Ex Parte Moskal

Patent Trial and Appeal Board

Apr 28, 2017

14079324 (P.T.A.B. Apr. 28, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
F-6681 8331
EXAMINER
EDWARDS, LINGLAN E
ART UNIT PAPER NUMBER
2491
MAIL DATE DELIVERY MODE
14/079,324 11/13/2013
112722 7590
Becker Patent Law, LLC
5800 Broad Street
Greendale, WI 53129
WITOLD MOSKAL
04/28/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WITOLD MOSKAL
Appeal 2017-000895
Application 14/079,3241
Technology Center 2400
Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD JR., and
NORMAN H. BEAMER, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—3, 5—11, 13—18, and 21—24, which are all claims
pending. Claims 4, 12, 19, and 20 are cancelled. We have jurisdiction over
the pending rejected claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies Fenwal Inc. as the real party in interest. (App. Br. 1.)
Appeal 2017-000895
Application 14/079,324
THE INVENTION
Appellant’s disclosed and claimed invention is directed to an
electronic document comprising both a digitally signed identity associated
with a server computer, and a software enabling indicator indicating whether
a software feature of a system is to be enabled for use. (Abstract.)
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. A server computer, comprising:
a network interface circuit configured to communicate
over a network; and
a processing circuit configured to transmit over the
network an electronic document comprising a digitally signed
identity associated with the server computer, wherein the
electronic document is a Secure Socket Layer certificate used to
establish communication between the server computer and a
client computer, the electronic document further comprising a
software enabling indicator, the software enabling indicator
comprising data indicating whether a software feature of a
system is to be enabled for use, whereby a communication
interface of the client computer is disabled until a valid SSL
certificate is received by the client computer.
REJECTIONS
The Examiner rejected claims 1—3, 5, 6, and 24 under 35 U.S.C. § 103
as being unpatentable over Ben-Menahem et al. (US 2007/0150418 Al, pub.
June 28, 2007) (hereinafter “Ben-Menahem”) in view of Nadalin et al. (US
2006/0294366 Al, pub. Dec. 28, 2006) (hereinafter “Nadalin”). (Final Act.
7.)
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The Examiner rejected claims 7—9 under 35 U.S.C. § 103 as being
unpatentable over Ben-Menahem in view of Nadalin and Teal et al. (US
2006/0064582 Al, pub. Mar. 23, 2006) (hereinafter “Teal”). (Final Act. 9.)
The Examiner rejected claims 10, 11, and 13 under 35 U.S.C. § 103 as
being unpatentable over Ben-Menahem in view of Teal. (Final Act. 11.)
The Examiner rejected claim 14 under 35 U.S.C. § 103 as being
unpatentable over Ben-Menahem in view of Teal and Nadalin. (Final Act.
13.)
The Examiner rejected claims 15, 16, and 18 under 35 U.S.C. § 103 as
being unpatentable over Ben-Menahem in view of Bousamra et al. (US
2013/0212381 Al, pub. Aug. 15, 2013) (hereinafter Bousamra). (Final Act.
13.)
The Examiner rejected claim 17 under 35 U.S.C. § 103 as being
unpatentable over Ben-Menahem in view of Bousamra and Teal. (Final Act.
16.)
The Examiner rejected claim 21 under 35 U.S.C. § 103 as being
unpatentable over Ben-Menahem in view of Bousamra and Teal. (Final Act.
16.)
The Examiner rejected claim 22 under 35 U.S.C. § 103 as being
unpatentable over Ben-Menahem in view of Bousamra and Indenbom (US
2009/0089881 Al, pub. Apr. 2, 2009). (Final Act. 17.)
The Examiner rejected claim 23 under 35 U.S.C. § 103 as being
unpatentable over Ben-Menahem in view of Bousamra and Robert et al. (US
2005/0182727 Al, pub. Aug. 18, 2005) (hereinafter “Robert”). (Final Act.
17.)
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Application 14/079,324
ISSUES ON APPEAL
Appellant’s arguments in the Appeal Brief presents the following
issues:2
Issue One: Whether the Examiner erred in combining Ben-Menahem
and Nadalin in the rejection of independent claim 1. (App. Br. 11—13; Reply
Br. 6.)
Issue Two: Whether the Examiner erred in finding the combination
of Ben-Menahem and Teal teaches or suggests the independent claim 10
limitation:
wherein the electronic document further comprises a validity
date representing a date after which the remote server computer
can no longer be authenticated using this electronic document,
wherein the processing circuit is further configured to store an
indication that the software feature is no longer enabled for use
after expiration of the validity date.
(App. Br. 7—11; Reply Br. 3—6.)
Issue Three: Whether the Examiner erred in combining Ben-Menahem
and Bousamra in the rejection of independent claim 15. (App. Br. 5—6.)
Issue Four. Whether the Examiner erred in finding the combination
of Ben-Menahem and Bousamra teaches or suggests the claim 18 limitation:
wherein the processing circuit is configured to transmit the one
second digital certificate to a client computing device associated
with a first care area within a medical facility and the another
second digital certificate to a second client computing device
associated with a second care area within the medical facility.
2 Rather than reiterate the arguments of Appellant and the positions of the
Examiner, we refer to the Appeal Brief (filed Mar. 16, 2016); the Reply
Brief (filed Oct. 12, 2016); the Final Office Action (mailed Sept. 15, 2015);
the Advisory Action (mailed Dec. 7, 2015); and the Examiner’s Answer
(mailed Aug. 16, 2016) for the respective details.
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(App. Br. 3—5; Reply Br. 1—3.)
Issue Five: Whether the Examiner erred in finding the combination
of Ben-Menahem, Bousamra, and Teal teaches or suggests the claim 21
limitation:
if a valid certificate is not received at a client device, licensed
features will be disabled and the client device will operate only
basic free functions.
(App. Br. 14; Reply Br. 6—7.)
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments the Examiner erred. We disagree with Appellant’s arguments,
and we adopt as our own (1) the pertinent findings and reasons set forth by
the Examiner in the Action from which this appeal is taken (Final Act. 2—18)
and (2) the corresponding findings and reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellant’s Appeal Brief (Ans. 2—
12). We concur with the applicable conclusions reached by the Examiner,
and emphasize the following.
Issue One
Appellant argues that the Examiner errs in combining the teachings of
Ben-Menahem and Nadalin because the Examiner’s rationale fails to supply
“some articulated reasoning with some rational underpinning” and “there is
no motivation expressed” in the references that corresponds to the
Examiner’s rationale. (App. Br. 12—13.) Appellant further contends that “in
Ben-Menahem’s system, the signing entity is the certificate authority of the
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licensee’s own domain’'' (App. Br. 13 (citing Ben-Menahem 111)), meaning
Ben-Menahem’s system has “little need” for Nadalin’s security measures.
(App. Br. 13.)
We are not persuaded the Examiner erred. The Examiner correctly
finds that:
it would have been obvious to one of ordinary skill in the art at
the time of the invention to modify the system of Ben-Menahem
to incorporate the use of SSL for establishing secure
communications as disclosed by Nadalin, in order to achieve a
higher system security.
(Final Act. 8 (citing Nadalin || 5—6, 52).) The Examiner finds, and we
agree, that “[t]he fact that Ben-Menahem uses digital certificates for
controlling access to software features, including using the certificate for
establishing authenticity (Ben-Menahem, par 0033), clearly indicates a
desire for security.” (Ans. 9—10.) We further note that Ben-Menahem
expressly states “it is possible to authorize any arbitrary server to act as a
license server” (Ben-Menahem |37), undercutting Appellant’s argument
that incorporating Nadalin’s SSL certificates would “overengineer” the
resulting network system (App. Br. 13; Reply Br. 6).
Accordingly, we sustain the Examiner’s rejection of claim 1, as well
as claims 2, 3, 5—9, 14, and 24 not separately argued. (App. Br. 11, 13.)
Issue Two
In finding Ben-Menahem and Teal teach or suggest the limitation at
issue, the Examiner relies on the disclosure of Teal of a “validation period
being embedded in a software licensing certificate for enabling software
licensing features during a specific period” (Final Act. 12) and that “all
digital certificates have validate period, when the certificate is being used for
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authentication, the authentication would fail when the validate period
expires (Final Act. 3 (emphasis added)).3
Appellant argues the Examiner errs because the “Valid Start” and
“Valid End” dates of Teal’s “Maintenance Certificate” relate to downloading
software and “do not tell when a software feature is enabled for use.” (App.
Br. 8; Reply Br. 5.) Appellant further contends the Examiner’s arguments,
“even if true, do not explain why a person of ordinary skill in the art would
find the subject matter of present Claim 10 to be obvious” and that Teal
“expressly teaches away” from “the dual purpose validity date.” (App. Br.
11.)
We are not persuaded the Examiner erred. The Examiner finds, and
we agree, that regarding Teal, “the software function in the new updates can
be enabled only when the Maintenance certificates have valid dates” and
“Teal teaches the valid dates being used for ‘Maintenance.’” (Ans. 8 (citing
Teal 177)), and regarding Ben-Menahem, “when the certificate is expired or
not valid, the software runs ‘feature-limited mode’” (Ans. 8 (citing Ben-
Menahem 13)). Thus, both Ben-Menahem and Teal attach expiration dates
to software rights, and an authentication certificate has an expiration date in
which access is denied as authentication fails. We agree with the Examiner
that “one of ordinary skill in the art would recognize that the same concept
of valid dates can also be used for certificates for other licensing functions as
3 Appellant’s argument that the Examiner has taken “judicial notice”
followed by Appellant’s traversal of the Examiner’s finding regarding an
authentication certificate having a validate period is unpersuasive, because
Appellant’s showing that Teal’s “Product Certificate” has no “validate
period” (App. Br. 10; Reply Br. 4—5) does not relate to an authentication
certificate.
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well” (Ans. 8), because in addition to being a known technique to improve
similar systems, equating the authentication expiration date to the date that
thereafter software runs in a feature-limited mode, is not “more than the
predictable use of prior art elements according to their established
functions.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Accordingly, we sustain the Examiner’s rejection of claim 10, as well
as claims 11, 13, and 17 not separately argued. (App. Br. 7, 14.)
Issue Three
Appellant argues that the Examiner errs in combining the teachings of
Ben-Menahem and Bousamra because the Examiner’s rationale fails to
supply “some articulated reasoning with some rational underpinning.” (App.
Br. 5.) Appellant further contends that “Bousamra teaches away from
combining its teachings with that of Ben-Menahem.” (App. Br. 6 (citing
Bousamra 7—8).)
We are not persuaded the Examiner erred. The Examiner finds, and
we agree, that:
Bousamra is cited by the examiner for teaching medical devices
can be equipped and configured to use digital certificates for
controlling operations of the medical devices. Therefore, it
would have been obvious to one of ordinary skill in the art at the
time of the invention, to extend the application of the certificate
management system of Ben-Menahem in the medical application
system of Bousamra, in order to provide a software feature
control to the medical software.
(Ans. 5—6.) Appellant does not challenge this finding in the Reply. (Reply
1-7.)
Appellant’s argument that Bousamra “teaches away” from
combination with Ben-Menahem is unpersuasive, because the portions of
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Bousamra that Appellant relies on describe deficiencies of the prior art of
Bousamra, deficiencies regarding “collection devices” presumably solved by
Bousamra, and ignore the explicit teachings of the reference as whole. See
W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir.
1983 (A prior art reference must be considered in its entirety, i.e., as a
whole, including portions that would lead away from the claimed invention).
Accordingly, we sustain the Examiner’s rejection of claim 15, as well
as claims 16, 22, and 23 not separately argued. (App. Br. 5, 15.)
Issue Four
In finding Ben-Menahem and Teal teach or suggest the limitation at
issue, the Examiner relies on the disclosure of Bousamra of “authorization
certificates used for accessing medical devices” (Ans. 3 (citing Bousamra
Abstract, 110)) and an “association with [a] care area within [a] medical
facility” (Ans. 3 (citing Bousamra Fig. 1,126)). The Examiner also relies
on the disclosure of Bousamra for “using [a] digital certificate for control
software used in medical devices.” (Final Act. 15 (citing Bousamra Tflf 42,
52-56.)
Appellant argues that “[a] ‘hospital’ and a ‘nursing care facility’ are
not different care areas within a medical facility” and cite their Specification
which states that a “care area” can be “for example, intensive care unit,
primary care unit, neonatal care unit, floors or areas of a hospital building,
etc.” (Reply Br. 3 (quoting Specification 137).)
We are not persuaded the Examiner erred. The Examiner finds, and
we agree, that “one of ordinary skill in the art would recognize that any
client device used for health or medical purposes, by medical professionals,
or at a hospital or doctor’s office, is a client device associated with a care
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area within a medical facility.” (Ans. 3.) Here, the Examiner broadly and
reasonably finds the claimed “care area within a medical facility”
encompasses Bousamra’s disclosure of a hospital and nursing care facility,
as Appellant’s Specification offers examples of care areas but does not
provide a definition that would exclude the facilities disclosed by Bousamra.
Appellant’s argument that the claim requires “[a]t least two different care
areas” (Reply Br. 2) is not commensurate with the scope of the claim, which
does not specify the care areas are different. One skilled in the art, at the
time of invention, would consider a facility such as a hospital to contain a
plurality of care areas, each equipped with one or more computing devices,
such as the devices related to diabetes therapy devices disclosed by
Bousamra, as well other devices that “can be configured to communicate
with each other.” (Bousamra 124.)
Accordingly, we sustain the Examiner’s rejection of claim 18.
Issue Five
In finding Ben-Menahem, Bousamra, and Teal teach or suggest the
limitation at issue, the Examiner relies on the disclosure of Teal (Ans. 10—
11), and further relies on the disclosure on Ben-Menahem, in which “in
order to permit operation in full-featured mode, a certificate issued by XYZ
Corp.’s certificate authority (or issued by a server that roots to XYZ Corp.’s
certificate authority) needs to be present on the machine on which the
software is running” and otherwise, the software runs in “feature-limited
mode” (Ans. 11 (quoting Ben-Menahem 13)).
Appellant argues the Examiner erred in construing the term “basic
free functions,” because Appellant’s Specification states that “[i]f a valid
certificate is not received, server 14 will disable licensed features and will
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operate only basic free functions,” meaning that ‘“basic free functions’ are
not ‘licensed features.’” (Reply Br. 6 (quoting Spec. 130).) Appellant
further contends that “the Examiner has improperly taken judicial notice”
and “Ben-Menahem distinguishes full-featured mode from feature-limited
mode, and there is no indication that these are ‘basic free functions’ which
are not ‘licensed features.’” (Reply Br. 7.)
We are not persuaded the Examiner errs, because, as described above
at footnote 3, we find the Examiner has not improperly taken judicial notice.
We also find the Examiner has broadly and reasonably interpreted the
claimed “basic free functions” encompasses Ben-Menahem’s feature-limited
mode, because Ben-Menahem’s system only provides full-features when the
“certificate that is to be present in order to permit the software to operate in
full-featured mode.” (Ben-Menahem 13.) Thus a user operating without a
license of any kind would lack the certificate and only be able access
functions which are outside the control of the license.
Accordingly, we sustain the Examiner’s rejection of claim 21.
CONCLUSION
For the reasons stated above, we sustain the obviousness rejections of
claims 1—3, 5, 6, and 24 over Ben-Menahem and Nadalin; of claims 7—9 and
14 over Ben-Menahem, Nadalin, and Teal; of claims 10, 11, and 13 over
Ben-Menahem and Teal; of claims 15, 16, and 18 over Ben-Menahem and
Bousamra; of claims 17 and 21 over Ben-Menahem, Bousamra, and Teal; of
claim 22 over Ben-Menahem, Bousamra, and Indenbom; and of claim 23
over Ben-Menahem, Bousamra, and Robert.
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DECISION
The Examiner’s decision rejecting claims 1—3, 5—11, 13—18, and 21—
24 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)(l)(iv).
AFFIRMED
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