Ex Parte Hinton et al

Patent Trial and Appeal Board

Jun 24, 2013

10896351 (P.T.A.B. Jun. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HEATHER MARIA HINTON, BRIAN JAMES TURNER,
ANTHONY SCOTT MORAN, SHANE WEEDEN,
IAN MICHAEL GLAZER, GAVIS GEORGE BRAY,
and VENKAT RAGHAVAN
____________

Appeal 2010-011609
Application 10/896,351
Technology Center 2400
____________

Before KRISTEN L. DROESCH, KALYAN K. DESHPANDE and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2010-011609
Application 10/896,351

2
STATEMENT OF THE CASE
The Appellants seek review under 35 U.S.C. § 134(a) of a final
rejection of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b). We
REVERSE and enter a new ground of rejection under 37 C.F.R. § 41.50(b).
BACKGROUND
The Appellants’ disclosed invention is related to a method and a
system in which federated domains interact within a federated environment.
Domains within a federation can initiate federated single-sign-on operations
for a user at other federated domains. A point-of-contact server within a
domain relies upon a trust proxy within the domain to manage trust
relationships between the domain and the federation. When a user is
provisioned at a particular federated domain, the federated domain can
provision the user to other federated domains within the federated
environment. A provision operation may include creating or deleting an
account for a user, pushing updated user account information including
attributes, and requesting updates on account information including
attributes. Spec. 5; Abs.
Claim 1 is illustrative and is reproduced below (disputed limitation in
italics):
1. A data processing system comprising:
a point-of-contact server, wherein the point-of-contact
server receives incoming requests for access to resources
identifiable within a domain, wherein the domain is associated
with a plurality of domains within a federated computing
environment;
a trust proxy, wherein the trust proxy generates one or
more authentication assertions and/or attribute assertions sent
from the domain and validates one or more authentication

Appeal 2010-011609
Application 10/896,351

3
assertions and/or attribute assertions received at the domain;
and
an application server that interfaces with the point-of-
contact server and the trust proxy, in response to provisioning a
user at the domain, for initiating provisioning of the user in at
least one other domain in the plurality of domains within the
federated computing environment by sending a provisioning
request;
the provisioning request associated with a provisioning
operation being one of: creation of a user record, pushing
updated user attributes to a user record, pulling updated user
attributes for a user record, deletion of a user account, and
unlinking of one or more user accounts.
Rejection
Claims 1-25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gupta (U.S. 6,763,468 B2, Jul. 13, 2004), Barriga-Caceres
(U.S. 2003/0163733 A1, Aug. 28, 2003) and Kappes (U.S. 2005/0111466
A1, May 26, 2005).
ISSUE
Did the Examiner err in finding that the combination of Gupta,
Barriga-Caceres and Kappes teach or suggest “in response to provisioning a
user at the domain, for initiating provisioning of the user in at least one other
domain in the plurality of domains within the federated computing
environment by sending a provisioning request,” as recited in claim 1, and
similarly recited in claims 11 and 17?
ANALYSIS
We have reviewed the Examiner’s rejection in light of the Appellants’
arguments in the Appeal Brief presented in response to the Final Office
Action and the Arguments in the Reply Brief presented in response to the

Appeal 2010-011609
Application 10/896,351

4
Answer. We agree with the Appellants’ conclusions. We highlight and
address specific findings and arguments for emphasis as follows.
We agree with the Appellants that the Examiner erred in finding that
Gupta teaches or suggests “in response to provisioning a user at the
domain . . . initiating provisioning of the user in at least one other domain by
sending a provisioning request.” App. Br. 13-16. We agree with Appellants
that Gupta’s descriptions of: (1) a local network 122, local server 123,
network link 121, and Internet Service Provider (ISP) 124; and (2) a log-in
server that provides authentication services to web application servers;
specifically relied upon by the Examiner (Ans. 5, 25, 26, 28, 29 (citing col.
8, ll. 44-51; col. 11, ll. 9-13)) do not provide a sufficient factual basis for
finding that Gupta teaches or suggests initiating provisioning of the user to
some other domain (i.e., a second domain). App. Br. 15, l. 16 through 16, l.
2; Reply Br. 3, l. 18 through 4, l. 12. As applied by the Examiner, Barriga-
Caceres and Kappes do not remedy the deficiencies of Gupta. For at least
this reason, we are constrained to reverse the Examiner’s rejection of claims
1-25 as being obvious over Gupta, Barriga-Caceres and Kappes.
NEW GROUND OF REJECTION
We enter a new ground of rejection pursuant to our authority under 37
C.F.R. § 41.50(b). Claims 17-22 and 25 are rejected under 35 U.S.C. § 101
as being directed to non-statutory subject matter. Independent claim 17 is
reproduced below (emphases added):
17. A computer program product on a computer
readable medium for use in a data processing system for
providing federated functionality within the data processing
system, the computer program product holding computer

Appeal 2010-011609
Application 10/896,351

5
program instructions which when executed by the data
processing system perform a method comprising:
receiving an incoming request at a point-of-contact server
to provision a user within a domain, wherein the domain is
associated with a plurality of domains within a federated
computing environment;
validating at a trust proxy one or more security assertions
received at the domain through the point-of-contact server; and
responsive to provisioning the user within the domain, initiating
a provisioning operation in at least one other domain in the
plurality of domains within the federated computing
environment by sending a provisioning request;
the provisioning request associated with a provisioning
operation being one of: creation of a user record, pushing
updated user attributes to a user record, pulling updated user
attributes for a user record, deletion of a user account, and
unlinking of one or more user accounts.

In accordance with § 101, there are four categories of patent eligible
subject matter: processes, machines, manufactures and compositions of
matter. See Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010). Claim 17 is
directed to “a computer program product” or a computer program per se and
does not recite a process, machine, manufacture or composition of matter.
Claim 17 does no more than provide a description of how the computer
program, when executed by the data processing system, is intended to
function. See U.S. Patent & Trademark Office, Interim Examination
Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C.
§ 101, Aug. 2009, at 2, available at
http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-
25_interim_101_instructions.pdf (providing a computer program per se as

Appeal 2010-011609
Application 10/896,351

6
an example of a claim not directed to one of the four patent-eligible subject
matter categories).
Claims 18-22 and 25, which depend from claim 17, are also directed
to non-statutory subject matter as these claims merely provide additional
description of how the program is intended to function.
Although we decline to reject every claim under our discretionary
authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does
not mean the remaining claims are patentable. Rather, we leave the
patentability determination of these claims to the Examiner. See MPEP
§ 1213.02.
DECISION
We REVERSE the rejection of claims 1-25 under 35 U.S.C. § 103(a)
as unpatentable over Gupta, Barriga-Caceres and Kappes.
We enter a new ground of rejection of claims 17-22 and 25 under 35
U.S.C. § 101.
TIME PERIOD
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 CFR § 41.50(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:

Appeal 2010-011609
Application 10/896,351

7
(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 proceeding 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)(1)(iv).
REVERSED
37 C.F.R. § 41.50(b)

ELD