Ex Parte Himmel et al

Patent Trial and Appeal Board

Apr 17, 2013

11764829 (P.T.A.B. Apr. 17, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARIA AZUA HIMMEL, HERMAN RODRIGUEZ,
NEWTON JAMES SMITH, JR., and CLIFFORD JAY SPINAC
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Appeal 2010-009957
Application 11/764,829
Technology Center 2400
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Before DENISE M. POTHIER, JEREMY J. CURCURI, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-37. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 1-37 are rejected on the ground of non-statutory obviousness-
type double patenting as unpatentable over claims 1 and 2 of Himmel ‘264
(US 7,441,264 B2; issued Oct. 21, 2008). Ans. 3.
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Application 11/764,829

2
Claims 1-37 are rejected on the ground of non-statutory obviousness-
type double patenting as unpatentable over claims 1-4 of Himmel ‘986 (US
7,577,986 B2; issued Aug. 18, 2009). Ans. 4.1
Claims 1-37 are rejected under 35 U.S.C. § 103(a) as obvious over
Russell (US 2002/0157016 A1; published Oct. 24, 2002 and filed Apr. 19,
2001) and Wood (US 6,609,198 B1; issued Aug. 19, 2003 and filed Aug. 5,
1999). Ans. 5-11.
We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to securing valid authentication and
authorization for access to computer resources and other items. Spec. 1:20-
21. Claim 1 is illustrative and reproduced below:
1. A method of controlling access to a resource, the method
comprising:
creating a security object in dependence upon user-selected security
control data types, the security object comprising security control data and at
least one security method;
receiving a request for access to the resource;
receiving security request data; and

1 The Final Rejection mailed July 21, 2009, states claims 1-37 are
provisionally rejected on the ground of non-statutory obviousness-type
double patenting as unpatentable over claims 16, 18, 31, and 33 of
copending Application No. 12/141,430. Fin. Rej. 5. Application No.
12/141,430 issued on August 18, 2009, as US 7,577,986 B2, and claims 1-4
of the issued United States Patent are identical to claim 16, 18, 31, and 33 of
Application No. 12/141,430 when the Final Rejection was mailed. The
Answer mailed April 1, 2010, restates the provisional rejection from the
Final Rejection. Ans. 4. The rejection is no longer provisional, and for
clarity, we refer to claims 1-4 of the issued United States Patent.
Appeal 2010-009957
Application 11/764,829

3
determining access to the resource in dependence upon the security
control data and the security request data.

ANALYSIS
THE OBVIOUSNESS-TYPE DOUBLE PATENTING REJECTIONS
The Final Rejection acknowledges that Appellants have filed terminal
disclaimers in order to overcome the double patenting rejections, but notes
that the terminal disclaimers have not been approved by the Office. Fin. Rej.
2. The Examiner further states that “[u]pon approval of the terminal
Disclaimer[, the] examiner will withdraw the Double patenting rejection.”
Id. In the record before us, we see no indication that the obviousness-type
double patenting rejections have been withdrawn.
Appellants’ Appeal Brief does not present any persuasive arguments
or explanation as to why claims 1-37 are patentable over claims 1 and 2 of
Himmel ‘264, or why claims 1-37 are patentable over claims 1-4 of Himmel
‘986. See Br. 4-8. However, we note that a terminal disclaimer was filed on
May 12, 2009, with respect to Application No. 10/179,328 (Himmel ‘264),
and a terminal disclaimer was filed on May 12, 2009, with respect to
Application No. 12/141,430 (Himmel ‘986). Both terminal disclaimers were
approved by the Office on May 18, 2009.
Because the Examiner indicates that the double patenting rejections
will be withdrawn upon approval, we do not sustain the Examiner’s rejection
of claims 1-37 on the ground of non-statutory obviousness-type double
patenting over claims 1 and 2 of Himmel ‘264. We also do not sustain the
Examiner’s rejection of claims 1-37 on the ground of non-statutory
obviousness-type double patenting over claims 1-4 of Himmel ‘986. If the
Examiner has another basis for disapproval, he can reinstate the rejections.
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Application 11/764,829

4
THE OBVIOUSNESS REJECTION
We agree with the Examiner’s position, with regard to claim 1, that
Russell and Wood collectively teach all claim limitations. Ans. 5. The
Examiner relies on Russell for all recited limitations except for a security
object in dependence upon user-selected security control data types, for
which the Examiner relies on Wood. Ans. 5 (citing Russell, ¶¶ 24-25; Wood,
col. 12, ll. 5-10). The Examiner reasons it would have been obvious to one
of ordinary skill in the art at the time of the invention to modify Russell to
include a security object in dependence upon user-selected security control
data types in order to allow the user to select from the suitable authentication
schemes and to provide an associated login credential. Ans. 5 (citing Wood,
col. 11, ll. 62-64).
Appellants argue Russell’s security object includes a file identifier, an
encryption key, and a permission code. Appellants argue Russell’s security
object does not include security control data and at least one security
method. Br. 5-6.
Appellants further argue Wood does not teach creating a security
object in dependence upon user-selected security control data types, the
security object including security control data and at least one security
method. Br. 6-7.
In response, the Examiner explains Russell’s security object includes
a permission code that corresponds to the recited security control data. Ans.
12 (citing Russell, ¶¶ 22, 25). We agree with the Examiner. The Examiner
further explains that the recited at least one security method is non-
functional descriptive material which is not functionally related to the other
limitations of claim 1. Ans. 12-13. Again, we agree with the Examiner.
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5
Regarding Appellants’ arguments (Br. 5-7) that Russell and Wood do
not teach the recited security object including security control data and at
least one security method, we find these arguments unavailing. Russell’s
security object’s permission code teaches the recited security control data
and “at least one security method,” both of which merely describe the
content of data (i.e., content of the security object). Merely reciting what
data represents constitutes non-functional descriptive material as it does not
further limit the claimed invention either functionally or structurally. In
short, no functional relationship exists between the recited method steps or
security object and the at least one security method such that the claimed
steps or security object have been given a property they would not have had
if either (1) the steps or data or (2) the security object or data changed. The
“at least one security method” therefore constitutes non-functional
descriptive material as the at least one security method does not further limit
the claimed invention functionally. Such non-functional descriptive material
does not patentably distinguish over the prior art that otherwise renders the
claims unpatentable.2
Given the limitation of “at least one security method” has no
patentable weight, neither Russell nor Wood alone or collectively need teach
the recited “one security method” as Appellants assert. Br. 5-7. Yet, as
noted above and as Appellants admit (Br. 5), Russell teaches a security
object with at least three types of data (e.g., file identifier, an encryption key,
and a permission code).

2 See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also Ex parte
Nehls, 88 USPQ2d 1883, 1887-89 (BPAI 2008) (precedential) (discussing
cases pertaining to non-functional descriptive material).
Appeal 2010-009957
Application 11/764,829

6
Regarding Appellants’ arguments (Br. 6-7) that Wood does not teach
creating a security object in dependence upon user-selected security control
data types, the security object including security control data and at least one
security method, we also find these arguments unavailing as the Examiner
does not rely on Wood for the security control data and at least one security
method. The Examiner relies on Wood for the purpose of teaching creating a
security object in dependence upon user-selected security control data types.
Ans. 5 (citing Wood, col. 12, ll. 5-10). Further, the Examiner reasonably
explains why it would have been obvious to modify Russell to include a
security object in dependence upon user-selected security control data types.
Ans. 5 (citing Wood, col. 11, ll. 62-64); see also Ans. 15-16 (citing Wood,
col. 2, ll. 40-47; col. 6, ll. 14-22; col. 11, l. 60 – col. 12, l. 10; Russell, ¶ 8).
We are not persuaded of error.
We are not persuaded that the Examiner has erred in rejecting claim 1.
We, therefore, sustain the Examiner’s rejection of claim 1, as well as claims
2-37, which are not argued separately.

ORDER
The Examiner’s decision rejecting claims 1-37 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).

AFFIRMED

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