Ex Parte Balard et al

Board of Patent Appeals and Interferences

May 25, 2010

10618861 (B.P.A.I. May. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ERIC BALARD and ALAIN CHATEAU
__________

Appeal 2009-006613
Application 10/618,861
Technology Center 2400
__________

Decided: May 25, 2010
__________

Before LEE E. BARRETT, STEPHEN C. SIU, and
DEBRA K. STEPHENS, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-46. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

Appeal 2009-006613
Application 10/618,861

2
The Invention
The disclosed invention relates generally to a secure computing
system (Spec. 1, ¶ [0004]).
Independent claim 1 is illustrative:
1. A method of securing access to resources in a computing
device, comprising the steps of:
storing an encrypted access code in a memory location within
the computing device;
receiving a password to access the resources;
encrypting the password to produce a encrypted password;
comparing the encrypted password to the encrypted access
code;
allowing access to the resources if the encrypted access code
matches the encrypted password.

The References
The Examiner relies upon the following references as evidence in
support of the rejections:
Lohstroh US 5,768,373 Jun. 16, 1998
Gray US 6,268,788 B1 Jul. 31, 2001
Debry US 6,341,521 B1 Nov. 06, 2001
Reddy US 6,824,051 B2 Nov. 30, 2004
(filed Jun. 07, 2002)

The Rejections
1. The Examiner rejects claims 1, 4-7, 10-13, 15-21, 23, 24, 26-28, 30,
33-38, 40, 41, and 43-45 under 35 U.S.C. § 102(e) as being
anticipated by Gray.
Appeal 2009-006613
Application 10/618,861

3
2. The Examiner rejects claims 2, 3, 8, 9, 29, and 46 under 35 U.S.C.
§ 103(a) as being unpatentable over Gray and Lohstroh.
3. The Examiner rejects claims 14, 25, 31, 32, and 42 under 35 U.S.C.
§ 103(a) as being unpatentable over Gray and Reddy.
4. The Examiner rejects claims 22 and 39 under 35 U.S.C. § 103(a) as
being unpatentable over Gray and Debry.

ISSUE 1: claims 1-45
Appellants assert that Gray fails to disclose “‘storing an encrypted
access code in a memory location within the computing device’” (App.
Br. 5-6) or a system “receiving a password to access resources in the
computing device” (App. Br. 6).
Did the Examiner err in finding that Gray discloses storing an
encrypted access code in memory within a computing device and allowing
access to resources if the encrypted access code matches the encrypted
password?

ISSUE 2: claims 4, 10, 16, 19, 20, 33, 36, and 37
Appellants assert that Gray fails to disclose “a memory that cannot
be externally modified” (App. Br. 7), a “particular memory location
[that] is disabled, such that the data cannot be overwritten” (App. Br.
10), and portions of memory that “are not externally accessible and are
not modifiable” (App. Br. 11).
Appeal 2009-006613
Application 10/618,861

4
Did the Examiner err in finding that Gray discloses memory that
cannot be externally modified, a memory location that is disabled such that
data cannot be overwritten, and memory that is not externally accessible and
is not modifiable?

ISSUE 3: claim 5 and 11
Appellants assert that Gray fails to disclose “allowing access to
testing resources if the encrypted access code matches the encrypted
password” (App. Br. 8).
Did the Examiner err in finding that Gray discloses allowing access to
testing resources if the encrypted access code matches the encrypted
password?

ISSUE 4: claims 6 and 12
Appellants assert that Gray fails to disclose “allowing access to
change system parameters” (App. Br. 8) or allowing “access to system
parameters” (App. Br. 14).
Did the Examiner err in finding that Gray discloses allowing access to
system parameters and access to changing system parameters?

ISSUE 5: claims 5, 13, 15, 16, 20, 24, 30, 33, 37, and 41
Appellants assert that Gray fails to disclose a “memory location . . .
within a processing system in the computing device” (App. Br. 8), “a
memory subsystem within the processing system” (App. Br. 9), “a
Appeal 2009-006613
Application 10/618,861

5
memory subsystem within the computing device” (App. Br. 14), and a
memory system that “is external to the processing system but internal to
the computing device” (App. Br. 12).
Did the Examiner err in finding that Gray discloses a memory location
within a processing system of a computing device, within a memory system
of a processing system, external to a processing system and internal to a
computing system, and a memory subsystem that is within a computing
device?

ISSUE 6: claims 17 and 34
Appellants assert that Gray fails to disclose “a read only memory
(ROM) coupled to the memory array and a random access memory
(RAM) coupled to the memory array” (App. Br. 10).
Did the Examiner err in finding that Gray discloses read only memory
and random access memory coupled to a memory array?

ISSUE 7: claims 21 and 38
Appellants assert that Gray fails to disclose a key “generated by a
random number generator internal to the processing system” (App. Br.
11).
Did the Examiner err in finding that Gray discloses an encryption key
generated by a random number generator internal to the processing system?

Appeal 2009-006613
Application 10/618,861

6
ISSUE 8: claims 26 and 43
Appellants assert that Gray fails to disclose “one of the following
stored in the array: a test ID; a manufacturer’s public key; a die
identification number” (App. Br. 12).
Did the Examiner err in finding that Gray discloses at least one of a
test ID, manufacturer’s public key, or die identification number stored in an
array?

ISSUE 9: claims 14, 25, 31, 32, and 42
Appellants assert that Gray fails to disclose “a baseband processing
system” (App. Br. 22) or a “radio frequency (RF) system” (App. Br. 22).
Did the Examiner err in finding that the combination of Gray and
Reddy discloses or suggests a baseband processing system and a radio
frequency system?

FINDINGS OF FACT
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
1. Gray discloses an “authenticating system 10 comprises a computer
12” (col. 4, ll. 9-10) that has a “verification unit 20 [that] has a slot
32 which receives a card 34” (col. 4, ll. 21-22).
2. Gray discloses that a “password is entered . . . and provided to the
verification unit 20” (col. 6, ll. 52-54), which “encrypts and
temporarily stores the password in RAM 66 . . . then proceeds to read
Appeal 2009-006613
Application 10/618,861

7
the encrypted password stored in the card 34 . . . and compares the
encrypted password received from the card 34 with the encrypted
password stored in RAM 66” (col. 6, ll. 56-60).
3. Gray discloses that upon “comparison of the passwords, the
verification unit 20 generates a status signal . . . and forwards it to the
computer 12” (col. 6, ll. 61-63). “If the status signal indicates that
the authentication was successful, i.e., the encrypted password from
the keyboard 16 matches the encrypted password from the card 34,
the computer 12 grants execution control of the application software
to the operator” (col. 6, l. 65 – col. 7, l. 2).
4. Gray discloses that “applications software programs” (executing on
the computer system) include “local security programs” (col. 4,
ll. 49-53).
5. Gray discloses that an “operator may . . . alter the application
program(s) unlocked through the use of the password” (col. 7, ll. 5-
7).
6. Gray discloses a computing system (Fig. 2, element 10) and a
processor (Fig. 2, element 60).
7. Gray discloses a computing system (Fig. 2, element 10) containing a
processor (Fig. 2, element 60).
8. Gray discloses a memory (Fig. 2, element 62) containing ROM (Fig.
2, element 64) and RAM (Fig. 2, element 66) within a computing
system or device and an inserted card (Fig. 2, element 34) that
contains memory (Fig. 2).
Appeal 2009-006613
Application 10/618,861

8
9. Gray discloses that the memory (Fig. 2, element 62) is located within
a computer system or device (Fig. 2, element 10) that contains a
processor (Fig. 2, element 60).
10. Gray discloses generating “a random number . . . [that] may be used
to encrypt messages or other keys” (col. 12, ll. 15-17) and that the
“random number thus generated may also be stored in the card 34
and subsequently used to encrypt other keys” (col. 12, ll. 20-22).
11. Reddy discloses computing devices including “a personal computer,
hand held computer, PDA, or any other general purpose
programmable computer or combination of such devices, such as a
network of computers” (col. 6, ll. 31-34).

PRINCIPLES OF LAW
Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).

Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
Appeal 2009-006613
Application 10/618,861

9
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The 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).

ANALYSIS
Issue 1
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal with respect to Issue 1 on the basis of claim 1 alone. See 37
C.F.R. § 41.37(c)(1)(vii).
Claim 1 recites a memory location within a computing device. Claim
7 recites a memory coupled to a processing system. As set forth above,
Gray discloses a card that is inserted in a “verification unit” of a computing
system (FF 1), the card including a memory. Since the card has memory and
the card is inserted into a computer system, we agree with the Examiner that
the memory of the card is located “within” the computing device (i.e.,
“inserted” into the computing device) as recited in claim 1 and that the card
is coupled to a processing system of the computing device/system as recited
in claim 7 since the card is connected (i.e., “coupled”) to the computing
system or device.
While Appellants argue that the “card 34 is a peripheral device that is
NOT part of verification unit 20” (App. Br. 6), Appellants have not shown
Appeal 2009-006613
Application 10/618,861

10
that the card, once inserted into a computing system is somehow not
“within” the computing system.
Appellants also argue that Gray fails to disclose a “password to access
resources in the computing device” (App. Br. 6). As described above,
Gray discloses matching a received encrypted password with a stored
encrypted password and allowing access to application software if a match is
found (FF 2-3). We construe the term “resources” broadly but reasonably to
include an application that executes in a computer system or device.
Because Gray discloses providing access to a “resource” (i.e., application) of
a computer device or system, we disagree with Appellants’ contention that
Gray supposedly fails to disclose this feature.
For at least the aforementioned reasons, we find no error in the
Examiner’s rejection of claims 1 and 7, and claims 2-6 and 8-45, which fall
therewith, with respect to Issue 1.

Issue 2
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal of claims 4, 10, 16, 19, 20, 33, 36, and 37 with respect to Issue 2
on the basis of claim 4 alone. See 37 C.F.R. § 41.37(c)(1)(vii).
As described above, Gray discloses authenticating a user based on a
comparison between an encrypted password input by the user with an
encrypted password stored in memory on a card inserted into the computing
system (FF 1-3). Since the password received from the user is compared to
the stored password for authentication purposes, it would make no sense and
Appeal 2009-006613
Application 10/618,861

11
would defeat the purpose to permit the stored password to be altered by an
external party. Since the authentication would be ineffective if external
parties were permitted to modify the stored password and since Gray does
not otherwise disclose that the stored password is in fact changed by an
external party, we agree with the Examiner that Gray discloses that the
stored password is stored in memory that cannot be externally modified.
In addition, as the Examiner points out, Gray discloses that in at least
one embodiment, the system “[locks] and/or permanently [disables] the card
34” (col. 8, ll. 14-15). A locked or permanently disabled card is neither
externally modifiable nor accessible.
For at least the aforementioned reasons, we conclude that the
Examiner did not err in rejecting claim 4, and claims 10, 16, 19, 20, 33, 36,
and 37, which fall therewith, with respect to issue 2.

Issue 3
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal of claim 5 and 11 with respect to Issue 3 on the basis of claim 5
alone. See 37 C.F.R. § 41.37(c)(1)(vii).
As described above, Gray discloses permitting user access to
application programs (FF 1-3) in which the application programs include
local security programs (FF 4). We construe security programs broadly but
reasonably to include any program that determines an aspect of security.
Determining a level of security includes, for example, testing of various
scenarios, authentication levels, or security devices. Such testing, when
Appeal 2009-006613
Application 10/618,861

12
interpreted broadly but reasonably, includes testing resources such as
security resources or devices. Thus, we agree with the Examiner that Gray
discloses allowing user access to testing resources.
While Appellants generally argue that Gray supposedly fails to
disclose this feature and that the Examiner’s determination is supposedly
“not supported by fact” (App. Br. 8), Appellants nevertheless provide no
specific support for these contentions or how Gray’s security testing differs
from the claimed “testing resources.”
For at least the aforementioned reasons, we conclude that the
Examiner did not err in rejecting claim 5, or claim 11, which falls therewith,
with respect to issue 3.

Issue 4
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal of claim 6 and 12 with respect to Issue 4 on the basis of claim 6
alone. See 37 C.F.R. § 41.37(c)(1)(vii).
As described above, Gray discloses permitting user access to
application programs (FF 1-3) and permitting the user or operator to alter the
application programs that are unlocked by the password. Since Gray
discloses the user altering the application program and altering the program
includes altering parameters within the program, we agree with the
Examiner that Gray discloses allowing user access to change system
parameters.
Appeal 2009-006613
Application 10/618,861

13
While Appellants generally argue that Gray supposedly fails to
disclose this feature and that the Examiner’s determination is supposedly
“not supported by fact” (App. Br. 8), Appellants nevertheless provide no
specific support for these contentions or how Gray’s disclosure of permitting
a user access to alter computer programs differs from the claimed feature of
allowing access to system parameters or to change system parameters.
For at least the aforementioned reasons, we conclude that the
Examiner did not err in rejecting claim 6, or claim 12, which falls therewith,
with respect to issue 4.

Issue 5
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal of claims 13, 15, 16, 20, 24, 30, 33, 37, and 41 with respect to
Issue 5 on the basis of claim 13 alone. See 37 C.F.R. § 41.37(c)(1)(vii).
As described above, Gray discloses a computer device or system that
contains a processor and memory (FF 6-9). Appellants provide no specific
definition for a “processor,” a “processing system,” a “memory subsystem,”
or a “computing device.” In the absence of such definitions, we construe
these terms broadly but reasonably to include any device or group of devices
that processes data (a “processor” or a “processing system”), any entity
containing memory (a “memory subsystem”), or any device or group of
devices that computes or otherwise manipulates data (“computing device”).
Gray discloses a processor and memory within a computing system
(FF 6-9). Since a processing system, construed broadly but reasonably, may
Appeal 2009-006613
Application 10/618,861

14
include a processor, Gray discloses a processing system (i.e., a computing
system that contains a processor) with memory that is “within” the
“processing system” (Fig. 2). Since a “processor” may also constitute a
“processing system,” Gray also discloses an embodiment in which the
memory is located external to a processor (i.e., memory 62 is located
external to processor 60 – Fig. 2) but within a computing device (Fig. 2,
element 10).
Also, Gray discloses a “memory subsystem” (e.g., memory 62 – Fig.
2) that is within a system that processes data (i.e., a “processing system”
such as the system 10 or verification unit 20 illustrated in Fig. 2) and within
a computing device (i.e., any device that computes or otherwise manipulates
data such as system or device 10 illustrated in Fig. 2).
For at least the aforementioned reasons, we conclude that the
Examiner did not err in rejecting claim 13, or claims 15, 16, 20, 24, 30, 33,
37, and 41, which fall therewith, with respect to issue 5.

Issue 6
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal of claims 17 and 34 with respect to Issue 6 on the basis of claim
17 alone. See 37 C.F.R. § 41.37(c)(1)(vii).
As described above, Gray discloses ROM and RAM that is in
communication with and connected to memory on a card 34 (FF 8-9). In the
absence of an explicit definition in the Specification, we construe the terms
“connected to” and “coupled to” broadly but reasonably to be equivalent
Appeal 2009-006613
Application 10/618,861

15
terms. Therefore, Gray discloses ROM and RAM (memory subsystem) that
is “coupled to” a memory array (i.e., memory on card 34).
Appellants argue that ROM and RAM in Gray “are not ‘coupled to a
memory array’” (App. Br. 10) but fails to provide a reason for this assertion.
For at least the aforementioned reasons, we conclude that the
Examiner did not err in rejecting claim 17, and claim 34, which falls
therewith with respect to issue 6.

Issue 7
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal of claims 21 and 38 with respect to Issue 7 on the basis of claim
21 alone. See 37 C.F.R. § 41.37(c)(1)(vii).
As set forth above, Gray discloses utilizing a random number
generator to generate an encryption key (FF 10). In view of this explicit
disclosure by Gray, we disagree with Appellants’ contention that Gray
supposedly fails to disclose this feature.
For at least the aforementioned reasons, we conclude that the
Examiner did not err in rejecting claim 21, and claim 38, which falls
therewith with respect to issue 7.

Issue 8
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal of claims 26 and 43 with respect to Issue 8 on the basis of claim
26 alone. See 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2009-006613
Application 10/618,861

16
As set forth above, Gray discloses storing a password in memory (FF
1-4). Since Appellants provide no explicit definition of the term “test ID”
and since the term “test ID” construed broadly but reasonably includes any
form of identification (i.e., “ID”) associated with a test, we agree with the
Examiner that the claimed “test ID” includes a password or personal
identification number as a password or personal identification number is an
identifier that is “tested” for a match.
For at least the aforementioned reasons, we conclude that the
Examiner did not err in rejecting claim 26, and claim 43, which falls
therewith with respect to issue 8.

Issue 9
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal of claims 14, 25, 31, 32, and 42 with respect to Issue 9 on the
basis of claim 14 alone. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue that it would not have been obvious “to incorporate
a baseband processing system in to the device of Gray” or “to incorporate a
radio frequency system to the processing system in the device of Gray”
because “there is no teaching or suggestion in Reddy for computers
requiring RF communication” (App. Br. 22).
However, since Gray discloses authenticating users in a computing
system or device (FF 1-3), Reddy discloses computing devices including a
hand held computer or PDA which the Examiner finds “utilizes baseband/rf
technology” (Ans. 10), and combining a computing system that authenticates
Appeal 2009-006613
Application 10/618,861

17
a user (Gray) with a computing system including a PDA that utilizes
baseband or RF technology would have entailed no more than the mere
combination of known elements performing known functions to achieve an
expected result such as devising a computing device or system that includes
PDA devices (Reddy) that authenticates users (Gray), we agree with the
Examiner that it would have been obvious to one of ordinary skill in the art
to have combined the Gray and Reddy references. “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR, 550 U.S. at 416.
Appellants argue that it would not have been obvious to combine the
Gray and Reddy references (App. Br. 22) but fail to provide any specific
arguments demonstrating that the combination of Reddy and Gray would
have resulted in anything more than predictable results from a combination
of known elements.
For at least the aforementioned reasons, we conclude that the
Examiner did not err in rejecting claim 14, and claims 25, 31, 32, and 42
with respect to issue 9.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in:
1. finding that Gray discloses storing an encrypted access code in
memory within a computing device and allowing access to resources if the
encrypted access code matches the encrypted password (Issue 1),
Appeal 2009-006613
Application 10/618,861

18
2. finding that Gray discloses memory that cannot be externally
modified, a memory location that is disabled such that data cannot be
overwritten, and memory that is not externally accessible and is not
modifiable (Issue 2),
3. finding that Gray discloses allowing access to testing resources
if the encrypted access code matches the encrypted password (Issue 3),
4. finding that Gray discloses allowing access to system
parameters and access to changing system parameters (Issue 4),
5. finding that Gray discloses a memory location within a
processing system of a computing device, within a memory system of a
processing system, external to a processing system and internal to a
computing system, and a memory subsystem that is within a computing
device (Issue 5),
6. finding that Gray discloses read only memory and random
access memory coupled to a memory array (Issue 6),
7. finding that Gray discloses an encryption key generated by a
random number generator internal to the processing system (Issue 7),
8. finding that Gray discloses at least one of a test ID,
manufacturer’s public key, or die identification number stored in an array
(Issue 8), and
9. finding that the combination of Gray and Reddy discloses or
suggests a baseband processing system and a radio frequency system (Issue
9).

Appeal 2009-006613
Application 10/618,861

19
DECISION
We affirm the Examiner’s decision rejecting claims 1, 4-7, 10-13, 15-
21, 23, 24, 26-28, 30, 33-38, 40, 41, and 43-45 under 35 U.S.C. § 102(e) and
claims 2, 3, 8, 9, 14, 22, 25, 29, 31, 32, 39, 42, and 46 under
35 U.S.C. § 103.
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

msc

TEXAS INSTRUMENTS INCORPORATED
P O BOX 655474, M/S 3999
DALLAS, TX 75265