Ex Parte Dalton

Patent Trial and Appeal Board

Oct 24, 2016

10165840 (P.T.A.B. Oct. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/165,840 0610712002
22879 7590 10/26/2016
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Christopher I. Dalton
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
82063670 4473
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
10/26/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER I. DAL TON
Appeal2014-007713 1
Application 10/165,840
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
This is an appeal from the final rejection of claims 1-7, 10-17, 22-25,
27, and 28. We have jurisdiction to review the case under 35 U.S.C. §§ 134
and 6.
The invention relates generally to demonstrating the integrity of a
compartment of a compartmented operating system using a trusted device
and computing platform. Spec. 1, 11. 6-9.
1 The Appellant identifies Hewlett-Packard Development Co., L.P., as the
real party in interest. Appeal Br. 3.
Appeal2014-007713
Application 10/165,840
Claim 1 is illustrative:
1. A method for demonstrating integrity of an operating system
compartment in a computing platform having a trusted device,
comprising the steps of:
(a) providing a host operating system of the computing
platform;
(b) determining a host operating system status of the host
operating system using the trusted device;
( c) providing a compartment of the host operating system;
and
( d) determining, by a processor, whether resources
assigned to the compartment have been interfered with by
resources from outside the compartment, the resources
comprising at least a computer process assigned to the
compartment; and
( e) defining a compartment status based on the
determining in step ( d).
Claims 1-7, 10-17, 22-25, 27, and 28 are rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the enablement requirement.
Claims 1-7, 10-17, 22-25, 27, and 28 are rejected under 35 U.S.C.
§ 112, second paragraph, as incomplete for omitting essential elements.
Claims 1-7, 10-17, 22-25, 27, and 28 are rejected under 35 U.S.C.
§ 102(e) as anticipated by Proudler (US 7,877,799 B2, iss. Jan. 25, 2011).
We AFFIRM-IN-PART.
ANALYSIS
Enablement Rejection
We are persuaded by Appellant's argument that "from the
descriptions of the functions of the trusted device 213 and other elements in
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Application 10/165,840
the specification, one skilled in the art would know how to make and use the
invention." Appeal Br. 8.
The Examiner asserts Appellant's "specification merely provides a
broad overview of the process and fails to disclose any specific details that
enable the claimed invention." Answer 2-3; see also Answer 10, Final
Act. 3--4.
The Examiner's burden in an enablement rejection is that:
[T]he explanation of the rejection should focus on those
factors, reasons, and evidence that lead the examiner to
conclude e.g., that the specification fails to teach how to make
and use the claimed invention without undue experimentation,
or that the scope of any enablement provided to one skilled in
the art is not commensurate with the scope of protection sought
by the claims.
MANUAL OF PATENT EXAMINING PROCEDURE§ 2164.04. Although the
rejection need not discuss every factor of the Wands factors (see Id., citing
MPEP § 2164.01 ), the rejection should fully explain the reasons undue
experimentation would be required.
Here, however, the Examiner has not addressed the issue of undue
experimentation at all, and has, thus, failed to establish sufficiently an initial
determination of a lack of enablement. For this reason, we do not sustain the
rejection under§ 112, first paragraph.
Unclaimed Essential Matter Rejection
We are persuaded by Appellant's arguments that the claims are not
incomplete. Appeal Br. 8-10.
The Examiner asserts the claims omit "essential elements," but does
not indicate what elements are omitted. Answer 3--4. The Examiner then
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Application 10/165,840
asserts, however, that there is inadequate support in Appellant's
Specification for the providing of a host operating system, and determining
of host operating system status. Id. Thus, the Examiner's conclusion
appears to be that both the claims and the Specification omit "essential
elements." On this basis, we are persuaded that the Examiner has failed to
establish adequately that the claims recite language that "omit[ ] matter
disclosed to be essential to the invention as described in the specification or
in other statements of record." MPEP § 2172.01. A predicate to
determining that a claim omits an "essential element" is that the "essential
element" is disclosed in the Specification as being essential. If an element is
not described in the Specification at all, however, the element cannot be
described as essential, and the Examiner does not identify any "other
statements of record" that could perhaps remedy this gap. Therefore, we do
not sustain the rejection under 35 U.S.C. § 112, second paragraph.
Anticipation Rejection of Claims 1-5. 10-17. 22-25. 27. and 28
Appellant argues independent claims 1 and 10 together, so we select
claim 1 as representative. Appeal Br. 12-13. See 37 C.F.R.
§ 41.37(c)(l)(iv).
We are not persuaded by Appellant's argument that Proudler does not
check if resources "assigned to the compartment have been interfered with"
by resources external to the compartment. Appeal Br. 11-12; see also Reply
Br. 6-7.
The claim language does not recite the manner in which the
determination of whether resources "have been interfered with" is made. In
construing the claimed determining language, we look to the Specification
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Application 10/165,840
cited by Appellant (Appeal Br. 4), which states"[ c ]ompartment status
verification suitably includes providing access to information about the
compartment .... " Spec. 12, 11. 25-29. We, thus, construe "determining,
by a processor, whether resources assigned to the compartment have been
interfered with by resources from outside the compartment" to be met by
providing access to information about the compartment.
Proudler discloses an event logging process 804 that "will receive
process evidence from service processes running within compartments
according to the requirements placed on those service processes." Proudler
col. 19, 11. 58---63. Proudler also discloses a "service management process
803 now has the service results and the service evidence. It can also obtain
in accordance with normal operation of the trusted component 24 integrity
data for the trusted computing platform at the time of service execution."
Id., col. 20, 11. 17-21. Proudler, thus, provides access to information about
the compartment, which meets our construction of the claim language about
determining whether resources have been interfered with.
For this reason, we sustain the rejection of claims 1 and 10 under 35
U.S.C. § 102. We also sustain the rejection against claims 2-5, 11-17, 22-
25, 27, and 28, which were not argued separately. Appeal Br. 13.
Anticipation Rejection of Claims 6 and 7
Dependent claim 6 recites:
[W]herein the step ( d) comprises anyone or more of:
confirming that the compartment has access only to an
expected section of file space;
confirming that the allocated section of file space is in an
expected condition;
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Application 10/165,840
confirming that only an expected process or processes are
allocated to the compartment; and
confirming that only an expected communication interface
or communication interfaces are allocated to the compartment.
We are persuaded by Appellant's argument that the cited sections of
Proudler does not disclose the recited "expected section of file space," and,
thus, does not disclose confirming either that the compartment has access
only to the expected section of file space, and that the file space is in an
expected state. Appeal Br. 13-14. We construe "file space" to be different
from memory, because the Specification describes "data files stored in the
section of file space allocated to the compartment." Spec. 11, 11. 23-26. File
space is, thus, the location from which files are read into and out of memory,
and is separate from memory.
The Examiner cites to Proudler, column 12, lines 8-21, column 18,
lines 18-34, column 19, line 58 to column 20, line 11, and column 20 lines
17-29. Answer 7. Proudler, at the cited sections, however, addresses only
process space and memory resources, but no storage separate from memory,
such as a filesystem or disk-drive-like storage resource connected to the
memory.
For this reason, we do not sustain the rejection of claim 6, nor of
claim 7 that depends from claim 6.
DECISION
We REVERSE the rejections under 35 U.S.C. § 112, first and second
paragraphs.
We AFFIRM the rejection of claims 1-5, 10-17, 22-25, 27, and 28
under 35 U.S.C. § 102(e).
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Application 10/165,840
We REVERSE the rejection of claims 6 and 7 under 35 U.S.C.
§ 102(e).
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 )(iv).
AFFIRMED-IN-PART
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