Ex Parte Schiller

Patent Trial and Appeal Board

Jul 30, 2014

11799217 (P.T.A.B. Jul. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARK R. SCHILLER
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Appeal 2012-001542
Application 11/799,217
Technology Center 2400
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Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–28. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
According to Appellant, the invention relates to a tamper indication
system for a computing system that comprises a sensor reader configured to
determine a state of a tamper sensor of the computing system, and firmware
disposed in the computing system that is configured to cause a report to
evidence whether the report has been tampered with, the report indicating
the state of the tamper sensor (Spec. 11, ll. 4–7).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A tamper indication method for a computing system,
comprising:
determining a state of a tamper sensor of the computing
system with a sensor reader of the computing system during a
boot process of the computing system; and
causing a report to evidence whether the report has been
tampered with, the report indicating the state of the tamper
sensor.

C. REJECTION1
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:

1 We note the Examiner withdrew the § 101 rejection of claims 1–8. Ans. 4.
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Hoerner US 2007/0030149 A1 Feb. 8, 2007
Booth US 2007/0300207 A1 Dec. 27, 2007
Claims 1–23 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Booth.
Claims 24–28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Booth and Hoerner.

II. ISSUE
The principal issue before us is whether the Examiner erred in finding
Booth discloses “determining a state of a tamper sensor . . . during a boot
process,” and “causing a report to evidence whether the report has been
tampered with, the report indicating the state of the tamper sensor” as recited
in claim 1 (emphases added).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Booth
Booth discloses a non-volatile storage device 240 that stores secure
data and protects that data from attackers (e.g., protecting the data from
being changed), wherein the device is destroyed or rendered unreadable if
there is an attempt to modify the data stored therein (p. 2, ¶ 20).

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IV. ANALYSIS
Claims 1-23
As to independent claims 1 and 9, Appellant contends “Booth says
nothing about a tamper sensor,” “Booth says nothing about generating a
report indicating the state of the tamper sensor,” and “Booth says nothing
about causing the report to evidence tampering of the report itself” (App.
Br. 8). Although Appellant concedes Booth’s “boot code validation device,
which compares the boot code to the hash value” could be a “tamper
sensor,” Appellant contends “the rejection fails for not articulating where
Booth discloses anything about determining a state of the boot code
validation device” (App. Br. 9).
At the outset, although Appellant argues, “Booth says nothing about
generating a report indicating the state of the tamper sensor” (App. Br. 8),
such argument is not commensurate in scope with the recited language of
claim 1 (and similarly claim 9). In particular, claim 1 (and similarly claim
9) does not recite any such “generating” a report. Instead, we note claim 1
merely recites “causing a report [i.e., any report] to evidence” (emphasis
added) whether the report has been tampered with. Similarly, claim 9
merely recites “firmware” that is “configured to cause a report [any report]
to evidence”. Moreover, claims 1 and 9 do not indicate whether the report is
part of the computing system itself or a report in another system.
We find the recited “causing” and “configured to cause a report to
evidence” language in claims 1 and 9 is a statement of intended purpose of
the report, which does not narrow the claims. Particularly, an intended
purpose will not narrow the scope of the claim because it merely defines a
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context in which the invention operates. Boehringer Ingelheim Vetmedica,
Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
Furthermore, we must give a claim its broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997). We note claim 1 (and similarly claim 9) does
not define what is a “state” of a tamper sensor, or what is a “report,” other
than the “state” is determined during a boot process; and the “report” is
caused to perform an intended function (“to evidence”) and indicates the
state of the tamper sensor. Accordingly, we give “state” its broadest
reasonable interpretation as any determined condition of the tamper sensor.
We also give “report” its broadest reasonable interpretation and any data that
is caused/enabled to be provided that indicates the state of the tamper sensor.
Consequently, we give claim 1 (and also claim 9) the broadest
reasonable interpretation as merely requiring determining a condition of a
tamper sensor and enabling data to be provided, wherein such provided data
indicates the determined condition.
Booth discloses a non-volatile storage device that determines/senses
tampering by determining whether there’s change in the data therein,
wherein the device determines if there is an attempt to modify the data
stored therein and thus the data itself is destroyed or rendered unreadable if
there is an attempt to modify the data (FF). That is, Booth discloses a device
that senses tampering, i.e., a “tamper sensor,” wherein the condition/state of
the device (whether or not an attempt has been made to modify the data
therein) is determined, and the data is then destroyed or rendered unreadable
which evidences that the data in the device has been tampered with (id,).
We agree with the Examiner that Booth discloses “determining a state of a
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tamper sensor” and “causing” data to be provided, the data “indicating the
state of the tamper sensor,” as required by claim 1 and similarly claim 9
(Ans. 5).
Accordingly, we find no error in the Examiner’s anticipation rejection
of representative claims 1 and 9 over Booth.
As to independent claim 17, Appellant contends, “the rejection fails
for not articulating where Booth discloses anything about determining
whether the boot code validation device has been subject to tampering”
(App. Br. 11). However, as discussed above, Booth discloses a device that
senses tampering, wherein the condition/state of the device (whether or not
an attempt has been made to modify the data therein) is determined, and
destroying or rendering the data unreadable which evidences that the data in
the device has been tampered with (FF).
We agree with the Examiner that Booth discloses, “indicating
tampering with the boot code” (Ans. 13), as required by claim 17.
Accordingly, we find no error in the Examiner’s rejection of claim 17 over
Booth.
Similarly, as to independent claim 21, Appellant repeats the argument
“Booth fails to disclose any tamper sensor” and “fails to disclose any report
that indicates whether the tamper sensor has been subject to tampering”
(App. Br. 12). However, as discussed above, Booth discloses a device that
senses tampering, i.e., a “tamper sensor,” wherein the condition/state of the
device (whether or not an attempt has been made to modify the data) is
determined and indicated by and destroying or rendering the data unreadable
(FF). Accordingly, we find no error in the Examiner’s rejection of claim 21
over Booth.
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As for dependent claim 18, although Appellant contends “the
Examiner fails to articulate any evidence where Boot[h] allegedly discloses
any verification of an integrity of the error message itself” (App. Br. 12), we
find no error with the Examiner’s finding that Booth discloses “the boot
code may cause the system . . . to disable the printing function” wherein
“[o]peration may be prevent[ed] until the invalid code is returned to an
authentic state” (Ans. 14).
As for dependent claims 4 and 12, although Appellant contends
“Booth fails to disclose a method or firmware wherein the report indicating
the state of a tamper center is digital signed” (App. Br. 13), we find no error
with the Examiner’s finding that Booth discloses “the boot code may
validate the remainder of the firmware, for example, using signature
verification mechanisms or other standard validation algorithms known to
those skilled in the art” (Ans. 14-15).
As for dependent claims 5 and 13, although Appellant contends
“Booth fails to disclose a method or firmware wherein the report indicating
the state of a tamper center is encrypted” (App. Br. 13), we find no error
with the Examiner’s finding “Booth discloses encrypting the report with a
RSA algorithm for public-key encryption” (Ans. 15).
As for dependent claims 6 and 10, although Appellant contends
“nowhere does Booth disclose that the results of the validation are stored in
a trusted firmware memory” (App. Br. 14), we find no error with the
Examiner’s finding “Booth discloses that the system for boot validation
includes a firmware storage device including firmware, which includes at
least boot code, and a secure non-volatile storage device” (Ans. 15).
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As for dependent claims 7 and 15, although Appellant contends
“nowhere does Booth disclose that the results of the validation are exported
to an external monitoring system” (App. Br. 15, emphasis omitted), we find
no error with the Examiner’s finding “Booth discloses that the results are
transmitted to a host system for further validation” (Ans. 16).
As for dependent claims 8 and 16, Appellant contends “Booth fails to
disclose a method or firmware wherein a monitoring system . . . verifies an
integrity of the report received from the computing system” (App. Br. 15).
However, we find no error with the Examiner’s finding Booth discloses “the
integrity report is verified by the use of a hashing function” (Ans. 16).
Thus, we find no error with the Examiner’s rejection of claims 4-8,
10, 12, 13, 15-18, and 21 over Booth. Appellant provides no argument for
claims 2, 3, 11, 14, 19, 20, 22, and 23 separate from those of claim 1, 9, 17,
and 21 (App. Br. 11) from which they respectively depend, and thus, claims
2, 3, 11, 14, 19, 20, 22, and 23 fall with claims 1, 9, 17 and 21 over Booth.
Claims 24-28
Appellant contends “[c]laims 24-27 each require that the tamper
sensor comprise a sensor configured to detect physical removal of a
protected asset FROM THE COMPUTER SYSTEM” wherein Hoerner’s
“label 10 is neither an asset of the computer system nor is label 10 part of a
tamper sensor that detects tampering with the computer” (App. Br. 18).
Appellant then repeats the argument that there is no teaching of “any report
that indicates or evidences tampering with the tamper sensor itself” (id.).
However, we find no error with the Examiner’s finding, “Booth
discloses a comput[er] system that generates a report indicating or
evidencing that the tamper sensor itself has been tampered with” and
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“Hoerner teaches a sensor to detect physical removal” for “theft deterrence
of a portable computer,” wherein the combination would at least have
suggested the features of claims 24-27 (Ans. 16). That is, because the
Examiner rejects the claims as obvious over Booth in view of Hoerner, the
test for obviousness is not what each reference individually shows but what
the combined teachings would have suggested to one of ordinary skill in the
art. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The Supreme Court has stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). Thus, we find no error in the Examiner’s finding that the
combination of Booth’s system that evidences the tampering of the tamper
sensor itself with Hoerner’s system of detecting physical removal would at
least have suggested the claimed features of claims 24-27 (Ans. 16).
As for dependent claim 28, although Appellant argues Booth in
combination of Hoerner “would still fail to disclose the generation of a
report indicating tampering with a thin wire optical fiber serving as a tamper
sensor” (App. Br. 19), we find no error with the Examiner’s finding
“Hoerner teaches optical fiber that breaks upon removal of a protected
assert” (Ans. 17). That is, we agree that Hoerner, when combined with
Booth, would at least have suggested the features of claim 28.

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IV. CONCLUSION AND DECISION
The Examiner’s rejections of claims 1-23 under 35 U.S.C. § 102(b)
and of claims 24-28 under 35 U.S.C. § 103(a) are affirmed.2
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

llw

2 In the event of further prosecution, we leave it to the Examiner to evaluate
claims 1-20 for compliance with 35 U.S.C. § 101 in view of Digitech Image
Technologies, LLC v. Electronics For Imaging, Inc., No. 13-1600, 2014 WL
3377201, slip op. 11 (Fed. Cir. 2014), aff’d. In Digitech, the Federal Circuit
held claims to a process of organizing information through mathematical
correlations was not tied to a specific structure or machine, and was thus an
abstract idea and ineligible under § 101. The Federal circuit further noted
“[a] claim may be eligible if it includes additional inventive features such
that the claim scope does not solely capture the abstract idea.” Id. (citing
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2358 (2014). Here,
we leave it to the Examiner to evaluate the claims as to whether they solely
capture an abstract idea without any ties to a specific structure or machine.
In particular, we note independent claim 1 merely recites determining a state
(i.e., a set of data associated with a tamper sensor), and causing another set
of data (a report) to evidence/display certain information; while independent
claim 17 merely recites receiving data indicating certain information.