Ex Parte Chang et al

Board of Patent Appeals and Interferences

Aug 28, 2009

10294993 (B.P.A.I. Aug. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID YU CHANG, CHING-YUN CHAO,
HYEN VUI CHUNG, and
VISHWANATH VENKATARAMAPPA
____________

Appeal 2008-004217
Application 10/294,9931
Technology Center 2100
____________

Decided: August 28, 2009
____________

Before JOHN C. MARTIN, HOWARD B. BLANKENSHIP, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed November 14, 2002. The real party in interest is
International Business Machines Corporation.
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection
of claims 1-15 mailed April 12, 2006, which are all the claims remaining in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellants invented a system, method, and computer program product
for integrating Java and CORBA computer systems security. (Spec. 42,
Abstract.)

B. ILLUSTRATIVE CLAIMS
The appeal contains claims 1-15. Claims 1, 5, 6, 10, 11, and 15 are
independent claims. Claims 1 and 5 are illustrative:
1. A method of integrating Java and CORBA security, the
method comprising the steps of:
executing Java authentication of a client, including
creating a Java credential object associated with a Java subject object;
executing CORBA authentication of the client, including
creating a CORBA credential object; and
associating the CORBA credential object with the Java
subject object.

5. A method for integrating Java and CORBA security, the
method comprising the steps of:
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calling, for a client, from a Java environment, a method
in a target CORBA object;
determining that no CORBA credential object for the
client is associated with a security current object of a CORBA
security service;
determining that no CORBA credentials object for the
client is available from a Java subject object; and
executing CORBA authentication of the client, including
prompting the client for authentication data, inserting the
authentication data into a CORBA credential object, and associating
the CORBA credential object with CORBA security current object of
the CORBA security service.

C. REFERENCES
The references relied upon by the Examiner as evidence in rejecting
the claims on appeal are as follows:
Blakley, III US 6,067,623 May 23, 2000

Apte US 6,269,373 Jul. 31, 2001

Westphall et al., “JaCoWeb Security – A CORBA Security
Discretionary Prototype” CLEI Electronic Journal 3 (2), 2000, pp. 1-17.

D. REJECTIONS
The Examiner entered the following rejections which are before us for
review:
(1) Claims 1, 2, 6, 7, 11, and 12 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Westphall; and
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(2) Claims 3-5, 8-10, and 13-15 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Westphall and Apte and over Westphall, Apte
and Blakley2.

II. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Westphall
1a. Westphall discloses that “JaCoWeb Security Project is developing
an authorization scheme for large-scale networks that is based on structures
and concepts introduced in Web, Java and CORBA for security.”
(Abstract.)(emphasis omitted.)
1b. Westphall discloses that “[t]he JaCoWeb Security Project . . .
aims to understand and integrate CORBA security model with Web and Java
security models to compose an authorization scheme for distributed
applications in large-scale networks.” (8:4th paragraph.)
1c. Westphall discloses that “[t]he client (Java applet) interacts with a
CORBA server (remote object) through an ORB, in a traditional
client/server model.” (9:last sentence.)
1d. Westphall discloses that “[t]o implement this trustworthy base
that validates the local accesses, we use the Java security model and its
access control procedures. The Java security model, in its version 1.2, has

2 The Examiner clarified in the Answer that Blakley has not been used as
prior art but is relevant to Appellants’ disclosure (Ans. 13).
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file policies that identify which operations can be carried through by the
loaded codes (applets).” (10:6th paragraph.)
1e. Westphall discloses that “it is necessary for the mobile code to
undergo an authentication phase and, during its execution, it is necessary to
validate the access to local resources. . . . The privileges returned
(credentials) from the user authentication determine the construction of the
protection domain associated with the application applet activated by the
user.” (11:1st paragraph.)

III. 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 (Fed. Cir. 2005), citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992).
Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference. In other words, if
granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art,
then that claim is anticipated, regardless of whether it also
covers subject matter not in the prior art.
Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999)
(internal citations omitted).
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“What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 419 (2007). To be nonobvious, an
improvement must be “more than the predictable use of prior art elements
according to their established functions.” Id. at 417.
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)). Therefore, we look to Appellants’ Brief to show error in
the proffered prima facie case. Only those arguments actually made by
Appellants have been considered in this decision. Arguments which
Appellants could have made but chose not to make in the Brief has not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

IV. ANALYSIS
Grouping of Claims
In the Brief:
Appellants argue claims 1-4, 6-9, and 11-14 as a group (App. Br. 6-
14). For claims 2-4, 6-9, and 11-14, Appellants repeat the same argument
made for claim 1. We will, therefore, treat claims 2-4, 6-9, and 11-14 as
standing or falling with claim 1.
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Appellants argue claims 5, 10, and 15 as a group (App. Br. 14-24).
For claims 10 and 15, Appellants repeat the same argument made for claim
5. We will, therefore, treat claims 10 and 15 as standing or falling with
claim 5.
See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588,
590 (Fed. Cir. 1991).

The Anticipation Rejection
We first consider the Examiner’s rejection of the claims under 35
U.S.C. § 102(b) as being anticipated by Westphall.

Independent Claims 1, 6, and 11
Appellants contend that “Westphall at page 10, paragraph 6, never
even once mentions a credential object or a subject object. Westphall at
page 10, paragraph 6, therefore cannot disclose creating a Java credential
object associated with a Java subject object as claimed in the present
application.” (App. Br. 7.) Appellants further contend that “Westphall’s
‘validating local accesses of an application applet by a trustworthy base’
does not mention associating Java and CORBA credentials in a Java
subject.” (App. Br. 9.)
The Examiner found that “Westphall discloses JaCoWeb security that
integrates CORBA security model with Web and Java security models to
compose an authorization scheme for distributed applications by combining
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CORBA, Java and Web security models, considering discretionary
authorization policies.” (Ans. 8-9.)
Issue: Have Appellants shown that the Examiner erred in finding that
Westphall discloses “associating the CORBA credential object with the Java
subject object?”
Although Appellants contend that Westphall never mentions a
credential object or a subject object (App. Br. 7), we find that Westphall
clearly discloses a scheme that integrates CORBA security with Web and
Java security models (FF 1a thru 1c). Westphall further discloses a Java
security model that executes and returns credentials from the user (FF 1d
and 1e). In other words, Westphall expressly discloses executing Java
authentication of a client thereby returning credentials and integrating
CORBA security with Java security models. Furthermore, Appellants admit
in the Specification that “[a] Java subject object therefore may represent any
entity, including persons, software processes, computer service, and so on”
(Spec. 2:21-22). As such, we find that Westphall’s Java authentication
phase is consistent with the claimed “executing Java authentication of a
client” and Westphall’s JaCoWeb Security Project is consistent with the
claimed “associating the CORBA credential object with the Java subject
object.” As such, Appellants’ arguments have not shown error in the
Examiner's evaluation of the claimed invention and the application of the
teachings of Westphall thereto.
Thus, Appellants have not persuaded us of error in the Examiner’s
conclusion of anticipation for representative claim 1. Therefore, we affirm
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the Examiner’s § 102 rejection of independent claim 1 and of claims 2, 6, 7,
11, and 12, which fall therewith.

The Obviousness Rejection
We now consider the Examiner’s rejection of the claims under 35
U.S.C. § 103(a).
Claims 3, 4, 8, 9, 13, and 14
Regarding dependent claims 3, 4, 8, 9, 13, and 14, Appellants
essentially rely on the same arguments presented supra regarding claim 1
(App. Br. 13-14). Since we have already found such arguments
unpersuasive, we therefore also affirm the rejection of claims 3, 4, 8, 9, 13,
and 14 under 35 U.S.C. § 103(a).

Claims 5, 10, and 15
Appellants contend that Westphall discloses “authenticating users or
principals using an authentication applet and a CORBA service object.
Westphall’s authenticating is not determining that no CORBA credential
object for the client is associated with a security current object of a CORBA
security service as claimed in the present application.” (App. Br. 16.)
Appellants further contend that “[v]alidating local accesses of an application
applet by a trustworthy base therefore is not determining that no CORBA
credentials object for the client is available from a Java subject object as
claimed in the present application.” (App. Br. 18.)
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The Examiner found that Westphall discloses the limitations of claim
5 as set forth in the Answer (Ans. 9-13).
Issue: Have Appellants shown that the Examiner erred in finding that
Westphall in combination with Apte discloses the argued limitations as set
forth in claim 5?
Essentially, Appellants argue every limitation as set forth in
representative claim 5. The Examiner equally set forth findings in the
Answer showing where each of these limitations is believed to be found,
particularly in Westphall (Ans. 9-12). We endorse and adopt these findings
as set forth by the Examiner on pages 9-12 of the Answer. We add that the
Examiner has also established that Westphall’s teachings are consistent with
the examples given in Appellants’ Specification on page 26, particularly
describing a security current object. Furthermore, contrary to Appellants’
argument, Westphall clearly discloses and is concerned with integrating
CORBA security model with Web and Java security models (FF 1b), and
Appellants have not shown how Westphall’s security integrations are
distinguishable from the claimed invention. Furthermore, no Reply Brief
has been filed to contest before us these responsive arguments of the
Examiner. As such, Appellants’ direct challenge has been met by the
Examiner’s responsive arguments on pages 9-12 of the Answer. Thus, we
find Appellants’ arguments to be unpersuasive of error in the Examiner’s
initial showing of obviousness.

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Motivation to Combine Argument
Appellants contend that “[t]he Examiner has not pointed to any
disclosure in Westphall, Apte, or Blakley, nor has the Examiner pointed to
anything else in the knowledge of those skill in the art, suggesting
integrating Java and CORBA security according to context within the
meaning of the claims of the present application.” (App. Br. 23.)
“[A]nalysis [of whether the subject matter of a claim would have been
obvious] need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR, 127 S. Ct. at 1741 (quoting In re Kahn, 441 F.3d at 988); see also
DyStar Textilfarben GmbH & Co. Deutschland KG v. CH., 464 F.3d 1356,
1361 (Fed. Cir. 2006) (“The motivation need not be found in the references
sought to be combined, but may be found in any number of sources,
including common knowledge, the prior art as a whole, or the nature of the
problem itself.”); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969) (“Having
established that this knowledge was in the art, the examiner could then
properly rely, as put forth by the solicitor, on a conclusion of obviousness
‘from common knowledge and common sense of the person of ordinary skill
in the art without any specific hint or suggestion in a particular reference.”’);
In re Hoeschele, 406 F.2d 1403, 1406-07 (CCPA 1969) (“[I]t is proper to
take into account not only specific teachings of the references but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom”) (internal citation omitted).
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Here, we find that the Examiner took into account the inferences
which one skilled in the art would reasonably be expected to draw from the
teachings and found that one “would have been motivated in order to have
an improved distributed data processing system by enabling transparent
persistence of an object reference for a Java and CORBA server.” (Ans. 13.)
This articulated reasoning is sufficient to provide motivation to combine
teachings.
Thus, Appellants have not persuaded us of error in the Examiner’s
conclusion of obviousness for representative claim 5. Therefore, we affirm
the Examiner’s § 103 rejection of independent claim 5 and of claims 10 and
15, which fall therewith.

V. CONCLUSIONS
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-15.
Thus, claims 1-15 are not patentable.

VI. DECISION
In view of the foregoing discussion, we affirm the Examiner’s
rejection of claims 1-15.

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2009).

AFFIRMED

dal

INTERNATIONAL CORP (BLF)
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