Ex Parte Waltermann et al

Board of Patent Appeals and Interferences

Jun 5, 2009

10898823 (B.P.A.I. Jun. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROD DAVID WALTERMANN, MICHAEL DOUGLAS
ANDERSON, ERNEST NELSON MANDESE, and KERRY GRAHAM
SANDERS
____________

Appeal 2009-002105
Application 10/898,8231
Technology Center 2400
____________

Decided: 2 June 5, 2009
____________

Before JEAN R. HOMERE, JAY P. LUCAS, and
CAROLYN D. THOMAS, Administrative Patent Judges.

C. THOMAS, Administrative Patent Judge.

1 Application filed July 24, 2004. The real party in interest is Lenovo
Corporation.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-002105
Application 10/898,823

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DECISION ON APPEAL

I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection
of claims 1-6 and 29-36 mailed January 22, 2008, which are all the claims
remaining in the application, as claims 7-28 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellants invented a system, method, and computer storage medium
for authenticating a software load to a data processing system that includes a
stored basic input/output system (BIOS). The method of the present
invention is initiated responsive to initiating an install or load transfer of
computer software to or within a data processing system. (Spec. 25,
Abstract.)

B. ILLUSTRATIVE CLAIMS
The appeal contains claims 1-6 and 29-36. Claims 1, 29 and 35 are
independent claims. Claims 1 and 35 are illustrative:
1. A method for authenticating a software load to a data
processing system, said method comprising:
obtaining an encrypted basis [sic] input/output system
(BIOS) hash from a persistently stored location in a non-volatile
memory within said data processing system, wherein said encrypted
BIOS hash is generated by encrypting a BIOS of said data processing
system using a private key;
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decrypting said encrypted BIOS hash using a public key
associated with said software load;
generating a new BIOS hash of said BIOS using a hash
algorithm associated with said software load;
comparing said decrypted BIOS hash with said new
BIOS hash; and
allowing said software load to continue when said
decrypted BIOS hash matches said new BIOS hash.

35. A data processing system capable of authenticating a
software load, said data processing system comprising:
an installation disk having
program code means for obtaining an encrypted
basis [sic] input/output system (BIOS) hash from a
persistently stored location in a non-volatile
memory within said data processing system,
wherein said encrypted BIOS hash is generated by
encrypting a BIOS of said data processing system
using a private key;
program code means for decrypting said encrypted
BIOS hash using a public key associated with said
software load;
program code means for generating a new BIOS
hash of said BIOS using a hash algorithm
associated with said software load; and
a processing unit for comparing said decrypted BIOS
hash with said new BIOS hash, and for allowing said software load
to continue when said decrypted BIOS hash matches said new BIOS
hash.

C. REFERENCE
The sole reference relied upon by the Examiner as evidence in
rejecting the claims on appeal is as follows:
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Application 10/898,823

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Angelo US 6,625,730 B1 Sep. 23, 2003

D. REJECTION
The Examiner entered the following rejection which is before us for
review:
(1) Claims 1-6 and 29-36 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Angelo.

II. PROSECUTION HISTORY
Appellants appealed from the Final Rejection and filed an Appeal
Brief (App. Br.) on February 22, 2008. The Examiner mailed an Examiner’s
Answer (Ans.) on April 11, 2008. Appellants filed a Reply Brief (Reply Br.)
on April 18, 2008.

III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Angelo
1. In Angelo, “BSIG represents an encrypted BIOS hash value,
indicating a valid BIOS fingerprint. Thus, BSIG represents what the BIOS
hash value should be, while BH represents the actual current BIOS hash
value.” (Col. 7, ll. 15-18.)
2. In Angelo:
Each time the system is powered-on (block 306), the validation
routine is implemented. First, the Boot Block reads the BIOS
and calculates the current BIOS hash value (block 308). Next,
the Boot Block uses the Public Key to decrypt the BIOS
signature (block 310). If the BIOS is valid, the BIOS hash
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value (BH) should equal the decrypted BIOS signature value
(BDSIG). The values may be compared using a “checksum”
algorithm or Cyclic Redundancy Check (CRC) to detect any
differences. Thus, a comparison between BH and BDSIG is made
(block 312).
(Col. 7, ll. 19-28.)
3. Angelo discloses that “a Public Key (KPUB) is stored in the Boot
Block (block 300). A hash algorithm is also stored in the Boot Block (block
302).” (Col. 7, ll. 7-10.)
4. Angelo discloses that “an exemplary processor-based device,
generally designated by the reference numeral 10, . . . if the device 10 is
portable . . .” (col. 3, ll. 14-24.)
5. Angelo discloses that “the non-volatile memory 28 may include a
high capacity memory such as a disk or a tape drive memory.” (Col. 3, ll.
65-67.)
6. Angelo discloses that “typically the BIOS is stored in FLASH
memory or a non-volatile Random Access Memory (NVRAM) to allow the
contents of the BIOS to be changed.” (Col. 1, ll. 47-50.)

IV. PRINCIPLES OF LAW
Claim Interpretation
During examination, claims are to be given their broadest reasonable
interpretation consistent with the specification, and the language should be
read in light of the specification as it would be interpreted by one of ordinary
skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004) (citations omitted). The Office must apply the broadest
reasonable meaning to the claim language, taking into account any
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definitions presented in the specification. Id. (citing In re Bass, 314 F.3d
575, 577 (Fed. Cir. 2002)).
Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis
Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005), citing Minn.
Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d
1559, 1565 (Fed. Cir. 1992). “Anticipation of a patent claim requires a
finding that the claim at issue ‘reads on’ a prior art reference.” Atlas Powder
Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999) (“In other words, if
granting patent protection on the disputed claim would allow the patentee to
exclude the public from practicing the prior art, then that claim is
anticipated, regardless of whether it also covers subject matter not in the
prior art.”) (internal citations omitted).

V. ANALYSIS
Grouping of Claims
In the Brief:
Group I: Appellants argue claims 1, 2, 29-31, 33, and 34 as a group
(App. Br. 4-5). For claims 2, 29-31, 33, and 34, Appellants repeat the same
argument made for claim 1. We will, therefore, treat claims 2, 29-31, 33,
and 34 as standing or falling with claim 1.
Group II: Appellants argue claims 3, 5, 6 as a group (App. Br. 4).
For claims 5 and 6, Appellants repeat the same argument made for claim 3.
We will, therefore, treat claims 5 and 6 as standing or falling with claim 3.
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Group III: Appellants argue claims 4, 32, 35, and 36 as a group
(App. Br. 5). For claims 4, 32, and 36, Appellants repeat the same argument
made for claim 35. We will, therefore, treat claims 4, 32, and 36 as standing
or falling with claim 35.
See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588,
590 (Fed. Cir. 1991).

Claim Construction
"Our analysis begins with construing the claim limitations at issue."
Ex Parte Filatov, No. 2006-1160, 2007 WL 1317144, at *2 (BPAI Apr. 20,
2007). To determine whether Angelo anticipates claims 1-6 and 29-36, we
must first determine the scope of the claims. Our reviewing court in Phillips
v. AWH Corp stated:
The claims, of course, do not stand alone. Rather, they are part
of “a fully integrated written instrument,” Markman, 52 F.3d at
978, consisting principally of a Specification that concludes
with the claims. For that reason, claims “must be read in view
of the specification, of which they are a part.” Id. at 979. As we
stated in Vitronics, the Specification “is always highly relevant
to the claim construction analysis. Usually, it is dispositive; it
is the single best guide to the meaning of a disputed term.” 90
F.3d at 1582.
415 F.3d 1303, 1315 (Fed. Cir. 2005), cert. denied, 546 U.S. 1170
(2006).

In the claimed invention, Appellants use the term “associated with
said software load,” particularly in claims 1, 29, and 35. We note that the
language “associated with” significantly broadens any required nexus or
operative coupling between the claimed “public key” and the “software
load” and also between the “hash algorithm” and the “software load.” In
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other words, the claimed “associated with said software load” is broad
enough to include any relationship (direct or indirect) with any software
load, and Appellants have not provided any evidence or limiting definition
to the contrary.

The Anticipation Rejection
We next consider the Examiner’s rejection of claims under 35 U.S.C.
§ 102(b) as being anticipated by Angelo.

Claims 1, 2, 29-31, 33, and 34
Appellants contend that “the claimed encrypted BIOS hash is
decrypted by ‘using a public key associated with said software load’
(emphasis added), and not the Boot Block as taught by Angelo.” (App. Br.
4.) Appellants further contend that “[a]ccording to Angelo, the Boot Block
reads the BIOS and calculates the current BIOS hash value (col. 7, lines 20-
22). In contrast, the claimed new BIOS hash is generated by ‘using a hash
algorithm associated with said software load’ (emphasis added), and not the
Boot Block as taught by Angelo.” (Id. at 5.)
The Examiner found that “‘software load’ is not clear enough to
indicate what kind of software is loaded to the system. Examiner interpreted
the claim language ‘software load’ as any kind of software loaded to the
system by BIOS. . . . Angelo teaches a software load, column 1, lines 32-35,
when a computer is initially turned on” (Ans. 5-6).
Issue: Have Appellants shown that the Examiner erred in finding that
Angelo discloses using a public key/hash algorithm associated with a
software load?
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As noted supra, “associated with said software” includes any
relationship with any software load. Here, the Examiner has identified a
series of instructions from a specified start-up routine (e.g., a BIOS) in
Angelo (Ans. 6: see also col. 1, lines 32-35). Thus, the claimed “software
load” reasonably reads on Angelo’s BIOS start-up routine initiated by the
Boot Block. Angelo further discloses that upon power-up the start-up
routine is implemented and a Boot Block calculates the current BIOS hash
value and uses the Public Key to decrypt the stored BIOS signature.
Thereafter, the encrypted BIOS hash value BSIG and a current BIOS hash
value BH are compared. (FF 1-2). In Angelo, a hash algorithm is used to
calculate the current hash value (FF 3). Each of the above noted steps in
Angelo can be performed each time the system is powered-on, i.e., each time
the start-up routine is implemented (FF 2).
In other words, the above disputed claim features read on Angelo’s
decrypting of a BIOS hash using a public key associated with the start-up
routine (i.e., software load) and generating a new BIOS hash using a hash
algorithm associated with the start-up routine (i.e., software load).
Although Appellants argue that the claimed invention is directed to
preventing unauthorized installation of software programs from a computer
readable medium, such as a compact disc, Appellants have chosen to draft
the claims far more broadly. Hence, the claimed “associated with said
software load” reads on any software load, including Angelo’s start-up
routine.
As to the other recited elements of claim 1, Appellants provide no
argument to dispute that the Examiner has correctly shown where all these
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claimed elements appear in the prior art. Thus, we deem those arguments
waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2008).
Thus, Appellants have not persuaded us of error in the Examiner’s
conclusion of anticipation for representative claim 1. Therefore, we affirm
the Examiner’s § 102 rejection of independent claim 1 and of claims 2, 29-
31, 33, and 34, which fall therewith.

Claims 3, 5, and 6
Appellants contend that “Angelo teaches a non-volatile memory 204
for storing BIOS routine . . . Since non-volatile memory 204 is permanently
connected to processor 200 and CMOS device 202, non-volatile memory
204 cannot be utilized as a portable device.” (Reply Br. 2.)
The Examiner found that “Angelo teaches this limitation as (column
5, line[s] 30-36, BIOS routine may be stored in non-volatile random access
memory) . . .” (Ans. 6).
Issue: Have Appellants shown that the Examiner erred in finding that
Angelo discloses software programs associated with said software load are
stored in a portable computer readable medium?

Angelo discloses that its processor-based device can be portable (FF
4) and further that the non-volatile memory may include a disk (FF 5) or
Flash memory (FF 6). Thus, the claimed “portable computer readable
medium” clearly reads on Angelo’s portability and disk/flash embodiments.
Thus, Appellants have not persuaded us of error in the Examiner’s
conclusion of anticipation for representative claim 3. Therefore, we affirm
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the Examiner’s § 102 rejection of dependent claim 3 and of claims 5 and 6,
which fall therewith.

Claims 4, 32, 35, 36
Appellants contend that “[t]he intention of the claimed invention is to
prevent unauthorized installation of software programs from a computer
readable medium such as an installation disk, as recited in Claim 35, and
since Angelo does not have such intentions, there is no mentioning of a
software load associated with an installation disk.” (App. Br. 5.)
The Examiner found that “Angelo teaches this limitation as (column
5, line[s] 30-36, BIOS routine may be stored in non-volatile random access
memory) . . .” (Ans. 6).
Issue: Have Appellants shown that the Examiner erred in finding that
Angelo uses an installation disk?

As noted supra, Angelo discloses that the non-volatile memory may
include a disk (FF 5) or Flash memory (FF 6). Contrary to Appellants
contentions, Angelo does not limit its non-volatile memory to non-portable
embodiments. Angelo clearly illustrates that its process-based device,
including a non-volatile memory, can be portable with non-volatile disk
memory (FF 4-5). Thus, the claimed “installation disk” clearly reads on
Angelo’s disk/flash embodiments.
Thus, Appellants have not persuaded us of error in the Examiner’s
conclusion of anticipation for representative claim 35. Therefore, we affirm
the Examiner’s § 102 rejection of independent claim 35 and of claims 4, 32,
and 36, which fall therewith.
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VI. CONCLUSIONS
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-6 and 29-36 under 35 U.S.C. § 102(e).
Thus, claims 1-6 and 29-26 are not patentable.

VII. DECISION
In view of the foregoing discussion, we affirm the Examiner’s
rejection of claims 1-6 and 29-36.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

erc

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