Ex Parte Glew et al

Patent Trial and Appeal Board

May 29, 2013

10039961 (P.T.A.B. May. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte ANDREW F. GLEW, JAMES A. SUTTON,
LAWRENCE O. SMITH, DAVID W. GRAWROCK, GILBERT NEIGER,
and MICHAEL A. KOZUCH
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Appeal 2011-000163
Application 10/039,961
Technology Center 2400
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Before JOSEPH F. RUGGIERO, SCOTT R. BOALICK, and
BARBARA A. PARVIS, Administrative Patent Judges.

PARVIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants seek review under 35 U.S.C. § 134(a) of a final rejection
of claims 1, 2, 4-6, 8, 9, 12-18, 22, and 23. We have jurisdiction under 35
U.S.C. § 6(b). We AFFIRM.
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BACKGROUND
Appellants’ disclosed invention relates to techniques for launching
execution of authenticated code (AC) modules that may be used for various
operations such as establishing and/or maintaining a trusted computing
environment. Spec. ¶ [0014]. Independent claim 1 is illustrative and is
reproduced below:
1. A processor comprising
memory;
decode logic to receive a launch instruction; and
one or more execution units to execute the launch instruction by
loading an authenticated code module into the memory, locking
the memory, retrieving a key, authenticating the authenticated
code module stored in the memory using the key, and initiate
execution of the authenticated code module stored in the
memory.

EVIDENCE CONSIDERED
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
England US 6,651,171 B1 Nov. 18, 2003
Okada US 6,704,872 B1 Mar. 9, 2004
Abgrall US 2003/0037237 A1 Feb. 20, 2003

REJECTION
Claims 1, 2, 4-6, 8, 9, 12-14, 16-18, 22, and 23 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over England and Okada. Ans. 3-5.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over England, Okada, and Abgrall. Ans. 5-6.

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ISSUE
Appellants argue that combining Okada and England would do
nothing to help Okada prevent the illegal execution of a program or to help
England hide the execution of curtained code from the normal operation of a
system and, therefore, there is no motivation to combine Okada and
England. App. Br. 9. Appellants further specify that in the resulting
combination, a program will still be accessible for execution, legally or
illegally. App. Br. 9. These arguments present us with the following issue:
did the Examiner improperly combine England and Okada?

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments in the Appeal Brief presented in response to the Final Office
Action and the Reply Brief presented in response to the Examiner’s Answer.
We disagree with Appellants’ conclusions and highlight and address specific
findings and arguments for emphasis as follows.
We are not persuaded by Appellants’ argument that one of ordinary
skill in the art would not be motivated to combine Okada and England
because combining Okada and England would do nothing to help achieve
exemplary objectives disclosed by these references (App. Br. 9). It is not
necessary that the two references serve the same purpose to establish that the
references can be combined. We agree with the Examiner that one of
ordinary skill in the art would recognize that modifying England in
accordance with the disclosure of Okada gives the added benefit of
preventing the illegal execution of a program, which increases the security
of the system (Ans. 6-7).
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We also are not persuaded by Appellants’ more specific arguments on
page 9 of the Appeal Brief. First, Appellants do not present convincing
objective evidence to demonstrate that a program will still be accessible for
execution, legally or illegally in the resulting combination of Okada and
England (App. Br. 9). Additionally, Appellants have not sufficiently
explained how a program would be accessible for execution illegally in a
combined system (App. Br. 9).
Contrary to Appellants’ arguments, modifying England’s disclosure of
locking memory and executing an authentication and key-exchange protocol
with Okada’s disclosure of receiving, decoding and executing an
authentication instruction is no more than a predictable use of familiar prior
art elements according to their established functions, therefore rendering the
recited invention obvious. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
417 (2007). Additionally, the Examiner has articulated how the claimed
features are met by the reference teachings and has provided a reason with
rational underpinning as to why one of ordinary skill in the art would
combine the disclosure of Okada into the system of England (Ans. 6-7).
Thus, we are not persuaded that the Examiner improperly combined England
and Okada.
For the first time in the Reply Brief, Appellants argue that the
combination of references would not result in a processor that decodes and
executes a launch instruction in accordance with the requirements of the
claimed invention. Reply Br. 1-2. However, Appellants’ argument simply
recites limitations and summarily alleges that they are not found in the cited
prior art. Appellants have not provided sufficient explanation or analysis to
persuade us that the Examiner erred. Additionally, we find this argument to
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be untimely. Ex parte Borden, 93 USPQ2d 1473, 1475 (BPAI 2010)
(informative).
Based on the record before us, we conclude that the Examiner did not
err in rejecting claim 1 as being unpatentable under 35 U.S.C. § 103(a) over
England and Okada. Therefore, we sustain the 35 U.S.C. § 103(a) rejection
of claim 1 and of claims 2, 4-6, 8, 9, 12-18, 22, and 23, not separately argued
(App. Br. 10).

DECISION
We affirm the Examiner’s rejection of claims 1, 2, 4-6, 8, 9, 12-18,
22, and 23 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

msc