Ex Parte Lekies et al

Patent Trial and Appeal Board

Mar 28, 2017

13478991 (P.T.A.B. Mar. 28, 2017)

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.
13/478,991 05/23/2012 Sebastian Lekies 13913-0677001 7492
32864 7590 03/30/2017
FISH & RICHARDSON, P.C. (SAP)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
JAMI, HARES
ART UNIT PAPER NUMBER
2162
NOTIFICATION DATE DELIVERY MODE
03/30/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEBASTIAN LEKIES and MARTIN JOHNS
Appeal 2016-006547
Application 13/478,9911
Technology Center 2100
Before STEPHEN C. SIU, JOHN A. EVANS, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—8 and 10—13, which are the only claims pending
in the application. Claim 9 is canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 1 Appellants identify SAP SE as the real party in interest. App. Br. 4.
Appeal 2016-006547
Application 13/478,991
STATEMENT OF THE CASE
Introduction
Appellants’ disclosed and claimed invention is generally directed to
providing integrity protection for web storage-driven content caching. Spec.
12.2
Claim 1 is representative and reproduced below (with the disputed
limitations emphasized)'.
1. A computer implemented method for providing integrity
protection for web storage for secure content caching, the
method being executed using one or more processors and,
comprising:
receiving, at a client computing device, a web page from
a server, the web page being associated with a script library and
one or more items that can be stored in web storage of a web
browser executed on the client computing device, each of the
one or more items being associated with a respective key that is
provided by a wrapper function, and a respective pre­
determined checksum value; and
loading the script library, such that a local storage
application program interface (API) is overwritten using the
wrapper function; and
receiving a request for an item from web storage of the
client computing device, and in response, executing the script
library to perform operations comprising:
determining that an integrity of the item is to be
checked based on a key provided with the request, and in
response:
2 Our Decision refers to the Final Action mailed May 22, 2015 (“Final
Act.”); Appellants’ Appeal Brief filed Dec. 17, 2015 (“App. Br.”) and Reply
Brief filed June 16, 2016 (“Reply Br.”); the Examiner’s Answer mailed Apr.
29, 2016 (“Ans.”); and the original Specification filed May 23, 2012
(“Spec.”).
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Application 13/478,991
determining a generated checksum value based on
the item, and
verifying the integrity of the item by comparing the
generated checksum value and a pre-determined
checksum value associated with the item to determine
whether content of the item is secure and
uncompromised.
References and Rejections on Appeal
Claims 1—5, 7, 8, and 10-13 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kamath et al. (US 2008/0104198 Al;
published May 1, 2008) (“Kamath”), Kroeger et al. (US 2010/0257148 Al;
published Oct. 7, 2010) (“Kroeger”), Morgan et al. (US 2011/0047481 Al;
published Feb. 24, 2011) (“Morgan”), and Tomida (US 2012/0136924 Al;
published May 31, 2012).
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kamath, Kroeger, Morgan, Tomida, and Reiss et al.
(US 2013/0104114 Al; published Apr. 25, 2013).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants
arguments in the Briefs and are not persuaded the Examiner has erred.
Unless otherwise noted, we adopt as our own the findings and reasons set
forth by the Examiner in the Office Action from which this appeal is taken
(Final Act. 4—10) and in the Examiner’s Answer (Ans. 9—13), and we concur
with the conclusions reached by the Examiner. For emphasis, we consider
and highlight specific arguments as presented in the Briefs.
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Application 13/478,991
Rejection of Claims 1—5, 7, 8, 10, and I I3 under § 103(a)
Appellants contend the cited and relied on portions of Kamath,
Kroeger, Morgan, and Tomida do not teach or suggest the disputed
limitations of claim 1. App. Br. 13—15. In particular, Appellants argue
Kamath fails to teach or suggest “verifying the integrity of the item by
comparing the generated checksum value and the predetermined checksum
value associated with the item to determine whether content of the item is
secure and uncompromised.” App. Br. 13. Appellants further argue
“Kamath verifies changes of the server-side web page functionality and
content, which is different than verifying the integrity of the item by
comparing the generated checksum value and the pre-determined checksum
value associated with the item to determine whether content of the item is
secure and uncompromised.” Id. at 13—14. According to Appellants, none
of Kroeger, Morgan, and Tomida cures this deficiency. Id. at 14.
Appellants argue Kroeger fails to teach or suggest “receiving a request
for an item from web storage of the client computing device, and in
response, executing the script library to perform operations including:
determining that an integrity of the item is to be checked based on
a key provided with the request.” Id. at 14. Appellants also argue “the
process of Kroeger includes determining an update, which is different than
determining that an integrity of the item is to be checked based on a key
provided with the request.” Id. Appellants further argue “the process of
Kroeger is based on identifying if the checksums do not match, which is
different than determining that an integrity of the item is to be checked based
3 We decide the rejection of claims 1—5, 7, 8, 10, and 11, which are rejected
under the first-stated ground of rejection, on the basis of representative claim
1. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 13/478,991
on a key provided with the request.” Id.', Reply Br. 2. According to
Appellants, neither Morgan nor Tomida cure the deficiencies of Kamath and
Kroeger. App. Br. at 15. Appellants also contend the cited portions of
Kamath and Kroeger are silent in regard to determining “whether content of
the item is secure and uncompromised.” Reply Br. 4.
We are not persuaded by Appellants’ arguments that the Examiner
erred. First, we are not persuaded by Appellants’ arguments attacking
Kamath and Kroeger individually because they fail to address the
Examiner’s rejection, which is based on the combined teachings of Kamath
and Kroeger, as well as Morgan4 and Tomida.5 See Ans. 11—12; Final Act.
4-7. In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non­
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.”). The relevant inquiry is whether the claimed subject matter
would have been obvious to those of ordinary skill in the art in light of the
combined teachings of the references. In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Here, Appellants attack Kamath for failing to teach verifying integrity
of the item by comparing the generated and pre-determined checksums (see
App. Br. 13—14), but the Examiner relies on Kroeger as teaching the request
received at the server “includes an identifier (i.e. a key) which is used to
identify the location of the data item and old checksum that is already stored
in the table. The old checksum is compared with the new calculated
4 The Examiner finds Morgan teaches a script library and a wrapper
function. See Final Act. 6 (citing Morgan Figs. 1, 2; || 16, 32).
5 The Examiner finds Tomida teaches an API is over written with a
javascript function. See Final Act. 7 (citing Tomida 146).
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checksum to determine the integrity/update of the data item.” Ans. 11
(citing Kroeger Figs. 6b, 8b; 19); Final Act. 6. Although Appellants attack
Kroeger for failing to teach executing the script library to determine the
integrity of the item based on a key provided with the request, the Examiner
finds Kamath teaches “a webpage is received at a client-side by a server, the
webpage is associated with script and items (e.g. files, images, etc.), each
item is associated with key/a hash value,” loading the script, and “the
integrity of an item is checked by comparing the old hash value/key and new
hash value/key of the item” to determine whether the item has changed.
Ans. 11 (citing Kamath || 4, 13—14), Final Act. 5 (citing Kamath Fig. 1; ||
4, 13—14, 19, 20-22). As stated, the Examiner finds Kroeger teaches
“determining that an integrity of the item is to be checked based on a key
provided with the request” as Kroeger discloses “receiving a request at a
server including a key identifier of the item and determining a checksum
value for the item to check the integrity of the item.” Final Act. 6 (citing
Kroeger Figs. 6b, 8b; 19). Based on the portions of Kamath and Kroeger
cited by the Examiner, we find the preponderance of the evidence supports
the Examiner’s findings.
Second, we are not persuaded by Appellants’ arguments that Kamath
and Kroeger fail to teach or suggest “verifying the integrity of the item by
comparing the generated checksum value and a pre-determined checksum
value ... to determine whether content of the item is secure and
uncompromised.” App. Br. 13—14; Reply Br. 3^4. Although we agree with
Appellants that Kamath and Kroeger do not use the terms “secure and
uncompromised,” we agree with the Examiner that “verifying
changes/updates of an item is [the] equivalent of verifying the integrity of
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the item and determining whether the item is secure and uncompromised.”
Ans. 10—12. In that regard, the Examiner finds as follows:
Kamath in at least paragraphs 4, 13 and 14 discloses checking
whether an item has changed or not by comparing the old hash
value/key and new hash value/key of the item. And Kroeger
discloses receiving a request at a server including an identifier of
the item (i.e. key) and determining a checksum value for the item
to check whether the item has been changed or not (See Kroeger:
at least Fig. 6b, Fig. 8b, and paragraph 9).
The request disclosed by Kroeger is received at the server
includes an identifier (i.e. a key) which is used to identity the
location of the data item and old checksum that is already stored
in the table. The old checksum is compared with the new
calculated checksum to determine the integrity/update of the data
item. Thus, the identifier of [the item] embedded in the request
as disclosed by Kroeger is used to retrieve old checksum value
used [in the] determination of integrity of the data item which
reads on the limitation of [“]determining that an integrity of the
item is to be checked based on a key provided with the request”
recited in independent claims.
Based on comparing of old and new checksum values of the item,
it could be determined whether the item is updated or not. If the
checksum value is the same, the item has not been updated and
therefore, integrity of the item is intact and the item is secure and
uncompromised. If the checksum value is not the same then the
item has been updated and therefore, the integrity of item might
have damaged and it may not be secure and uncompromised.
Ans. 11-12.
Appellants have not provided persuasive evidence or reasoning
demonstrating that checking to determine whether a data item has been
changed or updated fails to teach or suggest verifying the integrity of the
item and determining whether the item is secure and uncompromised.
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Accordingly, for the reasons set forth by the Examiner, we agree with the
Examiner’s findings.
In the Reply Brief, Appellants argue for the first time that “verifying
the link of Kamath[] determines whether to use a cached or an updated
content, which is different than verifying the integrity of the item ... to
determine whether content of the item is secure and uncompromised.”
Reply Br. 3^4. (Emphasis omitted). Because this argument is raised by
Appellants for the first time in the Reply Brief not in response to a shift in
the Examiner's position and without otherwise showing good cause, it is
waived. See 37 C.F.R. § 41.41(b)(2); see also Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner’s rejections, but were not.”
Thus, we are not persuaded the Examiner erred in (1) finding the
combined teachings of Kamath, Kroeger, Morgan, and Tomida teach or
suggest the disputed limitations of claim 1 and (2) concluding that the
combination of Kamath, Kroeger, Morgan, and Tomida renders the subject
matter of claim 1 obvious under 35 U.S.C. § 103(a). Accordingly, we
sustain the Examiner’s rejection of claim 1,6 For the same reasons, we
6 We note method claim 1 contains conditional limitations because they only
occur “in response” to certain trigger events or conditions precedent. The
step of “executing the script library” occurs only “in response” to “receiving
a request for an item from web storage of the client computing device.” The
subsequent steps of “determining a generated checksum” and “verifying the
integrity of the item” occur only “in response” to “determining that an
integrity of the item is to be checked based on a key provided with the
request.” Conditional steps employed in a method claim need not be found
in the prior art if, under the broadest reasonable construction, the method
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sustain the Examiner’s rejections of independent claims 12 and 13, as well
as dependent claims 2—5, 7, 8, 10, and 11.
Rejection of Claim 6 under § 103(a)
Appellants advance no separate, substantive arguments for claim 6,
which is rejected under the second-stated ground of rejection. Appellants
contend claim 6 is allowable over the cited references for the same reasons
argued regarding independent claim 1. App. Br. 15. However, for the
reasons discussed above regarding the first-stated ground of rejection, we
find claim 1 is not patentable. Therefore, we sustain the second-stated
rejection of claim 6.
DECISION
We affirm the Examiner’s rejections of claims 1—8 and 10—13 under
35U.S.C. § 103(a).
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)(iv).
AFFIRMED
need not invoke the steps. Ex parte Schulhauser, No. 2013-007847, 2016
WL 6277792, at *3-6 (PTAB April 28, 2016) (concluding the broadest
reasonable interpretation of a claim encompassed situations in which
conditional method steps “need not be reached”) (precedential). In the event
of further prosecution, we leave it to the Examiner to determine whether the
disputed limitations of claim 1 need not be performed.
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