11743545 (P.T.A.B. Nov. 17, 2014)

Ex Parte Rodgers et al

Patent Trial and Appeal BoardNov 17, 2014

11743545 (P.T.A.B. Nov. 17, 2014)

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. 11/743,545 05/02/2007 Stephane Rodgers 3875.1530001 7062 26111 7590 11/17/2014 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER HERZOG, MADHURI R ART UNIT PAPER NUMBER 2438 MAIL DATE DELIVERY MODE 11/17/2014 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 STEPHANE RODGERS, ANDREW DELLOW, IUE-SHUENN CHEN, XUEMIN CHEN, and CAROLYN WALKER _____________ Appeal 2012-006430 Application 11/743,545 Technology Center 2400 ____________ Before STEPHEN C. SIU, ERIC B. CHEN, and ANDREW J. DILLON, Administrative Patent Judges. DILLON, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–36, all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Appellants’ invention is directed to methods and systems for allowing customer or third party testing of secure programmable code are disclosed and may include verifying code loaded in a set-top box utilizing a test hash or a production hash prior to execution of the code, where the test hash and production hash may be stored in a memory, such as an one time programmable memory (OTP), within the set-top box, and may allow Appeal 2012-006430 Application 11/743,545 2 migration from corresponding test code to production code, which may be verified utilizing the test hash and production hash, respectively. See Abstract. Claim 1 is illustrative, with key disputed limitations emphasized: 1. A method for software security, the method comprising: verifying code loaded in a device utilizing a test hash corresponding to test code and a production hash corresponding to production code, wherein said test hash and said production hash are stored in a memory within said device and cannot be reprogrammed; and enabling execution of desired code based on said verification, said desired code comprising at least a portion of said verified code. The Examiner relies on the following as evidence of unpatentability: Diamant US 2006/0101310 A1 May 11, 2006 Paatero US 2003/0163685 A1 Aug. 28, 2003 Voas US 6,862,696 B1 Mar. 1, 2005 Goodman US 6,834,347 B2 Dec. 21, 2004 Coli US 5,452,355 Sep. 19, 1995 Plum US 5,579,479 Nov. 26, 1996 Appeal 2012-006430 Application 11/743,545 3 THE REJECTIONS 1. The Examiner rejected claims 1–5, 13–17, and 25–29 under 35 U.S.C. §103(a) as unpatentable over Diamant and Paatero. Ans. 5–9. 1 2. The Examiner rejected claims 6, 18, and 30 under 35 U.S.C. §103(a) as unpatentable over Diamant, Paatero, and Voas. Ans. 9– 10. 3. The Examiner rejected claims 7–9, 19–21, and 31–33 under 35 U.S.C. §103(a) as unpatentable over Diamant, Paatero, and Goodman. Ans. 10–12. 4. The Examiner rejected claims 10, 11, 22, 23, 34, and 35 under 35 U.S.C. §103(a) as unpatentable over Diamant, Paatero, and Coli. Ans. 12–13. 5. The Examiner rejected claims 12, 24, and 36 under 35 U.S.C. §103(a) as unpatentable over Diamant, Paatero, and Plum. Ans. 13–14. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions in the Appeal Brief (App. Br. 6–19) and the Reply Brief (Reply Br. 2–5) that the Examiner has erred. We have also reviewed (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Rej. 3–13), and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief 1 Throughout this opinion, we refer to the Appeal Brief filed October 11, 2011; the Examiner’s Answer mailed January 6, 2012; and, the Reply Brief filed March 6, 2012. Appeal 2012-006430 Application 11/743,545 4 (Ans. 5–14 ). We highlight and amplify certain teachings and suggestions of the references as follows. Appellants argue that the Examiner erred in rejecting independent claims 1, 13, and 25 under 35 U.S.C. §103(a) as unpatentable over Diamant and Paatero, in view of the failure of the cited references to disclose “verifying code loaded in a device utilizing a test hash corresponding to test code and a production hash corresponding to production code, wherein said test hash and said production hash are stored in a memory within said device and cannot be reprogrammed.” App. Br. 7–8. Specifically, Appellants argue that Diamant and Paatero fail to disclose or suggest verifying code utilizing a test hash corresponding to test code and a production hash corresponding to a production code. Id. at 9. That is, although Diamant discloses that the OEM verification program of Diamant can include a hash function, Diamant fails to disclose the use of two separate hashes, based upon test code and a production code, as claimed. Id.. The Examiner acknowledges this shortfall within the teaching of Diamant, but relies upon Paatero, at paragraph 10, for such teaching. Ans. 7. We find that the cited portion of Paatero recites the use of an embedded “role certificate,” which specifies what activities may be carried out by the device. As described within paragraph 10, Paatero teaches that the “role certificate” controls the acceptance of computer code by the device, noting that the computer code may comprise “test code, production code or any type of special code for some operation.” (Emphasis added). We find no suggestion within Paatero of utilizing both test code and production code, much less any suggestion of utilizing such codes to create Appeal 2012-006430 Application 11/743,545 5 both a test hash and a production hash, which are then utilized in the manner claimed by Appellants to verify code loaded into a device. Consequently, we find the Examiner erred in rejecting independent claims 1, 13, and 25 under 35 U.S.C. §103(a) as unpatentable over Diamant and Paatero. We also find the tertiary citation by the Examiner of Voas, Goodman, Coli, and Plum, variously against claims 2–12, 14–24, and 26–36, fails to correct the deficiency we address above with respect to independent claims 1, 12, and 25. We therefore find that the Examiner erred in rejecting claims 2–12, 14–24, and 26–36 for the reasons we set forth above with respect to the independent claims. DECISION The Examiner’s decision rejecting claims 1–36 is reversed. REVERSED dw