Ex Parte Eldar et al

Board of Patent Appeals and Interferences

Apr 30, 2010

10167476 (B.P.A.I. Apr. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte AVIGDOR ELDAR, FABIAN TRUMPER,
ZVI VLODAVSKY, and ARIEL ROSENBLATT
____________________

Appeal 2009-012857
Application 10/167,476
Technology Center 2400
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Decided: April 30, 2010
____________________

Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and
DEBRA K. STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
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Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-46. We have jurisdiction under 35 U.S.C. § 6(b)
(2008) and an oral hearing was held April 14, 2010.
We AFFIRM.
Introduction
According to Appellants, the invention is a system and method for
diagnosing integrated circuitry to determine the integrity of stored security
records (Spec. 1, [1] - [4]). An encryption engine is placed in an off-line
mode and encrypts or decrypts test data using the same algorithms and
security records as if operating on-line (Spec., Abstract). The processed data
is then compared to data that should have been generated if the encryption
engine were using a correct security record (id.). If the data match, the
security record is determined not to be corrupted (id.).

STATEMENT OF THE CASE
Exemplary Claim
Claim 1 is an exemplary claim and is reproduced below:
1. A diagnostic method for a security record, comprising:

causing the networking circuit to enter a loopback mode,

providing test data to the networking circuit,

receiving processed test data from the networking circuit,
the processed test data having been generated with reference to
the networking circuit's copy of the security record,

generating expected processed test data from the test data
with reference to a local copy of the security record,

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comparing the processed test data to the expected
processed test data, and

if they match, confirming integrity of the security record.

Prior Art
Brenneman 4,750,175 Jun. 7, 1988
Laczko 6,567,906 B2 May 20, 2003
Yokote US 2002/0157024 A1 Oct. 24, 2002

Rejections
Claims 1-9, 13-21, and 25-46 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Brenneman and Laczko.
Claims 10-12 and 22-24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Brenneman, Laczko and Yokote.

GROUPING OF CLAIMS
Based on Appellants’ arguments we group the claims as follows:
(1) Appellants argue claims 1-9, 13-21, and 25-46 as a group on the
basis of claim 1 (App. Br. 6-7). We select independent claim 1 as the
representative claim. We therefore treat claims 2-9, 13-21, and 25-46 as
standing or falling with representative claim 1.
(2) Claims 10-12 and 22-24 were also argued on the basis of claim
1; therefore, we treat claims 10-12 and 22-24 as standing or falling with
claim 1 (App. Br. 7-8).
See 37 C.F.R. § 41.37(c)(1)(vii).

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ISSUES
Appellants assert their invention is not obvious over Brenneman and
Laczko because the references do not disclose “receiving processed test data
from the networking circuit, the processed test data having been generated
with reference to the networking circuit’s copy of the security record,
generating expected processed test data from the test data with reference to a
local copy of the security record, comparing the processed test data to the
expected processed test data” (App. Br. 6-7, emphasis original).
Specifically, Appellants contend Brenneman does not teach two
independently generated data sets, wherein the first is generated by one
component based on a copy of the record and the second is generated by an
alternative component based on a different copy of the record and then
comparing the two sets (id. at 6). Additionally, Appellants argue that
Laczko does not correct the deficiencies of Brenneman because it does not
disclose comparing two sets of independently generated data as claimed (id.
at 7).
The Examiner finds Brenneman teaches “processed test data” is
generated by the local test computer 52 transmitting test data to a remote
loopback device for a loopback test (Ans. 22). The Examiner further finds
Brenneman teaches the remote loop back device generates “processed test
data” and recalculates the checksum using a local copy of the security record
to get the expected processed test data (Ans. 23). The Examiner additionally
finds that it would have been obvious to one of ordinary skill in the art that
“an alternative procedure in which the diagnostic numbers are compared
with a list of ‘legal’ numbers and the alarm sounded in the event that a given
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diagnostic number is not in said list would also allow the detection of errors”
(Ans. 23).

Issue: Have Appellants shown the Examiner erred in finding
Brenneman and Laczko teach generating processed test data with reference
to the networking circuit’s copy of the security record and generating
expected processed test data with reference to a local copy of the security
record and if the generated processed test data and the generated processed
test data match, confirming integrity of the security record?

FINDINGS OF FACT (FF)
Appellants’ Invention
(1) Security records are “well-known data records that define how
authentication, encryption and decryption operations shall be performed”
(Spec. 8, [34]).

Brenneman Reference
(2) Brenneman teaches a system that tests a data processing
network and diagnoses malfunctions (Abstract). A data processing network
may have a large number of users joined by communication links with
computers at various sites (col. 1, ll. 8-12). A communication from one
network computer to another computer typically consists of a message
formatted prior to transmission into a packet (col. 1, ll. 15-22). The message
includes a format component that includes information used for detecting
errors in transmission and information specifying the format of the data
packet, often one or more check sums (col. 5, ll. 36-46).
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(3) When a malfunction is detected in the system, a test computer
may run tests including collecting data on one or more of the paths and
sending it back to the test computer for analysis (col. 4, ll. 54-64).
(4) A remote loopback device 60 may be installed in the system
(col. 5, ll. 4-7). When a remote loopback device 60 detects a set of specified
commands over a communication path 22, specific conductors in the
communication paths may be coupled together (col. 5, ll. 8-13). “For
example, the remote loopback device may connect the conductor used for
receiving a message to the conductor used for transmitting a message” (col.
5, ll. 13-16). As a result, the message received at a location is then
transmitted back to the message sender (col. 5, ll. 16-18).
(5) Typically check sums are used to detect transmission errors
(col. 5, ll. 44-46). A check-sum is calculated by adding numerical values
corresponding to each of the characters in the data packet (col. 5, ll. 46-50).
The transmitting computer calculates the check sum when the data packet is
assembled and the receiving computer recalculates the check sum upon
receipt of the data packet (col. 5, ll. 55-59). If the check sums do not match
(i.e., an error has occurred in the data packet transmission), the receiving
computer sends a message to the transmitting computer requesting the
message be resent (col. 5, ll. 59-65).

Laczko Reference
(6) Laczko is related to a secure computing device that includes a
diagnostic program for checking a program’s security (Abstract). Hardware
appliances previously used fixed function machines to translate a received
signal to a standard signal (col. 55-65). Depending on the function fixed
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upon manufacture, a user could receive a hierarchy of services (col. 1, ll. 40-
67).
(7) A diagnostic program is loaded at a predetermined physical
address and a selected program is checked against a standard (col. 2, ll. 25-
27). If the standard is met, the selected program is deemed secure; if not, the
selected program is deemed not secure (col. 2, ll. 27-29). This system helps
in preventing unauthorized applications from being downloaded (col. 3, ll.
48-53). Of particular importance is prevention of the operating system being
compromised (col. 3, ll. 58-64).
(8) The system includes a central processing unit with digital
processing capability for decompressing compressed video and audio
signals, decrypting encrypted video signals, converting the received signal to
a new format (col. 4, ll. 52-59). The system can verify private key/public
key signature by determining if the RTOS (real time operating system) has
been modified as a result of, for example, the private key being
compromised (col. 11, ll. 5-12).

PRINCIPLES OF LAW
Unless the steps of a method actually recite an order, the steps are not
ordinarily construed to require one. Interactive Gift Express, Inc. v.
CompuServe, Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001). See also Altiris,
Inc. v. Symantec Corp., 318 F.3d 1363, 1369-71 (Fed. Cir. 2003) (district
court erred in claim construction by reading a step order from the written
description into the claims).

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ANALYSIS
35 U.S.C. § 103(a): claims 1-9, 28-33, and 46
We find Brenneman teaches “the processed test data having been
generated with reference to the networking circuit’s copy of the security
record.” Brenneman teaches a networked computer system with multiple
linked computers (FF 3).
Appellants have defined “security record” as “well-known data
records that define how authentication, encryption and decryption operations
shall be performed.” Additionally, we find a process that determines
whether a data packet conforms to the original or is the same way as the
original is performing authentication operations.
Brenneman teaches a transmitting computer calculates the check sum
and thus, generates processed test data with reference to security records
(i.e., the check sum is used with reference to an algorithm meant to
authenticate the accuracy of the data being transmitted) (FF 5). We
conclude that it would have been obvious to one of ordinary skill in the art
for the transmitting computer to use a first version of the algorithm to
calculate the security that was consistent throughout the networking circuit
and thus, is the networking circuit’s copy of the security record.
At the receiving computer, the check sum is again calculated with
reference to a local copy of the security record, thus generating expected
processed test data (FF 5). We again conclude one of ordinary skill in the
art would have found it obvious and within his or her skill set for the
receiving computer to use a second copy of the algorithm to calculate the
check sum.
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We further find Brenneman teaches the check sum sent by the
transmitting computer is compared with the check sum generated by the
local computer to determine if a match exists (FF 5).
We find Laczko teaches a device that includes a diagnostic program
for checking a program’s security (FF 6). We further find Laczko also
teaches that a program, including the operating system or any other
application, can be checked to determine if the security or integrity has been
compromised (FF 7 and FF 8). Thus, we conclude one of ordinary skill in
the art would have found it obvious to use the technique in Laczko to verify
a security record’s integrity.
Although Appellants argue otherwise, claim 1 does not require a
specific order with respect to the “receiving” and “generating” steps or
specify the device performing each of these steps.
Therefore, based on these findings, we conclude one of ordinary skill
in the art would have found it obvious to incorporate Laczko’s teaching of
verifying a program’s integrity into Brenneman’s system of using two
versions of the security record to generate test data and compare the results.
Thus, Appellants have not persuaded us of error in the Examiner’s
conclusions of obviousness with respect to claim 1. Independent claims 13,
21, 28, 34, 41, and 46 and dependent claims 2-9, 14-20, 25-27, 29-33, 35-40,
and 42-45 were not argued separately by Appellant, but instead, Appellant
relied upon claim 1. Therefore, claims 2-9, 13-21, and 25-46 fall with
claim 1.

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35 U.S.C. § 103(a): claims 10-12 and 22-24
Appellants assert their invention is not obvious over Brenneman,
Laczko and Yokote on the same basis as set forth for representative
independent claim 1, which we addressed above (App. Br. 7). Further,
Appellants argue that Yokote does not cure the alleged deficiencies of
Brenneman and Laczko because Yokote “merely discloses a server that
automatically determines and employs the appropriate security association
management protocol for a plurality of network nodes, based on a
combination of factors” (id.).
Based on our findings with respect to claim 1 and since Appellants did
not separately argue claims 22-24, we find Appellants have not shown the
Examiner erred in concluding claims 10-12 are obvious over Brenneman,
Laczko and Yokote.

CONCLUSION
Appellants have not shown the Examiner erred in finding claim 1 is
obvious over Brenneman and Laczko. Since claims 2-9, 13-21 and 25-46
were not argued separately, claims 2-9, 13-21 and 25-46 are found to be
obvious over Brenneman and Laczko. Accordingly, Appellants have not
shown the Examiner erred in rejecting claims 1-9, 13-21, and 25-46 under
35 U.S.C. § 103(a) for obviousness over Brenneman and Laczko.
Since claims 10-12 and 22-24 depend from representative and
independent claim 1 and claims 10-12 and 22-24 were not argued separately,
claims 10-12 and 22-24 are found to be obvious over Brenneman, Laczko
and Yokote. Accordingly, Appellants have not shown the Examiner erred in
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rejecting claims 10-12 and 22-24 under 35 U.S.C. § 103(a) for obviousness
over Brenneman, Laczko and Yokote.

DECISION
The Examiner’s rejection of claims 1-9, 13-21, and 25-46 under
35 U.S.C. § 103(a) as being obvious over Brenneman and Laczko is
affirmed.
The Examiner’s rejection of claims 10-12 and 22-24 under 35 U.S.C.
§ 103(a) as being obvious over Brenneman, Laczko and Yokote 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) (2009).

AFFIRMED

Vsh

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