Ex Parte De Atley et al

Patent Trial and Appeal Board

Nov 29, 2016

12398001 (P.T.A.B. Nov. 29, 2016)

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.
12/398,001 03/04/2009 Dallas De Atley 04860.P6320 9239
45217 7590 11/30/2016
APPLE INC./BSTZ
BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
1279 OAKMEAD PARKWAY
SUNNYVALE, CA 94085-4040
EXAMINER
ALATA, AYOUB
ART UNIT PAPER NUMBER
2494
MAIL DATE DELIVERY MODE
11/30/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DALLAS DE ATLEY, HEIKO PANTHER, MITCHELL ADLER,
SIMON COOPER, MICHAEL BROUWER, and MATT REDA1
Appeal 2015-007886
Application 12/398,001
Technology Center 2400
Before DEBRA K. STEPHENS, JON M. JURGOVAN, and
DAVID J. CUTITTAII, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3, 6—10, 12, 13, 15, 18—22, 24, 25, 27, 30—34
and 36, all pending claims of the application.2 We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Apple, Inc. See
Appeal Brief 1.
2 Claims 2, 4, 5, 11, 14, 16, 17, 23, 26, 28, 29, and 35 are cancelled.
Appeal 2015-007886
Application 12/398,001
STATEMENT OF THE CASE
According to Appellants, the application relates to controlling the
execution of software on a device by allowing software developers to have
certain trusted rights in developing the software. Spec. 114.3 Claims 1,13,
and 25 are independent. Claim 1 is illustrative and is reproduced below with
disputed limitations emphasized:
1. A computerized method of authorizing software on an
electronic device including a processor, the method comprising:
receiving, by a kernel executing in a trusted space of an operating
system executing on the processor, a request to execute a software
module stored on the electronic device, the software module created by
a developer trusted to test software on the electronic device;
communicating, by the kernel, data indicative of the software
module to a policy service executing as a trusted process in an
untrusted space of an operating system executing on the processor, the
data indicative of the software module comprising at least one
entitlement requested for executing the software module, and the policy
service having been verified trusted upon execution;
obtaining, by the policy service, a digest generated from at least
one portion of executable instructions for the software module, the
digest signed by the developer;
identifying, by the policy service, one or more profdes for the
developer associated with the software module, the one or more profiles
created and signed by a trusted authority and comprising data indicative
of at least one entitlement permitted for executing software created by
the developer;
3 Throughout this Opinion, we refer to: (1) Appellants’ Specification filed
March 4, 2009 (Spec.); (2) the Final Office Action (Final Act.) mailed July
22, 2014; (3) the Appeal Brief (Appeal Br.) filed Mar. 23, 2015; (4) the
Examiner’s Answer (Ans.) mailed June 22, 2015; and (5) the Reply Brief
(Reply Br.) filed Aug. 24, 2015.
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Appeal 2015-007886
Application 12/398,001
authenticating, by the policy service, the at least one requested
entitlement based at least in part on verifying the at least one requested
entitlement against the at least one permitted entitlement in the one or
more identified profiles and verifying the digest;
communicating, by the policy service, the at least one requested
entitlement to the kernel; and
executing, by the kernel, the software module on the processor
based on the at least one requested entitlement.
REFERENCES
The art relied upon by the Examiner in rejecting the claims on appeal:
Lin et al. (“Lin”) US 2002/0078380 A1 June 20, 2002
Fanton et al. (“Fanton”) US 2006/0150256 Al July 6, 2006
Cambridge US 7,080,000 B1 July 18,2006
REJECTION
Claims 1, 3, 6—10, 12, 13, 15, 18—22, 24, 25, 27, 30-34 and 36 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Fanton, Lin,
and Cambridge. Final Act. 6—18.
Our review in this appeal is limited only to the above rejection and
issues raised by Appellants. We have not considered other possible issues
that have not been raised by Appellants and which are, therefore, not before
us. See 37 C.F.R. § 41.37(c)(l)(iv) (2014).
ISSUE
Based on Appellants’ arguments, the dispositive issue presented on
appeal is whether the Examiner errs in finding that the combination of
Fanton, Lin, and Cambridge teaches or suggests “a policy service,” as
recited in claim 1.
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Application 12/398,001
ANALYSIS
In the Final Office Action, the Examiner relies upon Fanton’s
whitelist database system to teach or suggest the claimed “policy service.”
Final Act. 7. In the Answer, the Examiner modifies the rejection to rely
upon Fanton’s “user mode service layer 110” to teach the claimed “policy
service,” instead of Fanton’s whitelist database system. Ans. 4 (citing
Fanton | 62—63).
In response to the Examiner’s modified rationale, Appellants argue
Fanton does not teach or suggest that the services provided by the user mode
service layer include obtaining a digest as claimed. Reply Br. 2. Appellants
further argue Fanton does not teach or suggest that the services provided by
the user mode service layer include identifying developer profiles as
claimed. Reply Br. 2.
We find Appellants’ arguments persuasive. With respect to
“obtaining, by the policy service, a digest,” as claimed, the Examiner finds
this feature is taught by Fanton’s MRU cache rather than Fanton’s “user
mode service layer 110.” Final Act. 7. With respect to “identifying, by the
policy service, one or more profiles for the developer,” as claimed, the
Examiner finds this feature is also taught by Fanton’s MRU cache rather
than Fanton’s “user mode service layer 110.” Final Act. 7. We note that in
modifying, from the Final Office to the Answer, the rejection rationale to
rely upon Fanton’s user mode service layer to suggest the claimed policy
service, the Examiner fails to revise the remainder of the rationale in the
Answer to ensure consistency with this modification. Thus, while claim 1
recites that the policy service performs various functions including obtaining
a digest, identifying one or more profiles, authenticating the at least one
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Application 12/398,001
requested entitlement, and communicating the at least one requested
entitlement to the kernel, the Examiner fails to explain how the functions are
performed by Fanton’s user mode service layer, or why one skilled in the art
would have found it obvious to perform the functions with different
structure, such as Fanton’s MRU cache.
The Examiner must show or provide reasoning as to how the prior art
structure relied upon for teaching the “policy service” performs the steps of
obtaining and identifying as recited in claim 1. Alternatively, the Examiner
must explain why an ordinarily skilled artisan would have found it obvious
to combine the functions in one element. That is, “there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness” taking into account the inferences and creative
steps that a person of ordinary skill in the art would employ. KSR Int 7 Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)).
In short, we conclude the Examiner’s findings are premised on an
inconsistent mapping of the “policy service” in claim 1. In connection with
the “obtaining” and “identifying” limitations, the Examiner maps the “policy
service” to Fanton’s MRU cache. Final Act. 7. But, in connection with the
“communicating, by the kernel” limitation of claim 1, the Examiner maps
the “policy service” to Fanton’s “user mode service layer 110.” Ans. 4. The
Examiner also provides no findings to support combining the teachings of
the reference in a manner that maps “policy service” consistently or to
adequately explain a skilled person’s inferences and creative steps.
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Application 12/398,001
Accordingly, we concur with Appellants’ argument that the Examiner
has failed to establish Fanton teaches or suggests that the services provided
by the user mode service layer include “obtaining, by the policy service, a
digest” and “identifying, by the policy service, one or more profiles,” as
claimed.
Because we are unable to ascertain the basis in Fanton for the
disputed findings discussed above, we are constrained to reverse the
Examiner’s 35 U.S.C. § 103(a) rejection of claim 1.
Because we agree with at least one of the dispositive arguments
advanced by Appellants for claim 1, we need not reach the merits of
Appellants’ other contentions.
We also are constrained to reverse the rejection of independent claims
13 and 25, which recite commensurate limitations, and of dependent claims
3, 6—10, 12, 15, 18—22, 24, 27, 30-34 and 36, which stand with their
respective independent claims.
DECISION
We reverse the Examiner’s decision rejecting claims 1, 3, 6—10, 12,
13, 15, 18-22, 24, 25, 27, 30-34 and 36, under 35 U.S.C. § 103(a).
REVERSED
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