Ex Parte Himmel et al

Board of Patent Appeals and Interferences

Sep 13, 2010

10347774 (B.P.A.I. Sep. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BENJAMIN ANDREW HIMMEL, MARIA AZUA HIMMEL,
HERMAN RODRIGUEZ, and NEWTON JAMES SMITH JR.
____________

Appeal 2009-006154
Application 10/347,774
Technology Center 2400
____________

Before JOSEPH L. DIXON, JAY P. LUCAS, and STEPHEN C. SIU,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-006154
Application 10/347,774

2
The Appellants appeal under 35 U.S.C. § 134(a) from a Final rejection
of claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

I. STATEMENT OF THE CASE
The Invention
The invention at issue on appeal relates to a method, computer
program product, and apparatus for securely accessing computer resources
(Spec. 1).

The Illustrative Claim
Claim 1, an illustrative claim, reads as follows:
1. A method of controlling access to a resource, the method
comprising:

creating a security object in dependence upon user-selected
security control data types, the security object comprising
security control data and at least one security method;

receiving a request for access to the resource;

receiving, over a randomly selected sequence of radio
frequencies, security request data in at least one packet; and

providing access to the resource in dependence upon the
security control data and the security request data.

Appeal 2009-006154
Application 10/347,774

3
The References
The Examiner relies on the following references as evidence:
Foley US 2002/0087894 A1 Jul. 4, 2002
Izumi US 6,870,874 B2 Mar. 22, 2005
Clark US 6,934,388 B1 Aug. 23, 2005

The Rejections
The following rejections are before us for review:
Claims 1-3, 5, 6, 9-11, 13, 14, 17-19, 21, and 22 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Foley and Clark.
Claims 4, 7, 8, 12, 15, 16, 20, 23, and 24 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Foley,
and Clark in view of Izumi.
Only those arguments actually made by the Appellants have been
considered in this decision. Arguments which the Appellants could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37 (c)(1)(vii) (2008).

II. ISSUE
Has the Examiner erred in finding that the combination of Foley and
Clark teaches or fairly suggests “creating a security object in dependence
upon user-selected security control data types, the security object comprising
security control data and at least one security method” and “providing access
Appeal 2009-006154
Application 10/347,774

4
to the resource in dependence upon the security control data and the security
request data,” as recited in claim 1?

III. PRINCIPLES OF LAW
Scope of Claim
During prosecution before the USPTO, claims are to be given their
broadest reasonable interpretation, and the scope of a claim cannot be
narrowed by reading disclosed limitations into the claim. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). The Office must apply the broadest
reasonable meaning to the claim language, taking into account any
definitions presented in the specification. In re Am. Acad. of Sci. Tech Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004) (citing In re Bass, 314 F.3d 575, 577
(Fed. Cir. 2002)).
“Giving claims their broadest reasonable construction ‘serves the
public interest by reducing the possibility that claims, finally allowed, will
be given broader scope than is justified.’” Id. (quoting In re Yamamoto, 740
F.2d 1569, 1571 (Fed. Cir. 1984)). “Construing claims broadly during
prosecution is not unfair to the applicant . . . because the applicant has the
opportunity to amend the claims to obtain more precise claim coverage.” Id.
The PTO's construction here, though certainly broad, is
unreasonably broad. The broadest construction rubric coupled with
the term ‘comprising’ does not give the PTO an unfettered license to
interpret claims to embrace anything remotely related to the claimed
invention. Rather, claims should always be read in light of the
specification and teachings in the underlying patent. See Schriber-
Appeal 2009-006154
Application 10/347,774

5
Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217, 61 S.Ct. 235,
85 L.Ed. 132 (1940).

(In re Suitco Surface, Inc., No. 2009-1418, 2010 WL 1462294, at 4 (Fed. Cir.
2010).)

Obviousness
“Obviousness is a question of law based on underlying findings of
fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). The underlying
factual inquiries are: (1) the scope and content of the prior art, (2) the
differences between the prior art and the claims at issue, (3) the level of
ordinary skill in the pertinent art, and (4) secondary considerations of
nonobviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
(citation omitted).

IV. FINDINGS OF FACT
The following findings of fact (FFs) are supported by a preponderance
of the evidence.
Foley
1. Foley discloses an object “user preference” stored in an object-
oriented database:
The user preference may be stored in a database, and the
system may use a database call to confirm the user's pre-
selected method of authentication (step 303). A data base call
may include, e.g., back-up data, tracking information, and/or
Appeal 2009-006154
Application 10/347,774

6
the like. A database may be any type of database, such as
relational, hierarchical, object-oriented, and/or the like.

([0034]) (Emphases added).
2. Foley also discloses the object of user preference
includes/indicates a security method for authentication:
FIG. 3 illustrates a method for determining the authentication
method pre-set by the user in accordance with an exemplary
embodiment of the present invention. The system retrieves a
user preference from a database, where the user preference
indicates one or more authentication methods pre-set by the
user (step 303). For example, if the user has pre-selected the
user identification and password method of authentication, then
the user preference is the user identification and password
method of authentication is retrieved.
([0033], fig. 3) (Emphases added).
3. Foley further discloses a security control data (security levels
such as days of year) stored with the user preference object:
[I]n another exemplary embodiment of the present invention
illustrated in FIG. 4, the user may also select an authentication
method based on a particular service, such that the user's pre-
set authentication method is different for various restricted
services or access, for different times of day, days of the year,
and/or the like.

([0038], fig. 3) (Emphases added).

Appeal 2009-006154
Application 10/347,774

7
4. Foley still further teaches that
The exemplary embodiment illustrated in FIG. 3 assumes that
the smart card and PIN authentication method is the user's pre-
selected method of authentication (step 305). Of course, any
other authorization method can be the user's pre-selected
method of authorization depending on the user's needs. In this
way, the system prompts the user to input data into the system
in connection with the user's pre-set authorization method (step
307). For example, the system prompts the user with a dialog
box which requests that the user utilizes the smart card and PIN
authentication method to authenticate the user (step 307).

([0035], fig. 3) (Emphases added).
5. Foley also further discloses that the communication between
the user and the resource/database can be wireless, Blue Tooth, or internet
communication ([0042]).
Clark
6. Clark discloses that utilizing randomly selected sequence of
radio frequencies is well known (col. 1, ll. 21-43).

V. ANALYSIS
The Appellants have the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
The Examiner sets forth a detailed explanation of a reasoned
conclusion of unpatentability in the Examiner’s Answer. Therefore, we look
Appeal 2009-006154
Application 10/347,774

8
to the Appellants’ Brief to show error in the proffered reasoned conclusion.
Id.
Grouping of Claims

The Appellants elected to argue claims 1-3, 5, 6, 9-11, 13, 14, 17-19,
21, and 22 together as a group (App. Br. 5). Therefore, we select
independent claim 1 as the representative claim for this group, and we will
address the Appellants’ arguments with respect thereto. 37 C.F.R. § 41.37
(c)(1)(vii). See In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
35 U.S.C. § 103(a) rejections

With respect to claim 1, the Appellants contend that Foley fails to
teach a claimed step of creating a security object because “[in] fact, Foley
does not even mention the words ‘security object’ at any point,” nor does
Foley discloses or suggests a security method as described in the
specification (App. Br. 6). The Appellants further contend that Foley’s
database call to confirm the user preference does not suggest “creating a
security object” as claimed, nor does Foley, in cited paragraphs, teaches
creating a security object in dependence upon user-selected security control
data type (App. Br. 9).
We disagree with the Appellants’ contentions. We start our analysis
with claim construction. We, in light of the Specification, broadly yet
reasonably construe the claim limitation “creating a security object” as either
Appeal 2009-006154
Application 10/347,774

9
creating an object related to security or creating an instance of an object
related to security in an object-oriented environment. We also broadly yet
reasonably construe the claim limitation “security method” as any method
used or included by the security object; “security data” as any data relates to
the security method or the security object.
We find Foley teaches that the user preference can be stored in an
object-oriented database, and thus the user preference is clearly an object
(FF 1). In addition, a database call directs to the object ‘user preference” or
creating an instance of user preference object to confirm a method of
authentication (security) (FF 1). Thus, the user preference is a security
object under our claim construction. We also find Foley teaches that the
user preference object (security object) has the user pre-selected
authentication method (security method) (FF 2), and the security settings of
times or days for accessing (security control data) (FF 3). Finally, creating
the security object, the user preference, is in response to the user-selected
control data type (smart card and pin) (FF 4). As such, we conclude that
Foley teaches the disputed limitations as contended above, under our claim
construction.
The Appellants further contend that Foley neither discloses nor
suggests providing access to the resource in dependence upon the security
control data and the security requested data as claimed (App. Br. 9).
We disagree with the Appellants’ contention. We find Foley teaches
that the authentication of the user for accessing is based upon the security
Appeal 2009-006154
Application 10/347,774

10
control data (FF 3) and the security request data (input data by the user) (FF
4). As such, we also conclude that Foley teaches the disputed limitations
contended above. We also find that Foley teaches the limitations of
receiving, over a radio frequency, or internet (note that a data packet is
inherent for internet)(FF 5), the security control data (FF 3) and the security
requested data (FF 4). We further find that Clark teaches that selecting a
random sequence among the radio frequencies was well known (FF 6).
The Supreme Court noted that one of ordinary skill in the art is also a
person of ordinary creativity, not an automaton. KSR, 550 U.S. at 421. It
would have been obvious at the time the invention was made to use a
randomly selected radio sequence among multiple frequencies, as taught by
Clark, to communicate the authentication data between a user and a database,
as taught by Foley. This would predictably increase the security of the
system, a result that both Foley and Clark teach to be desirable. We,
therefore, find that combining the well-known elements of randomly
selecting a radio frequency to communicate data with the well-known
technique of creating a security object with a user-preselected security
method and security control data for authentication is nothing more than a
“predictable use of prior art elements according to their established
functions.” KSR, 550 U.S., at 417.
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 1. We also sustain the Examiner’s obviousness rejection of
independent claims 9, and 17 which contain similar limitations, and the
Appeal 2009-006154
Application 10/347,774

11
Appellants present similar arguments thereto. We also sustain the
Examiner’s obviousness rejection of its dependent claims 2-8, 10-16, and
18-24, which have not been separately argued, and fall with its base claims.
37 C.F.R. § 41.37 (c)(1)(vii). See In re Nielson, 816 F.2d 1567, 1572 (Fed.
Cir. 1987).
VII. CONCLUSION
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings the applied references, with Appellants’ countervailing
evidence and arguments for nonobviousness and conclude that the claimed
invention encompassed by appealed claims 1-24 would have been obvious
as a matter of law under 35 U.S.C. § 103(a).

VIII. ORDER
We affirm the obviousness rejections of claim 1-24 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

Appeal 2009-006154
Application 10/347,774

12

tkl

INTERNATIONAL CORP (BLF)
c/o BIGGERS & OHANIAN, LLP
P.O. BOX 1469
AUSTIN TX 78767-1469