Ex Parte Le Saint

Patent Trial and Appeal Board

Mar 7, 2016

11834615 (P.T.A.B. Mar. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111834,615 08/06/2007
101221 7590 03/07/2016
Muirhead and Satumelli, LLC
200 Friberg Parkway, Suite 1001
Westborough, MA 01581
FIRST NAMED INVENTOR
Eric Le Saint
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.
AIM-206USCON2 1037
EXAMINER
SHAIFER HARRIMAN, DANT B
ART UNIT PAPER NUMBER
2434
MAILDATE DELIVERY MODE
03/07/2016 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 ERIC LE SAINT
Appeal2014-001753
Application 11/834, 615
Technology Center 2400
Before JOHN A. EV ANS, KAMRAN JIV ANI and
MATTHEW J. McNEILL, Administrative Patent Judges.
Opinion for the Board filed by EV ANS, Administrative Patent Judge.
Opinion dissenting filed by JIV ANI, Administrative Patent Judge.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of Claims 1---6 and 8-62, which constitute all the
claims pending in this application. App. Br. 2. Claims 7 and 63 are
1 The Appeal Brief identifies Activcard as the real party in interest. App.
Br. 2.
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Application 11/834, 615
canceled. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM. 2
STATEMENT OF THE CASE
The claims relate to a security token architecture. See Abstract.
Claims 1, 2, 6, 32, 35, 39, 40, 42, 46-52, and 59 are independent. An
understanding of the invention can be derived from a reading of exemplary
claim 1, which is reproduced below with some paragraphing added:
1. A token that deploys a uniform security applications
architecture for deployment in a security token comprising:
a plurality of security applications functionally coupled to
a shareable interface; and
a security domain control services application operatively
coupled between a runtime operating environment and the
plurality of security applications and including said sharable
interface, one or more security policies associated with each of
said plurality of security applications and a controller that
controls said plurality of security applications by enforcement of
said one or more security policies, wherein the one or more
security policies associated with each of the plurality of security
applications include one or more logic based rules that are
enforced for each respective associated security application of
2 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed August 20, 2013, "App. Br."), the Reply
Brief (filed November 18, 2013, Reply Br."), the Examiner's Answer
(mailed September 17, 2013, "Ans."), the Final Action (mailed August 15,
2012, "Final Act."), and the Specification (filed August 6, 2007, "Spec.") for
the respective details.
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Application 11/834, 615
the plurality of
security applications by the security domain control
services application, the logic based rules including Boolean
operators, and wherein the one or more security policies of each
of the plurality of security applications are independently
manageable by the security domain control services application.
References and Rejections
The Examiner relies upon the prior art as follows:
Njemanze US 7,376,969 Bl May20, 2008
(filed Dec. 2, 2002)
Chan us 6,005,942 Dec. 21, 1999
The claims stand rejected as follows: 3
1. Claims 1-6, 8-31, and 47---62 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter. Final Act. 8-10.
2. Claims 32-39 stand rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter. Final Act. 10.
3. Claims 1-6 and 8-62 stand rejected under 35 U.S.C. § 103(a) as
obvious over Chan and Njemanze. Final Act. 11---69.
3 Based on Appellant's arguments in the Appeal Brief, we will decide the
appeal on the basis of claims as set forth below. See 37 C.F.R. §
41.37( c )(1 )(vii).
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Application 11/834, 615
ANALYSIS
We have reviewed the rejections of Claims 1---6 and 8---62 in light of
Appellant's arguments that the Examiner erred. We have considered in this
decision only those arguments Appellant actually raised in the Briefs. Any
other arguments which Appellant could have made but chose not to make in
the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). We
are not persuaded that Appellant identifies reversible error. Upon
consideration of the arguments presented in the Appeal Brief and Reply
Brief, we agree with the Examiner that all the pending claims are
unpatentable over the cited combination of references. We adopt as our own
the findings and reasons set forth in the obviousness rejection from which
this appeal is taken and in the Examiner's Answer. We provide the
following explanation to highlight and address specific arguments and
findings primarily for emphasis.
Non-Statutory Subject Matter
Claims 40-46
We decline to reach the merits of the rejection of Claims 40-46. The
rejection is moot because the Examiner has withdrawn the rejection in view
of Appellant's amendment of independent Claims 40, 42, and 46 to recite
"non-transitory computer readable medium," per the Examiner's suggestion.
See Final Act. 2.
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Appeal2014-001753
Application 11/834, 615
Claims 1-6, 8-31, and 47-62
The rejection of Claims 1---6, 8-31, and 47---62 is moot in view of
Appellant's amendment of Claims 1, 2, 6, 47-52, and 59 to recite: "[a] token
that deploys a uniform security applications architecture," as suggested by
the Examiner. See Final Act. 9.
Claims 32-39
The Examiner finds claims 32-39 to be non-statutory because they are
not tied to a particular machine, nor do they transform underlying subject
matter (such as an article or material) to a different state or thing. Final Act.
10. Appellant contends the method of claims 32-39 recites steps for
installing security software inside a security token. Thus the physical token
is transformed to a different state. App. Br. 15.
Appellant's Specification discloses: "GlobalPlatform Card
Specification 2.1, supports multiple applications residing in a security token,
includes a mechanism for sharing of resources in a secure manner and
standardizes the mechanism by which applications are loaded and installed
in the security token." Spec., i-f 30.
"GlobalPlatform is a non-profit, member driven association which
defines and develops specifications to facilitate the secure deployment and
management of multiple applications on secure chip technology."
"GlobalPlatform applies the term 'secure chip' in reference to embedded
technologies used in various chips - such as smart cards, application
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Application 11/834, 615
processors, SD cards, USB tokens and secure elements - for protecting
assets (data, keys and applications) from physical or software attacks." See
http://www.globalplatform.org/.
The Examiner finds that the claimed "token" is not limited to
hardware, but may be pure software. Ans. 69. We agree with Appellant
that, in view of the Specification, the claimed "token" is a physical device,
such as a "secure chip," and is transformed by installation of security
software, as claimed.
The Examiner finds "the mere recitation of a machine in the preamble
with an absence of a machine in the body of the claim fails to make the
claim statutory under 35 U.S.C. [§] 101." Ans. 67 (citing Ex parte
Langemyer, Appeal 2008-1495 (BP AI May 28, 2008) (Informative). With
respect to the instant claims, we find "the claim preamble, when read in the
context of the entire claim, recites limitations of the claim, [and that] the
claim preamble is 'necessary to give life, meaning, and vitality' to the claim,
[therefore,] the claim preamble should be construed as if in the balance of
the claim." Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
1305, (Fed. Cir. 1999). In Langemyer, an expanded Panel of the Board
noted that the patent-eligible claims in The Telephone Cases "recited certain
specified conditions for using a particular circuit for the transmission of
sounds." Langemyer, slip op. at 11 (citing Gottschalkv. Benson, 409 U.S.
63 (1972), citing The Telephone Cases, 126 U.S. 1 (1888)). The present
invention claims "specified conditions" for using "particular circuit[ s ]," i.e.,
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Application 11/834, 615
the circuits (tokens) defined by the GlobalPlatfonn standards to carry out
functions specified by the GlobalPlatform standards.
We disagree with the Examiner for the further reason that the claims,
in their body of recitations, when read in light of the Specification,
necessarily refer to the recitations of the preamble.
The preambles of each of independent Claims 32, 35, and 39 recite "a
security token." Appellant discloses a "security token" is an integrated
circuit based hardware device:
The term "security token" as defined herein refers to hardware
based security devices such as security tokens, integrated circuit
tokens, subscriber identification modules (SIM), wireless
identification modules (WIM) , USB token dongles,
identification tokens, secure application modules (SAM),
hardware security modules (HSM), secure multi-media token
(SivHviC) and like devices.
Spec., p. 3, 11. 19--24. Appellant further discloses the "security token
architecture is compliant with the international standard ISO/IEC 7816-4,
"Information technology - Identification tokens - Integrated circuit(s) tokens
with contacts - Part 4: Interindustry commands for interchange." Id. Thus,
the claimed security token is an article of manufacture, a physical device.
The body of independent Claim 32 recites a "downloadable" "security
domain control services application." Appellant defines "security domain"
to be a "logical or physical workspace[] within a security token allocated to
an application provider for installation and execution of applications."
Spec., p. 3, 11. 30-32. Thus, the "security domain" recitations in the body of
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the claims relates to the "security token" recited in the preamble and
distinguish the present claims over Langemyer.
We find downloading and installing a security domain control
services application into a security token, as claimed, changes the physical
state or functionality of the hardware device. Independent Claims 35 and 39
contain similar recitations relating to updating a security domain within a
physical security token. Thus, these claims are statutory, under § 101,
"because they do not merely recite the performance of some business
practice known from the pre-Internet world along with the requirement to
perform it on the Internet. Instead, the claimed solution is necessarily rooted
in computer technology in order to overcome a problem specifically arising
in the realm of computer networks." DDR Holdings, LLC, v. Hotels.Com.,
L.P., 2013-1505 slip op. at 20 (Fed. Cir. Dec. 5, 2014).
We decline to sustain the rejection of Claims 32-39 under§ 101.
Obviousness
Appellant argues all claims as a group. App. Br. 20. Appellant
contends that each independent claim contains a limitation to a security
domain control services application. Appellant argues that each security
policy of each security application is independently managed by the security
domain control services application. Id. According to Appellant, Chan
discloses that each downloaded application has its own security domain, but
that Chan fails to disclose a central security domain control services
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application that enforces the security policies of the various downloaded
applications. Id. Rather, the security domain of each security application
enforces its own respective security policy. App. Br. 21.
We agree with the Examiner's finding that Chan teaches that the
applications can preferably manage its own life cycle management. The
recitation "preferably" does not mean that card domain 308 cannot manage
the life cycle of each application, as argued by Appellant. Ans. 69 (citing
Chan, col. 12, 11. 50-56).
Appellant quotes Chan:
Card domain 308 is also responsible for the installation of
applications on the card, but preferably has no control over the
applications' life cycle states. Each application is preferably
responsible for its own application life cycle state management
but it preferably allows card domain 308 to have access to its life
cycle states for auditing purposes.
Reply Br. 3 (citing Chan, col. 12, 11. 50-56) (emphasis added). Appellant
argues that Chan fails to disclose Card domain 308 enforces security
policies. Ans. 69.
We disagree with Appellant and note for emphasis that Chan discloses
that the "card domain as the system security manager of the card maintains
the current life, cycle state, enforces the associated security policies, and
controls the state transitions in the card life cycle." Chan. Col. 12, 11. 63----67.
DECISION
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Application 11/834, 615
The rejection of Claims 1---6, 8-39, and 47---62 under 35 U.S.C. § 101
is REVERSED.
The rejection of Claims 40-46 under 35 U.S.C. § 101 has been
withdrawn.
The rejection of Claims 1---6 and 8---62 under 35 U.S.C. § 103(a) is
AFFIRMED. 4
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
DISSENTil~G OPil~ION
JIV ANI, Administrative Patent Judge.
I join my colleagues in affirming the Examiner's decision rejecting
claims 1---6 and 8---62 under 35 U.S.C. § 103(a).
4 Claim 1, and various of the other independent claims, recite a "token that
deploys a uniform security applications architecture for deployment in a
security token." Should prosecution continue, the Examiner may wish to
consider whether the multiple recitations of the term "token" renders the
claims indefinite.
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Application 11/834, 615
I dissent, respectfully, from reversal of the Examiner's decision
rejecting claims 1---6, 8-31, and 47-62 as directed to non-statutory subject
matter under 35 U.S.C. § 101.
I would affirm the Examiner's decision for essentially the reasons set
forth by the Examiner. The preambles of independent claims 1, 2, 6, 4 7-52,
and 59 each recite "A token that deploys a uniform security applications
architecture for deployment in a security token comprising." Thus each of
these claims, and their dependent claims, recites "a token" as a distinct entity
from the recited architecture. Appellant fails to identify sufficient disclosure
in the Specification to limit clearly the preamble phrase "token" to a
physical structure. Although the Specification limits the phrase "security
token" to a physical structure (Spec. 3: 19-23), such limits do not apply to
the recited "token," which is presumably broader than the recited "security
token." Further, the "security token" recited in the preamble is merely the
intended environment of the architecture that the "token" deploys. Thus, I
am not persuaded that the preamble of each of independent claims 1, 2, 6,
47-52, and their dependent claims 3-5, 8-31, and 53---62 is limiting and
circumscribes the claim scope to patent-eligible subject matter.
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