Ex Parte Rawson

Patent Trial and Appeal Board

Sep 15, 2014

11867071 (P.T.A.B. Sep. 15, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ANDREW R. RAWSON
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Appeal 2012-006105
Application 11/867,0711
Technology Center 2400
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Before CATHERINE Q. TIMM, GEORGE C. BEST, and
ELIZABETH A. LaVIER, Administrative Patent Judges.

LaVIER, Administrative Patent Judge.

DECISION ON APPEAL

The Examiner finally rejected claims 1–20. Appellant seeks reversal
of these rejections, pursuant to 35 U.S.C. § 134(a). We have jurisdiction
under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
BACKGROUND
The Specification generally relates to preventing unauthorized use of
modules of an electronic system by “restrict[ing], or ‘bind[ing],’ the
interoperability of modules of the electronic system to only those modules in

1 According to Appellant, the Real Party in Interest is Advanced Micro
Devices, Inc. (Appeal Br. 1.)
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the same electronic system or alternately to only those modules of an
identified class of components.” (Spec. ¶¶ 1–2.) While typical binding
methods require time- and processing-intensive encryption/decryption for
each communication (id. at ¶ 3), the Specification seeks to improve the
efficiency of binding “[b]y configuring electronic components to utilize
encryption for the authentication process while allowing unencrypted
communications after successful authentication” (id. at ¶ 12).
Claim 1 is representative:
1. A method comprising:
authenticating, at a first electronic module, a second electronic
module via encrypted communications between the first
electronic module and the second electronic module;
in response to determining the second electronic module is
authenticated, configuring the first electronic module to conduct
unencrypted communications with the second electronic
module; and
in response to determining the second electronic module is
unauthenticated, configuring the first electronic module to
disable at least a first functionality of the first electronic module
so that the first electronic module is prevented from operating
with the first functionality of the first electronic module while
the first functionality of the first electronic module is disabled.
(Appeal Br. 15 (Claims App.).)
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REJECTIONS
On appeal, the Examiner maintains the following rejections:2
1. Claims 1–3, 5–8, 13–14, 16, 18, and 20 are rejected under 35
U.S.C. § 103(a) as unpatentable over Davis3 in further view of
Boebert.4 (Ans. 6–16.)
2. Claims 4 and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Davis and Boebert in further view of Schneier.5
(Ans. 16.)
3. Claims 9–10, 15, and 19 are rejected as unpatentable under 35
U.S.C. § 103(a) over Davis and Boebert in further view of
Zatloukal.6 (Ans. 18.)
4. Claims 11 and 12 are rejected as unpatentable under 35 U.S.C.
§ 103(a) over Davis and Boebert in further view of Appellant-
admitted prior art. (Ans. 22.)

2 Under the “Grounds of Rejection” maintained on appeal, the Examiner
also lists rejections of claims 11 and 12 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement, and
under 35 U.S.C. § 112, second paragraph, as indefinite. (Ans. 5–6.)
Subsequently, however, the Examiner expresses agreement with Appellant
that these rejections are improper. (Id. at 26.) We interpret the Examiner’s
agreement with Appellant to mean that the Examiner is withdrawing these
rejections. We, therefore, do not review them.
3 U.S. Patent No. 5,473,692, issued Dec. 5, 1995.
4 U.S. Patent No. 5,864,683, issued Jan. 26, 1999.
5 Schneier, Applied Cryptography 518-19 (1996).
6 U.S. Patent Application Pub. No. US 2003/0105961 A1, published June 5,
2003.
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DISCUSSION
The Examiner has rejected all of the claims as obvious based on Davis
and Boebert, alone or combined with other references or admissions. The
same issue is dispositive for all of the obviousness rejections. The Examiner
relies on Davis as disclosing the “authenticating” and “in response to
determining the second electronic module is unauthenticated” limitations of
claim 1. (Ans. 7.) Davis teaches an integrated circuit component for
enforcing license restrictions through remote transmissions of access
privileges. (Davis Abstract.) Specifically, the Examiner states that Davis
teaches two hardware devices that mutually authenticate each other using
encrypted challenge-response, and that if authentication fails,
communication is disabled. (Ans. 7 (citing Davis col. 8 ll. 45–65; Fig. 7C).)
Davis does not teach the “in response to determining the second electronic
module is authenticated” limitation of claim 1, for which the Examiner relies
on Boebert. (Ans. 7–8.) Boebert describes transferring data between a
workstation connected to a private network and a remote computer
connected to an unsecure network. (Boebert Abstract.) The Examiner states
Boebert teaches that after authentication, system communication between
two devices is in clear text, which the Examiner interprets as unencrypted
communication. (Ans. 7–8 (citing Boebert col. 13 ll. 35–68.).)
Appellant acknowledges Davis teaches that communications between
a first and second node can be “terminated” if the communication is not
authenticated, but argues that “terminating communication between nodes is
not the same as disabling functionality of a first module so that the first
electronic module is prevented from operating with the first functionality of
the first electronic module while the first functionality of the first electronic
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module is disabled, as provided by claim 1,” and that “Davis nowhere
discloses that either of the first or second nodes is prevented from
communicating with the other node in response to determining either node is
not authenticated.” (Appeal Br. 9; see also Reply Br. 2.) The Examiner
responds that “[t]he claims are not clear [as] to what a first function is,” and
relates the first function of claim 1 to the token-exchange process in Davis.
(Ans. 26.) The Examiner explains Davis describes a token-exchanging
function present in both the first and second devices; without proper
authentication, the token-exchange function “is disabled, as it is never
allowed to occur.” (Ans. 7.) We agree with the Examiner that the “first
functionality” of claim 1 encompasses the token-exchanging function of
Davis, within the broadest reasonable construction of that term, and that this
functionality is disabled in Davis if authentication fails.
Appellant also argues that the Examiner inappropriately equates
“disabled” with “‘not presently carrying out a particular function’” or “does
not take place,” instead of the common meaning, which Appellant states is
“‘deprive[d] of capability.’” (Appeal Br. 10–11; Reply Br. 3–4.) The
Examiner responds:
Even if [Appellant’s common-meaning definition] is true, the
Examiner still points to the fact that it is not unreasonable to
think of something being temporarily disabled. No where in
claims does it specify duration of disablement. So the mere fact
that a function is prevented even once is by definition a
temporary deprivation of capability. In addition, it is also not
specified whether the first function is already occurring prior to
disablement. If this were the case[,] this further backs
Examiner’s reasoning that at the very least, Davis temporarily
disables the functionality of continuing the authentication
protocol, if there is no authentication.
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(Ans. 27.) Appellant replies that “even assuming arguendo that this is
correct, Davis does not disclose that the communications are prevented even
once. Rather, Davis discloses that the communications do not take place.”
(Reply Br. 3.) We are unpersuaded by the distinction drawn by Appellant.
As the Examiner points out, in Davis the absence of authentication precludes
further communication of the nodes within the scope of the authentication
protocol. (Ans. 27 (citing Davis col. 8 ll. 1–65).) Thus the nodes are
deprived of capability, at least temporarily, and do not “simply decline” to
function as Appellant argues (Reply Br. 2), at least not in some way that is
distinguishable from the “disabl[ing]” recited in claim 1, in which “the first
electronic module is prevented from operating with the first functionality of
the first electronic module while the first functionality of the first electronic
module is disabled” (Claims App. (emphasis added)).
Appellant offers no separate arguments for the other claims or the
other obviousness rejections. Accordingly, because we affirm the
Examiner’s rejection of claim 1 as obvious, we likewise affirm the
Examiner’s rejections of claims 2–20 as obvious.7
CONCLUSION
The Examiner’s rejections of claims 1–20 under 35 U.S.C. § 103(a)
are affirmed.

7 Should there be further prosecution of this application (including any
review for allowance), the Examiner may wish to review these claims for
compliance under 35 U.S.C. § 101 in light of the recently issued preliminary
examination instructions on patent eligible subject matter. See “Preliminary
Examination Instructions in view of the Supreme Court Decision in Alice
Corporation Pty. Ltd. v. CLS Bank International, et al.,” Memorandum to
the Examining Corps, June 25, 2014.
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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

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