Ex Parte Burnett et al

Board of Patent Appeals and Interferences

May 5, 2008

09843069 (B.P.A.I. May. 5, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RODNEY CARLTON BURNETT, TIMOTHY SIMON
BARTLEY, and MICHAEL POWELL
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Appeal 2008-0045
Application 09/843,069
Technology Center 2100
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Decided: May 5, 2008
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Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-21. We have jurisdiction under 35 U.S.C.
§ 6(b). We REVERSE. We also enter a new ground of rejection against
claims 12-19 under the provisions of 37 C.F.R. § 41.50(b).
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THE INVENTION
The disclosed invention relates generally to enhancing the security
protections on accesses to devices on computer operating systems. More
particularly, Appellants’ invention is directed to a technique in which a
defined authorization policy external to the native operating system restricts
access to system devices regardless of the method of access and controls the
creation of new access paths to a system device (Spec. 1).

Independent claim 1 is illustrative:
1. A method for controlling access to a computer system
device, being accessed through a special device file, with
externally stored resources comprising the steps of:

retrieving file attributes for a device file resource used in
the system device access attempt;

determining whether the resource that is making the
access attempt is a special device file;

searching a mapping database for special device files that
represent the system device that is the object of the access
attempt and generating a special device file entry list of all
protected device files that represent said system device; and

generating an authorization decision for the access
attempt to the system device based on the security policy that
governs each device file in the special device file entry list.

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THE REFERENCE
The Examiner relies upon the following reference as evidence in
support of the rejection:

Kenton US 5,479,612 Dec. 26, 1995

THE REJECTION
Claims 1-21 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Kenton.

PRINCIPLES OF LAW
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, 1375-76 (Fed. Cir. 2005) (citation omitted).

ISSUE(S)
We have determined that the following issue is dispositive in this
appeal:
Whether Appellants have shown that the Examiner erred in
finding that Kenton discloses “special device files” as recited in
each of independent claims 1, 11, 12, and 20.

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ANALYSIS
Independent claims 1, 11, 12, and 20
After considering the evidence before us, and the respective
arguments on both sides, we find the Kenton reference falls short of
anticipating Appellants’ claimed invention. Appellants argue, inter alia, that
each independent claim distinguishes over the Kenton reference by requiring
device files that are a specialized file type known as a “special device file.”
(App. Br. 6). We agree with Appellants that the claimed “special device
files” are not fairly disclosed by the Kenton reference.

Claim Construction
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). “[T]he words of a claim ‘are generally
given their ordinary and customary meaning.’” Phillips v. AWH Corp., 415
F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations omitted).
“[T]he ordinary and customary meaning of a claim term is the meaning that
the term would have to a person of ordinary skill in the art in question at the
time of the invention, i.e., as of the effective filing date of the patent
application.” Phillips, 415 F.3d at 1313.
Here, the Examiner has broadly read the claimed “special device
files” on Kenton’s device drivers that are described as “software drivers” by
Kenton at column 3, lines 25-30 (See Ans. 3, ¶7, i.e., “Thus, a device driver
is a special device file and will be referred to as such for the remainder of
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this office action.”). However, we find that a “special device file,” as
disclosed and claimed by Appellants, is a well-established term of art that is
not the same as a device driver.
When we look to Appellants’ Specification for context, we conclude
that Appellants’ use of the term “special device file” is fully consistent with
the ordinary and customary meaning attributed to that term by those of
ordinary skill in the art. In particular, we find Appellants’ disclosure fully
comports with the well-established use of special device files in Unix
environments that are used to access devices (e.g., “character special files”
that are used for I/O communication with devices that input or output a
character stream, and “block special files” where I/O communication with
the device, usually a disk drive, occurs using blocks of data that may be
individually addressed).1 See e.g., Appellants’ Specification, as follows:

The file is the fundamental object in a computing system for
representing system resources. This representation holds true
for attached hardware devices and virtual "pseudo" devices
that are represented and accessed through a specialized file

1 See e.g., Stevens, Richard W., “Unix Network Programming”, Prentice
Hall, p. 30, 1990 (“A character special file and a block special file are I/O
devices that appear as regular files in the Unix filesystem.”). See also
“Tanenbaum, Andrew S., “Modern Operating Systems,” Prentice Hall, p.
290, 1992 (“Like all computers, those running UNIX have I/O devices such
as terminals, disks, printers, and networks connected to them. Some way is
needed to allow programs to access these devices. Although various
solutions are possible, the UNIX one is to integrate them into the file system
as what are called special files. For example, the printer might be /dev/lp,
terminal 1 might be /dev/tty1, and the network might be /dev/net.”).
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type known as a "special device file". The device file acts as the
portal to the device and its underlying functionality. This type of
file contains no data, but has as part of its attributes,
information describing the device. This device information is a
device specification, which contains a major and minor
number. These values act as indexes or pointers into internal
data structures within the operating system. These data
structures contain the specific device implementation methods
[i.e., corresponding to the device driver methods] and device
properties. Since the special device file is just a redirector to the
system device, there can be multiple device files on a system
for a given device [emphasis added].
(Spec. 1, ll. 14-24).

Appellants’ Specification further discloses use of the device
specification, i.e., the major and minor numbers (i.e., pointers) that are
extracted from the special device file when a device access occurs, as
follows:

The method of the invention assumes there is a security
manager and mechanism present for defining, attaching, and
evaluating external authorization policy to file resources based
on the file's path name. An example file name would be:
/dev/floopyO. In this invention, when security policy is
attached to a file, a device protection manager is given the
protected file's name. It then retrieves the file's attributes to
determine if the file is a special device file. This retrieval could
occur through one of several methods including a stat() call or
an internal OS service such as vn-getattr(). If the file is a
special device file, then the device manager records the device
specification (major and minor number) in a device database.
This processing occurs for all files, which have attached
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policy. When a device access occurs, the device specification is
extracted from the special device file used in the access. The
access may be an attempt to open the device for reading or
writing, or perhaps an operation to change ownership or
permissions on the special device file [emphasis added].
(Spec. 5, ll. 3-15).

Because the “major numbers” disclosed by Appellants are used to
point to a device driver and the “minor numbers” are used to identify
particular devices that the device driver program controls, we conclude that
a person having ordinary skill in the art would not have reasonably
considered a special device file (that provides a pointer to a device driver
linked with the kernel) to be the same as the device driver itself. We note
that “absence from the reference of any claimed element negates
anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571
(Fed. Cir. 1986).
Because we conclude that Appellants have met their burden of
showing that the Examiner has failed to establish a prima facie case of
anticipation, we reverse the Examiner’s rejection of independent claims 1,
11, 12, and 20 as being anticipated by Kenton. Because we have reversed
the Examiner’s rejection of each independent claim on appeal, we also
reverse the Examiner’s rejection of dependent claims 2-10, 13-19, and 21 as
being anticipated by Kenton.

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CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude
Appellants have met their burden of showing that the Examiner erred in
rejecting claims 1-21 under 35 U.S.C. § 102(b) for anticipation.

NEW GROUND OF REJECTION
Using our authority under 37 C.F.R. § 41.50(b), we reject claims
12-19 under 35 U.S.C. § 101.

Claims 12-19
Claims 12-19 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Regarding independent claim 12, we note that a computer-readable
medium having program code is directed to statutory subject matter so long
as the language of the claim is not supported in the Specification with
non-statutory embodiments (i.e., signals, transmission mediums and the
like). See In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007) (A claim
directed to computer instructions embodied in a signal is not statutory under
35 U.S.C. § 101).
In the present case, Appellants’ Specification discloses that the
computer readable medium (that includes signal bearing media) is intended
to broadly encompass “transmission-type of media such as digital and
analog communication links.” (Spec. 16, ll. 7-8). Because Appellants’
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claims broadly read on signals and other non tangible transmission mediums,
we conclude that independent claim 12 and claims 13-19 that depend
therefrom are directed to non-statutory subject matter.

DECISION
The decision of the Examiner rejecting claims 1-21 is reversed.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2007). 37 C.F.R.§ 41.50(b) provides "[a] new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review." 37 C.F.R § 41.50(b) also provides that the Appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must
exercise one of the following two options with respect to the new ground of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

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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).

REVERSED
37 C.F.R. § 41.50(b)

pgc

Darcell Walker
8107 Carvel Lane
Houston TX 77036