Ex Parte Guski et al

Patent Trial and Appeal Board

Sep 19, 2016

12351291 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/351,291 0110912009 Richard Henry Guski
33558 7590 09/21/2016
INTERNATIONAL BUSINESS MACHINES CORPORATION
Richard Lau
IPLA W DEPARTMENT I Bldg 008-2
2455 SOUTH ROAD - MS P386
POUGHKEEPSIE, NY 12601
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.
POU920080233US 1 8539
EXAMINER
LA YELLE, GARY E
ART UNIT PAPER NUMBER
2493
NOTIFICATION DATE DELIVERY MODE
09/21/2016 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):
poiplaw2@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD HENRY GUSKI, DEBORAH MAPES,
WILLIAM O'DONNELL, and IRA STEVEN RINGLE 1
Appeal2015-001922
Application 12/351,291
Technology Center 2400
Before JOSEPH L. DIXON, LARRY J. HUME, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 3-11 and 14--22. Claims 1, 2, 12, and 13 have been canceled. See
Appellants' Amendment, filed September 5, 2012. We have jurisdiction
over the remaining pending claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 2.
Appeal2015-001922
Application 12/351,291
STATEMENT OF THE CASE
Introduction
Appellants' claimed invention is directed to "a method of propagating
client end-user identification and authentication information from a
distributed component of a multi-component transaction processing
environment to a mainframe component of such an environment." Spec.
iT 22.
Claim 7 is representative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
7. A computer-implemented method for authenticated
identity propagation and translation in a transaction processing
environment containing an initial authentication component and
a subsequent processing component, each of said components
comprising a computer, the method being performed at the
subsequent processing unit and comprising:
using a computer, receiving a transaction request from the
initial authentication component together with distributed
security information, the distributed security information
containing a plurality of sections with identifying information
about an authenticated client end-user identity as known at the
initial authentication component and a mask specifYing a subset
of the sections to be used by the subsequent processing
component to determine a client end-user identity; and
using a computer, responsive to receiving the transaction
request from the initial authentication component, generating a
lookup key from the subset of the sections of the distributed
security information specified by the mask and using the
generated lookup key to determine whether a local authenticated
runtime security context already exists in a local cache for the
client end-user initiating the transaction request.
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Appeal2015-001922
Application 12/351,291
The Examiner's Rejection
Claims 3-11 and 14--22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Botz et al. (US 2006/0288228 Al; Dec. 21, 2006)
("Botz"); Ates (EP 1 850 297 A2; pub. Oct. 31, 2007) ("Ates"); and Savarda
et al. (US 2003/0196081 Al; Oct. 16, 2003) ("Savarda"). Final Act. 5-18.
Issues on Appeal
1. Did the Examiner err in finding the combination of Botz, Ates,
and Savarda teaches or suggests "a mask specifying a subset of the sections
to be used by the subsequent processing component to determine a client
end-user identity," as recited in claim 7?
2. Did the Examiner err in finding the combination of Botz, Ates,
and Savarda teaches or suggests "generating a lookup key from the subset of
the sections of the distributed security information specified by the mask,"
as recited in claim 7?
ANALYSIS2
Appellants contend the Examiner erred in finding Ates teaches or
suggests providing a mask to specify a subset of sections of distributed
security information used to determine a client end-user identity. App.
Br. 8-10; Reply Br. 2. In particular, Appellants assert Ates' bitmap (Issuer
Internet Proprietary Bitmap, or IIPB) is used to control which bytes of a
2 Throughout this Decision, we have considered the Appeal Brief, filed
May 19, 2014 ("App. Br."); the Reply Brief, filed November 18, 2014
("Reply Br."); the Examiner's Answer, mailed on September 18, 2014
("Ans."); and the Final Office Action ("Final Act."), mailed on
December 19, 2013, from which this Appeal is taken.
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Application 12/351,291
concatenated set of authentication fields are sent back to an issuer in a card
authentication system. App. Br. 8 (citing Ates i-fi-1 63---68). Appellants
contend the authentication fields of Ates "may be derived in part from the
cardholder's identity [but] they are not used to determine that identity as
claimed." App. Br. 9. Further, Appellants argue Ates' masked data is
authentication information, not identification information. App. Br. 9.
In response, the Examiner explains Ates is used to teach "the
application of a mask to specify a subset of the sections." Ans. 3. The
Examiner relies on Botz-not Ates-as teaching the distributed security
information containing a plurality of sections with identifying information of
the end-user. See Final Act. 11. Additionally, the Examiner states "how the
masked subset of the section is used to determine identity is not specified in
the claim beyond what has already been disclosed by Botz." Ans. 4.
Non-obviousness cannot be established by attacking references
individually where, as here, the ground of unpatentability is based upon the
teachings of a combination of references. In re Keller, 642 F.2d 413, 426
(CCP A 1981 ). Rather, the test for obviousness is whether the combination
of references, taken as a whole, would have suggested the patentee's
invention to a person having ordinary skill in the art. In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
We are not persuaded of Examiner error because Appellants'
arguments are not responsive to the Examiner's rejection and attack the
references separately, whereas the Examiner's rejection (for this disputed
limitation) relies on the combined teachings of Botz and Ates. Specifically,
the Examiner finds, and we agree, Botz teaches, inter alia, "distributed
security information containing a plurality of sections with identifying
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Appeal2015-001922
Application 12/351,291
information about an authenticated client end-user identity," as recited in
claim 7. Final Act. 11 (citing Botz, i-f 7, Figs. 3 and 7B). The Examiner
relies on Ates to teach masking a subset of the sections of security
information (which comprise with identifying information about an
authenticated client end-user identity) provided by Botz. Ans. 3; see also
Final Act. 13 (citing Ates i-fi-1 63---65). Further, as Appellants admit, "if one
uses a mask to specify a subset of data to be used for a particular purpose, it
is apparent that the data used for the purpose will be the subset specified by
the mask." App. Br. 10. Thus, the Examiner finds, and we agree, the
combined teachings of Botz and Ates teaches or suggests "a mask specifying
a subset of the sections to be used by the subsequent processing component
to determine a client end-user identity," as recited in claim 7.
Regarding the claimed limitation of "generating a lookup key from the
subset of the sections of the distributed security information specified by the
mask," Appellants concede Savarda teaches "masking a value and hashing
the masked value to generate an index into a database." App. Br. 9.
However, Appellants contend there is no motivation to apply the teachings
of Savarda to the combined teachings of Botz and Ates, as proffered by the
Examiner. App. Br. 9; Reply Br. 2-3.
As the Examiner explains, "all the claimed elements were known in
the prior art and one skilled in the art could have combined the elements as
claimed by known methods with no change in their respective functions and
the combination would have yielded predictable results to one of ordinary
skill in the art at the time of the invention." Ans. 4; see also Final Act. 13
("generating a look up [sic] key was well known in the art at the time the
invention was made."). The Examiner relies on Savarda, for example, to
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Application 12/351,291
show that generating a lookup key was well known. Final Act. 13 (citing
Savarda i-f 39).
We agree with the Examiner. "The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results." Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1161 (Fed. Cir. 2007) (quoting KSR Int'! Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007)). Further, Appellants admit "the operations
recited in applicants' claims are trivial, and the results of these operations
would be predictable to one of ordinary skill in the art." App. Br. 10.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of claim 7 and, for
similar reasons, the rejection of independent claims 17, 21, and 22, which
recite similar limitations and which were not argued separately. See App.
Br. 7-11. Additionally, we sustain the Examiner's rejection of dependent
claims 3---6, 8-11, 14--16, and 18-20, which were not argued separately. See
App. Br. 7-11.
DECISION
We affirm the Examiner's decision to reject claims 3-11 and 14--22.
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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