants’ second contention builds on the first. Appellants contend
that “[l]ikewise Shear et al. do not disclose or suggest a client either
requesting a service to be provided or accepting a requested service only
upon receiving the requested integrity assurance form the server since there
is no disclosure or even suggestion related to requesting the integrity
assurance in the first place.” (App. Br. 8, middle).
As we mentioned with the first contention, we consider the
presentation of the key to unlock the encryption as a request for the integrity
of the service. As the Examiner points out, Shear also teaches the claimed
accepting of a requested service (#54) only upon accepting the assurance of
integrity. (Ans. 9, middle). In consequence, we decline to accept the
Appellants’ second contention, as stated above, since we find Shear teaching
both the request for integrity assurance and the rejection of the package if
such assurance is not forthcoming.
We thus find that the Examiner did not err in stating this rejection
with regard to the Appellants’ second contention.
CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1 to 49 under 35 U.S.C. § 103.
DECISION
R1: The rejection of claims 1 to 3, 7, 11 to 13, 19 to 21, 28 to 30, 37
to 39, 43 to 45, and 49 under 35 U.S.C. § 103(a) for being obvious over
Ashley in view of Shear is affirmed.
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R2: The rejection of claims 4 to 5, 8, 14, 16, 22 to 23, 25, 31, 32,
34, 40, 41, 46 and 47 under 35 U.S.C. § 103(a) for being obvious over
Ashley and Shear in view of McManis is affirmed.
R3: The rejection of claims 9 to 10, 17 to 18, 26 to 27, and 35 to 36
under 35 U.S.C. § 103(a) for being obvious over Ashley and Shear further in
view of Jamroga is affirmed.
R4: The rejection of claims 6, 15, 24, 33, 42 and 48 under 35 U.S.C.
§ 103(a) for being obvious over Ashley and Shear further in view of
McManis and Jamroga 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)(1)(iv).

AFFIRMED

msc

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