Ex Parte Himmel et alDownload PDFPatent Trial and Appeal BoardApr 17, 201311764829 (P.T.A.B. Apr. 17, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte MARIA AZUA HIMMEL, HERMAN RODRIGUEZ, NEWTON JAMES SMITH, JR., and CLIFFORD JAY SPINAC ________________ Appeal 2010-009957 Application 11/764,829 Technology Center 2400 ________________ 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. Appeal 2010-009957 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. Appeal 2010-009957 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. Appeal 2010-009957 Application 11/764,829 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 babc Copy with citationCopy as parenthetical citation