Ex Parte Baentsch et al

Patent Trial and Appeal Board

Sep 29, 2016

13036445 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/036,445 02/28/2011
46320 7590 10/03/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Michael Baentsch
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CH920090047US1 (714) 4961
EXAMINER
MEHRMANESH, AMIR
ART UNIT PAPER NUMBER
2496
NOTIFICATION DATE DELIVERY MODE
10/03/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL BAENTSCH, HAROLD D. DYKEMAN,
MICHAEL C. OSBORNE, and TAMAS VISEGRADY
Appeal2015-007153
Application 13/036,445
Technology Center 2400
Before KALYAN K. DESHPANDE, DAVID M. KOHUT, and
JUSTIN T. ARBES, Administrative Patent Judges.
KOHUT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-007153
Application 13/036,445
STATEMENT OF THE CASE1
Appellants seek review under 35 U.S.C. § 134(a) of the Examiner's
Non-Final Rejection of claims 1 and 4--15.2 We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).
iT 2.
We AFFIRM.
INVENTION
Appellants' invention is directed to server data management. Spec.
Claim 1 is illustrative of the invention and reproduced below:
1. A security device ( 6) for facilitating management of secret
items used by a remote server (2) to authenticate operations of
the server (2), the device (6) comprising
a computer interface ( 11) for connecting the device
( 6) to a local user computer ( 5) for communication with
the remote server (2) via a data communications network
(3),
a memory device interface (12) for interfacing with
a memory device (9) inserted into a slot of the security
device (6),
a user interface (13), and
control logic (16) adapted:
to establish between the security device ( 6)
and the remote server (2), via the local user
computer (5), a mutually-authenticated connection
for encrypted end-to-end communications between
the security device ( 6) and the remote server (2);
1 Our Decision makes reference to Appellants' Reply Brief ("Reply Br.,"
filed July 22, 2015), and Appeal Brief ("App. Br.," filed December 16,
2014), and the Examiner's Answer ("Ans.," mailed May 22, 2015) and Non-
Final Office Action ("Non-Final Act.," mailed July 16, 2014).
2 Claims 2 and 3 were canceled previously.
2
Appeal2015-007153
Application 13/036,445
Hamid
to receive said secret data items from the
remote server (2) via said connection;
to interact with the user via said user interface
(13) to obtain user authorization to backup secret
data items and, in response, to store the secret data
items in a memory ( 10) of the memory device (9);
and
to interact with the user via said user interface
(13) to obtain user authorization to restore secret
data items from the memory (10) of the memory
device (9) to the remote server (2) and, in response,
to send the secret data items to the remote server (2)
via said connection.
REFERENCES
US 2007 /0289003 Al Dec. 13, 2007
T. Weigold et al., The Zurich Trusted Information Channel - An
Efficient Defence Against Man-in-the-Middle and Malicious Software
Attacks, 75-91 (Peter Lipp et al. eds. 2008). ("Weigold")
REJECTIONS AT ISSUE
Claim 11 stands rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Non-Final Act. 5.
Claims 1 and 4--15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hamid and Weigold. Non-Final Act.
6-15.
ISSUES
Did the Examiner err in determining that independent claim 11 is
directed to non-statutory subject matter?
Did the Examiner err in finding that the combination of Hamid and
Weigold teaches "stor[ing] the secret data items in a memory[] of the
3
Appeal2015-007153
Application 13/036,445
memory device" and "restor[ing] secret data items from the memory [] of
the memory device [] to the remote server," as recited in independent claim
1, and similarly recited in independent claims 11, 12, and 15?
ANALYSIS
Claim 11 rejected under 35 U.S. C. § 1 OJ
Claim 11 recites a "computer program stored in a computer readable
storage medium, the computer program comprising program code for
causing a processor" to perform certain actions. The Examiner finds that the
term "computer readable storage medium" encompasses non-statutory
subject matter because the Specification does not preclude "computer
readable storage medium" from including non-statutory subject matter, such
as signals and carrier waves. 3 Non-Final Act. 5 (citing Spec. i-f 18); Ans. 2-
3.
Appellants argue that the term "computer readable storage medium" is
directed to statutory subject matter because the Specification describes a
storage medium, by way of example, as a disk. App. Br. 10 (citing Spec.
i-f 18); Reply Br. 2-5. We do not find Appellants' argument persuasive
3 The Examiner suggests modifying the claim language to include the
adjective "non-transitory" for the recited "computer readable storage
medium" to overcome the rejection. Non-Final Act. 3. This suggestion is in
accordance with guidance provided by the Office. See Subject Matter
Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212
(Feb. 23, 2010) ("A claim drawn to such a computer readable medium that
covers both transitory and non-transitory embodiments may be amended to
narrow the claim to cover only statutory embodiments to avoid a rejection
under 35 U.S.C. § 101 by adding the limitation 'non-transitory' to the
claim.").
4
Appeal2015-007153
Application 13/036,445
because the example of a computer readable storage medium described in
the Specification does not preclude non-transitory subject matter.
The Specification recites "a computer program ... may be ...
embodied in a computer-readable medium such as a disk or an electronic
transmission for loading in a security device." Spec. i-f 18. The phrase "such
as" is non-limiting and does not preclude the computer program from being
embodied in other types of media, which may include signals. Without
language in the Specification that limits a "computer readable storage
medium" to only statutory subject matter, the broadest reasonable
interpretation of the claimed "computer readable storage medium"
encompasses non-statutory subject matter (e.g., a signal per se). Ex parte
Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential).
Appellants also argue that the Board has found either the term
"computer readable storage medium" or "machine-accessible storage
medium" to be statutory in Ex parte Mehta, Appeal No. 2008-004853, 2009
WL 4004962 (BP AI 2009) (non-precedential); Ex parte Hu, Appeal No.
2010-000151, 2012 WL 439708 (BPAI 2012) (non-precedential); Exparte
Dureau, Appeal No. 2009-007211, 2010 WL 3389299 (BPAI 2010) (non-
precedential); Ex parte Bash, Appeal No. 2009-007202, 2010 WL 5199590
(BPAI 2010) (non-precedential); and Ex parte Raverdy, Appeal No. 2010-
006461, 2012 WL 5387573 (PTAB 2012) (non-precedential). See App.
Br. 7-9; see also Reply Br. 2-3. As a preliminary matter, none of these
cases have been designated as precedential, and therefore, are not binding.
Thus, we are bound by the decision in Ex parte Mewherter, where the Board
concluded that unless the claim language, given its broadest reasonable
interpretation in light of the Specification, precludes non-statutory subject
5
Appeal2015-007153
Application 13/036,445
matter, a "storage medium" can potentially include non-statutory subject
matter, such as signals per se, and thereby not satisfy § 101. See Ex parte
Mewherter, 107 USPQ2d at 1862. Thus, we are not persuaded that the
Examiner erred in determining that claim 11, reciting the term "computer
readable storage medium," is directed to non-statutory subject matter.
Claims 1and4-15 rejected under 35 U.S.C. § 103(a)
Claim 1 recites "stor[ing] the secret data items in a memory [] of the
memory device" and "restor[ing] secret data items from the memory [] of
the memory device[] to the remote server." Independent claims 11, 12, and
15 recite similar limitations.
The Examiner finds that Hamid teaches the disputed limitations.
Specifically, the Examiner's finding is based upon Hamid's teaching of
transferring data from a server and storing it in the memory of a portable
storage device, and reconstructing a server by uploading the stored data to
the server. Non-Final Act. 9-10 (citing Hamid i-fi-154, 57, Fig. 7); Ans. 4---6.
Appellants argue that the Examiner's finding is in error. App. Br. 13-
15; Reply Br. 7-8. Appellants argue that Weigold3 fails to teach storing
secret data from the remote server in the smartcard and restoring the remote
server using the smartcard's stored secret data. App. Br. 13-14; Reply Br.
7-8. We disagree with Appellants' argument because the Examiner relies
upon Hamid to teach the portable storage device memory performing the
storing and restoring functions. See Non-Final Act. 9-10; Ans. 4--5.
3 Appellants' Appeal and Reply Briefs refer to the Weigold reference as
"Weingold." See App. Br. passim; see also Reply Br. passim. We hold this
to be harmless error and make the correction here.
6
Appeal2015-007153
Application 13/036,445
Appellants additionally contend that rather than "stor[ing] the secret
data items in a memory [] of the memory device," Hamid teaches
transferring data from a remote server to a computer and into a portable data
storage device. App. Br. 14; Reply Br. 9-10 (citing Hamid, Fig. 7). We
disagree with Appellants. Appellants' argument consists only of an
instruction to compare Hamid's teaching with the claimed subject matter,
but does not indicate why one of ordinary skill in the art at the time of
Appellants' invention would not have reasonably understood that the
portable data storage device of Hamid could serve as the claimed memory of
the memory device. See App. Br. 14; see also Reply Br. 9-10. As such,
Appellants' argument does not persuade us of Examiner error because it fails
to explain sufficiently the difference between Hamid and the claimed
invention.
Appellants also argue that Hamid fails to teach "restor[ing] secret data
items from the memory [] of the memory device [] to the remote server"
because "nowhere in Figure 5 is it provided that data from a memory device
inserted into a security device of a computer is restored to a remote server."
See App. Br. 12; Reply Br. 9-13 (citing Hamid, Fig. 5). We do not agree.
We agree with the Examiner (Non-Final Act. 9; Ans. 5-6) and find no
reason why uploading data stored on the portable storage device memory to
a server, as taught in Hamid, is any different than that which is claimed.
Without further evidence or argument, we do not find Appellants' argument
persuasive of Examiner error because it fails to explain sufficiently the
difference between Hamid and the claimed invention.
Accordingly, for the reasons stated above, we sustain the Examiner's
rejection of independent claims 1, 11, 12, and 15. Appellants do not argue
7
Appeal2015-007153
Application 13/036,445
separately the Examiner's rejection of dependent claims 4--10, 13, and 14
over the combination of Hamid and Weigold. Thus, we summarily sustain
the Examiner's rejection of claims 4--10, 13, and 14 as unpatentable over the
combination of Hamid and Weigold.
CONCLUSION
The Examiner did not err in determining that claim 11, reciting the
term "computer readable storage medium," is directed to non-statutory
subject matter.
The Examiner did not err in finding the combination of Hamid and
Weigold teaches "stor[ing] the secret data items in a memory[] of the
memory device" and "restor[ing] secret data items from the memory [] of
the memory device [] to the remote server," as recited in independent claim
1, and similarly recited in independent claims 11, 12, and 15.
SUMMARY
The Examiner's rejection of claim 11 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter is affirmed.
The Examiner's rejection of claims 1 and 4--15 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Hamid and Weigold
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
8