Ex Parte Harada et al

Patent Trial and Appeal Board

Apr 28, 2014

11369558 (P.T.A.B. Apr. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HIDEKI HARADA, TAKESHI OHMORI, YUKINOBU
MORIYA, TAIZOH UEDA, and KUNIO OKUDA
____________

Appeal 2011-006795
Application 11/369,558
Technology Center 2400
____________

Before CAROLYN D. THOMAS, JOHN A. EVANS, and
CATHERINE SHIANG, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review2 under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of Claims 1-173 as obvious and as reciting non-
statutory subject matter. We have jurisdiction under 35 U.S.C. § 6(b).

1 The Real Party in Interest is Lenovo (Singapore) PTE LTD.
2 We have considered in this decision only those arguments Appellants
actually raised in the Briefs. Any other arguments which Appellants could
have made but chose not to make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(iv).
3 App. Br. 4.
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We AFFIRM.4
STATEMENT OF THE CASE
The claims relate to a method of limiting I/O access of a client,
particularly to a method, program, and system for limiting I/O access of a
client computer connected to a communication network. Spec. ¶ [0002].
Claims 1, 13, and 15 are independent. The claims have not been
argued separately and therefore stand or fall together. 37 C.F.R.
§ 41.37(c)(1)(iv). An understanding of the invention can be derived from a
reading of exemplary Claim 1, which is reproduced below with disputed
limitations italicized:
1. A method of limiting Input/Output (I/O) access of a
client connected to a server via a network, the method
comprising the steps of:
locking I/O access of a client, wherein said locking I/O
access includes locking a keyboard of the client to prevent input
to the client via the keyboard;
determining whether said client is connectable to a server
via a network;
in response to a determination of said client being
connectable in said determining step, unlocking I/O access of
said client in a first unlocking step by authenticating said client
by said server; and
in response to a determination of said client not being
connectable in said determining step, unlocking I/O access of
said client in a second unlocking step by connecting a portable
authentication device to said client to authenticate said client
by said portable authentication device.

4 Our decision refers to Appellants’ Appeal Brief filed November 15, 2010
(“App. Br.”); Examiner’s Answer mailed December 15, 2010 (“Ans.”); Final
Office Action mailed May 17, 2010 (“Final Rej.”); and the original
Specification filed March 7, 2006 (“Spec.”).
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References
The Examiner relies upon the prior art as follows:
Pivowar et al. US 6,308,201 B1 Pub. Oct. 23, 2001
Craft et al. US 2002/0150243 A1 Pub. Oct. 17, 2002
Childs et al. US 2004/0003190 A1 Pub. Jan. 1, 2004
Brown et al. US 2004/0010724 A1 Pub. Jan. 15, 2004
Burns US 2004/0103317 A1 Pub. May 27, 2004
Margalit et al. US 6,748,541 B1 Pub. Jun. 8, 2004
Uzura et al. US 2004/0254817 A1 Pub. Dec. 16, 2004
Crane et al. US 6,839,437 B1 Pub. Jan. 4, 2005
SAIC, "Windows 2000 Security Configuration Guide, Ver. 1.0," Oct. 2002.
The claims stand rejected as follows:5
1. Claims 13 and 14 stand rejected under 35 U.S.C. § 101 as non-
statutory subject matter. Ans. 3-4.
2. Claims 1, 2, 5, 7, and 13-15 stand rejected under 35 U.S.C. §
103(a) as obvious over Brown in view of Childs and Crane. Ans.
4-8.
3. Claim 3 stands rejected under 35 U.S.C. § 103(a) as obvious over
Brown, Childs, and Crane in further view of SAIC. Ans. 8.

5 Based on Appellants’ arguments in the Appeal Brief, we will decide the
appeal on the basis of claims as set forth below. See 37 C.F.R. §
41.37(c)(1)(vii).

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4. Claim 4 stands rejected under 35 U.S.C. § 103(a) as obvious over
Brown, Childs, and Crane in further view of Burns. Ans. 9.
5. Claim 6 stands rejected under 35 U.S.C. § 103(a) as obvious over
Brown, Childs, and Crane in further view of Craft. Ans. 9-10.
6. Claims 8, 10, 11, and 16 stand rejected under 35 U.S.C. § 103(a) as
obvious over Brown, Childs, and Crane in further view of Uzura.
Ans. 10-11.
7. Claim 9 stands rejected under 35 U.S.C. § 103(a) as obvious over
Brown, Childs, Crane, and Uzura in further view of Pivowar. Ans.
12.
8. Claims 12 and 17 stand rejected under 35 U.S.C. § 103(a) as
obvious over Brown, Childs, and Crane in further view of
Margalit. Ans. 13.

NON-STATUTORY SUBJECT MATTER
APPELLANTS’ CONTENTIONS
Appellants contend the limitation “a computer-usable storage
medium” of Claim 13 cannot reasonably be interpreted as a transitory
medium in view of Appellants’ Specification. App. Br. 5. However,
Appellants’ Specification provides for transitory storage media:
Programs defining functions on the present invention can be
delivered to a data storage system or a computer system via a
variety of signal-bearing media, which include, without
limitation . . . communication media, such as computer and
telephone networks including Ethernet, the Internet, wireless
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networks, and like network systems. It should be understood,
therefore, that such signal-bearing media when carrying or
encoding computer readable instructions that direct method
functions in the present invention, represent alternative
embodiments of the present invention.
Spec. ¶ 0061.
Because the language “non-transitory” does not appear in Claim 13,
the broadest reasonable interpretation of Claim 13 covers a transitory signal
per se. A transitory, propagating signal is not a process, machine,
manufacture, or composition of matter, and as such, cannot be patentable
subject matter. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). A
claim drawn to such a computer readable medium that covers both transitory
and non-transitory embodiments may be amended to narrow the claim to
cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101
by adding the limitation “non-transitory” to the claim. See David J. Kappos,
Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat.
Office 212 (Feb. 23, 2010).
We, therefore, affirm the non-statutory subject rejection of Claims 13
and 14.
OBVIOUSNESS
APPELLANTS’ CONTENTIONS
1. Neither Brown, Childs, nor Crane, alone or in combination with the
other applied art, teach or suggest in response to a determination of a
client being connectable to a server, unlocking I/O access of the client
in a first unlocking step by authenticating the client by the server and
in response to a determination of the client not being connectable to
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the server, unlocking I/O access of the client in a second unlocking
step by connecting a portable authentication device to the client to
authenticate the client by the portable authentication device. App. Br.
5-6.
2. The combination of Brown, Childs, and Crane is improper because:
i. Childs teaches away from using a portable credential (App. Br. 6);
and
ii. Crane does not teach connecting a portable authentication device
to the client to authenticate the client (App. Br. 6-7).
ISSUES ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 5-7),
the issues presented on appeal are:
1) Whether the Examiner erred in finding the asserted combination of
Brown, Childs, and Crane teaches or suggests the disputed claim
limitations, including unlocking I/O access of the client in a second
unlocking step by connecting a portable authentication device to the
client to authenticate the client by the portable authentication device.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions.
Claims 1-17
Appellants argue Claims 1-17 as a group. App. Br. 5, 7. Appellants
agree with the Examiner’s findings that Brown teaches locking the keyboard
I/O access of a client to prevent input to the client via the keyboard, and
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unlocking I/O access of the client in a first unlocking step by authenticating
the client by the server. App. Br. 6. Appellants also do not dispute the
Examiner’s finding that Childs discloses the local authentication of a user of
a client when remote authentication is not available. App. Br. 6.
Appellants contend, however, the combination of Crane with Brown
and Childs does not teach or suggest unlocking I/O access of the client in a
second unlocking step by connecting a portable authentication device to the
client to authenticate the client. App. Br. 6-7. Appellants argue that Childs
teaches away from using a portable authentication device, because the
locally stored credential of Childs is specific to a particular client and is not
capable of being specific to a particular user. App. Br. 6.
We agree with the Examiner’s finding that Childs teaches a portable
authentication credential that is unique to the user and is stored on a server
and a gateway. Thus, an individual user may have access to the
authentication credential at multiple client devices. Ans. 14. Because Childs
provides for user access at a variety of locations, we disagree with the
Appellants’ contention that Childs teaches away from the use of a portable
credential.
Appellants further contend that Crane does not teach unlocking I/O
access of the client by connecting a portable authentication device to the
client to authenticate the client. App. Br. 6-7. Appellants argue that Crane
teaches providing keys to a cryptographic application on a client via a smart
card, which simply decodes data and does not use the smart card to unlock
I/O access of the client. App. Br. 6-7.
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The Examiner provides two rationales for combining Crane with
Brown and Childs. First, Crane teaches storing credentials on a portable
smart card that is protected by a PIN, thus one of ordinary skill would store
the local credentials of Childs on the portable card of Crane in order to
decrease storage requirements and increase security of the credential. Ans.
14-15. Second, Childs discloses the local credential to be encrypted,
therefore one of ordinary skill in the art would utilize the key and processor
of Crane's smart card to decrypt Childs's credential for the client; again, the
result would be increased security of the credential. Ans. 14-15.
We disagree with the Appellants’ contentions that Crane, when
combined with Brown and Childs, does not teach unlocking I/O access of
the client by connecting a portable authentication device to the client to
authenticate the client. Crane was relied upon by the Examiner to teach the
concept of a portable authentication device, specifically the smart card
containing authentication keys. When combined with Childs’ preference for
multiple methods of backing-up the authentication credentials, sufficient
rationale was provided to show a skilled artisan would store a client
authentication credential on the smart card of Crane. Further, the
Examiner’s second interpretation of Childs and Crane, where a skilled
artisan would utilize the key and processor of Crane's smart card to decrypt
Childs' credential for the client, more clearly teaches the required limitation
of “unlocking I/O access of said client…by connecting a portable
authentication device [smart card of Crane] to said client to authenticate said
client [decrypt the credential of Childs] by said portable authentication
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device [smart card of Crane]” (explanation added). We agree with each of
the Examiner’s suggested rationales.
For the reasons discussed above, we affirm the rejections of Claims 1-
17 under 35 U.S.C. § 103 as obvious.

DECISION

The rejection of Claims 13 and 14 under 35 U.S.C. § 101 as non-
statutory subject matter is AFFIRMED.
The rejections of Claims 1-17 under 35 U.S.C. § 103 as obvious is
AFFIRMED.
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).

AFFIRMED

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