Ex Parte McClain et al

Patent Trial and Appeal Board

Aug 24, 2015

12612895 (P.T.A.B. Aug. 24, 2015)

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.
12/612,895 11/05/2009 Carolyn Bennion McClain 26530.162 (IDR-1838) 5339
47699 7590 08/25/2015
HAYNES AND BOONE, LLP (26530)
IP Section
2323 Victory Avenue
Suite 700
Dallas, TX 75219
EXAMINER
HUSSAIN, TAUQIR
ART UNIT PAPER NUMBER
2452
MAIL DATE DELIVERY MODE
08/25/2015 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 CAROLYN BENNION McCLAIN, STEPHEN R. CARTER,
LLOYD LEON BURCH, and DALE ROBERT OLDS
_____________

Appeal 2013-0070991
Application 12/612,895
Technology Center 2400
______________

Before MAHSHID D. SAADAT, CARL W. WHITEHEAD JR., and
MONICA S. ULLAGADDI, Administrative Patent Judges.

ULLAGADDI, Administrative Patent Judge

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–20.2 App. Br. 8–15. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 Appellants’ Appeal Brief identifies the real party in interest as Novell, Inc.
App. Br. 3.

Appeal 2013-007099
Application 12/612,895

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STATEMENT OF THE CASE
Appellants’ invention relates to implementing a workflow and
establishing a mutual trust relationship. Abstract.
Independent claim 1 is illustrative of the subject matter on appeal and
is reproduced below.
1. A method comprising:
implementing a workflow of a first domain
associated with a first computing enterprise, wherein the
workflow is implemented as a series of steps to
accomplish a workload and wherein at least one of the
steps utilizes a process, wherein implementing the
workflow of the first domain includes:
establishing a mutual trust relationship between the
first domain and a second domain associated with a
second computing enterprise;
after establishing the mutual trust relationship,
authoring one of the steps to accomplish the workload of
the first domain by a computer of the second computing
enterprise associated with the second domain; and
associating with the step authored by the second
domain a digital attestation for enabling the first domain
to verify authorship and non-modification of the step
authored by the second domain.

Rejection at Issue
Claims 1–20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Christensen (US 2011/0066847 A1;
Mar. 17, 20113) and Gates (US 2008/0091613 A1; Apr. 17, 2008). Final
Act. 4–17.
Issue
Did the Examiner err in concluding the combination of Christensen
and Gates discloses or renders obvious “associating with the step authored

3 Christensen reference filed on Sep. 15, 2009.
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by the second domain a digital attestation for enabling the first domain to
verify authorship and non-modification of the step authored by the second
domain,” as recited in claim 1 and as similarly recited in claims 8 and 15?

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments and the evidence of record. Further, we have reviewed the
Examiner’s responses to Appellants’ arguments. We are persuaded by
Appellants’ contentions of the Examiner error in the rejection of claims 1–
20.
Appellants take the position the Examiner “has not provided any
evidence or citation within the references of record to show how providing
keys to authenticated users (user level approach of Gates) enables the first
domain (domain level approach of Christensen) to verify authorship and
non-modification of the certificate validated by the second domain.” Reply
Br. 6; see also App. Br. 11. Appellants further argue the “Examiner has
failed to make any connection whatsoever between the identity centric
approach of Gates and the device centric approach of Christensen that would
show that the combined elements produce a predictable result” in light of the
disclosure in Gates that the Gates “system is identity-centric rather than
device centric.” App. Br. 12; see also Reply Br. 7.
The Examiner cites Christensen for teaching the claimed “digital
attestation” (Final Act. 4–5) and cites Gates for teaching that the digital
attestation is “associat[ed] with the step authored by the second domain . . .
for enabling the first domain to verify authorship and non-modification
thereof” (id. at 5). Gates describes how “keys [are] distributed on-demand
to authenticated individuals to unlock content” and “[a]s a result, users with
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Application 12/612,895

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rights can access protected content from any network device anywhere.”
Gates ¶ 6. Christensen teaches a certificate validating module 319 on a first
component 301 in a first domain 305 that attempts to validate the certificate
313 of a second component 301 in a second domain 305, and vice versa.
Christensen ¶ 25.
We agree with Appellants that the Examiner has not shown how
Christensen’s validated certificate could be used in association with Gates’
keys (App. Br. 11; see Reply Br. 6) and conveyed to Christensen’s first
component because Christensen does not describe that the validated
certificate is used (see Reply Br. 5; see also App. Br. 10) or returned to the
first component after completing the validation process at the second
component (Christensen ¶ 7). Moreover, the Examiner does not specify how
Gates’ key, which is provided to authenticated users to unlock content, can
both verify authorship and non-modification. See App Br. 11.
The Examiner’s rationale for combining Christensen and Gates is
similarly lacking in explanatory detail; “it would have been obvious to one
of . . . ordinary skilled [sic] in the art . . . to make a secure content
distribution system” because it “would extend the trust relationship to next
level by administrating the content protection in a cloud service
environment[,] i.e.[,] identity can be authenticated by comparing initial user
and/or third-party information with provided information such that identity
can be validated with a high confidence.” Final Act. 5. As Appellants
contend, “[t]he fact that Gates may be combined to provide an additional tier
of security at the user level does not cure Christensen’s admitted deficiency
at the domain level.” Reply Br. 6 (emphasis omitted). Thus, we are
persuaded by Appellants’ contention that the Examiner has not provided a
valid articulated line of reasoning with a rational underpinning to support the
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conclusion of obviousness with respect to the proposed combination of
Christensen with Gates.

CONCLUSION
For the reasons discussed above, Appellants have persuaded us that
the Examiner erred in concluding the combination of Christensen and Gates
discloses or renders obvious “associating with the step authored by the
second domain a digital attestation for enabling the first domain to verify
authorship and non-modification of the step authored by the second
domain,” as recited in claim 1, and as similarly recited in claims 8 and
15.Therefore, we do not sustain the Examiner’s rejection of independent
claims 1, 8, and 15 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Christensen and Gates. For the same reasons identified with
respect to independent claims 1, 8, and 15, we reach a similar conclusion
with respect to claims 2–7, 9–14, and 16–20, which variously depend from
therefrom, as these claims are not separately argued.
DECISION
The rejection of claims 1–20 under 35 U.S.C. § 103(a) over the
combination of Christensen and Gates is REVERSED.
REVERSED
cjr