Ex Parte Schmeling et al

Patent Trial and Appeal Board

Jul 20, 2016

13327237 (P.T.A.B. Jul. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/327,237 12/15/2011
22879 7590 07/22/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Garth F. Schmeling
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
82911212 2503
EXAMINER
HAIDER,FAWAAD
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
07/22/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARTH F. SCHMELING and TRAVIS W. LOYD
Appeal2014-002325 1
Application 13/327,2372
Technology Center 3600
Before NINA L. MEDLOCK, KENNETH G. SCHOPPER and
BRADLEY B. BAY AT, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 5-12, and 20-25. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Our decision references Appellants' Appeal Brief ("Br.," filed May 29,
2013) and the Examiner's Answer ("Ans.," mailed September 18, 2013) and
Non-Final Office Action ("Non-Final Act.," mailed March 1, 2013).
2 Appellants identify Hewlett-Packard Development Company, LP as the
real party in interest. Br. 3.
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Application 13/327,237
CLAIMED INVENTION
Appellants' claimed invention "relates generally to secure and private
access to electronic services" and, more particularly "to providing electronic
services with secure electronic service requests, verification, and billing"
(Spec. 1, 11. 8-10).
Claims 1, 6, and 25, reproduced below, are the independent claims on
appeal and representative of the claimed subject matter:
1. A system for providing secure user access to
network accessible services via a network, comprising:
a services software agent, for electronic communication
with a client software agent, the services software agent to
receive and facilitate fulfillment of a services request generated
by the client software agent that is based on input from a user,
wherein the services request requests service from a network
accessible service that is operated by the services software agent,
the network accessible service comprising one of a printer, a
copier, a long distance voice service and a fax server; and
a permissions software agent including a listing of user
permissions indicating authorized users for each of the net\'l/ork
accessible services, wherein the permission software agent is in
communication with the services software agent, and the services
software agent can request user permissions from the
permissions services agent so as to enable activation of the
network accessible service selected by the user.
6. A method of providing secure user access to
network accessible services via a network, comprising the steps
of:
receiving, at a services software agent, a services request
as defined by a user through a client software agent;
retrieving a user permissions listing for the network
accessible services specified in the services request from a
permissions software agent;
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Application 13/327,237
facilitating fulfillment of the network accessible services
as enabled by the services software agent based on the user
permissions listing received from the permissions software
agent;
wherein communications between the services software
agent and permissions software agent are encrypted.
25. A system for providing secure user access to
network accessible services, comprising:
a services agent, on a services server, for electronic
communication with a client software agent, the services agent
to receive a services request generated by the client software
agent based on input from a user, wherein the services request
requests service from a network accessible service that is
operated by the services agent, the network accessible service
comprising one of a printer, a copier, a long distance voice
service and a fax server; and
a permissions agent, on a system server separate from the
services server, including a listing of user permissions indicating
authorized users for each of the network accessible services,
wherein the permissions agent is in communication with the
services agent through encrypted messaging, and the services
agent requests and receives user permissions from the
permissions agent, wherein the services agent provides services
to the user upon verifying that user's permission to use a
requested network accessible service based on the user
permissions received from the permissions agent; and
wherein a user name and cost for a service are stored on
the services server, while the user name and billing account
number are stored on the system server, and the services agent
and permissions agent cooperate to provide the user name, cost
for a service and billing account number to a billing server.
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Application 13/327,237
REJECTIONS
Claims 1, 5-9, 20, and 23-25 are rejected are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ronen (US 5,905,736, iss. May 18, 1999),
Karp (US 6,205,466 Bl, iss. Mar. 20, 2001), Hogan (US 6,915,279 B2,
iss. July 5, 2005), and Matsuki (US 6,910,065 B2, iss. June 21, 2005).
Claims 10, 11, and 22 are rejected are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ronen, Karp, Hogan, Matsuki, and Hilt
(US 6,408,284 B 1, iss. June 18, 2002).
Claim 12 is rejected are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ronen, Karp, Hogan, Matsuki, and Walker
(US 6,267 ,292 B 1, iss. July 31, 2001 ).
Claim 21 is rejected are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ronen, Karp, Hogan, Matsuki, and McManis
(US 5,680,461, iss. Oct. 21, 1997).
ANALYSIS
Independent claim 1 and dependent claim 22
In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner cites
Ronen as disclosing a services software agent and a separate permission
software agent in communication with the services software agent, as called
for in claim 1 (Non-Final Act. 2-3). However, the Examiner acknowledges
that Ronen does not disclose that "the services software agent can request
user permissions from the permissions services agent so as to enable
activation of the network accessible service selected by the user," and the
Examiner cites Karp to cure the deficiency of Ronen (id. at 3).
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Application 13/327,237
Appellants do not contest the Examiner's characterization of Ronen's
disclosure, and ostensibly acknowledge that Karp discloses checking user
authorization or permissions before enabling a service requested by the user
(Br. 12). However, Appellants argue that Karp does not adequately address
the deficiency of Ronen because the combination of Ronen and Karp does
not disclose or suggest (1) that "the network accessible service compris[ es]
one of a printer, a copier, a long distance voice service, and a fax server" or
(2) that the services software agent communicates with the permissions
software agent to get a listing of user permissions indicating authorized users
for each of the network accessible services (id. at 12-13).
Addressing each of these arguments in tum, Appellants' first
argument fails at least because Karp discloses, in the "Background of the
Invention," that computer network accessible resources may include, inter
alia, printers (Karp, col. 1, 11. 14--16). Appellants' second argument also is
unpersuasive at least because it is not commensurate with the scope of
claim 1. Claim 1 recites that the permissions software agent "include[ s] a
listing of user permissions indicating authorized users for each of the
network accessible services." But there is nothing in claim 1 that requires
that the services software agent communicate with the permissions software
agent to get a listing of user permissions indicating authorized users for each
of the network accessible services. Instead, claim 1 only requires that "the
services software agent can request user permissions from the permissions
services agent so as to enable activation of network accessible service
selected by the user," which Appellants ostensibly admit that Karp discloses
(Br. 12).
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In view of the foregoing, we sustain the Examiner's rejection of
claim 1 under 35 U.S.C. § 103(a). We also sustain the Examiner's rejection
of dependent claim 22, which is not argued separately except based on the
dependence from claim 1 (Br. 22).
Independent claim 6 and dependent claims 7-11and21
Appellants argue that the Examiner erred in rejecting claim 6 under
35 U.S.C. § 103(a) because "Hogan refers to the encryption of sensitive
information, such as credit card numbers, for on-line purchasing and,
additionally, to using digital certificates to identify parties in an on-line
transaction" and does not disclose or suggest "using encryption in querying a
permissions software agent as to whether a user requesting a particular
network service is authorized to invoke that service" (Br. 16). That
argument is not persuasive at least because claim 6 is rejected as
unpatentable over the combination of Ronen, Karp, Hogan, and Matsuki,
and not over Hogan alone. Non-obviousness cannot be established by
attacking references individually where, as here, the rejection is based upon
the teachings of a combination of references. In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
In rejecting claim 6 under§ 103(a), the Examiner concludes that "it
would have been obvious to one of ordinary skill in the art at the time of the
invention to modify Ronen's and Karp's inventions with Hogan's disclosure
of encryption in order for ' ... a secure electronic payment system (see
Hogan Abstract)."' (Non-Final Act. 3). Appellants have offered no
persuasive argument or technical reasoning to explain why the Examiner's
finding is unreasonable or unsupported.
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Therefore, we sustain the Examiner's rejection of claim 6 under
35 U.S.C. § 103(a). We also sustain the Examiner's rejection of dependent
claims 7-11and21, which are not argued separately.
Independent claim 25
In the Non-Final Office Action, the Examiner addresses independent
claims 1, 6, and 25 together (Non-Final Act. 2--4). We agree with
Appellants that the Examiner, in doing so, fails to explain how or where the
cited references disclose or suggest that
a user name and cost for a service are stored on the services
server, while the user name and billing account number are
stored on the system server, and the services agent and
permissions agent cooperate to provide the user name, cost for a
service and billing account number to a billing server[,]
as recited in claim 25 (Br. 18).
In rejecting claims under 35 U.S.C. § 103(a), an examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki,
745 F.2d 1468, 1472 (Fed. Cir. 1984). Only when this initial burden is met
does the burden shift to the appellant to come forward with evidence and/ or
argument supporting patentability. See Oetiker, 977 F.2d at 1445; see also
Piasecki, 745 F.2d at 1472.
The Examiner has failed to establish a prima facie case of obviousness
in the first instance. Therefore, we do not sustain the Examiner's rejection
of claim 25 under 35 U.S.C. § 103(a).
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Dependent claim 5
Claim 5 depends from claim 1, and recites that the system further
comprises "a billing services agent to receive a billing request from the
services software agent ... wherein the services software agent retrieves an
account number from the permissions services agent for inclusion in the
billing request to the billing services agent."
In rejecting claim 5 in the Non-Final Office Action, the Examiner
cites column 8, lines 56----67 of Ronen as disclosing the claimed subject
matter (Non-Final Act. 4). However, in the Response to Argument section
of the Answer, the Examiner takes a different position, relying on Ronen's
disclosure in the Abstract (as the Examiner does in rejecting substantially
similar dependent claim 23 in the Non-Final Action) and at column 9,
lines 3--4 and 17-22 (Ans. 4--5).
We agree with Appellants that there is nothing in column 8, lines 56-
67 of Ronen that discloses or suggests a permission services agent from
which the services software agent obtains both the user permissions and the
user's account number (Br. 19). There also is nothing in the other cited
portions of Ronen, on which the Examiner relies, that discloses or suggests
the claimed cooperation between the services software agent, the
permissions services agent, and the billing services agent, i.e., that the
services software agent retrieves an account number from the permissions
services agent for inclusion in the billing request to the billing services
agent.
Ronen is directed to a method for performing centralized billing for
transactions conducted over the Internet between a user and an Internet
Service Provider ("ISP") 106 through an Internet Access Provider
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Application 13/327,237
("IAP") 104, and discloses that upon connection of the user's terminal to the
IAP, the IAP transmits a message to a billing platform associating the user's
identity to a temporary IP address assigned by the IAP to the user's session
(Ronen, Abstract). Ronen discloses that ISP 106, which the Examiner
compares to the claimed services software agent (see Non-Final Act. 3), in
response to a chargeable transaction, transmits the user's IP address and the
charge for the transaction to the billing platform where the charges are
accumulated by transaction server 109, which the Examiner compares to the
claimed permissions services agent (see id.), and stored in a database
account identified with the user's IP address (Ronen, Abstract). At the end
of the user's session, the charges for all the transactions during the session
are charged by the billing server to an account associated with the user's
identity by cross-referencing the IP address to the user's identity from the
previously received and stored message (id.). Thus, rather than disclosing
that the services software agent retrieves an account number from the
permissions services agent, Ronen discloses that the billing server translates
the IP address received from the services software agent to the user's
account based on the stored relationship between the user and the IP address
previously sent by the IAP to the billing server (id. at col. 9, 11. 17-22).
In view of the forgoing, we do not sustain the Examiner's rejection of
dependent claim 5 under 35 U.S.C. § 103(a).
Dependent claim 23
Claim 23 includes language substantially similar to the language of
claim 5. Therefore, we do not sustain the Examiner's rejection of claim 23
under 35 U.S.C. § 103(a) for substantially the same reasons set forth above
with respect to claim 5.
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Dependent claim 20
Claim 20 depends from claim 1, and recites that "the permissions
software agent is programmed for generating a billing reply, including a
corresponding user's billing account number, in response to the billing
request received from the services software agent."
In the Non-Final Office Action, the Examiner cites Matsuki at
Figures 7, 11, and 12 and column 1, lines 50-52 as disclosing the claimed
subject matter (Non-Final Act. 5). However, we agree with Appellants that
there is nothing in the cited portion of Matsuki that discloses or suggests a
permissions software agent programmed to generate a billing reply, as called
for in claim 20 (Br. 24). Matsuki merely discloses at column 1, lines 49-52
that "an object of the present invention is to provide a server that holds
suitable environment settings for individual clients and can provide
comfortable operating environments."
To the extent the Examiner further relies on column 9, lines 17-22 of
Ronen as disclosing the claimed subject matter (Ans. 5-6), the Examiner's
reliance is misplaced for the reasons set forth above with respect to
dependent claim 5.
In view of the foregoing, we do not sustain the Examiner's rejection
of claim 20 under 35 U.S.C. § 103(a).
Dependent claim 24
Claim 24 depends from claim 1, and recites that "the services software
agent ... output[s] an encrypted message to the user listing that user's
authorized services based on the user permissions reported by the
permissions software agent."
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The Examiner cites Hogan as disclosing the use of encryption to
provide a secure electronic payment system (Non-Final Act. 5). But the
Examiner does not indicate how or where the cited references disclose or
suggest outputting an encrypted message listing the user's authorized
services, as called for in claim 24.
Therefore, we do not sustain the Examiner's rejection of claim 24
under 35 U.S.C. § 103(a).
Dependent claim 12
Claim 12 depends from independent claim 6, and recites that the
method further comprises, inter alia, "sending the billing request to the
permissions software agent ... ; creating a billing reply, including a
corresponding user's billing account number, using the permissions software
agent; and transmitting the billing reply to a billing software agent."
The Examiner cites column 11, lines 57-65 of Walker as disclosing
the claimed subject matter (Non-Final Act. 7). However, we agree with
Appellants that there is nothing in the cited portion of Walker that discloses
or suggests that a permissions software agent creates a billing reply
including a user's billing account number (Br. 23-24). Instead, Walker
merely discloses encrypting sensitive information, e.g., a user's name, credit
card number, and identification number (id.).
In view of the foregoing, we do not sustain the Examiner's rejection
of claim 12 under 35 U.S.C. § 103(a).
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DECISION
The Examiner's rejections of claims 1, 4, 6-11, 21, and 22 under
35 U.S.C. § 103(a) are affirmed.
The Examiner's rejections of claims 5, 12, 20, and 23-25 under
35 U.S.C. § 103(a) are reversed.
AFFIRMED-IN-PART
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