Ex Parte Bocanegra et al

Patent Trial and Appeal Board

Feb 17, 2017

14091842 (P.T.A.B. Feb. 17, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/091,842 11/27/2013 Tobias Bocanegra AD01.3504US01 5420
7590
Adobe / Finch & Maloney PLLC
50 Commercial Street
Manchester, NH 03101
EXAMINER
TENG, LOUIS C
ART UNIT PAPER NUMBER
2492
NOTIFICATION DATE DELIVERY MODE
02/22/2017 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 @ finchmaloney .com
nmaloney @ finchmaloney .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOBIAS BOCANEGRA, ANTONIO SANSO, and
TIMOTHEE MARET
Appeal 2016-008226
Application 14/091,842
Technology Center 2400
Before ALLEN R. MacDONALD, IRVIN E. BRANCH, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL
Appeal 2016-008226
Application 14/091,842
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis and
bracketing added):
1. A computer-implemented method comprising:
[(a)] receiving, by an authentication server computing system
and from a third party application, a client identification value
encoded in a bearer token, the bearer token being included in an
HTTP Authorization request header field of an input from a client
computing system to the third party application, the input including a
request to access a protected resource by the third party application;
[(b)] comparing, by the authentication server computing
system, the client identification value encoded in the bearer token to a
predefined list of authorized client values associated with the
protected resource; and
[(c)] validating, by the authentication server computing system,
the bearer token based on the comparison, wherein the client
identification value matches an authorized client value in the
predefined list,
[(d)] wherein the third party application and the authentication
server computing system are each separate from the client computing
system and the protected resource.
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Appeal 2016-008226
Application 14/091,842
Rejections
The Examiner rejected claims 1—4, 6—11, 13—18, and 20 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Burch et
al. (US 2014/0122730 Al) and Leicher et al. (US 2013/0191884 Al).1
The Examiner rejected claims 5,12, and 19 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Burch, Leicher, and Wilkes et
al. (US 2014/0101723 Al).2
Appellants ’ Contention
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
[Cjombining Leicher with Burch would fundamentally alter the
principle of operation of Burch or render Burch inoperable for its
intended purpose. To this end, a proper combination of
references requires much more than the mere use of similar
terminology or a related technology.
App. Br. 7.
[T]he device of Leicher generates a token locally in response to
a request for access by the local device to a service that is
provided by a service provider. This is very different than Burch,
in which the token is provided by a different device, which has
an established session with a resource, so that the session can be
migrated from the different device to the local device. Thus, if
the session migration techniques disclosed by Burch were
modified by the identity management techniques of Leicher,
1 Separate patentability is not argued for claims 2—4, 6—11, 13—18, and 20.
Except for our ultimate decision, these claims 2-4, 6—11, 13—18, and 20 are
not discussed further herein.
2 Separate patentability is not argued for claims 5,12, and 19. The § 103
rejection of these claims turns on our decision as to the underlying § 103
rejection of claim 1. Except for our ultimate decision, these claims are not
discussed further herein.
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Appeal 2016-008226
Application 14/091,842
Burch would require substantial reconstruction and be altered so
as to destroy and fundamentally alter Burch’s principle of
operation or render Burch inoperable for its intended purpose.
App. Br. 9.
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
We disagree with Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer (Ans. 3—4) in response to Appellants’ Appeal Brief.
We concur with the conclusions reached by the Examiner.
As to Appellants’ above contention, we are not persuaded because
essentially Appellants’ argument is premised on a “physical” or “bodily”
incorporation of Leicher’s entire token processing into Burch’s token
processing. This is not the standard. See In re Sneed, 710 F.2d 1544, 1550
(Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references
be physically combinable to render obvious the invention under review.”); In
re Keller, 642 F.2d 413, 425 (CCPA 1981) (The “test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference .... Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.”). Moreover, “[a] reference must be considered for
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Appeal 2016-008226
Application 14/091,842
everything it teaches by way of technology and is not limited to the
particular invention it is describing and attempting to protect.” EWP Corp.
v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphasis
omitted).
The Examiner did not suggest Leicher’s entire token processing
should be bodily incorporated into the method of Burch. Rather, the
Examiner relied on Leicher to show it is known in the prior art to compare a
client identification value to a predefined list of authorized client values
during token processing. Final Act. 5. Appellants go beyond this to
incorporate limitations from Leicher which were not relied upon by the
Examiner. Appellants then argue the limitations the Examiner did not rely
upon. We are unpersuaded by this form of argument.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1—20 as being
unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1—20 are not patentable.
DECISION
The Examiner’s rejections of claims 1—20 are 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
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