Ex Parte Miller et al

Board of Patent Appeals and Interferences

Sep 27, 2010

10078687 (B.P.A.I. Sep. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LAWRENCE R. MILLER
and
BRUCE J. SKINGLE
____________

Appeal 2009-013685
Application 10/078,687
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

CRAWFORD, 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.

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 (2002) of the
Examiner’s final decision rejecting claims 1 to 6, 10 to 15, 17, 19 to 30, and
33 to 49. We have jurisdiction over the appeal under 35 U.S.C. § 6(b)
(2002).
We REVERSE.
Claim 1 is illustrative:
1. A method for single sign-on session
management, the method comprising:
receiving, at a first server, a list of
authorized users from a global repository, other
servers also receiving the list of authorized users
from the global repository, the first server and the
other servers each having protected resources;
establishing a session credential at the first
server using the list of authorized users, the other
servers also capable of establishing session
credentials;
sending the session credential from the first
server to a client;
receiving a protected resource request from the
client at the first server, the protected resource
request including the session credential established
by the first server;
responsive to receiving the session
credential at the first server from the client,
validating the session credential entirely within the
first server, and upon validation of the session
credential, granting the client access to a first
protected resource at the first server;
sending the session credential from the
client to one of the other servers;
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receiving the session credential at the one of
the other servers; and
allowing the client access to a second
protected resource at the one of the other servers
based on the session credential that was
established by the first server.
Appellants appeal the following rejections:
1. Claims 1 to 6, 10 to 15, 17, 19 to 30, 33 to 45 and 49 under 35
U.S.C. § 103(a) as being unpatentable over Howard (US 6,584,505 B1, iss.
Jun. 24, 2003) in view of Purpura (US 6,421,768 B1, iss. Jul. 16, 2002).
2. Claims 46 to 48 under 35 U.S.C. § 103(a) as unpatentable over
Howard in view of Purpura and Official Notice.
3. Claim 1 under 35 U.S.C. § 103(a) as being unpatentable over
Purpura.

ISSUE
The dispositive issue in this appeal is whether the Examiner erred in
rejecting the claims because the prior art does not disclose receiving at a first
server a list of authorized users from a global repository.

FACTUAL FINDINGS
Howard discloses that a profile from a global repository is received at
a first server and is provided to other servers (col. 3, ll. 51 to 61; col. 9, ll. 17
to 21). The profile is information about a single user including an email
address and the type of Internet browser and is associated with the user’s
login ID (col. 3, ll. 46 to 61).
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To establish the obviousness of the recitations in the claims, the
Examiner states:
Howard . . . fails to explicitly teach that each of the
affiliate servers receive a list of authorized users.
However, it would have been obvious to one of
ordinary skill in the art to modify Howard et al[.]
to include the features of sending a list of
authorized users to all affiliate servers because
doing so would provide a centralized way of
maintaining a list of authorized users at one central
location such as Howard’s authentication server
and sending that list to the affiliate servers to allow
the affiliate servers to know which users have been
authorized and to allow each affiliate server to
perform its own authentication using that list.
(Ans. 4 to 5).
ANALYSIS
The Appellants argue that the prior art does not disclose receiving, at
a first server, a list of authorized users from a global repository. We agree.
We agree with the Examiner that it is not necessary that the prior art
contains a specific teaching, suggestions or motivation to support the finding
of obviousness as long as the claimed elements were known in the prior art
and one skilled in the art could have combined the elements as claimed and
yield no more that predictable results. However, in the instant case, the
Examiner has not established that it was known in the art to receive a list of
authorized users from a global repository at a first server and other servers.
Howard discloses sending a profile, not a list of authorized users. The
disclosure of receiving a list of authorized users is found in Appellants’
disclosure. As such, in our view, the Examiner relied on hindsight in
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reaching his obviousness determination. Our reviewing court has said, “[t]o
imbue one of ordinary skill in the art with knowledge of the invention in
suit, when no prior art reference or references of record convey or suggest
that knowledge, is to fall victim to the insidious effect of a hindsight
syndrome wherein that which only the inventor taught is used against its
teacher.” W. L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984). It is essential that "the
decisionmaker forget what he or she has been taught at trial about the
claimed invention and cast the mind back to the time the invention was made
. . . to occupy the mind of one skilled in the art who is presented only with
the references, and who is normally guided by the then-accepted wisdom in
the art." Id.
In view of the foregoing, we will not sustain the Examiner’s rejection
of the claims because each of the independent claims requires that a first
server and other servers receive a list of authorized users from a global
repository.

DECISION
We REVERSE the Examiner’s § 103(a) rejections.

REVERSED

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hh

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