Ex Parte Wang et al

Patent Trial and Appeal Board

Feb 11, 2016

12975738 (P.T.A.B. Feb. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/975,738 12/22/2010
50400 7590 02/16/2016
SCHWEGMAN LUNDBERG & WOESSNER/SAP
P.O. BOX 2938
MINNEAPOLIS, MN 55402
Hualin Wang
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.
2058.579US 1 6084
EXAMINER
WOLDEMARIAM, NEGA
ART UNIT PAPER NUMBER
2433
NOTIFICATION DATE DELIVERY MODE
02/16/2016 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUALIN WANG and YANG-CHENG FAN
Appeal2014-003117
Application 12/975,738
Technology Center 2400
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-003117
Application 12/975,738
l. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) of the final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
A. INVENTION
According to Appellants, the invention relates to providing "session
secure web content delivery." (Abstract).
B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A method comprising:
initiating a session on a web server in response to a
resource request received from a requestor;
generating a session key that is in scope with regard to
and during the session;
retrieving the requested resource;
identifying Uniform Resource Identifiers (URI's) included
within data of the requested resource;
generating cipher text for at least a portion of each of the
identified URI's according to an encryption algorithm utilizing
the session key as an encryption key;
replacing at least the portion of the identified URI's within
the retrieved requested resource with respective cipher text; and
sending the requested resource including the cipher text to
the requestor.
(disputed limitations lettered and emphasized)
C. REJECTION
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
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Application 12/975,738
Beck US 2007 /0239998 Al
(hereinafter "Beck")
Giblin et al. US 2008/0313469 Al
(hereinafter "Giblin")
Oct. 11, 2007
Dec. 18, 2008
Claims 1-20 stand rejected under§ 103(a) as being unpatentable over
Beck and Giblin.
II. ISSUE
The principal issue before us is whether the Examiner erred in finding
the combination of Beck and Giblin teaches or would have suggested
"generating cipher text for at least a portion of each of the identified URI's
according to an encryption algorithm utilizing the session key as an
encryption key" where the "session key" is generated "during the session"
(claim 1 ).
III. FD'.JDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Beck
1. Beck discloses a system for dynamic binding of access and usage
rights to computer-based resources. (Title).
2. Beck teaches that, to send the requested content to the client, the
server may secure the content in accordance with a session key
negotiated with the client. (i-f 59).
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Giblin
1. Giblin discloses a resource provider server's use of symmetric or
asymmetric encryption keys in order to hide resources or other
information in the URI. (i-fi-f 26, 41, 47).
IV ANALYSIS
Appellants contend:
Giblin generally discloses 'stateless methods for resource hiding
and access control support' using 'URI encryption,' Giblin at
Title. However, Giblin explicitly relies on the use of a
predetermined key for encryption and decryption .... The use of
a predetermined key allows Giblin to encrypt/ decrypt in a
stateless manner (i.e., not unique to a particular session of
interaction between a client and a web server.) In contrast,
Appellants' claimed embodiments use a dynamically created
session key, unique to a particular session of interaction between
a client and a web server, to encrypt/decrypt a URI (or portions
of a URI) .... Therefore, Appellants' embodiments are stateful,
rather than stateless as in Giblin.
(App. Br. 11-12).
Appellants further explain:
The stateful nature of Appellants' embodiments obviates the need
for a client and the web server to agree upon a predetermined key
for encryption and decryption ofURis between the client and the
web server. Furthermore, because Appellants' embodiments
encrypt URis using the session key, which is unique to each
session of interaction between a client and a web server, the URis
returned to the client will be unresolvable by other users; this
serves to prevent unauthorized users from accessing resources
secured by Appellants' embodiments despite URI sharing
between authorized and unauthorized users.
(App. Br. 12).
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Appellants, in conclusion, contend "in view of the admitted deficiency
of Beck and the failure of Giblin to provide a teaching or suggestion of a
stateful encryption key ... the asserted combination of Beck and Giblin fails
to support a prima facie showing of obviousness with regard to independent
claims 1, 8, and 15." (App. Br. 12)
We consider all of Appellants' arguments and evidence presented, and
disagree with Appellants' contentions regarding the Examiner's rejections of
the claims. We adopt as our own: ( 1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken, and (2) the
reasons set forth by the Examiner in the Answer in response to arguments
made in Appellants' Appeal Brief. We highlight and address specific
findings and arguments below:
We note, at the outset, that Appellants' contentions on argued words
"stateful," and "dynamically created" are not commensurate in scope with
the recited language of claim 1. (App. Br. 11-12). In particular, claim 1
does not require encryption in a "stateful" manner, nor does it require
"dynamically" created session keys. Instead, claim 1 merely requires "an
encryption algorithm utilizing the session key as an encryption key" where
the "session key" is generated "during the session."
Regarding Appellants' argument that the embodiments disclosed in
the Specification are "stateful," rather than "stateless as in Giblin" (App.
Br. 11-12), absent a clear limiting definition, we do not read limitations
from the Specification into the claims.
Our analysis follows our reviewing court's guidance:
Though understanding the claim language may be aided by the
explanations contained in the written description, it is important
not to import into a claim limitations that are not a part of the
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claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim
language is broader than the embodiment.
SuperGuide Corp. v. DirecTV Enters, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004) (citing Electro Med. Sys. S.A. v. Cooper Life Sci., Inc., 34 F.3d 1048,
1054 (Fed. Cir. 1994). "[A]lthough the specification often describes very
specific embodiments of the invention," Phillips v. AWH Corp., 415 F.3d
1303, 1323 (Fed. Cir. 2005), the U.S. Court of Appeals for the Federal
Circuit "ha[ s] repeatedly warned against confining the claims to those
embodiments. [C]laims may embrace 'different subject matter than is
illustrated in the specific embodiments in the specification."' (Id). We note
because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
Here; we are not persuaded by Appellants' arguments and conclude
the plain language of method claim 1 does not expressly limit the creation or
operating environment of encryption keys.
Furthermore, we are also not persuaded the Examiner erred in
rejecting claim 1 based on the combination of the cited Beck and Giblin
references.
Beck's session key, which is negotiated with the client, teaches or
suggests using a "session key" generated "during the session," as recited in
claim 1. (FF 1, 2). We find no error with the Examiner's reliance on Beck
for teaching or suggesting the contested claim limitation "generating a
session key ... during the session." (Final Act. 4--5 and Ans. 13-14, citing
Beck i-f 59). That is, we are persuaded by the Examiner's finding Beck's
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session key created as a result of negotiating with the client during the
session teaches or suggests "generating a session key ... during the session"
as recited in claim 1.
Further, we note Appellants are arguing the references separately as
Appellants do not address the Examiner's findings in the Final Rejection
regarding the Beck reference. Since the Examiner rejects the independent
claims 1, 8, and 15 as obvious over the combined teachings of Beck Giblin,
the test for obviousness is not what the references show individually but
what the combined teachings would have suggested to one of ordinary skill
in the art. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
The Supreme Court has determined the conclusion of obviousness can
be based on the 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. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The skilled
artisan "is also a person of ordinary creativity, not an automaton." Id. at
420-421.
On this record, we are not persuaded that generating a session key as
an encryption key to protect the URI, as taught or suggested by Giblin, and
where the session key is generated during the session, as disclosed by Beck,
would have been "uniquely challenging or difficult for one of ordinary skill
in the art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). In fact, Giblin suggests a
person of skill in the art will recognize the use of any one of many industry
standard or non-standard encryption algorithms may be used in encrypting
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URls requested by a user. (Final Act. 5, citing Giblin par. 26). Therefore,
we find the Examiner's proffered combination of familiar prior art elements
according to their established functions would have conveyed a reasonable
expectation of success to a person of ordinary skill having common sense at
the time of the invention.
Accordingly, we find Appellants have not shown the Examiner erred
in rejecting independent claim 1 and independent claims 8 and 15 falling
therewith (App. Br. 11), and claims 2-7, 9-14, and 16-20, depending
respectively therefrom, but not separately argued over Beck and Giblin.
CONCLUSION AND DECISION
We affirm the Examiner's rejection of claims 1-20 under 35 U.S.C.
§ 103(a).
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) (2011).
AFFIRMED
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