Ex Parte Guthery

Patent Trial and Appeal Board

Mar 25, 2016

13063072 (P.T.A.B. Mar. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/063,072
22442 7590
Sheridan Ross PC
1560 Broadway
Suite 1200
Denver, CO 80202
FILING DATE FIRST NAMED INVENTOR
05/31/2011 Scott B. Guthery
03/29/2016
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.
2943AAAB-185-PUS 9939
EXAMINER
LYNCH, SHARON S
ART UNIT PAPER NUMBER
2438
NOTIFICATION DATE DELIVERY MODE
03/29/2016 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):
e-docket@sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte SCOTT B. GUTHERY
Appeal2014-004282
Application 13/063,072
Technology Center 2400
Before THU A. DANG, ERIC S. FRAHM, and
JAMES W. DEJMEK, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-22. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
A. INVENTION
According to Appellant, the claimed invention relates to " ... secure
encoding of credential cards." (Spec. p. 1 11. 5---6).
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Application 13/063,072
B. ILLUSTRATIVE CLAiivI
Claim 1 is exemplary:
1. A secure element comprising:
information, including one or more of cryptographic
material, sensitive data, and encoding niles; and
a provisioning program stored in a non-transitory
medium operable to access the information, provide the
information via a secure communication channel to an encoding
device, and cause the encoding device to provision a
provisionable device without providing the information to the
provisionable device.
C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wilczynski
Ryan
Johnson
Kanou
Roberts
GB 2,358,500 A
US 2005/0109841 Al
US 2005/0193213 Al
US 2006/0226950 Al
US 2007/0214369 Al
July 25, 2001
May 26, 2005
Sept. 1, 2005
Oct. 12, 2006
Sept. 13, 2007
Claims 1, 3---6, 9-11, 13-15 and 20-22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Roberts and Wilczynski. Final Act. 3-
14.
Claims 2, 7-8 and 17-18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Roberts, Wilczynski, and Ryan. Final Act. 14--18.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Roberts, Wilczynski, and Johnson. Final Act. 18-19.
Claims 16 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Roberts, Wilczynski, and Kanou. Final Act. 20-22.
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IL ISSUES
The principal issue before us is whether the Examiner erred in finding
that the combination of Roberts and Wilczynski teaches or suggests a
"secure element" comprising "information, includ[ing] one or more of
cryptographic material, sensitive data, and encoding rules" and a
"provisioning program ... operable to ... provide the information ... to an
encoding device, and cause the encoding device to provision a provisionable
device without providing the information to the provisionable device" (claim
1, emphasis added).
III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Roberts
1. Roberts discloses a drive manager that performs encryption of a
data file without corresponding encryption applications being previously
loaded on the computer system (Abst.). Figure 1 is reproduced below:
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Figure 1 illustrates a secure data storage system 100 that includes a
computer system 110 to which one or more removable drives 120, 150 may
be interfaced via port 114 (i-f 2 7).
2. The removable drives 120, 150 include a removable drive
manager 130 that is software resident on the drive (i-f 30). The removable
drive manager 130 may be operable to generate a user interface 116 on
computer system 110 which provides secure data functions and file
management functions (id.). When the removable drive 120, 150 is inserted
into the port 114 for the first time, support files are typically automatically
installed on the computer system to provide functional support for the
removable drive manager 130 (i-f 40).
3. Removable drive manager 130 includes encryption module 132,
key generator 134, cryptography algorithm 13 6, a file generator/manager
138, and may include one or more keys 142 (i-f 30).
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4. Removable drive manager 130 provides functions to a user
which allow the user to move or add files to or from removable drives 120,
150 (i-f 38). Functions of the removable drive manager allow for the
decryption and encryption of files on the computer system 110 and
removable drives 120, 150 (i-fi-f 29-30).
Wilczynski
5. Wilczynski discloses programming data carriers. Figure 4 is
reproduced below:
Figure 4 shows chip 44 provided in terminal 42 (p. 8, 11. 12-13).
Terminal 42 has an interface 45 for receiving a target smart card 41 (p. 8, 11.
14-15). Target smart card is programmed with an application and customer
details by the chip 44 and terminal 42 (p. 8, 11. 19-21 ). The terminal is
coupled to database 50 containing customer details and to issuer 43 of
generic applications (p. 8, 11. 22-27). Customer details and generic
application may be stored in chip 44 (id.).
6. Generic application, combined with customer details in
accordance with Rules and, optionally, a template, is used to "personalize"
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the generic application and generate an Application Load Unit (ALU) which
is then loaded onto a target card (p. 12, 11. 5-18).
IV. ANALYSIS
35 u.s.c. § 103
Appellant contends Roberts teaches the drive manager "performs the
encryption of the data file without corresponding encryption applications
being previously loaded on the computer system" (App. Br. 7). In
particular, "Roberts encryption modules 132, 162 with key generator 134,
164 and cryptographic algorithm 136, 166 are located within removable
drive 120, 150" (id.). Thus, "[ n Jo footprint of the encryption process is left
behind, and all other functions are performed on the removable drive
130[sic], 150" (id.). According to Appellant, "Roberts, in its entirety, is
directed solely towards the storage of files within removable drives" and
thus, "Roberts teaches away from the claimed, 'information, ... to provision
a provisionable device without providing the information to the
provisionable device'" (id.).
We have considered Appellant's arguments and evidence presented.
However, we disagree with Appellant's contentions regarding the
Examiner's rejections of the claims, and agree with the Examiner's findings
that the claims are unpatentable over Roberts and Wilczynski.
As an initial matter of claim construction, we must give the claims
their broadest reasonable interpretation consistent with the Specification.
See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
We agree with the Examiner that "claim 1 does not require encryption
applications to have been previously loaded onto a computer system" (Ans.
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2) or preclude that "[ n Jo footprint of the encryption process is left behind"
(Ans. 4), as Appellant contends (App. Br. 7). Rather, as the Examiner points
out, claim 1 merely requires providing the information to an "encoding
device" (Ans. 2), whether it is "temporarily" or "permanently" provided
(Ans. 4), without providing the information to a "provisionable device"
(claim 1 ) .
We also note claim 1 does not define a "provisionable device" other
than a "provisioning program" is operable "to cause an encoding device to
provision" the provisionable device "without providing the information" to
the provisionable device (claim 1 ). Further, the Specification does not
provide any specific definition for a "provisionable device," or a
"provisioning program" as claimed. Thus, we give "provisionable device"
its broadest, reasonable interpretation as any device that can be provisioned.
Similarly, we give "provisioning program" its broadest reasonable
interpretation as any program used to provision a device. Accordingly, we
conclude claim 1 merely requires a program that is able to cause an encoding
device to provision another device without sending information such as
cryptographic material, sensitive data, and encoding rules to the device that
is to be provisioned.
Roberts discloses removable drives 120, 150 comprising a removable
drive manager 130 which provides cryptographic material and encoding
rules via encryption module 132 and cryptography algorithm 136 (FF 1-3).
Interfacing of a removable drive with the computer system 110 causes the
installation of support files and the provision of a user interface (id.). The
interactions with the removable drive manager 130 provide the information
to the computing system 110 (id.).
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We find no error with the Examiner's broad but reasonable
interpretation that the claimed "provisioning program" encompasses
Robert's driver manager 130 that causes an "encoding device" to provision
another device. In particular, we agree with the Examiner's finding
"Roberts teachings using the removable drive manager (i.e. provisioning
program) of the removable drive 120 or 150 (i.e. secure elements)" for
"providing information to the computer system (i.e. encoding device)"
(Ans. 3). Accordingly, we find no error with the Examiner's reliance on
Roberts for teaching or at least suggesting "a provisioning
program ... operable to access the information [and] provide the
information ... to an encoding device," wherein the information includes
cryptographic material, sensitive data, and encoding rules and the like, as
recited in claim 1.
Furthermore, as the Examiner points out, "Roberts was not cited as
teaching the provisionable device" (Ans. 5). We agree with the Examiner
that "one cannot show nonobviousness by attaching references individually
where the rejections are based on combinations of references" (id.). See In
re Keller, 642 F.2d 413, 208 USPQ 871(CCPA1981); In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
We find no error with the Examiner's finding "Wilczynski teaches a
terminal and chip (i.e. encoding device) utilizing rules and templates (i.e.
information) to generate and write personalized application load units (i.e.
provision) into a target card (i.e., provisional[ sic] device) without also
providing the rules and templates to the target cards" (Ans. 6, FF 5---6).
We also find unpersuasive Appellant's contention that ""Roberts
teaches away from the claimed, 'information, ... to provision a provisionable
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device without providing the information to the provisionable device'"
(App. Br. 7, emphasis omitted). In Roberts, driver manager 130 causes a
computer system to provision another device (FF 2). However, nothing in
Roberts criticizes, discredits, or otherwise discourages provisioning a device
without providing information to the provisioned device (id.), such as that of
Wilczynski (FF 5---6). In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Accordingly, we find Appellant has not shown the Examiner erred in
finding the combination of Roberts and Wilczynski teaches or at least would
have suggested provisioning a provisionable device "without providing the
information to the provisionable device," as recited in claim 1.
As to claim 5, although Appellant contends Roberts does not teach
"wherein the secure element resides within the encoding device" (App. Br.
8), Roberts' removable drive manager 130 provides encoding functions in
conjunction with support software and user interface 116 provided to the
computer system 110 (FF 2-3). We find no error with the Examiner's
finding that the removable drive 120, 150, as the secure element, when
interfaced with the computer system 110, teaches or at least suggests a
secure element that "resides within" the encoding device (Ans. 7).
Similarly, as to claim 6, we agree with the Examiner's further finding
that the removable drive 120, 150 teaches and suggests "a peripheral device
to the encoding device" (App. Br. 8), as the removable drive 120, 150 is
physically external to computing device 110 (FF 1 ).
Although Appellant argues that "the limitation of claim 11 is in
addition to claim 9, from which it depends, and therefore cannot be the result
of identical motivation," we first note that, in claim 11, a "credential card" is
provisioned, whereas claim 9 requires that a "provisionable device" be
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provisioned. In rejecting claim 9, the Examiner finds the "target smart card"
(FF 5---6) is a provisionable device. The same teachings of Wilczynski are
found by the Examiner to disclose a "credential card" of claim 11. We agree
with both findings, and therefore find support for the Examiner's conclusion
that because the same teachings of Wilczynski in combination with Roberts
obviate both claims, the rationale for the combination applies to both claims
as well.
As for claim 15, we further agree with the Examiner's finding that
Roberts' computer system 110, in providing a user interface 116, discloses
and suggests "an initiator adapted to interface with an administrative user,"
wherein the administrative user is any user that interacts with the user
interface to provision file(s) to one of the removable drives 130, 150 (FF 2,
4). We find no error with Examiner's finding the act of providing customer
data and generic applications to the chip 44 and terminal 42 acts as a
message instructing the provisioning of an ALU to the target smart card 41
(FF 5---6). After receiving the customer data and generic application, the
chip 44 processes that information and provides the ALU to the target smart
card 41 (id.).
Accordingly, based on this record, Appellant also has not shown the
Examiner has erred in rejecting claims 5, 6, 11 and 15 over Roberts and
Wilczynski.
Appellant has not presented arguments directed to the Examiner's
rejection of claims 2, 7, 8, 17, and 18 over Roberts, Wilczynski and Ryan;
claim 12 over Roberts, Wilczynski and Johnson; or claims 16 and 19 over
Roberts, Wilczynski and Kanou under 35 U.S.C. § 103(a). Accordingly, we
also sustain these rejections.
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Further, Appellant does not provide separate arguments in the Appeal
Brief directed to Examiner's rejections of claims 3---6, 10, 11, 13-15, and
21-22, rejected over Roberts in view of Wilczynski, and thus we sustain the
Examiner's rejections of these claims under 35 U.S.C. § 103(a).
V. CONCLUSION AND DECISION
We affirm the Examiner's rejections of claims 1-22 under 35 U.S.C.
§ 103(a).
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
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