Ex Parte Horn et al

Patent Trial and Appeal Board

Jun 15, 2016

12986895 (P.T.A.B. Jun. 15, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/986,895 01/07/2011 Deric S. Horn 04860.P10083 7335
45217 7590 06/16/2016
APPLE INC./BSTZ
BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
1279 OAKMEAD PARKWAY
SUNNYVALE, CA 94085-4040
EXAMINER
ALMEIDA, DEVIN E
ART UNIT PAPER NUMBER
2492
MAIL DATE DELIVERY MODE
06/16/2016 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DERIC S. HORN, SOREN CARLSON SPIES,
BRADLEY DAVID STRAND, RUSSELL DEAN REECE, and
JONATHAN DAVID CALLAS
____________

Appeal 2015-000038
Application 12/986,895
Technology Center 2400
____________

Before KRISTEN L. DROESCH, LINZY T. McCARTNEY, and
MATTHEW J. McNEILL, Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1‒4, 6‒8, 10‒13, 15, and 17‒26.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellants, the real party in interest is Apple Inc. App. Br. 3.
2 Claims 5, 9, and 14 are canceled. App. Br. 27‒29. Claim 16 is also
canceled (App. Br. 29), but Appellants incorrectly included it in the heading
of Appellants’ argument. App. Br. 9.
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STATEMENT OF THE CASE
Introduction
Appellants’ present application relates to decrypting a disk containing
an operating system and authenticating a user of the operating system.
Abstract. Claim 1 is illustrative of the subject matter on appeal and reads as
follows:
1. A method of authenticating a user logging in to an
operating system stored on an encrypted drive, the method
comprising:
presenting a login prompt to a user;
receiving credentials from the user via the login prompt;
storing the credentials in volatile memory responsive to
receiving the credentials from the user via the login prompt;
decrypting an encrypted volume key using the credentials;
accessing the operating system on the encrypted drive
based on at least the volume key;
starting the operating system;
providing the credentials to the operating system from
volatile memory after starting the operating system; and
authenticating the user on the operating system based on
at least the credentials received from the user via the login
prompt and provided to the operating system via volatile
memory, without storing the credentials in nonvolatile memory.

The Examiner’s Rejections
Claims 1‒3, 6‒8, 10‒12, and 15‒263 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Pandya (US 2007/0282757 A1; Dec. 6, 2007)
and Morimoto (US 2009/0013403 A1; Jan. 8, 2009). See Final Act. 2‒7.

3 The statement of the rejection does not list claims 25 and 26, but these
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Claims 4 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pandya, Morimoto, and Chen (US 2006/0271696 A1;
Nov. 30, 2006). See Final Act. 8.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. We disagree with Appellants’
conclusions. Except as noted below, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the Action from which this appeal
is taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellants’ Appeal Brief. We concur with the
conclusions reached by the Examiner. We highlight the following additional
points.
Claim 1
Appellants argue the Examiner erred in rejecting claim 1 because
Pandya stores the decryption key unencrypted in a lockbox, while the
claimed invention requires “decrypting an encrypted volume key using the
credentials.” App. Br. 12. We disagree. The Examiner finds, and we agree,
that Pandya teaches a lockbox, which is an encrypted container that stores a
disk decryption key. Ans. 3 (citing Pandya ¶¶ 30‒31). A lockbox key is
derived from the user credentials, and this key is used to decrypt the lockbox
to access the disk decryption key. Id. Accordingly, we agree with the
Examiner that Pandya teaches decrypting the lockbox and its contents (the
claimed “encrypted volume key”) using the user’s credentials.

claims are addressed in the body of the rejection. See Final Act. 2, 7.
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Appellants also argue the Examiner erred because Morimoto does not
teach or suggest “volatile memory.” App. Br. 12‒14, Reply Br. 3‒4. We
disagree. The Examiner finds, and we agree, that Morimoto teaches storing
user credentials in Random Access Memory (RAM). Ans. 4, Final Act. 3
(citing Morimoto ¶ 32); see also Morimoto ¶ 20. Appellants acknowledge
that Morimoto teaches storing credentials in RAM, but argue that Morimoto
does not specify whether the RAM is volatile or non-volatile. App. Br. 13‒
14. Appellants’ argument is not persuasive because an ordinarily skilled
artisan would understand that RAM is frequently, if not usually, volatile
memory. Accordingly, Morimoto’s disclosure that the user credentials are
stored in RAM would teach or suggest storing the user credentials in volatile
memory, which is further supported by Morimoto’s disclosure that the RAM
“temporarily stores the entered password.” Morimoto ¶ 20.
Appellants further argue an ordinarily skilled artisan would not have
been motivated to combine Morimoto’s RAM storage with Pandya because
Pandya teaches away from using volatile memory, volatile memory would
defeat the intended purpose of Pandya, and the proposed modification is not
sufficiently tied to the alleged benefit. App. Br. 15‒16. Appellants’
arguments have not persuaded us that the Examiner erred. The Examiner
finds, and we agree, that an ordinarily skilled artisan would have been
motivated to store Pandya’s credentials in Morimoto’s volatile memory
because “RAM needs power to keep data saved [and] the entered password
. . . would be deleted when power is shut off so that third parties do not get
access to the passwords.” Ans. 4.
Appellants’ argument that this combination defeats the intended
purpose is unpersuasive because the purpose of Pandya is to securely login
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to an operating system stored on an encrypted disk using a single login. See
Pandya Abstract. Storing the user credentials in volatile memory instead of
nonvolatile memory does not defeat this purpose—to the contrary, it
enhances this purpose by adding an additional protection to the user’s
credentials, as noted by the Examiner. Ans. 4.
Appellants’ argument that Pandya teaches away by teaching storing
the user credentials in “secure storage” is similarly unpersuasive. Moreover,
Appellants have not explained how Pandya criticizes, discredits, or
otherwise discourages the claimed solution. See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than
one alternative does not constitute teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed”).

Claim 15
Claim 15 is an independent system claim with similar limitations to
claim 1, but it additionally recites “wherein the unified boot-time login
prompt is updated to graphically simulate a full login prompt of the
operating system, the updated login prompt including at least one graphical
element that is specific to the operating system.” Appellants argue the
Examiner erred in rejecting claim 15 as unpatentable over Pandya and
Morimoto because the combination does not teach or suggest this limitation.
See App. Br. 17‒20, Reply Br. 4. In particular, Appellants argue the
combination of Pandya and Morimoto does not teach or suggest a “unified
boot-time login prompt [that] provides a uniform and consistent login
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system that appears to a user to be integrated with the operating system and
not part of pre-operating system stage.” App. Br. 19.
Appellants’ argument has not persuaded us that the Examiner erred.
Appellants’ argument relies on language not recited in the claims, arguing
that Pandya does not teach a unified boot-time login prompt “that appears to
be integrated with the operating system and not part of pre-operating system
stage.” Id. In addition, Pandya teaches “a standard interface and third-party
collected credentials logon functionality may be built into an OS . . . so that
any pre-OS credential provider could enable single-sign-on without needing
to write a custom interface.” Pandya ¶ 25. Pandya’s disclosure that the pre-
OS credential provider could enable single-sign-on without needing to write
a custom interface suggests that the standard interface (i.e., the OS interface)
is available in the pre-OS logon. Accordingly, Appellants have not
identified error in the Examiner’s finding that Pandya teaches the disputed
limitation.

Claim 21
Claim 21 depends from claim 20 and additionally recites “wherein the
login prompt simulates a full login prompt of the operating system and
wherein the credentials are removed from the volatile memory after
authenticating the user.” Appellants present two arguments for claim 21.
The first argument, directed to the first wherein clause (the “login prompt”
clause), relies on the same reasoning as the argument for claim 15. App. Br.
21. Accordingly, we are not persuaded for the same reasons set forth above
with respect to claim 15. Appellants’ second argument, directed to the
second wherein clause (the “volatile memory” clause), relies on the same
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reasoning as the argument for claim 1. Id. Accordingly, we are not
persuaded for the same reasons set forth above with respect to claim 1.

Claims 4 and 13
Claims 4 and 13 are dependent claims, which Appellants argue as a
group with claim 13 as the representative claim. App. Br. 22. Appellants
argue the Examiner erred in rejecting claim 13 because the Examiner failed
to articulate sufficient rationale as to why an ordinarily skilled artisan would
have been motivated to combine Pandya, Morimoto, and Chen. App. Br.
22‒25. In particular, Appellants argue Chen is non-analogous art because it
relates to text messaging and instant messaging on wireless devices. Id.
Art is considered analogous if it satisfies either of two tests: “(1)
whether the art is from the same field of endeavor, regardless of the problem
addressed and, (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved.” In re Klein, 647 F.3d 1343,
1348 (Fed. Cir. 2011).
The Examiner finds Chen is analogous art because it relates to
“logging on using credentials such as screen name and password,” which
satisfies the same field of endeavor requirement. Ans. 5.
Appellants have not persuaded us that the Examiner erred. The
Examiner finds, and we agree, that Chen relates to user login using user
credentials. Ans. 5. Specifically, Chen teaches “[a] user of the mobile
device can log in to at least one of the IM services using the MIM client, and
the mobile phone user can use the MIM client to exchange text messages
with users logged into the at least one chosen IM service.” Chen Abstract.
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Thus, Chen is directed to a unified login approach to instant messaging
clients. We agree with the Examiner that this is the same field of endeavor
as Pandya, which is directed to single sign-on to an operating system. See
Ans. 5.

CONCLUSIONS
On the record before us and in view of the analysis above, Appellants
have not persuaded us that the Examiner erred in rejecting claim 1 as
unpatentable over Pandya and Morimoto. Therefore, we sustain the
rejection of claim 1. We also sustain the rejection of claims 2, 3, 6‒8, 20,
and 22‒26, which Appellants have not argued separately. See App. Br. 9.
On the record before us and in view of the analysis above, Appellants
have not persuaded us that the Examiner erred in rejecting claim 15 as
unpatentable over Pandya and Morimoto. Therefore, we sustain the
rejection of claim 15. We also sustain the rejection of claims 10‒12 and 17‒
19, which Appellants have not argued separately. See App. Br. 9.
On the record before us and in view of the analysis above, Appellants
have not persuaded us that the Examiner erred in rejecting claim 21 as
unpatentable over Pandya and Morimoto. Therefore, we sustain the
rejection of claim 21.
On the record before us and in view of the analysis above, Appellants
have not persuaded us that the Examiner erred in rejecting claim 13 as
unpatentable over Pandya and Morimoto. Therefore, we sustain the
rejection of claim 13. We also sustain the rejection of claim 4, which
Appellants have not argued separately. See App. Br. 22.

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Application 12/986,895

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DECISION
We affirm the decision of the Examiner to reject claims 1‒4, 6‒8, 10‒
13, 15, and 17‒26.
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