Ex Parte Glancey

Patent Trial and Appeal Board

Nov 14, 2014

11952843 (P.T.A.B. Nov. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BRYAN GLANCEY
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Appeal 2012-006190
Application 11/952,843
Technology Center 2400
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Before MAHSHID D. SAADAT, BRUCE R. WINSOR, and
JON M. JURGOVAN, Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1–17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.2

1 The real party in interest is Trend Micro Inc. (App. Br. 1).
2 Our Decision is based on our review of the Specification as originally filed
on Dec. 7, 2007 (“Spec.”); the Appeal Brief filed on Dec. 9, 2011 (“App.
Br.”); the Examiner’s Answer mailed Jan. 5, 2012 (“Ans.”); and the Reply
Brief filed Mar. 5, 2012 (“Reply Br.”).

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STATEMENT OF CASE
Appellant’s Invention
The claims are directed to a host computer that interfaces with a smart
card (Spec. ¶¶ 41-42). The host computer has a secure operating system to
retrieve a digital certificate from the smart card and transmit it to a security
server (Spec. ¶ 45). The security server checks the digital certificate to
verify that its use is authorized (id.). The security server then transmits
notice of authorization or revocation to the host computer (id.).
Accordingly, use of the digital certificate to access an encrypted portion of
the host computer’s memory is prevented until authorization is verified
(Spec. ¶ 41).
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1 A computer system for implementing real time checking of
authorization revocation comprising:
a host computer, the host computer including a memory
having a secure operating system and the remainder of the
memory being in an encrypted section which is protected by
encryption;
a smart card, said smart card providing for password
authentication and retrieval of a digital certificate, from said
smart card wherein said digital certificate is useable to decrypt
said encrypted section of said memory; and
a security server, said security server being accessible by
said secure operating system via a network;
wherein, when said host computer is started up, said
secure operating system operates said host computer;
wherein, when said secure operating system obtains said
digital certificate from said smart card, said secure operating
system transmits said digital certificate to said security server
for authentication prior to decrypting any portion of said
encrypted section; and
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wherein only after said security server verifies said
digital certificate, said digital certificate is used to decrypt at
least a portion of said encrypted section.
Rejection and References
Claims 1–17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Swartz (US 2007/0180509 A1 published Aug. 2, 2007 and
filed Jan. 11, 2006) in view of Hildre (US 2006/0059548 A1 published Mar.
16, 2006 and filed June 29, 2005) (Ans. 4).
Issues
The Examiner’s findings and conclusions and Appellant’s arguments
present us with the following issues:
1. Did the Examiner err in finding Swartz and Hildre disclose “host
computer including a memory having a secure operating system”
as recited in claim 1?
2. Did the Examiner err in finding Swartz and Hildre disclose “a
memory having a secure operating system and the remainder of the
memory being in an encrypted section which is protected by
encryption” as recited in claim 1?
3. Did the Examiner err in finding that Swartz and Hildre disclose a
“smart card” as recited in claim 1?
4. Did the Examiner err in the rejection by only offering conclusory
statements without articulated reasoning supported by rational
underpinning to support the motivation to combine Swartz and
Hildre?
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments the Examiner has erred. We disagree with Appellant’s
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Ans. 4–12) and
(2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellant’s Appeal Brief (Ans. 12–24). We concur with the
conclusions reached by the Examiner. We highlight the following arguments
seriatim as they are presented in the Appeal Brief, pages 9–19.
Claims 1, 7, and 13
1. Whether the combination teaches or suggests “Host Computer
Including A Memory having a Secure Operating System”
Regarding independent claims 1, 7, and 13, Appellant argues that the
combination of Swartz and Hildre does not disclose a “host computer
including a memory having a secure operating system” as recited in claim 1,
contending that the secure operating system of Swartz is on removable
media, and is thus not on internal components of a host computer (App. Br.
11–14). The Examiner finds that Swartz teaches this claim limitation
because nothing in the claims precludes the secure operating system being
on removable media attached to a computer (Ans. 12–16).
For the reasons set forth by the Examiner, we agree with the
Examiner’s finding that the claims as broadly recited do not preclude the
secure operating system being on a removable security device attached to a
computer, as taught in Swartz. In particular, Swartz teaches a computer
booting secure operating system software contained inside a non-volatile
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memory of a removable security device (Swartz ¶ 379; Figs. 3A, 3B). There
is no recitation in the claims that precludes reading the “host computer” on
both the computer and removable security device of Swartz.
Appellant’s further arguments concerning the memory being
permanently affixed to the host computer, the difference in physical
interfaces for internal and external devices, the source of their electrical
power, universality of BIOS support for internal devices versus non-
universality of BIOS support for external devices, the memory being a hard
drive, and other urged distinctions, all find no basis in the claims. In
applying broadest reasonable interpretation to claim analysis, it is not
appropriate to import limitations from the specification into the claims. In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
2. Whether the combination teaches or suggests “Memory having
Secure Operating System and the Remainder of the Memory being in an
Encrypted Section”
Appellant argues that Swartz does not disclose “the host computer
including a memory having a secure operating system and the remainder of
the memory being in an encrypted section which is protected by encryption”
as recited in the independent claims (App. Br. 14-16; Reply Br. 2-5).
Appellant argues that Swartz teaches a system in which only a portion of the
remaining memory is in an encrypted section (App. Br. 15; Reply Br. 2-3).
The Examiner notes that Appellant’s independent claims do not recite what
components of a computer are encompassed by the “memory” and what part
of it should be construed as the “remainder,” or where the “encrypted
section” is situated within the “remainder” (Ans. 16–19).
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We agree with the Examiner’s finding that Swartz’s persistent safe
storage (PSS) mechanism encrypted in an opaque container meets these
limitations of the independent claims, because it is an encrypted section of
memory that could be interpreted as the “remainder” of the memory,
whether in RAM, on a hard drive, or both (Ans. 7-11, 16-19; Swartz ¶¶ 235,
379, 387–389, 455, 485; Fig. 6A). As stated by the Examiner, claims 1 and
7 do not require encryption of any and all portions of the memory not
containing a secure operating system (Ans. 16-17). Similarly, claim 13
recites a computer-readable memory with a first non-encrypted section and a
second encrypted section, but does not have any limitation regarding the
“remainder” of the memory, and it does not define how many sections the
memory has (Ans. 17-18). We concur in the Examiner’s finding that
Appellant’s arguments are not commensurate in scope with the claims as
recited (Ans. 19). Accordingly, for these and other reasons set forth by the
Examiner, we conclude that the Examiner did not err in rejecting the claims
on this ground.
3. Whether the combination teaches or suggests the “Smart Card”
Limitation
Appellant next argues that Swartz does not disclose the “smart card”
recited in claim 1 because the cryptographic component is not independently
functional and does not contain a digital certificate (App. Br. 16–18). The
Examiner finds Swartz teaches that the cryptographic component may be
removable from the security device and implemented as a smart card
(Swartz ¶ 325), which sets the foundation for combining the particular smart
card taught by Hildre with the security device of Swartz (Ans. 19–22). We
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agree with the Examiner that the combination of Swartz and Hildre teaches
separate host computer and smart card elements.
Regarding Appellant’s argument that the cryptographic components
of Swartz cannot be a smart card even if independent functionality were
included (App. Br. 18), we agree with the Examiner that nothing in the
claims requires that the smart card has certain functionality independent of
the host computer or that it operates separately when detached from it.
Appellant further argues that Swartz does not contain a digital
certificate (App. Br. 17-18). However, the Examiner relied upon Hildre to
teach a smart card containing a digital certificate (Ans. 19-22; Hildre ¶ 105).
Accordingly, we are not persuaded by Appellant’s argument against the
Swartz reference alone, because the Examiner combined it with Hildre in
making the obviousness rejection. See In re Keller, 642 F.2d 413, 426
(CCPA 1981) (citing Application of Young, 403 F.2d 754, 757 (CCPA
1968). Thus, we agree with the Examiner’s findings and conclusions.
4. Whether the combination is based on “Conclusory Statements without
Articulated Reasoning Supported by Rational Underpinning Supporting
the Combination of Swartz and Hildre”
Appellant argues the Examiner has offered only conclusory statements
without articulated reasoning supported by rational underpinning to support
the combination of Swartz and Hildre. The context for this argument is
provided by legal precedent concerning the law of obviousness. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
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legal conclusion of obviousness.”)). The Examiner finds Swartz teaches an
embodiment in which a removable smart card is utilized to provide
cryptographic functions to the security device which is attached to a
computer (Ans. 22-24; Swartz ¶ 325). The Examiner also finds Hildre
teaches it would be beneficial to provide continuous and reliable verification
of the digital certificates stored on smart cards (Ans. 22-23 (citing Hildre
¶ 21)). In addition, as previously noted, the Examiner stated that Swartz’s
teaching that its cryptographic component may be a smart card removable
from its security device sets the foundation for its combination with the
particular smart card of Hildre (Ans. 19–22). The Examiner thus finds the
motivation to combine directly in the references. We find no error in the
Examiner’s finding of motivation to combine the references.
Regarding the Appellant’s contention that Hildre does not teach a
smart card as a separate element from a host computer (see App. Br. 18–19;
Reply Br. 6), this argument has been discussed previously. We agree with
the Examiner that Swartz and Hildre do teach a smart card that is a separate
element from a host computer, for reasons previously stated.
Therefore, Appellant has not shown error in the rejection of claims 1,
7, and 13.
Claims 2-6, 8-12, and 14-17
No separate arguments were presented for claims 2–6, 8–12, and 14–
17. Accordingly, we affirm the Examiner’s findings with regard to these
claims for the reasons stated for their respective independent claims 1, 7, and
13. See In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986); In re Sernaker,
702 F.2d 989, 991 (Fed. Cir. 1983)(When the patentability of dependent
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claims is not argued separately, the claims stand or fall with the claims from
which they depend.).
DECISION
For the above reasons, the Examiner’s rejection of claims 1–17 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

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