Ex Parte Zimmer et al

Patent Trial and Appeal Board

Sep 28, 2018

14679145 (P.T.A.B. Sep. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/679,145 04/06/2015
47795 7590 10/02/2018
TROP, PRUNER & HU, P.C.
1616 S. VOSS RD., SUITE 750
HOUSTON, TX 77057-2620
FIRST NAMED INVENTOR
Vincent J. Zimmer
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.
ITL.0898C2US
(Pl4854C2)
CONFIRMATION NO.
7079
EXAMINER
PAN, PEILIANG
ART UNIT PAPER NUMBER
2492
NOTIFICATION DATE DELIVERY MODE
10/02/2018 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):
tphpto@tphm.com
Inteldocs _ docketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VINCENT J. ZIMMER, BRYANT E. BIGBEE,
ANDREW J. FISH, and MARKS. DORAN
Appeal2018-003181
Application 14/679, 145 1
Technology Center 2400
Before ERIC B. CHEN, MATTHEW R. CLEMENTS, and
SCOTT E. BAIN, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-33, which constitute all claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellants identify Intel Corporation as the real party in interest.
App. Br. 3.
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Application 14/679,145
STATEMENT OF THE CASE
The Claimed Invention
Appellants' invention relates to providing a secure "pre-boot
environment" in a computer system. Spec. ,r 2. As the Specification
explains, a pre-boot environment starts when a computer system is re-
started, includes an initialization process controlled by non-volatile
firmware, and ends when the system communicates with the user. Spec.
,r,r 2-5. A pre-boot environment typically includes few or no security
measures, e.g., measures to attest the computing platform as "trusted" to the
operating system (OS). Id. at ,r 5.
In an embodiment disclosed in the Specification, upon entering a
pre-boot environment the firmware first determines whether the central
processing unit (CPU) is "security enabled," i.e., can accommodate a secure
pre-boot mode. Id. at ,r 10. If so, the initialization process adds features to
increase the security of the pre-boot environment. Id. at ,r,r 22--40. The
features added to the pre-boot environment may generate platform
information that confirms the integrity of the platform, e.g., generate an
attestation log or root key of the platform. Id. at ,r,r 22-27.
Claims 1, 10, 20, and 29 are independent. Claim 1 is illustrative of
the invention and the subject matter on appeal, and reads as follows:
1. A method comprising:
providing control to firmware responsive to a power-up
event in a computer system;
establishing a secure pre-boot environment in response
to a determination that a processor in said system is security
enabled;
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generating a digest including information about the
computer system in the secure pre-boot environment; and
initializing said processor before a trusted operating
system is loaded in said system.
App. Br. 15 (Claims App.) (emphasis added).
The Re} ections on Appeal
Claims 1, 10, 19, 20, and 25-33 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Chen et al. (U.S. 7,779,267 B2; iss.
Aug. 17, 2010) ("Chen") and Freeman et al. (U.S. 2002/0174342 Al; publ.
Nov. 21, 2002) ("Freeman"). Final Act. (March 30, 2017) 2---6.
Claims 2, 7, 8, 11, 16, 21, and 22 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Chen, Freeman, and Compaq Computer
Corporation, Hewlett-Packard Company, IBM Corporation, Intel
Corporation, Microsoft Corporation "TCP A PC Specific Implementation
Specification," version 1.0, September 9, 2001 ("TCPA"). Final Act. 6-7.
Claims 3, 6, 12, and 15 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Chen, Freeman, TCP A, and Hardy et al.
(US 6,219,420 Bl; iss. Apr. 17, 2001) ("Hardy"). Final Act. 7-8.
Claims 4, 5, 9, 13, 14, 23, and 24 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Chen, Freeman, TCPA, and Angelo
et al. (US 6,581,162 B 1; iss. June 17, 2003) ("Angelo"). Final Act. 8-9.
Claims 17 and 18 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Chen, Freeman, TCP A, and Karpuszka et al. (US
6,701,480 Bl; iss. Mar. 2, 2004) ("Karpuszka"). Final Act. 9.
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ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments presented in this appeal. Arguments which Appellants could
have made but did not make in the Briefs are deemed to be waived. See
37 C.F.R. § 4I.37(c)(l)(iv). On the record before us, we are persuaded the
Examiner erred in rejecting dependent claims 6 and 15. We are not
persuaded of error, however, regarding the remaining claims 1-5, 7-14, and
16-33. As to these remaining claims, we adopt as our own the findings and
reasons set forth in the rejections from which the appeal is taken and in the
Examiner's Answer, and provide the following discussion for highlighting
and emphasis.
Obviousness Rejection of Claims 1, 10, 19, 20, and 25-33
over Chen and Freeman
Appellants argue the Examiner erred in finding Freeman teaches or
suggests "establish[ing] a secure pre-boot environment in response to a
determination that a processor ... is security enabled," as recited in claim 1.
App. Br. 10; Reply Br. 1. Specifically, Appellants argue the Examiner erred
in relying on Figure 2 of Freeman, which Appellants contend does not teach
both "establish[ing] a secure pre-boot environment" and making any
determination regarding security "enable[ment]." Id. Appellants arguments,
however, do not persuade us of error.
Figure 2 of Freeman is reproduced below.
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Figure 2 is a flow diagram depicting method steps "for setting a secure
computer environment." Freeman ,r,r 1, 9. The steps include setting an "S-
latch" ("sticky latch") at step 204.
As the Examiner finds, Figure 2 teaches using an S-latch to "ensur[e]
a secure computing environment." Id. at ,r,r 1, 5, 15 ( emphasis added). The
"S-latch" ensures the pre-boot environment does not execute In Circuit
Emulator ("ICE") commands unless intended. Id. at ,r 19; Fig. 2. As the
Examiner further finds, the step of setting the S-latch (Fig. 2, 205) is a
precondition of executing the remaining BIOS code (Fig. 2, 206) and
instructions (Fig. 2, 207 or 209). Id. at ,r 19; Fig. 2. Moreover, at the
determination step (Fig. 2, 208), the selection of the S-latch will either
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preclude or permit executing of ICE commands at steps 207 and 209,
respectively. 2 Id.
Accordingly, we, like the Examiner, find Freeman teaches a process
that is guided both by whether the S-latch is set (Fig. 2, 205) and how the
S-latch is set (Fig 2, 208). Id. We, therefore, agree with the Examiner's
findings that Freeman teaches both "establish[ing] a secure pre-boot
environment" and doing so "in response to a determination that a processor .
. . is security enabled," as recited in claim 1. Ans. 4--5.
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting claim 1. Appellants' arguments regarding independent claims 10,
20, and 29 are redundant to claim 1, and we are not persuaded of error for
the same reasons. Dependent claims 19, 25-28, and 30-33 are not argued
separately.
Accordingly, we sustain the obviousness rejection of claims 1, 10, 19,
20, and 25-33.
Obviousness Rejection of Claims 2, 7, 8, 11, 16, 21, and 22
over Chen, Freeman, and TCP A
Appellants do not argue dependent claims 7, 8, 16, and 22 separately
from their respective independent claims. App. Br. 12. For the same
2 Freeman teaches setting the S-latch controls the pre-boot environment so as
to prevent unintended executing of ICE commands, i.e., renders the system
"security enabled" by preventing unwanted access by an ICE unit. Freeman
,r,r 3--4, 16. Confirming the S-latch is set (Fig. 2, 205) as a precondition of
commencing the pre-boot environment (Fig. 2, 206) ensures that this control
is in place, i.e., it "establish[es] a secure pre-boot environment" because only
intended ICE commands (if any) will be executed. Id.
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reasons discussed above, we are not persuaded the Examiner erred in
rejecting claims 7, 8, 16, and 22.
Regarding dependent claims 2, 11, and 21, Appellants argue the
Examiner erred in finding Chen, Freeman, and TCP A teach or suggest (i)
operations performed "while in the pre-boot environment" and (ii) "releasing
[of a] root key to the computer system only while in the secure pre-boot
environment." App. Br. 12; Reply Br. 2-3. Appellants contend these
limitations are "[not] even mentioned in the Final Rejection." App. Br. 12.
Appellants further contend the Examiner does not identify any teaching in
Freeman that requires "the secret in the fixed token is stored 'while in the
pre-boot environment' or [of] 'releasing the root key to the computer system
only while in the secure pre-boot environment."' Reply Br. 2-3. We,
however, are not persuaded of error.
First, contrary to Appellants' arguments, the record reflects that the
Examiner has explained the bases of the rejections and findings as to each
limitation. The Examiner finds Chen teaches the claimed "operations"
performed "while in the pre-boot environment" and TCP A teaches the
claimed "fixed" token. Final Act. 6 ( citing Chen col. 2, 1. 8; col. 7, 1. 59; col.
8, 11. 4--19; TCPA 13, § 1.3.6.1.2). Further, the Examiner finds the
combination of Freeman and TCP A, as further discussed below, teaches
"releasing the root key to the computer system only while in the secure
pre-boot environment." Ans. 6-7.
We also are not persuaded by Appellants' argument that the Examiner
erred in relying on Freeman. Reply Br. 2-3. Contrary to Appellants'
argument, the Examiner relies not on Freeman alone, but on the combination
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of Freeman and TCP A as teaching or suggesting the disputed "root key"
limitation. Ans. 6-7. Specifically, as the Examiner finds, TCP A teaches
releasing of a root key. Id. The Examiner further finds it would have been
obvious to perform this release in a secure pre-boot environment because
Freeman teaches "performing a task, such as executing BIOS code, only
while in the secure pre-boot environment." Id. Thus, the Examiner
determined it would have been obvious to release a root key to a secure
pre-boot environment because TCP A teaches releasing of a root key when
BIOS code is executed, and Freeman teaches executing of BIOS code in a
secure pre-boot environment. Id.; see also TCP A § 1 ("Specifically, this
document defines: ... How the BIOS, or a component thereof, functions as
the Core Root of Trust for Measurement (CRTM)."). Appellants do not
identify the alleged error in any of these findings, and we discern none on
this record. See In re Keller, 642 F.2d 413,426 (CCPA 1981) ("one cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references.").
Accordingly, we are not persuaded the Examiner erred in rejecting
claims 2, 11, and 21. For the foregoing reasons, we sustain the obviousness
rejection of claims 2, 7, 8, 11, 16, 21, and 22.
Obviousness Rejection of Claims 4, 5, 9, 13, 14, 23, and 24
over Chen, Freeman, TCP A, and Angelo
Appellants do not argue dependent claims 4, 9, 13, 23, and 24
separately from their respective independent claims. App. Br. 13-14. For
the same reasons discussed above, we are not persuaded the Examiner erred
in rejecting claims 4, 9, 13, 23, and 24.
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Regarding dependent claims 5 and 14, Appellants argue the Examiner
erred in finding Angelo teaches or suggests operations performed via a
"system management command." App. Br. 14; Reply Br. 2. Specifically,
Appellants contend the Examiner finds Angelo discloses a system
management interrupt (SMI), but that claims 5 and 14 have "nothing to do
with a [SMI]." App. Br. 14. In the Reply Brief, Appellants concede the
claimed system management command may be an SMI, but contend that
Angelo fails to teach the system management command secures a base
address. Reply Br. 2. We, however, are not persuaded of error.
The Examiner relies not on Angelo alone, but on the combination of
Freeman and Angelo as teaching or suggesting the limitations of claims 5
and 14. As the Examiner finds, Angelo teaches an SMI for accessing an
address space that is separate from ordinary memory, and thus is secure.
Ans. 11 ( citing Angelo col. 4, 11. 65-66; col. 8, 11. 11-22); Final Act. 8
(further citing Angelo col. 3, 11. 5-16); see also Angelo col. 10, 11. 33--44
( summarizing the disclosure). The Examiner further finds it would have
been obvious to implement such a secure, system management base address
for the secure operations of Freeman's pre-boot environment. Ans. 11.
Thus, the Examiner determined it would have been obvious to implement a
secure address space that is accessed by an SMI in view of Angelo, and
utilized for a pre-boot environment in view of Freeman. Appellants do not
identify the alleged error in any of these findings, and we discern none on
this record. See In re Keller, 642 F .2d at 426.
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Accordingly, we are not persuaded the Examiner erred in rejecting
dependent claims 5 and 14. For the foregoing reasons, we sustain the
obviousness rejection of claims 4, 5, 9, 13, 14, 23, and 24.
Obviousness Rejection of Claims 3, 6, 12, and 15
over Chen, Freeman, TCPA, and Hardy
Appellants do not argue dependent claims 3 and 12 separately from
their independent claims. App. Br. 13. For the same reasons discussed
above, we are not persuaded the Examiner erred in rejecting claims 3 and 12,
and we sustain the obviousness rejection of those claims.
Regarding dependent claims 6 and 15, Appellants argue the Examiner
erred in finding the prior art teaches or suggests a "system management
interrupt" in a "virtual machine." App. Br. 13; Reply Br. 2. In the Answer,
the Examiner finds "Angelo discloses 'system management interrupt'" and
"Chen discloses a 'virtual machine."' Ans. 9. Angelo, however, was not
part of the rejection from which Appellants appeal. Final Act. 7-8. The
Examiner rejected claims 6 and 15 as obvious over Chen, Freeman, TCP A,
and Hardy. Id.
Accordingly, because the Examiner now acknowledges reliance on
Angelo (rather than Chen, Freeman, TCPA, and/or Hardy) as teaching one
of the limitations in claims 6 and 15, we are persuaded of error in the
rejection that is before us. See In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA
1970) (reference relied upon to support a rejection should be "positively
include[d] ... in the statement of the rejection."). We, therefore, do not
sustain the obviousness rejection of claims 6 and 15 over Chen, Freeman,
TCP A, and Hardy.
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Obviousness Rejection of Claims 17 and 18
over Chen, Freeman, TCP A, and Karpuszka
Appellants do not argue dependent claims 1 7 and 18 separately from
the independent claims. App. Br. 14. For the same reasons discussed above,
we are not persuaded the Examiner erred in rejecting claims 17 and 18. We,
therefore, sustain the obviousness rejection of claims 17 and 18.
DECISION
We affirm the Examiner's decision rejecting claims 1-5, 7-14, and
16-33.
We reverse the Examiner's decision rejecting claims 6 and 15.
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). See 37 C.F.R.
§ 41.50(±).
AFFIRMED-IN-PART
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