Ex Parte Balaz et al

Board of Patent Appeals and Interferences

Nov 5, 2008

10801332 (B.P.A.I. Nov. 5, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RUDOLPH BALAZ, VICTOR W. HELLER,
XIAOHONG SU and KEITH R. VOGEL
____________________
Appeal 2008-1458
Application 10/801,3321
Technology Center 2100
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Decided: November 5, 2008
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Before JEAN R. HOMERE, JAY P. LUCAS, and THU A. DANG,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s twice
rejection of claims 1 through 5 and 7 through 21. Claim 6 has been
canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Filed on March 15, 2004. The real party in interest is Microsoft Corp.
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The Invention
According to Appellants, the invention relates to a virtual private
network (VPN) enrollment protocol gateway implemented as a registration
authority that operates as an intermediary between a router and a certificate
authority. The router communicates with the registration authority as if it
were the certificate authority, not realizing that it is communicating with an
intermediary. Particularly, as depicted in Figure 1, the protocol gateway
(118) receives a router enrollment request from the router (110-114). The
protocol gateway (118) decrypts the request, adds an alterative subject name
to the request, digitally signs the request, and forwards the signed request to
the certificate authority (116). Then, the certificate authority (116)
determines whether to trust the source of the request (the protocol gateway),
and proceeds to respond with the requested certificate if it verifies that the
gateway can be trusted. The gateway receives the requested certificate,
encrypts and digitally signs a response including the certificate, and returns
the signed and encrypted response to the router. (Spec., p. 2, l. 20 through p.
3, l. 13.)
Representative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:

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1. A method, implemented in a registration authority, comprising:

receiving a request, from a requestor, for a password to be used by a
device when communicating with the registration authority operating as a
protocol gateway between the device and a certificate authority;

authenticating the requestor;
generating the password;

adding the password to a password table; and

returning the password to the requestor for use by the device.

Prior Art Relied Upon

The Examiner relies on the following prior art as evidence of
unpatentability:

Colvin US 6,044,471 Mar. 28, 2000
Mikurak US 6,606,744 B1 Aug. 12, 2003
Andersson US 6,931,016 B1 Aug. 16, 2005

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
A. Claims 1 through 5, and 7 through 20 stand rejected under 35
U.S.C. § 103 (a) as being unpatentable over the combination of Colvin and
Mikurak.
B. Claim 21 stands rejected under 35 U.S.C. § 103 (a) as being
unpatentable over the combination of Colvin, Mikurak and Andersson.

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Appellants’ Contentions
Appellants argue that the combination of Colvin and Mikurak does
not teach a registration authority operating as a protocol gateway between a
requesting device and certificate authority, as recited in independent claim 1.
(App. Br. 8-10, Reply Br. 2-4.) Particularly, Appellants argue that while
Mikurak discusses internet gateways, registration authority and certificate
authority, they are described as separate devices. (Id.) According to
Appellants, these separate disclosures of Mikurak do not suggest the
inclusion of the functionality of an Internet gateway in the registration
authority to thereby communicate with the certificate authority on behalf of
the user. (Id.)
Examiner’s Findings
In response, the Examiner finds that the claimed registration authority
operates as a protocol gateway only when it is communicating with a
requesting device. The Examiner thus, finds that the claimed operation as a
gateway is a conditional limitation, which is not required when the
registration system is not communicating with the requesting device. (Ans.
7-8.) Therefore, the Examiner finds that Mikurak’s disclosure of a
registration authority that interfaces with a certificate authority on behalf of
the user combined with Mikurak’s disclosure that gateways are known to
establish communication between different networks teach the claimed
limitation. (Id.) Consequently, the Examiner concludes that the combination
of Colvin and Mikurak renders claim 1 unpatentable. (Id.)
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II. Issue
The pivotal issue before us is whether Appellants have shown that the
Examiner erred in concluding that one of ordinary skill would have found
sufficient rationale to combine Colvin and Mikurak’s teachings to yield a
registration authority that operates as a protocol gateway between a
requesting device and a certificate authority, when the requesting device is
communicating with the registration authority, as recited in independent
claim 1. We answer this inquiry in the negative.

III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Colvin
1. Colvin discloses a method and system for reducing
unauthorized use of a software by associating a series of passwords thereto.
(Abstract.) Particularly, as depicted in Figure 1, Colvin discloses a
password administrator (24) that provides one or more passwords and
authorization codes to a user (30) or a group of users (32) based on received
registration information obtained with the user’s request to thereby
determine to what extent, if any, the user can be authorized to use the
software. (Col. 4, ll. 6-42.)

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Mikurak
2. Mikurak discloses a collaborative installation management in a
network-based supply chain environment wherein phone calls and other
multimedia data issued by users are routed through a network system for
transferring information across the Internet. (Col. 2, ll. 53-65.) Particularly,
Mikurak uses Internet gateways and routers to provide necessary links
between different networks thereby making connections possible between
them. (Col. 67, ll. 15-25.)
3a. Further, as shown in Figure 116, Mikurak discloses a secured
VPN wherein remote users implement a VPN module on their firewall.
(Col. 269, ll. 46-56.)
3b. Particularly, a user issues a digital certificate request to a
registration authority (RA) that processes and forwards the request to a
central corporate headquarter that maintains a certificate Authority (CA)
integrated in an LDAP server. (Col. 269, ll. 57-65.)
3c. The CA authenticates the user, and administers a digital
certificate to the user to subsequently permit the user to access a desired
software. (Id.)

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Andersson
4. Andersson discloses a VPN management system wherein each
VPN has an identification code, and authentication data for each router
including encryption keys and passwords that are compared with security
data in a database upon receiving a user’s request to access the database.
(Col. 4, ll. 1-26.)

IV. PRINCIPLES OF LAW
OBVIOUSNESS
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.’

KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).

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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, (3)
the level of skill in the art, and (4) wherein evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 127 S. Ct. at 1734 (“While the sequence of these questions might
be reordered in any particular case, the [Graham] factors continue to define
the inquiry that controls.”)
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (quoting KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727, 1739 (2007)).
“One of the ways in which a patent's subject matter can be proved obvious is
by noting that there existed at the time of invention a known problem for
which there was an obvious solution encompassed by the patent's claims.”
KSR, 127 S. Ct. at 1742.
The reasoning given as support for the conclusion of obviousness can
be based on interrelated teachings of multiple patents, the effects of demands
known to the design community or present in the marketplace, and the
background knowledge possessed by a person having ordinary skill in the
art. KSR, 127 S. Ct. at 1740-41. See also Dystar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2007).

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V. ANALYSIS
As detailed in the Findings of Fact section above, Colvin teaches a
system having a password administrator that processes a user’s request for a
password along with the user’s registration information to determine to what
extent, if any, the user can be authorized to access a desired software. (FF.
1.) Further, Mikurak teaches a VPN wherein a user submits a digital
certificate request to a registration authority, which forwards the request to a
certificate authority to retrieve the desired certificate, and thereby providing
the user access to a corresponding software. (FF. 3a-3c.) Additionally,
Mikurak teaches that Gateways are well-known in the art as a tool for
establishing communication between different networks. (FF. 2.) One of
ordinary skilled in the art would readily recognize that Mikurak’s
registration authority, by submitting the user’s digital certificate request to
the certificate authority, is serving as a communication proxy for the user.
Stated differently, the registration authority is operating as an intermediate
communication device linking the user and the certificate authority. The
ordinarily skilled artisan would have thus recognized that such an
intermediate communication device could be implemented as a gateway,
which is well-known for its ability to establish communication between
different devices of a network or different networks.
We agree with the Examiner that the registration device is not
required to satisfy the claimed limitation. We find that the clause “to be
used by a device when communicating with the registration authority
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operating as a protocol gateway between the device and the certificate
authority” is statement of intended use, which is not entitled to any
patentable weight. We find nonetheless that Mikurak’s disclosure teaches
the limitation encompassed in that clause. Particularly, we find that Mikurak
does suggest to the ordinarily skilled artisan to use the registration authority
as an intermediate communication device, such as a protocol gateway,
linking the user and the certificate authority. The ordinarily skilled artisan
would have thus recognized that Colvin and Mikurak disclose prior art
elements that perform their ordinary functions to predictably result in a
system that allows a registration authority to operate as a protocol gateway
between an authorized user and a certificate authority to thereby determine
to what extent the user can access a desired software on a server. We
therefore agree with the Examiner that the combination of Colvin and
Mikurak is proper. It follows that Appellants have not shown that the
Examiner erred in concluding that the combination of Colvin and Mikurak
renders independent claim 1 unpatentable.
Appellants do not separately argue claims 1 through 5 and 7 through
20. Therefore, we select independent claim 1 as being representative of the
cited claims. Consequently, claims 2 through 5 and 7 through 20 fall
together with representative claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

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Regarding claim 21, Appellants argue that Andersson does not cure
the deficiencies of the Colvin-Mikurak combination, (App. Br. 11-13, Reply
Br. 4.) As discussed above, we find no such deficiencies in the cited
combination for Andersson to remedy. Further, Appellants argue that the
Colvin-Mikurak-Andersson combination does not teach comparing a
received password with an existing password to authenticate the device. (Id.)
We do not agree. As detailed in the Findings of Fact section above, Colvin
discloses a password administrator that reviews a user’s registration
information to authenticate the user. (FF. 1.) Further, Andersson discloses a
VPN system that compares the VPN password with security data in a
database upon receiving a request from a user to access the database. (FF. 4.)
One of ordinary skill would have recognized that Colvin, Mikurak, and
Andersson disclose prior art elements that perform their ordinary functions
to predictably result in a system that allows an authenticated user to access a
database upon finding a match between the user’s authentication data and
security data stored in the database. It follows that Appellants have not
shown that the Examiner erred in concluding that the combination of Colvin,
Mikurak and Andersson renders claim independent claim 21 unpatentable.

VI. CONCLUSIONS OF LAW
Appellants have not shown that the Examiner erred in concluding that
the combination of Colvin and Mikurak renders claims 1 through 5 and 7
through 20 unpatentable under 35 U.S.C. § 103 (a). Similarly, Appellants
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have not shown that the Examiner erred in concluding that the combination
of Colvin, Mikurak and Andersson renders claim 21 unpatentable under
35 U.S.C. § 103 (a)

VII. DECISION
We affirm the Examiner’s decision rejecting claims 1 through 5 and 7
through 21 as being unpatentable under 35 U.S.C. § 103(a) .
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

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