Ex Parte Takala et al

Patent Trial and Appeal Board

Feb 16, 2017

12611403 (P.T.A.B. Feb. 16, 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.
12/611,403 11/03/2009 Janne Petted Takala 042933/381002 2431
10949 7590
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
EXAMINER
LAGOR, ALEXANDER
ART UNIT PAPER NUMBER
2491
NOTIFICATION DATE DELIVERY MODE
02/21/2017 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JANNE PETTERI TAKALA
and RAUNO JUHANI TAMMINEN
Appeal 2016-002072
Application 12/611,403
Technology Center 2400
Before JOHNNY A. KUMAR, CARL L. SILVERMAN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-002072
Application 12/611,403
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Exemplary Claim
Exemplary claim 1 under appeal reads as follows:
1. An apparatus comprising:
at least one processor; and
at least one memory including computer program code,
the at least one memory and the computer program code
configured to, with the at least one processor, cause the
apparatus to at least:
perform a first security check on critical security
software during a boot sequence of a device, wherein the
critical security software is software that is able to expose
confidential material on the device and the critical security
software is segmented from general critical software;
power down or reset the device in response to failure of
the first security check;
perform a second security check on at least a first portion
of general critical software in response to the first security
check passing;
enable operation of the device with respect to general
critical software that passes the second security check; and
disable functionality associated with general critical
software that fails the second security check.
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Application 12/611,403
Rejections1
Claims 1—5, 10-12, and 16—18 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hu (US 2009/0193211 Al, July 30, 2009) and
Newberry (US 2009/0285280 Al, Nov. 19, 2009). Final Act. 7-12.
Claims 6, 7, 9, 13—15, 19, and 20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hu, Newberry, and Rager
(US 2008/0005577 Al, Jan. 3, 2008). Final Act. 13-17.
Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hu, Newberry, and Park (US 6,138,005, Oct. 24, 2000). Final Act. 18—
19.
Appellants ’ Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because the combination of Hu and Newberry does
not teach “Critical Security Software.” App. Br. 10-17. In particular,
Appellants contend:
Finally, if the hash table is critical security software (as
argued by the Examiner and disputed by the Appellant) it also
must be the general security software. The Examiner’s Answer
cannot have it both ways. While the Appellant disputes such a
finding that the hash table is software, the Examiner’s Answer
is correct that hash table is the only structure used in Hu to
“perform a second security check” or any security check at all.
Hu paragraph 0010. Said differently, the only security checks
in Hu that are performed are security checks on the hash table
meaning that the general security software cannot be the
software image as alleged by the Examiner. Accordingly,
because the claims recite that the critical security software is
segmented from general critical software and no such
1 Separate patentability is not argued for claims 2—6 and 8—20. Except for
our ultimate decision, these claims are not discussed further herein.
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Application 12/611,403
segmentation is found in Hu, Hu fails to teach or suggest the
claims.
. . . [T]he software image is the only software that is
found in Hu and is a single area of commingled software,
namely the software image shown in Figure 2 of Hu. Hu states
that the “[s] oft ware image 232 comprises an image of operating
system and application software used to run embedded system
200.” Hu, paragraph 0039. That said, the software image of
Hu, which appears to contain all of the software of Hu, cannot
be the critical security software as the software image of Hu is
already relied upon to be the “general security software.'1'’
Unlike the claimed invention, it is clear that Hu does not
segment its software. Said differently, because all of the
software in Hu is commingled, Hu fails to teach or suggest the
critical security software of the claims.
Reply Br. 5—6 (emphasis added, hereinafter “general security software”
feature).
2. Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because
the person of ordinary skill in the art would not have combined
these references [Hu and Newberry], Newberry is clear that its
system must analyze all of the “onboard software” upon start
up. Newberry, paragraph 0017. In contrast, Hu is explicit that
all of the “on-board software” must not be scanned.
Hu is clear that such a technique, namely scanning all of
the software, is suboptimal as Hu states that the technique
imposed must not significantly delay boot-up time. . . .
... Hu specifically teaches away from its combination
with Newberry such that the combination is improper.
Accordingly, there simply is no reason to look beyond the
claims as Hu already is configured to “prevent or impede
operation of the apparatus when hacking is detected to prevent
unauthorized capture or viewing of digital content,” and if it
was not, Hu explicitly discourages the person of ordinary skill
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Appeal 2016-002072
Application 12/611,403
in the art from performing the scanning of the full software
image as disclosed by Newberry.
App. Br. 18—21 (emphasis in original omitted, emphasis ours).
3. Appellants contend that the Examiner erred in rejecting claim 7 under
35 U.S.C. § 103(a) because “[tjhere are absolutely no teachings in any
of the references that illustrate enabling or disabling operation in
response to an open or closed variant.” App. Br. 21.
Issue on Appeal
Did the Examiner err in rejecting claims 1—20 as being obvious?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner erred. We are not persuaded by Appellants’
arguments. 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. We highlight the following for emphasis.
As to Appellants’ above contention 1, Appellants’ arguments are not
commensurate in scope with the claims because the claims do not recite the
general security software feature.
As to Appellants’ above contention 2, we disagree. “A reference may
be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” Ricoh Co., Ltd. v. Quanta Computer, Inc., 550 F.3d
1325, 1332 (Fed. Cir. 2008) (citations omitted). A reference does not teach
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Application 12/611,403
away if it merely expresses a general preference for an alternative invention
from amongst options available to the ordinarily skilled artisan, and the
reference does not discredit or discourage investigation into the invention
claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
One of ordinary skill in the art would not be discouraged from using
the security software that “can prevent decryption of sensitive data if a
security check fails” of Newberry in the system of Hu, for the reason stated
by the Examiner: to prevent or impede operation of the apparatus when
hacking is detected in order to prevent unauthorized capture or viewing of
digital content. Final Act. 10.
As to Appellants’ above contention 3, we disagree. The Examiner has
rebutted each of those arguments in the Answer (pages 8—9). In the Reply
Brief, Appellants have not rebutted these findings. Therefore, we agree with
the Examiner’s findings and underlying reasoning and adopt them as our
own.
Thus, we are not persuaded of Examiner error. Therefore, we sustain
the Examiner’s § 103 rejections of claims 1—20.
DECISION
The Examiner’s rejection of claims 1—20 under 35 U.S.C. § 103 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)(l)(iv).
AFFIRMED
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