Ex Parte Lahteenmaki et alDownload PDFPatent Trial and Appeal BoardSep 13, 201311265710 (P.T.A.B. Sep. 13, 2013) Copy Citation 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. 11/265,710 11/02/2005 Mika Lahteenmaki 004770.01955 8003 72165 7590 09/16/2013 BANNER & WITCOFF, LTD ATTORNEYS FOR CLIENT 004770 1100 13TH STREET SUITE 1200 WASHINGTON, DC 20005-4051 EXAMINER VAUGHAN, MICHAEL R ART UNIT PAPER NUMBER 2431 MAIL DATE DELIVERY MODE 09/16/2013 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 MIKA LAHTEENMAKI and TIMO HEIKKINEN ____________________ Appeal 2011-004912 Application 11/265,710 Technology Center 2400 ____________________ Before: WILLIAM V. SAINDON, NEIL T. POWELL, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004912 Application 11/265,710 2 STATEMENT OF CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1, 7-10, 16, 18, 22, and 26. Claims 2, 5, 11, 14, 17, and 19 are cancelled. Claims 3, 6, 12, 15, 20, and 23 are objected to as being dependent upon a rejected base claim, and are indicated as being allowable if rewritten in independent form. There do not appear to be any outstanding rejections of claims 4, 13, 21, 24, and 25. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE all rejections and enter a NEW GROUND OF REJECTION. CLAIMED SUBJECT MATTER Claims 1, 10, 18, and 22 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method comprising: receiving a binary component for use by an operating system; assigning a binary component capability level and a binary component trust level to the binary component, the binary component capability level identifying capabilities of the binary component and the binary component trust level specifying trustworthiness of the binary component; providing a calling process having a calling process capability level and a calling process trust level, wherein the calling process capability level exceeds the binary component capability level; determining by the calling process that the binary component capability level is insufficient to load the binary component to trigger analysis of the binary component trust level; and in response to determining that the binary component trust level is equal to or higher than the calling process trust Appeal 2011-004912 Application 11/265,710 3 level, automatically loading the binary component by the calling process. REJECTIONS 1. Claims 9 and 26 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite;1 and 2. Claims 1, 7-10, 16, 18, and 22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Dive-Reclus (2006/0053426 A1; pub. Mar. 9, 2006) and Ginsberg (US 7,284,124 B1; iss. Oct. 16, 2007). OPINION Indefiniteness – Claims 9 and 26 The Examiner indicates that claims 9 and 26 are indefinite because claims 1 and 22 (from which claims 9 and 26 depend) recite triggering trust level analysis of the first binary component when the first binary component capability level is lower than the calling process capability level, while claims 9 and 26 simply indicate that the second binary component is not usable when the second binary component capability level is lower than the calling process capability level. Ans. 4, 11-12. Appellants challenge the Examiner’s rejection. App. Br. 7-8; Reply Br. 4. We see no basis for the Examiner’s rejection. Claims 9 and 26 recite separate method steps in addition to those recited in claims 1 and 22. The fact that the additional steps recited in claims 9 and 26 do not also recite trust level analysis being triggered does not render the claims indefinite. We do not sustain the rejection of claims 9 and 26. 1 The Examiner withdrew the rejection of claims 4, 13, 21, 24, and 25 under 35 U.S.C. § 112, second paragraph, as indefinite. Ans. 3. Appeal 2011-004912 Application 11/265,710 4 Obviousness – Claims 1, 7-10, 16, 18 and 22 The Examiner finds that Dive-Reclus discloses the majority of features recited in claims 1, 10, 18, and 22, but does not explicitly disclose triggering analysis of the binary component trust level when the binary component capability level is below the calling process capability level to determine if the binary component trust level is at least equal to the calling process trust level in order to automatically load the binary component. Ans. 5-6. The Examiner finds that Ginsberg teaches a binary component trust level that specifies trustworthiness of the binary component and also teaches triggering analysis of the binary component trust level to determine if the binary component trust level is equal to or higher than the calling process trust level in order to automatically load the binary component. Ans. 6. Appellants argue that the Examiner makes no finding regarding, and that Ginsberg does not disclose, the claimed triggering in response to the capability level of the binary component being insufficient for loading the binary component. Reply Br. 5. Claims 1, 10, 18, and 22 each require the calling process determining that the binary component capability level is insufficient to load the binary component to trigger analysis of the binary component trust level. The Examiner’s finding that Ginsberg teaches “triggering analysis of the binary component trust level to determine if the binary component trust level is equal to or higher than the calling process trust level” (see Ans. 6) does not address the triggering being in response to the calling process determining that the binary component capability level is insufficient to load the binary component as required by the claims. Thus, the Examiner makes no findings regarding this feature. Appeal 2011-004912 Application 11/265,710 5 Further, the Examiner’s reasoning for the conclusion of obviousness provides no explanation regarding why it would have been obvious to provide the claimed triggering in response to determining that the binary component capability level is insufficient to load the binary component. Instead, the Examiner simply explains that “the claim is obvious because combining known procedures which produce predictable results is within the ordinary capabilities of one skill[ed] in the art” and “[a]dding a trust level in combination with the capabilities level yields a more robust system with greater flexibility while maintaining security.” Ans. 6. For these reasons, we do not sustain the rejection of claims 1, 10, 18, and 22 or dependent claims 7-9 and 16. New Ground – Non-Statutory Subject Matter – Claims 10, 12, 13, 15, and 16 Claims 10, 12, 13, 15, and 16 are directed to a “computer readable medium” and the Specification is silent as to the meaning of “computer readable medium.”2 Accordingly, the claimed “computer readable medium” encompasses transitory propagating signals. See U.S. Patent & Trademark Office, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010) (“The broadest reasonable interpretation of a claim drawn to a computer readable medium . . . typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent.”). Such a claim covers non-statutory subject matter and must be rejected under 35 U.S.C. 2 We note that the Specification does not even mention the phrase “computer readable medium.” Appeal 2011-004912 Application 11/265,710 6 § 101. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter). Accordingly, pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection under 35 U.S.C. § 101 for claims 10, 12, 13, 15, and 16 as directed to non-statutory subject matter.3 DECISION We REVERSE the Examiner’s decision to reject claims 9 and 26 as indefinite. We REVERSE the Examiner’s decision to reject claims 1, 7-10, 16, 18 and 22 as unpatentable over Dive-Reclus and Ginsberg. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW GROUND OF REJECTION of claims 10, 12, 13, 15, and 16 under 35 U.S.C. § 101. This decision contains a new ground 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 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise 3 We note that Appellants are not precluded from amending these claims to overcome this rejection. Guidance on this point is provided in U.S. Patent & Trademark Office, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010) (“A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the limitation ‘non-transitory’ to the claim.”). Appeal 2011-004912 Application 11/265,710 7 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 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) msc Copy with citationCopy as parenthetical citation