Ex Parte Ali et al

Patent Trial and Appeal BoardNov 14, 2012

10780398 (P.T.A.B. Nov. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte VALIUDDIN ALI, MANUEL NOVOA, and MATTHEW J. WAGNER _____________ Appeal 2010-005971 Application 10/780,398 Technology Center 2400 ______________ Before DAVID M. KOHUT, BRYAN F. MOORE, and RAMA G. ELLURU, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005971 Application 10/780,398 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-46. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part the Examiner’s rejection of these claims and enter a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). INVENTION The invention is directed to a system and device for recovering a security credential based upon verification data. Spec. 1-2. Claims 1 and 14 are representative of the invention and are reproduced below: 1. A computer security system, comprising: a processor; and a memory component that stores: a security module adapted to control access to a secure computer resource by a user via a client based on verification of a security credential provided by the user; and verification data disposed on the client and accessible by the security module, the security module adapted to enable the user to recover the security credential from the client based on a response received from the user associated with the verification data. 14. A computer security system, comprising: means for controlling access to a secure computer resource associated with a client based on verification of a security credential provided by a user of the client; and means for accessing verification data disposed on the client to enable the user to recover the security credential based on a response received from the user via the controlling means. Appeal 2010-005971 Application 10/780,398 3 REFERENCE Thompson EP 1 111 495 A1 November 17, 2000 REJECTIONS AT ISSUE Claims 14-18 are rejected under 35 U.S.C. § 101 as containing non- statutory subject matter. Ans. 4-5. Claims 1-46 are rejected under 35 U.S.C. § 102(b) as being anticipated by Thompson. Ans. 6-10. ISSUES Did the Examiner err in finding that claims 14-18 contain non- statutory subject matter? Did the Examiner err in finding that Thompson discloses enabling the user to recover the security credential from the client based on a response received from the user associated with the verification data? ANALYSIS New Ground of Rejection Under 37 C.F.R. § 41.50(b): Claims 14-18 Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 14-18. Claims 14-18 are rejected under 35 U.S.C. § 112, second paragraph as being indefinite. The test for definiteness under 35 U.S.C. § 112, second paragraph is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). Appeal 2010-005971 Application 10/780,398 4 Claim 14 recites “[a] computer security system, comprising: means for controlling . . . and means for accessing.” When claims explicitly use the phrase “means for” they are presumed to invoke 35 U.S.C. § 112, sixth paragraph. see, U.S. Patent & Trademark Office, Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, Part 1, § III.C.3, 76 Fed. Reg. 7162, 7167 (Feb. 9, 2011). As such, the requirements of 35 U.S.C. § 112, second paragraph must be satisfied so that one skilled in the art would be able to identify the structure in the disclosure for performing the claimed function. See Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1381-82 (Fed. Cir. 1999); see also In re Dossel, 115 F.3d 942, 946-47 (Fed. Cir. 1997). If there is insufficient disclosure of the structure for performing the claimed function, however, a rejection under 35 U.S.C. § 112, second paragraph is appropriate. See In re Donaldson, 16 F.3d 1189, 1195 (Fed. Cir. 1994); Biomedino, LLC v. Waters Tech. Corp., 490 F.3d 946, 952 (Fed. Cir. 2007). In the present case, the corresponding structure for controlling access and for accessing verification data in claim 14 is a security module 70 and a collection module 80. See Spec. ¶¶ [0012] and [0016]. However, the Specification describes the security module 70 as comprising “software, hardware, or a combination of software and hardware.” Spec. ¶ [0012]. Additionally, Appellants’ Figure 1 shows the security module 70 and collection module 80 as boxes, but Appellants’ Specification does not provide any further description of these modules. Thus, both modules could be hardware or software. Therefore, Appellants’ Specification does not provide adequate corresponding structure nor does it adequately identify Appeal 2010-005971 Application 10/780,398 5 corresponding structure that performs the recited function(s) as required by § 112, sixth paragraph. In summary, we find that claim 14 is indefinite since Appellants have not provided sufficient disclosure of the hardware and/or software encompassing the means for limitations. As dependent claims 15-18 do not rectify the deficiencies noted above, they are also indefinite under 35 U.S.C. § 112, second paragraph for similar reasons. Furthermore, the non-statutory subject matter and prior art rejections for claims 14-18 must fall and be reversed pro forma because they necessarily are based on speculative assumption as to the meaning of these claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). Claim 1 Appellants argue that Thompson does not disclose enabling a user to recover the security credential from the client based upon a response received from the user associated with the verification data, as required by claim 1. App. Br. 8; Reply Br. 2. Appellants’ main argument focuses around the definition of the term “recovered.” App. Br. 8-9. Appellants contend that the term “recover” should be interpreted as indicating “an action that is utilized when the security credential is lost and/or is otherwise unavailable to a user.” App. Br. 9. Therefore, Appellants contend that “receiving a password from a user,” “determining whether the received password is valid,” and “changing the password” is not the same as that which is claimed. Id. We disagree. We agree with the Examiner’s interpretation of the term “recover” as “enabling the user to independently reset security credential[s]” (citing paragraph [0015] of Appellants’ Specification.) Ans. 14. In reviewing Appeal 2010-005971 Application 10/780,398 6 Appellants’ Specification, we find that the Examiner’s interpretation is consistent with the Specification. As such, we also agree with the Examiner that Thompson discloses this “recover” limitation. Specifically, the Examiner finds Thompson discloses enabling a user to reset, i.e., recover, a security credential, i.e., password, from a client. Ans. 6-7 and Fig. 4. In order to do so, the user is prompted for a password and the user enters a password, i.e., response. Ans. 6-7 and Fig. 4. The user’s response is compared to the verification data, i.e., stored password, and if they match the user can change, i.e., the user’s password. Ans. 6-7 and Fig. 4. Therefore, Thompson does disclose enabling “the user to recover the security credential from the client based on a response received from the user associated with the verification data,” as recited by claim 1. Appellants also present arguments that “Thompson does not disclose the security credential, the response, and the verification data recited by the present claims,” in the Reply Brief on pages 2-4. These arguments raise new issues not presented before in the Appeal Brief and need not be considered. See 37 C.F.R. § 41.41(a)(2). However, as indicated above, we agree with the Examiner that Thompson discloses these limitations. For the reasons indicated supra, we sustain the Examiner’s rejection of claim 1. Claims 2-13 and 19-46 Appellants make the same arguments with respect to claims 2-13 and 19-46 as with respect to claim 1. App. Br. 11-17; Reply Br. 2-4. As such, we sustain the Examiner’s rejection of claims 2-13 and 19-46 for the same reasons discussed supra with respect to claim 1. Appeal 2010-005971 Application 10/780,398 7 CONCLUSION The Examiner erred in finding that claims 14-18 contain non-statutory subject matter. The Examiner did not err in finding that Thompson discloses enabling the user to recover the security credential from the client based on a response received from the user associated with the verification data. SUMMARY The Examiner’s decision to reject claims 14-18 under 35 U.S.C. § 101 and under 35 U.S.C. § 102(b) is reversed. The Examiner’s decision to reject claims 1-13 and 19-46 under 35 U.S.C. § 102(b) is affirmed. We enter a new ground of rejection for claims 14-18 under 35 U.S.C. § 112, second paragraph. TIME PERIOD This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . Appeal 2010-005971 Application 10/780,398 8 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . . 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-IN-PART 37 C.F.R. § 41.50(b) msc