Ex Parte Erickson et al

Board of Patent Appeals and Interferences

Aug 16, 2010

09984969 (B.P.A.I. Aug. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN S. ERICKSON
and MARK SCHLAGETER
____________

Appeal 2008-006003
Application 09/984,969
Technology Center 2400
____________

Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and
JEAN R. HOMERE, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-22, which are all the claims in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

Invention
Appellants’ invention relates “to a method and apparatus for
controlling access to and protecting networked information resources and
services, including individual sets of ‘web services’ or ‘e-services’ made
available by hosts via message calls across network protocols.” Spec. 1:5-8.

Representative Claims
1. An apparatus for controlling cross-organizational
access by end users associated with a plurality of organizations
to one or more distributed object services and/or resources
available via a resource server across an information technology
communications network, the apparatus comprising:

an authorization module associated with each of said
organizations, said authorization module being adapted to issue
enrollments to one or more end users associated with said
organization and electronically transmit said enrollments to the
respective end users;

a servicing module for defining credentials required for
access to each of said services and/or resources via said
resource server by end users associated with each of said
organizations; and

a clearance module storing one or more mappings of
enrollments to credentials;
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wherein

each of the end users includes a transmitter for
transmitting to the resource server a request for access to at
least one of said services and/or resources together with data
relating to the respective enrollment of the end user;

in response to receipt of said request, said resource server
is adapted to transmit said data relating to said enrollment to
said clearance module;

said clearance module is adapted to map said enrollment
to one or more respective credentials and return data
representative of said credential(s) to said resource server;

said resource server is adapted to comply with said
request in response to a positive comparison of said data
representative of said credential(s) to said request and to deny
said request in response to a negative comparison of said data
representative of said credential(s) to said request; and

at least one of said authorization module, said servicing
module, and said clearance module is/are applications or
endpoints dynamically interactable with other applications or
endpoints across the information technology communications
network.

3. An apparatus for policy enforcement for
distributed object services and/or resources accessible across a
communications network, the apparatus comprising:

a resource server for providing access by an end user to
said object services and/or resources;

a policy data structure creating apparatus for creating a
policy data structure defining, for each of said object services
and/or resources, at least one policy in accordance with which
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access to said object service and/or resource is permitted by
said end user; and

a binding apparatus for binding said at least one policy
defined by said policy data structure to said object service
and/or resource.

Prior Art
Henry M. Gladney, Safe Deals Between Strangers, IBM Research
Report RJ 10155 (27 pages plus Abstract and Table of Contents)
(Aug. 15, 1999) (“Gladney”).

Examiner’s Rejections
Claims 1-22 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Gladney.2

FINDINGS OF FACT
The Examiner finds each of the pending claims to be anticipated by
Gladney. According to Appellants, the instant invention applies the “safe
dealing” model of the Gladney reference to Web services. See Spec. 4, l. 6
et seq.; 6:1-9; 10:3-10; 16:17-23.

PRINCIPLES OF LAW
“Anticipation requires the presence in a single prior art reference
disclosure of each and every element of the claimed invention, arranged as
in the claim.” Lindemann Maschinenfabrik GMBH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).

2 Although the Final Rejection and the Answer state the basis as § 102(e), on
this record the non-patent publication is a reference under § 102(b).
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For a prior art reference to anticipate in terms of 35 U.S.C. § 102,
every element of the claimed invention must be identically shown in a single
reference. However, this is not an “ipsissimis verbis” test. In re Bond, 910
F.2d 831, 832 (Fed. Cir. 1990).

ANALYSIS
We will address the limitations of representative claims as follows.

Claims 1 and 11
The Examiner reads instant claim 1 on structures described by
Gladney as depicted in Figure 3 (page 6). Cf. instant Fig. 1.
Appellants argue that Gladney fails to describe any of the
Administrator for Requesting Organization (A0), Administrator for Serving
Organization (AP), and Clearance Center (C) as being applications or
endpoints which are dynamically interactable with other applications or
endpoints across the information technology communications network. In
particular, Appellants submit that the communications between A0 and AP
represent communications between human beings, as opposed to
“applications or endpoints.” Further, Appellants argue that none of the
communications between A0 and AP are disclosed as across the information
technology communications network. Finally, Appellants argue that
Clearance Center C is not “dynamically interactable” because it appears to
be described as receiving enrollment to ticket mappings from AP without any
disclosure of “interaction” between the two; i.e., without a reply being
returned from C to AP.
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Instant claim 1 recites an authorization module “adapted to” perform
functions and a servicing module “for” performing functions. Appellants
have not shown how the claimed “modules” might distinguish over software
performing the functions as described by Gladney, even if human beings are
in ultimate control of the software functions. A0 and AP in Gladney may
indeed be human beings (although Gladney specifies that “we ignore the
distinction between a human user and a process acting as surrogate for that
user,” page 5, ll. 1-3). However, as shown in the legend of Figure 3 (page
6), the entities on the digital communication network associated with A0 and
AP are each embodied as a “Computer with human user.” Moreover,
Appellants admit that the manner in which the various services communicate
in the model illustrated by instant Figure 1 is “substantially the same as that
described with reference to the Gladney safe dealing model.” Spec. 10:3-7.
Further, Appellants do not explain why the “modules” of the instant
invention are deemed to be “dynamically interactable with other applications
or endpoints” while those of Gladney are not. Appellants’ Appeal Brief (at
5-6) points to Specification page 6, line 28 through page 7, line 2 as support
for the claimed feature, which merely contains the claim language in a
“summary” of the invention.
Appellants’ Specification indicates that a network “endpoint” requires
no more than an entity on a Web service or e-service that operates on
messages containing information. See Spec. 1: 9-15. Gladney’s Figure 3
contains digital network communications and appears in the context of Web
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servers and e-business applications (Fig. 2; page 3, ll. 1-4).3 We are not
persuaded that any of the network entities depicted as rectangles in Figure 3
of Gladney are not “applications or endpoints” within the meaning of claim
1. As for the alleged lack of interaction “across the information technology
communications network” between (the computers of) A0 and AP, the
ordinarily skilled artisan would understand that interactions between
computers in separate organizations are normally by means of digital
network communication, even if the links drawn between the A0 and AP
computers provide the additional information of “sharing” the ID and public
key as denoted in the Figure 3 legend. (Compare to the “out of band”
communications such as “Negotiate service agreement” and “Agree on
encoding of enrollments.” Also compare to instant Figure 1, “Negotiation
creates enrollment::ticket mappings (held by OC),” which seems to represent
an “out of band” communication). Thus, at least the computers of A0 and AP
in Gladney are “dynamically interactable” across “the information
technology communications network” within the meaning urged by
Appellants.
Appellants’ arguments fail for an additional reason, due to the breadth
of claim 1 presented on appeal, even if our foregoing findings from the
reference with respect to A0 and AP were wrong. Appellants argue that
Clearance Center C of Gladney is not “dynamically interactable” with AP
because, presumably, the digital network communication of “Sends
enrollment to ticket mappings” is a one-way communication, without

3 Gladney also describes implementing the system based on the JAVA
language, Web browsers, servers, and clients, and relational databases. Page
16 and Figure 4.
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response from C. However, Figure 3 also shows the “dynamically
interactable” elements of Clearance Center C and Resource Server R. Claim
1 does not specify that “at least one” of the authorization module, servicing
module, and clearance module is “dynamically interactable” with one or
more of the other named “modules.” Rather, the claim recites that at least
one of the modules is dynamically interactable with “other applications or
endpoints,” which does not distinguish over Resource Server R as shown in
Figure 3 of Gladney. That the limitation reads on Gladney is not surprising;
see instant Figure 1, note “dynamically interactable” elements “Clearance
Service (CC)” and “Resource Server (RS).”4
Being not persuaded of error in the rejection of claim 1, we sustain the
rejection. Although Appellants submit that independent claim 11 is
patentable because (dependent) claim 10 is patentable (Br. 23), claim 11
does not contain the limitations of claim 10 but contains the argued feature
of claim 1. Claim 11 thus falls with claim 1.

Claim 2
Claim 2 recites that at least one of the named modules of claim 1
“is/are arranged to be accessible via an object invocation protocol.” On this
record, the only evidence we have of “object invocation protocols” are
protocols such as the prior art “SOAP” protocol (e.g., Spec 10:5-9; 14:3-

4 Although the literal language of claim 1 suggests that the “at least one”
module must by “dynamically interactable” with a plural number of
“applications or endpoints,” Appellants’ disclosure is to the contrary (as
shown in Figure 1). Only the Resource Server (RS) is disclosed as being
“dynamically interactable” with more than one “application or endpoint,”
assuming that, consistent with Appellants’ arguments, two opposite-directed
arrows are required for “dynamic interaction.”
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15:7). Because the Examiner has not identified an “object invocation
protocol” in Gladney, nor shown how the modules might be “arranged to be
accessible” via such a protocol, we do not sustain the rejection of claim 2.

Claims 3, 12, and 15
Claim 3 recites, inter alia, a “policy data structure” and a “binding
apparatus.” Even if we assume that the rejection demonstrates that Gladney
describes a “policy data structure” as claimed, the rejection fails to point out
a “binding apparatus” consistent with claim 3. We note that the claimed
“binding” is based not on Gladney, but on another prior art reference. See
Spec. 11:12 et seq. Because independent claim 12 and dependent claim 15
each recite limitations similar to those of claim 3, we do not sustain the
rejection of claims 3, 12, and 15.

Claim 19
Claim 19 depends from claim 18, which depends from claim 1. Claim
19 recites that the service agreement (of claim 18) is established as a result
of negotiations between the servicing module and the authorization module
associated with the organization. The Examiner’s position to the contrary
notwithstanding, Gladney clearly discloses (e.g., Fig. 3) that the service
agreement is negotiated between the Requesting Organization (O) and the
Serving Organization (P), not between AP and A0. We therefore cannot
sustain the rejection of claim 19.

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Claim 20
Claim 20 recites, inter alia, that a response of the resource server to
the request is encrypted to be readable only by the end user. Although the
rejection points to disclosure of encrypted messages between some network
entities in Gladney (page 10), the rejection fails to show encryption of
messages from the resource server to the end user. We do not sustain the
rejection of claim 20.

Summary/Conclusion
We have not sustained the rejection of independent claims 3 and 12,
nor that of dependent claims 2, 15, 19, and 20. We do not sustain the
rejection of claims 4-10 because the claims depend from claim 3. We do not
sustain the rejection of claim 16 because the claim depends from claim 15.
We have sustained the rejection of independent claims 1 and 11.
Absent separate arguments for patentability (see Br. 23), Appellants have
elected that claims 13 and 14 stand or fall with claim 11 (which falls).
Further in view of claims not separately argued by Appellants: dependent
claims 17, 18, and 21 fall with claim 1; and dependent claim 22 falls with
claim 11. See 37 C.F.R. § 41.37(c)(1)(vii).

DECISION
The Examiner’s rejection of claims 1-22 under 35 U.S.C. § 102(b) as
being anticipated by Gladney is affirmed with respect to claims 1, 11, 13, 14,
17, 18, 21, and 22 but reversed with respect to claims 2-10, 12, 15, 16, 19,
and 20.
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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.
§ 41.50(f).

AFFIRMED-IN-PART

msc

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