Ex Parte Horn et al

Patent Trial and Appeal Board

Apr 28, 2016

13124045 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/124,045 04/13/2011
32294 7590 05/02/2016
Squire PB (NV A/DC Office)
8000 TOWERS CRESCENT DRIVE
14THFLOOR
VIENNA, VA 22182-6212
FIRST NAMED INVENTOR
Gunther Horn
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.
089229.00413 3376
EXAMINER
JAMSHIDI, GHODRAT
ART UNIT PAPER NUMBER
2493
NOTIFICATION DATE DELIVERY MODE
05/02/2016 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):
IPGENERAL TYC@SQUIREpb.COM
SONIA.WHITNEY@SQUIREpb.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUNTHER HORN, WOLF-DIETRICH MOELLER, and
HARIHARAN RAJASEKARAN
Appeal2014-007515
Application 13/124,045
Technology Center 2400
Before ALLEN R. MacDONALD, ADAM J. PYONIN and
MICHAEL M. BARRY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-007515
Application 13/124,045
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphases and
formatting added):
1. A method of enabling a user to access an application via a
first trust domain, the method comprising the steps of:
[(A)] accessing an account of the user at an identity provider
via an adapter module,
wherein the adapter module is within the first trust
domain and the identity provider is within a second trust
domain;
[(B)] obtaining said user's user credentials via an adapter
module for the application from the identity provider,
wherein the application is within the second trust
domain; and
[(C)] using the user credentials for the application to provide
the user with access to the application,
[(D)] wherein if the user credentials at the identity provider are
different from a public user identity of the user,
then the adapter module stores a mapping between the
public user identity and the user credentials at the identity
provider.
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Appeal2014-007515
Application 13/124,045
Rejections
The Examiner rejected claims 1-7, 9, and 17-20 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Beyer et al. (US
2008/0120705 Al; May 22, 2008) and Hondo et al. (US 2004/0128544 Al;
July 1, 2004). 1
1 Separate patentability is not argued for claims 2-7, 9, and 17-20. As to
claims 1 7-19, Appellants address them only by repeating the arguments for
claim 1. See App. Br. 18-21.
As to claims 2-7, 9, and 20, Appellants' following statement is not an
argument for separate patentability:
Claim 2 depends from claim 1, and therefore includes the
combinations of features set forth in claim 1. For at least this
reason, the rejection of this dependent claim also should be
reversed. Additionally, claim 2 recites combinations of features
including additional subject matter not taught or suggested by
Beyer in view of Hondo. Based on the above, Appellants
respectfully submit that the features of wherein either: the
adapter module is \~1ithin both the first trt1st domain and the
second trust domain; or the identity provider is within both the
first trust domain and the second trust domain, as recited in
claim 2, is neither taught nor suggested by Beyer in view of
Hondo because the element of "if the user credentials at the
identity provider are different from a public user identity of the
user, then the adapter module stores a mapping between the
public user identity and the user credentials at the identity
provider" is not disclosed by Beyer in view of Hondo in order
to allow a user to federate his services at the identity provider.
Hence, Appellants request that the rejection of claim 2 should
be withdrawn.
App. Br. 23, emphasis omitted. See In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011). ("[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.") Appellants present analogous statements
for each of claims 3-7, 9, and 20. App. Br. 23-28.
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Appeal2014-007515
Application 13/124,045
The Examiner rejected claims 8 and 10-16 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Beyer, Hondo, and Liddle
(US 2004/0187031 Al; Sept. 23, 2004).2
Except for our ultimate decision, claims 2-7, 9, and 17-20 are not
discussed further herein.
2 Separate patentability is not argued for claims 8 and 10-16. As to claim
10, Appellants address it only by repeating the arguments for claim 1. See
App. Br. 21-22.
As to claims 8 and 11-16, Appellants' following statement is not an
argument for patentability:
Claim 8 depends from claim 1, and therefore includes the
combinations of features set forth in claim 1. For at least this
reason, the rejection of this dependent claim also should be
reversed. Additionally, claim 8 recites combinations of features
including additional subject matter not taught or suggested by
Beyer, taken in combination with Hondo and Liddle. Based on
the above, Appellants respectfully submit that the features of
\~\rherein the step of the obtaining the data required to access the
account of the user at the identity provider via the adapter
module further comprises obtaining user credentials required to
access the account of the user at the identity provider, as recited
in claim 8, is neither taught nor suggested by Beyer, taken in
combination with Hondo and Liddle because the element of "if
the user credentials at the identity provider are different from a
public user identity of the user, then the adapter module stores a
mapping between the public user identity and the user
credentials at the identity provider" is not disclosed by Beyer,
taken in combination of Hondo and Liddle in order to allow a
user to federate his services at the identity provider. Hence,
Appellants request that the rejection of claim 8 should be
withdrawn.
App. Br. 28-29, emphasis omitted. See In re Lovin, 652 F.3d at 1357.
("[W]e hold that the Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
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Appeal2014-007515
Application 13/124,045
Appellants' Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Appellants strongly submit that nowhere does Hondo teach or
suggest the element of the adapter module storing a mapping
between the public user identity and the user credentials, as
claimed. Hondo, merely, stores trust links in databases (see
Hondo, at 312, 410, and 424) but is silent with regard to the
trust link reference agent (alleged adapter module) storing a
mapping or even being configured to store at all (see Hondo, at
310 and 420 and paragraphs [0064] and [0065]). This failure
constitutes clear error, which warrants withdrawal or reversal of
the rejection.
In addition, Appellants submit that paragraph [0034] of
Hondo, cited in the Office Action, merely discusses a trust-
related operation which may include a generic mapping but
fails to disclose or suggest any elements of an adapter module
that stores a mapping between the public user identity and the
user credentials, as recited in claims 1 and 1 7 -19 discussed
above.
App. Br. 16, emphasis omitted.
2. Appellants also contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Hondo is silent as to how his [sic] "a first user identifier" and "a
second user identifier" (see Hondo, paragraph [0034])
correspond whatsoever to the elements of user credentials and a
public user identity as recited in claim 1 and similarly recited in
claims 1 7 -19.
App. Br. 16-17, emphasis omitted.
not found in the prior art.") Appellants present analogous statements for
each of claims 11-16. App. Br. 29-33.
Except for our ultimate decision, claims 8 and 11-16 are not discussed
further herein.
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Appeal2014-007515
Application 13/124,045
3. Appellants further contend that the Examiner erred in rejecting
claim 1under35 U.S.C. § 103(a) because:
[T]he claimed invention recites that the public user identity and
the user credentials are mapped and stored via the adapter
module at the identity provider which is within the second trust
domain.
App. Br. 17, emphasis omitted.
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
As to Appellants' above contention 1, we disagree. We agree with the
Examiner that Hondo teaches that "a trust-related operation may include a
mapping of a first user identifier that is valid in a first trust domain to a
second user identifier that is valid in a second trust domain." Hondo i-f 34.
The essence of Appellants' argument is that, although Appellants admit that
Hondo stores trust links in databases, it is not obvious to have the trust link
reference agent (alleged adapter module) store the mapping taught by
Hondo. See App. Br. 16. We disagree. The storage of data is conventional
in the art. We conclude that it would have been obvious for a component
performing an operation to store any and all data (including mappings) used
in the operation it is performing.
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Appeal2014-007515
Application 13/124,045
As to Appellants' above contention 2, we disagree. The essence of
Appellants' argument is that the cited references3 do not render obvious
using the mapping between a public user identity and user credentials. See
App. Br. 16-17. We disagree because the use of public user identity and
user credentials are conventional to trust domain operations, as evidenced by
the cited references. Appellants point out that a user's credentials comprise
a usemame and/or a password. Spec. 14:9-10. Hondo points out the use of
a typical usemame/password in a trust related operation. Hondo i-f 34.
Appellants point out that an Internet Protocol (IP) Multimedia Subsystem
(IMS) subscriber has two kinds of identities: a private user identity (IMPI)
and a public user identity (IMPU). Spec. 5:8-9. Beyer points out the use of
a typical IMPU or IMPI as an IMS identifier. Beyer at claim 6.
As to Appellants' above contention 3, we disagree. Appellants are
mistaken in arguing that their claimed mapping is stored at the "identity
provider." In claim 1, the "at the identity provider" language is closest to
and thus modifies "the user credentials," not the earlier recited "stores a
mapping." Properly interpreted, the claimed mapping is merely stored
somewhere (not specified) by the "adapter module." Additionally,
Appellants' interpretation is not consistent with the embodiment disclosed in
Appellants' Specification (Spec. 16:4--8), which is the portion pointed to by
Appellants as support for this limitation in claim 1 (App. Br. 6-7). "[T]he
adapter/gateway module 106 stores a mapping between the IMPU and the
usemame at the IDP (for example using the database 105)." Spec. 16:5-8.
3 Appellants point only to Hondo in their argument, but each reference cited
by the Examiner must be read, not in isolation, but for what it fairly teaches
in combination with the prior art as a whole. See In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
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Appeal2014-007515
Application 13/124,045
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-20 as being
unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-20 are not patentable.
DECISION
The Examiner's rejections of claims 1-20 are affirmed.
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).
AFFIRMED
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