Ex Parte Hinton

Patent Trial and Appeal Board

Sep 14, 2018

12243014 (P.T.A.B. Sep. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/243,014 10/01/2008
75916 7590
IBM AUS IPLAW (GLF)
c/o Garg Law Firm, PLLC
11910 Sendera Ln.
Richmond, TX 77407
09/18/2018
FIRST NAMED INVENTOR
Heather Maria Hinton
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.
AUS920080436US 1 9546
EXAMINER
ANDERSON, MICHAEL D
ART UNIT PAPER NUMBER
2433
NOTIFICATION DATE DELIVERY MODE
09/18/2018 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):
dpandya@garglaw.com
uspto@garglaw.com
garglaw@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEATHER MARIA HINTON 1
Appeal2018-000852
Application 12/243,014
Technology Center 2400
Before ROBERT E. NAPPI, JOHN A. JEFFERY, and
NORMAN H. BEAMER, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
rejection of claims 1 through 35.
We reverse and enter a new rejection.
1 According to Appellant, the real party in interest is International Business
Machines Corporation. App. Br. 2.
Appeal2018-000852
Application 12/243,014
INVENTION
Appellant's invention relates to verifying and enforcing certificate use
in a network. See Abstract.
Claim 1 is illustrative of the invention and reproduced below:
1. A computer implemented method for verifying and
enforcing certificate use, the computer implemented method
compnsmg:
receiving, at a certificate validation proxy, using a
processor and a memory in a computer, a certificate from a
sender;
validating the certificate at the certificate validation
proxy, by determining whether the certificate is invalid, before
communicating a message associated with the certificate to a
receiver;
selecting at the certificate validation proxy, responsive to
the certificate being invalid, a policy based on a type of
invalidity of the certificate;
taking an action at the certificate validation proxy to
enforce the policy for using the certificate.
REJECTIONS AT ISSUE
The Examiner has rejected claims 1, 12, 23, and 31 under 35 U.S.C.
§ 112 second paragraph as being indefinite. Non-Final Act. 3--4.2
2 Throughout this Decision we refer to the Appeal Brief, filed February 4,
2014 (hereinafter "App. Br."), Reply Brief, filed July 9, 2014 (hereinafter
"Reply Br."), the Non-Final Action (hereinafter "Non-Final Act.") mailed
September 13, 2013 and the Examiner's Answer, mailed on June 9, 2014
(hereinafter "Answer").
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Appeal2018-000852
Application 12/243,014
The Examiner has rejected claims 1 through 35 under 35 U.S.C.
§ I03(a) as unpatentable over Okamura (US 2003/0237004 Al; Dec. 25,
2003) and Brabson (US 7,984,479 B2; July 19, 2011). Non-Final Act. 5-21.
ISSUES
Indefiniteness Rejection
Appellant argues, on pages 1 7 through 18 of the Appeal Brief and
page 7 of the Reply Brief, that the Examiner's indefiniteness rejection of
independent claims 1, 12, 23, and 31 in error. The dispositive issue
presented by these arguments is whether the Examiner erred in finding that
independent claims 1, 12, 23, and 31 are indefinite as "there is no clear
definition of what the [A]pplicant regards as 'a policy based type of
invalidity' in the [S]pecification." Non-Final Act. 3; Answer 4.
Obviousness rejection
Appellant argues, on pages 10 through 15 of the Appeal Brief and
pages 2 through 6 of the Reply Brief, that the Examiner's obviousness
rejection of independent claims 1, 12, 23, and 31 in error. The dispositive
issue presented by these arguments is whether the Examiner erred in finding
the combination of Okamura and Brabson teaches selecting, responsive to
the certificate being invalid, a policy based upon a type of invalidity of the
certificate as recited in each of the independent claims 1, 12, 23, and 31.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
contentions that the Examiner has erred. Further, we have reviewed the
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Appeal2018-000852
Application 12/243,014
Examiner's response to Appellant's arguments. We agree with Appellant's
contention that the Examiner erred in rejecting independent clams 1, 12, 23,
and 31 under 35 U.S.C. § 112, second paragraph and claims 1 through 35
under 35 U.S.C. § 103.
Indefiniteness Rejection
Appellant argues that the claims do not recite "a policy based type of
invalidity," as stated in the Examiner's rejection. App. Br. 17; Reply Br. 7.
Rather, Appellant points out that the claims recite "selecting ... , responsive
to the certificate being invalid, a policy based on a type of invalidity of the
certificate" and, thus, the claim is clear that the policy selection is based
upon a determination of the certificate being invalid, and the type of
invalidity. App. Br. 17.
The Examiner, in response to Appellant's arguments, repeats that
there is no definition of "a policy based type of invalidity." Answer 4.
Further, the Examiner states "term invalid in its simplest understanding is
defined as 'not valid.' What is the policy? How does this policy determine
invalidity of the certificate? Invalidity can be defined numerous ways."
Answer4-5.
We concur with Appellant - the Examiner is misreading the claims.
The claims do not recite "a policy based type of invalidity" but rather a
policy based upon a type of invalidity. While we concur with the Examiner
that the term invalidity is simply defined as not valid and there are many
ways of determining invalidity, that does not make the claim indefinite. The
claimed "type of invalidity" is just a category or subset of these ways of
determining invalidity. Thus, Appellant has persuaded us the Examiner
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Application 12/243,014
erred in rejecting claims 1, 12, 23, and 31 as being indefinite and we do not
sustain this rejection by the Examiner.
Obviousness rejection
Appellant argues that each of the independent claims recites a
limitation directed to selecting, responsive to the certificate being invalid, a
policy based upon a type of invalidity of the certificate, which limitation is
not taught by the combination of Okamura and Brabson. App Br. 14.
Appellant argues that Brabson, the reference relied upon by the Examiner to
teach this limitation, specifies conditions to determine whether a certificate
is valid, but does not teach selecting a policy in response to a certificate
being invalid and based upon the type of invalidity. App. Br. 14--15.
The Examiner responds to these arguments by the Appellant stating:
Brabson illustrates ([Fig.3 Rule 320 Block) conditions
under which certificates will be blocked and treated as if they
are invalid. rule 310 specifies that an unknown server certificate
will be permitted if the certificate has a valid time period (that
is, the current date time is within the certificate's validity period
field 150, where the current date and time is referred to in the
rule as "ValidTimePeriod") and its issuer is "Company X["]:
Example rule 320 specifies that all certificates are to be
blocked.
Answer 4. We concur with this description of the policy depicted in
Brabson's Figure 3; however, we do not find that this discusses selecting a
policy based upon determination of invalidity or that the policy is selected
based upon the type of invalidity. Rather, it just depicts two policies to
determine invalidity. Thus, the Examiner has not demonstrated that the
combination of Okamura and Brabson teach selecting, responsive to the
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Application 12/243,014
certificate being invalid, a policy based upon a type of invalidity of the
certificate as recited in each of the independent claims. Accordingly we do
not sustain the Examiner's obviousness rejection of independent claims 1
through 35.
New Rejection under 35 USC§ 101
We also enter a new ground of rejection against claims 12 through 22
under 35 U.S.C. § 101. The claims recite "a computer usable program
product comprising a computer usable medium including." Appellant's
Specification identifies that such a computer usable program or computer
readable medium includes a propagation medium (i.e. a signal). See Spec.,
paras. 116-118. Thus, we do not construe the claim the term "computer
readable storage medium" to be limited to only non-transitory media, and we
consider the claim broad enough to encompass a transitory signal. A signal
is not within one of the four categories of patentable subject matter as
defined under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed.
Cir. 2007); see also Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013)
(precedential). Accordingly, we now reject claims 12 through 24 under 35
U.S.C. § 101 as being drawn to subject matter that is not eligible for patent
protection under 35 U.S.C. § 101.
DECISION
We reverse the Examiner's rejections of claims 1 through 35 under
35 U.S.C. § 103 and under 35 U.S.C. § 112 second paragraph.
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Application 12/243,014
We enter a new rejection of claims 12 through 22 under 35 U.S.C.
§ 101.
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). This section provides that "[a] new ground of
rejection ... shall not be considered final for judicial review."
37 C.F.R. § 4I.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record ....
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).
REVERSED
37 C.F.R. § 4I.50(b)
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