Ex Parte Sobel et alDownload PDFPatent Trial and Appeal BoardMar 20, 201310359922 (P.T.A.B. Mar. 20, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte WILLIAM E. SOBEL and BRUCE McCORKENDALE ___________ Appeal 2010-005146 Application 10/359,922 Technology Center 2400 ____________ Before MAHSHID D. SAADAT, JASON V. MORGAN, and JOHNNY A. KUMAR, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 2, 4-10, 12, 15-18, 21-23, 25-30, 33, and 37. Claims 3, 11, 13, 14, 19, 20, 24, 31, 32, 34-36, and 38-41 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2010-005146 Application 10/359,922 2 STATEMENT OF THE CASE Introduction Appellants’ invention relates to “facilitating software downloads in a fast and secure manner, even when the software is downloaded from an untrusted source” (Spec. 1:5-8). Claim 1, which is illustrative of the invention, reads as follows: 1. A method by which a software publisher ensures security of a target file for downloading via an untrusted network comprising a plurality of untrusted source computers using a manifest file for downloading from a trusted computer, said method comprising: breaking up the target file into a plurality of chunks; creating the manifest file comprising a prestored digest for each of the plurality of chunks, a total number of the plurality of chunks, and a total size of the target file; and providing the plurality of chunks and the manifest file to separate computers, further comprising: distributing the plurality of chunks of the target file across the untrusted network for downloading by a downloading computer, wherein the plurality of untrusted source computers of the untrusted network participate in a peer- to-peer network and the downloading computer downloads different chunks of the target file from different ones of the plurality of untrusted source computers; and providing the manifest file to a trusted computer for downloading by the downloading computer; wherein the integrity of the target file downloaded from the untrusted network comprising the plurality of untrusted source computers is verified by the downloading computer calculating a digest for each downloaded chunk and matching the calculated digest for the chunk to the prestored digest for the chunk within the manifest file downloaded from the trusted computer. Appeal 2010-005146 Application 10/359,922 3 The Rejections The Examiner rejected claims 1, 2, 4-7, 9, 12, 15, 18, 21, 22, 29, 33, and 37 under 35 U.S.C. § 103(a) as being unpatentable over Hudson (US 2003/0204613 A1, Oct. 30, 2003) and Reynar (US 2004/0003389 A1, Jan. 1, 2004). Ans. 3-8. The Examiner rejected claims 8, 10, and 26-28 under 35 U.S.C. § 103(a) as being unpatentable over Hudson, Reynar, and Kay (US 6,473,893 B1, Oct. 29, 2002). Ans. 8-10. The Examiner rejected claims 16 and 17 under 35 U.S.C. § 103(a) as being unpatentable over Hudson, Reynar, and Shaio (US 6,430,608 B1, Aug. 6, 2002). Ans. 10-11. The Examiner rejected claim 23 under 35 U.S.C. § 103(a) as being unpatentable over Hudson, Reynar, and Gennaro (US 6,009,176, Dec. 28, 1999). Ans. 12. The Examiner rejected claim 25 under 35 U.S.C. § 103(a) as being unpatentable over Hudson, Reynar, and FOLDOC (foldoc.org, definition “Secure Sockets Layer” (Jan. 17, 1995)). Ans. 13 The Examiner rejected claim 30 under 35 U.S.C. § 103(a) as being unpatentable over Hudson, Reynar, and Jerger (US 6,321,334 B1, Nov. 20, 2001). Ans. 13-14. Appellants’ Contentions With respect to claim 1, Appellants dispute the propriety of combining Hudson and Reynar and focus their arguments on whether the teachings of the combination of the references would have taught or suggested the claimed subject matter (Br. 6-9). In particular, Appellants Appeal 2010-005146 Application 10/359,922 4 contend that the references “show exclusive use of either trusted or untrusted systems.” Br. 7. Appellants also contend that “Hudson utilizes untrusted computers for both the content and manifest file (preferably together) and Reynar requires that the files and manifest both come from trusted computers.” Id. at 7-8. Appellants further contend that “what this combination of references would have suggested to one of skill in the art is that a manifest and content typically are distributed both to a single, trusted source, or both to untrusted computers (combined with the use of some other security mechanism).” Id. at 8-9. Thus, Appellants contend that the Examiner erred in rejecting the claims as obvious over Hudson and Reynar because (1) Reynar teaches away from the claimed invention and modifying Hudson changes Hudson’s principle of operation, (2) the proposed combination is based on impermissible hindsight, and (3) one skilled in the art would not be motivated to combine the references. Id. at 6-9. With respect to the remaining claims, Appellants merely rely on the same arguments made for claim 1 to assert the patentability of independent claims 33 and 37, allowing the remaining claims to stand or fall with claim 1 (Br. 9-11). Issue on Appeal Did the Examiner err in rejecting claim 1 as being obvious over Hudson and Reynar because there are no teachings in the references to suggest making the proposed combination? Appeal 2010-005146 Application 10/359,922 5 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ conclusions. We adopt as our own the findings and reasons set forth by the Examiner in the action from which this appeal is taken and the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. In response to each of the arguments raised by Appellants, the Examiner presents detailed findings and responses, which are not rebutted by Appellants in a Reply Brief. In particular, the Examiner properly identifies the relevant teachings in Hudson and Reynar and states how each claimed element is met by those teachings (see Ans. 3-23). Additionally, because the proposed rejection is based on the combination of the references, Appellants’ challenge to the references individually is not persuasive of error in the Examiner’s position. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (stating that “one cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references.”). In this case, the teaching value of Reynar is in disclosing that the manifest file is obtained from a trusted source, whereas the remaining claimed elements are disclosed by Hudson. We specifically agree with the Examiner’s stated position that Reynar does not teach away from the combination because the reference expressly teaches that the integrity of the manifest can only be trusted if it is determined that it is downloaded from a trusted source. Ans. 20. We also agree with the Examiner’s response to each of Appellants’ arguments with respect to Hudson’s teachings and whether the combination would have Appeal 2010-005146 Application 10/359,922 6 made the system of Hudson unsatisfactory for its intended purpose (Ans. 17- 23). We disagree with Appellants (Br. 6-9) that there is no motivation for combining the references and find that the Examiner has articulated how the claimed features are met by the references’ teachings with some rational underpinning to combine Hudson and Reynar. We specifically agree with the Examiner’s determination that an ordinarily skilled artisan would have been “motivated to modify Hudson et al. to maintain the manifest file at a location trusted to the user since Reynar et al. suggest that obtaining the manifest file from a trusted source, in addition to taking other precautions mentioned in Reynar et al., ensures the integrity of the manifest file.” Ans. 17. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). We also disagree with Appellants’ argument that the proposed combination of Hudson and Reynar is motivated by impermissible hindsight. It has been held that where the claimed subject matter involves more than the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for the improvement, a holding of obviousness must be based on “an apparent reason to combine the known elements in the fashion claimed.” KSR, 550 U.S. at 417-18. That is, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Such reasoning can be based on interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art. Id. at 417-18. In the present case, the Examiner Appeal 2010-005146 Application 10/359,922 7 found that the proposed combination would have resulted in “protect[ing] the integrity of the manifest file” (see Ans. 18-19). We find this articulated rationale to be sufficient to justify this combination. In other words, we find that the proposed combination would merely require the ordinarily skilled artisan to use common sense, see KSR, 550 U.S. at 421, to appreciate that downloading from a trusted source would have improved Hudson’s integrity of the manifest file (see Ans. 19). Therefore, we agree with the Examiner that the combination of Hudson and Reynar would have suggested all the recited limitations of independent claims 1, 33, and 37 to one of ordinary skill in the art. CONCLUSIONS 1. The Examiner did not err in rejecting claims 1, 2, 4-10, 12, 15- 18, 21-23, 25-30, 33, and 37 under 35 U.S.C. § 103(a). 2. Claims 1, 2, 4-10, 12, 15-18, 21-23, 25-30, 33, and 37 are not patentable. DECISION The decision of the Examiner rejecting claims 1, 2, 4-10, 12, 15-18, 21-23, 25-30, 33, and 37 is affirmed. 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 msc Copy with citationCopy as parenthetical citation