Ex Parte Horn et al

Patent Trial and Appeal Board

Jul 21, 2016

13124045 (P.T.A.B. Jul. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/124,045 04/13/2011
32294 7590 07/25/2016
Squire PB (NV A/DC Office)
8000 TOWERS CRESCENT DRIVE
14THFLOOR
VIENNA, VA 22182-6212
FIRST NAMED INVENTOR
Gunther Horn
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.
089229.00413 3376
EXAMINER
JAMSHIDI, GHODRAT
ART UNIT PAPER NUMBER
2493
NOTIFICATION DATE DELIVERY MODE
07/25/2016 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):
IPGENERAL TYC@SQUIREpb.COM
SONIA.WHITNEY@SQUIREpb.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUNTHER HORN, WOLF-DIETRICH MOELLER,
and HARIHARAN RAJASEKARAN
Appeal2014-007515
Application 13/124,045
Technology Center 2400
Before ALLEN R. MacDONALD, ADAM J. PYONIN and
MICHAEL M. BARRY, Administrative Patent Judges.
MACDONALD, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
This is a decision on Appellants' Request for Rehearing. 1 Appellants'
Request for Rehearing is filed under§ 41.52(a)(l) requesting that we
reconsider our Decision of May 2, 2016, wherein we affirmed the
Examiner's rejection of claims 1-20, which constitute all the claims pending
1 "The request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the Board."
37 C.F.R. § 41.52(a)(l).
Appeal2014-007515
Application 13/124,045
in this application. We have reconsidered our Decision in light of
Appellants' comments in the request, and have found no errors. Therefore,
we decline to change the Decision.
Appellants' request is denied.
Appellants' Contentions
1. Appellants contend as to independent claim 1, and similarly
claims 10, 17, 18, and 19, the Board erred because "the Board overlooked
the 'validity' issue raised on pages 16-17 of the Appeal Brief, and elaborated
upon on page 5 of the Reply Brief." Rehearing Request 3.
As presented on page 17 of the Appeal Brief, the public user
identity and the user credentials are both used in at least the
second trust domain, and as such are both valid in at least the
second trust domain. Appellants respectfully submit that
paragraph [0034] of Hondo fails to disclose or suggest this
feature of the claims.
Since the Board did not address the use of the public user
identity and the user credentials in at least second trust domain,
\vhich \Vas argued by the 1A .. ppellants in the Appeal Brief and the
Reply Brief, the Board has not fully addressed the distinctions
noted by Appellants.
Rehearing Request 4; emphasis added.
2. Appellants contend as to independent claim 1, and similarly
claims 10, 1 7, 18, and 19, the Board erred because "the Board failed to
address [, i.e., overlooked,] the particular use of the public user identity and
the user credentials recited in the claims." Rehearing Request 5.
Specifically, the Board failed to address that the user
credentials are obtained via the adapter module for the
application from the identity provider. If the user credentials at
the identity provider are different from a public user identity of
the user, the adapter module stores a mapping between the
public user identity and the user credentials at the identity
provider. The user credentials are used for the application to
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Application 13/124,045
provide the user with access to the application in the second
trust domain. Appellants therefore submit that a general
statement that use of the public user identity and user
credentials are conventional in the art fails to address the
specific use of public user identity and user credentials
described in the claims.
Rehearing Request 5.
3. Appellants contend as to independent claim 1, and similarly
claims 10, 17, 18, and 19, the Board erred because "[t]he Board Failed to
Address [, i.e., overlooked,] the Particular Storing of a Mapping in
Relation to the First and Second Trust Domains." Rehearing Request 5.
Appellants presented on page 16 of the Appeal Brief that
the combination of Beyer and Hondo fails to disclose or
suggest that the adapter module stores a mapping between the
public user identity and the user credentials.
Rehearing Request 6; emphasis added.
As explained in page 17, lines 5-14 of the Application as filed,
the mapping by the adapter module in the first trust domain
allows the user credentials to be attached to a session initiation
protocol request, which can allow for the federation of user
credentials (See also Application, page 8, lines 20-29).
Since the Board did not address this feature, which was
argued by the Appellants, the Board has not fully addressed the
distinctions noted by Appellants.
Rehearing Request 7.
4. Appellants contend the Board erred because the Board failed to
address, i.e., overlooked, arguments with regard to claim 4. Rehearing
Request 7.
Claim 1 recites "obtaining said user's user credentials via an
adapter module for the application from the identity provider."
The adapter module is located in the first trust domain, while
the application and the identity provider are located in the
second trust domain. Claim 4, therefore, recites an interaction
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Application 13/124,045
between an adapter module in a closed network, and an
application and identity provider outside the closed network.
Neither the Board's decision nor the Examiner's Answer
addressed that the first trust domain is a closed network, as
recited in claim 4.
Rehearing Request 8.
ANALYSIS
As to Appellants' above contention 1, we disagree. Contrary to
Appellants' argument, the Board did not overlook the validity issue. The
Board addressed the issue at page 6-7 of its Decision. The Request for
Rehearing is not an opportunity to reargue points merely because Appellants
do not agree with the result of the Board's Decision.
Further, Appellants again attack the Hondo reference individually for
lack of a teaching where the rejection of claim 1 is based on a combination
of references. In arguing Hondo, Appellants overlook the teaching of Beyer
that the Examiner relied on to teach obtaining user credentials for the
application from the identity provider. Final Act. 3; see also Beyer i-fi-135-36
(showing that authentication of services can be based on public identity
(IMPU)). In rejecting claim 1, the Examiner relied on Hondo to teach "a
method wherein user identifiers [sic] that is valid in one trusted domain can
be translated or mapped to a second user identifier valid in another trust
domain [as] needed (See paragraph [0034])." Final Act. 4. Appellants'
argument significantly overstates the Examiner's reliance on the Hondo
reference and do not persuade us we misapprehended or overlooked any
aspect of the combination of references relied on by the Examiner.
Appellants are raising and then knocking down a straw man rejection
of claim 1 that was never made by the Examiner in that the Examiner did not
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Application 13/124,045
rely solely on Hondo as argued. In other words, Appellants argue Examiner
findings that were never made. This form of argument is inherently
unpersuasive to show Examiner error. Our reviewing court requires that
references must be read, not in isolation, but for what they fairly teach in
combination with the prior art as a whole. In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
As to Appellants' above contention 2, Appellants present new
arguments directed to the "specific use" and "particular use" of "provid[ing]
the user with access" (Rehearing Request 5) which were not raised in the
briefs before the Board. Such new arguments will not be considered.
"Arguments not raised in the briefs before the Board and evidence not
previously relied upon in the brief and any reply brief( s) are not permitted in
the request for rehearing except as permitted by paragraphs (a)(2) and (a)(3)
of this section." 37 C.F.R. § 41.52(a)(l). The Request for Rehearing is not
an opportunity to present new arguments that could have been, but were not
previously presented. Rather, the request for rehearing must state with
particularity the points in the original briefing that are believed to have been
misapprehended or overlooked by the Board.
As to Appellants' above contention 3, we disagree. Contrary to
Appellants' assertions, we find no argument directed to the "combination of
Beyer and Hondo" at page 16 of the Appeal Brief. 2 Rather Appellants argue
Hondo singly, and such argument is unpersuasive as discussed supra.
Further, contrary to Appellants' assertions, we find no argument in
2 Appellants' statement that "[t]he Office Action acknowledged that Beyer
does not teach the [disputed] features" does not constitute an argument
regarding the combination of cited references. App. Br. 15-16.
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Application 13/124,045
Appellants' briefs directed to "page 17, lines 5-14 of the Application as
filed" (Rehearing request 7). Additionally, see page 7 of the Decision. As
above, such new arguments will not be considered.
Additionally, throughout the appeal, Appellants mistakenly premise
numerous arguments on the supposition that a cited reference must by itself
disclose (i.e, teach) or suggest each claim limitation (see, e.g., contention 1
above) or that the references must provide a motivation to combine or
modify their teachings (App. Br. 14). Appellants' arguments fail because
they do not acknowledge the impact of the Supreme Court's KSR decision
(KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398 (2007)). The Court repudiated
any requirement for such a "teaching, suggestion, or motivation" to show
obviousness. KSR, 550 U.S. at 415 ("We begin by rejecting the rigid
approach of the Court of Appeals."). Rather, the requirement is only that the
Examiner show "the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in the art
to which said subject matter pertains." KSR, 550 U.S. at 406 (quoting
35 U.S.C. § 103) (emphasis added); id. at 418 ("[T]he analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ."). We conclude that the
Examiner provides just such a showing in the rejection from which this
appeal is taken. Final Act. 3--4.
As to Appellants' above contention 4, we disagree. At footnote 1 of
our Decision, we explained that claim 4 was not separately argued.
Appellants merely recited claim language and provided a naked assertion
that the corresponding elements were not found in the prior art, which does
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Application 13/124,045
not constitute a proper separate argument. See 37 C.F.R. § 41.37(c)(l)(iv);
see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that
the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art."). To the extent that Appellants now provide a more detailed
argument as to claim 4, we decline to consider this belated new argument.
DECISION3
In view of the foregoing discussion, we grant Appellants' Request for
Rehearing to the extent of reconsidering our decision, but we otherwise deny
Appellant's Request.
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)(v).
REQUEST FOR REHEARING DENIED
3 At footnotes 2 and 3 of the rehearing Request, Appellants assert that
because that Board points out that certain features are "conventional" the
Board has provided a new rationale (i.e., a new ground of rejection). We
disagree.
The thrust of the rejection remains that set forth by the Examiner.
That this Board points out that certain features were conventional is not a
conclusion that the Examiner's references or rationale are lacking. Rather,
as we pointed out at page 7 of our Decision, such conventional features are
found in the Examiner's references. In re Noznick, 391 F.2d 946, 949
(CCP A 1968) (no new ground of rejection made when "explaining to
appellants why their arguments were ineffective to overcome the rejection
made by the examiner").
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