Ex Parte Bacha et al

Board of Patent Appeals and Interferences

Jul 14, 2004

09223765 (B.P.A.I. Jul. 14, 2004)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HAMID BACHA, ROBERT BURNS, ROBERT B. CARROLL,
and MARK FISK
____________
Appeal No. 2003-1225
Application No. 09/223,765
____________
ON BRIEF
____________
Before HAIRSTON, KRASS, and BLANKENSHIP, Administrative Patent Judges.
BLANKENSHIP, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner’s final
rejection of claims 1-4, 7, and 8.
We affirm-in-part.
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Application No. 09/223,765
-2-
BACKGROUND
The invention is directed to a vault controller that manages resources in a secure
environment (e.g., in an electronic business system). Vaults are personalized storage
areas on a disk to which only the owner has access, using a vault access certificate.
Claim 1 is reproduced below.
1. In an electronic business system, a vault controller supervisor managing
the interaction in a secure manner using PKI between end users and applications
running in the system, comprising:
a) a web server; and
b) a shared object library coupled to the server and including a
supervisor performing vsSupervisor Initialize and vsSupervisor
Service functions for handling user independent, multi-threaded,
persistent and stateful vault processes running in a secure
environment linked to the user.
The examiner relies on the following references:
Carroll 6,105,131 Aug. 15, 2000
(filed Nov. 26, 1997)
Claims 1-4, 7, and 8 stand rejected under 35 U.S.C. § 102 as being anticipated
by Carroll.
Claims 9-12 and 20-24 stand allowed. The examiner has withdrawn the rejection
of claims 5, 6, and 13-19.
We refer to the Final Rejection (Paper No. 9) and the Examiner’s Answer (Paper
No. 16) for a statement of the examiner’s position and to the Brief (Paper No. 15) for
appellants’ position with respect to the claims which stand rejected.
Appeal No. 2003-1225
Application No. 09/223,765
1 The claims measure the invention. SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121, 227
USPQ 577, 585 (Fed. Cir. 1985) (en banc).
-3-
OPINION
Appellants allege that differences exist between the instant disclosure and the
disclosure of Carroll. (Brief at 10-12.) As for what is claimed,1 appellants quote three
lines from instant claim 1, then allege there is no disclosure or suggestion in Carroll
regarding the “vs Supervisor Init and Service functions” or “their allegedly inherent
characteristic flowing from Carroll.” (Id. at 12-13.)
The arguments are unhelpful in identifying any distinguishing features that may
reside in claim 1. We acknowledge, as does the examiner, that Carroll does not use all
the terminology found in the claim. That finding, however, is not the end of the inquiry.
For a prior art reference to anticipate in terms of 35 U.S.C. § 102, every element of the
claimed invention must be identically shown in a single reference, but this is not an
“ipsissimis verbis” test. In re Bond, 910 F.2d 831, 832, 15 USPQ2d 1566, 1567 (Fed.
Cir. 1990).
The claim recites “a supervisor performing vsSupervisor Initialize and
vsSupervisor Service functions” for handling a number of process types. Appellants do
not tell us what requirements of the claimed “functions” might be thought missing from
the reference.
Appellants’ specification (pages 4-5) describes the related application which
issued as the Carroll patent. The specification notes a need for a vault controller which
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Application No. 09/223,765
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can manage browser requests to “user-independent, multi-threaded, persistent and
stateful secure processes....” Appellants’ position, as set out in the Brief, does not
appear to be based on the proposition that Carroll fails to describe a vault controller, or
fails to disclose the types of processes recited in instant claim 1. In any event, Carroll
teaches that the vault controller supports “secure end-to-end communication,”
“persistent vault programming” (col. 2, ll. 21-23), and “multi-threaded application[s]” (col.
6, ll. 17-18). “Stateful” refers to “[p]rotocols that maintain information about a user’s
session.” Newton’s Telecom Dictionary at 650 (2001). Carroll teaches that each web
browser session accesses its own storage area in the vault deposit server (col. 6, ll. 23-
25), which is a form of maintaining information about a user’s session. Further, the
vault controller is user independent, at least in the sense that it performs functions
independent of user commands.
On June 23, 2004 we performed a search for the term “vsSupervisor” using the
GoogleTM search engine (available at www.google.com). Surprisingly, the only hit for
the search term occurred in published (Feb. 19, 2004) U.S. Patent Application No.
2004/0034769, which purports to be a continuation of the instant application. We
compare that single hit with the number of hits for the search term “multi-threaded” --
“about 433,000.” A search of the U.S. Patent database (available at www.uspto.gov)
confirmed that the term “vsSupervisor” appears in none of the available issued patents.
A search of the published U.S. patent applications database confirmed that only the
above-noted published application contains the relevant term.
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Apparently, “vsSupervisor” has some secret meaning to appellants that is
somehow believed to distinguish over the Carroll reference. The word appears to have
no recognized meaning in the art. Appellants’ disclosure does not set forth any
particular definition for the word. Instead, the disclosure (e.g., page 12 as originally
filed) uses the term in the description of the preferred embodiment. We conclude that
the “vsSupervisor” functions merely relate to arbitrary names denoting the functions.
The actual requirements of the claims thus are limited to what the functions do,
as those functions are set forth in the claims, rather than how those functions are
named. Our reading of unclaimed features relating to the “vsSupervisor” functions into
the claims would be, simply, the prohibited exercise of reading disclosed limitations into
the claims. Claims are to be given their broadest reasonable interpretation during
prosecution, and the scope of a claim cannot be narrowed by reading disclosed
limitations into the claim. See In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023,
1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989); In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550 (CCPA 1969).
Appellants suggest that the rejection does not comport with the principles of
“inherency.” However, under a proper interpretation of the instant claims, one does not
arrive at a consideration of potential “inherency.” Appellants have not shown that the
rejection is deficient in showing any aspect of instant claim 1, other than the literal term
that appears to have been coined by appellants. Since we conclude that Carroll
describes what is claimed, we sustain the Section 102 rejection of claim 1.
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Appellants’ arguments for dependent claims 2, 3, and 4 also appear to rely on
the reference’s failure to contain an “ipsissimis verbis” description of the invention.
Appellants do not persuade us of any difference in substance between what may be
required by the claims and the disclosure of Carroll. In particular, pointing out
unclaimed features in the disclosure does nothing to show error in the rejection.
With respect to claim 2, appellants do not explain why a multi-threaded service
supervisor that is “launched by the vsSupervisor Service function” should be considered
any different from the multi-threaded service supervisor described by Carroll. We do
not see any reason, on this record, why it would be relevant that the specification
describes the “service functions” as also performing other, unclaimed, functions.
We can agree, with respect to the arguments regarding claim 3, that Carroll does
not expressly describe opening a socket connection on a TCP/IP port. The claim
requires, however, a communications supervisor running as a thread for conducting
communications between user dedicated vault processes and the user. The rejection
relies, in part, on column 6, lines 26 through 30 of Carroll, which discloses that vault
process supervisor (VPS) 52 (Fig. 2) communicates with the connection secure server
54, starts the vault processes 50, and maintains communications between the vault
processes 50 and the user’s browsers 58. We agree with appellants to the extent that
Carroll does not contain the literal string “vsSupervisor Initialize function,” but we agree
with the examiner that VPS 52 does what claim 3 requires of the communication
supervisor.
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-7-
Claim 4 recites a request supervisor running as a thread for processing user
requests without a vault access certificate. Carroll describes processing transmissions
from uncertified users (e.g., col. 6, ll. 15-16). The element of Carroll’s system that
processes user requests not having a vault access certificate is “initialized,” “started,”
“awakened,” “began,” or “launched” by some other element. That Carroll does not call
the launching element “vsSupervisor Initialize” is of no consequence.
We agree with appellants, however, that the reference does not disclose subject
matter required by instant claims 7 and 8. The rejection relies on material in columns 2
and 3 of Carroll for mapping a vault access certificate into a user Id. Carroll describes
mapping a vault certificate to a personal vault using the supervisor private key (col. 2, ll.
61-67), but not mapping a vault access certificate into a user Id. Carroll describes
generating keys that are associated with a particular user with a unique password (col.
3, ll. 22-33), but not generating a vault password for a user Id.
For the foregoing reasons, we sustain the Section 102 rejection of claims 1-4, but
not the rejection of claims 7 and 8.
CONCLUSION
The rejection of claims 1-4 under 35 U.S.C. § 102 as being anticipated by Carroll
is affirmed. The rejection of claims 7 and 8 under 35 U.S.C. § 102 as being anticipated
by Carroll is reversed.
The examiner’s decision to reject claims 1-4, 7, and 8 is thus affirmed-in-part.
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Application No. 09/223,765
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 2003-1225
Application No. 09/223,765
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William E. Lewis
Ryan Mason & Lewis, LLP
90 Forest Ave.
Locust Valley , NY 11560