Ex Parte Lee

Patent Trial and Appeal Board

May 16, 2014

12890008 (P.T.A.B. May. 16, 2014)

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.
12/890,008 09/24/2010 Bryant Christopher Lee 7438
99588 7590 05/19/2014
Bryant Lee
4903 Edgemoor Lane
Suite 316
Bethesda, MD 20814
EXAMINER
CERVETTI, DAVID GARCIA
ART UNIT PAPER NUMBER
2436
MAIL DATE DELIVERY MODE
05/19/2014 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 BRYANT CHRISTOPHER LEE
___________
Appeal 2011-012585
Application 12/890,008
Technology Center 2400
____________

Before MICHAEL J. STRAUSS, JOHN A. EVANS, and
LINZY T. McCARTNEY, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of Claims1 and 2 as obvious. Claims 3 and 4
have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.2

1 The Appellant lists himself, Bryant Christopher Lee, as the Real Party in
Interest. App. Br. 1. However, we note that the Assignee of Record is
Advanced Research, LLC, recorded at Reel/Frame 030024/0706.
2 Our decision refers to Appellant’s Appeal Brief filed April 14, 2011
Appeal 2011-012585
Application 12/890,008

2
STATEMENT OF THE CASE
The claims relate to a method for locally storing Web-based database
data in a secure manner. Spec., ¶[0013].
Claim 1 is independent. An understanding of the invention can be
derived from a reading of exemplary Claim 1, which is reproduced in part
below with disputed limitations italicized:
1. At a computer server . . . the computer server connected
over a network to a computer system . . . a method for caching
database data at the computer system for subsequent Web
browser access in a secure manner, the method comprising:
a Web server in a specified domain verifying that it has
access rights to store a database portion in the controlled
access local store at the computer system, by a method of
digital certification…
wherein the computer system retains an indication that
the database portion was received from the specified domain so
that the local store access module can limit access to the
database portion stored in the controlled access local store, the
limited access including:
permitting requests from Web servers in the specified
domain to access the database portion for use in Web pages
presented at the Web browser, wherein the web servers in the
specified domain have authenticated that they are in the
specified domain by a method of digital certification . . . .

(“App. Br.”); Examiner’s Answer mailed June 6, 2011 (“Ans.”); Appellant’s
Reply Brief filed July 10, 2011 (“Reply Br.”); Final Office Action mailed
February 3, 2011 (“Final Rej.”); and the original Specification filed
September 24, 2010 (“Spec.”).
Appeal 2011-012585
Application 12/890,008

3

REFERENCES
The Examiner relies upon the prior art as follows:
Imai US 2005/0102503 A1 Pub. May 12, 2005
Hawkins US 7,778,987 B2 Pub. Aug. 17, 2010
The claims stand rejected as follows:3
1. Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as
obvious over Hawkins and Imai.

ISSUES ON APPEAL
Based on Appellant’s arguments in the Appeal and Reply Briefs (App.
Br. 5-13; Reply Br. 8-23), the issue presented on appeal is whether the
Examiner erred in finding the asserted combination of Hawkins in view of
Imai teach the disputed limitations.

ANALYSIS
We agree with the Appellant’s conclusion that Hawkins in view of
Imai, as presented by the Examiner, does not disclose the double-
authentication method of Claim 1.

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).

Appeal 2011-012585
Application 12/890,008

4
The Appellant contends that Imai discloses authentication using public
key cryptography, but that Imai does not disclose a method of double-
authentication requiring authentication for both storing a database portion on
a local store and for accessing that same database portion. App. Br. 9-10.
Appellant argues that, instead, Imai teaches “mutual authentication,”
wherein two entities involved in a communication each authenticate the
other. App. Br. 10. Appellant further argues that Imai teaches authenticating
in order to update a second certificate. Id. Appellant contends that mutual
authentication and authenticating in order to update a certificate are not the
same as the claimed double-authentication, which is for ensuring the security
of two different transactions: store and access. Id. In light of the
deficiencies of Imai, Appellant contends that the claimed double-
authentication method would not be disclosed by combining Hawkins with
Imai, and further, the Examiner has not provided evidence as to why the
double-authentication method of Claim 1 would be obvious. App. Br. 10-11.
The Examiner finds that Hawkins does not disclose authentication by
digital certification, and relies on Imai to teach the Web server verifying that
it has access rights to store a database portion in the local store, by a method
of digital certification. Ans. 6. Further, the Examiner finds that Imai
teaches the claimed double-authentication method. Ans. 12-13. Imai
teaches authentication to store information, wherein a first [rescue] digital
certificate is used to authenticate the first communication apparatus to store
a new second [regular] digital certificate in the first communication
Appeal 2011-012585
Application 12/890,008

5
apparatus. Ans. 12. The Examiner finds Imai to also teach authentication to
access stored information, wherein a certificate update request can only be
accepted from a communication opponent authenticated by a [rescue] digital
certificate and information other than the certificate update can only be
accessed by a communication opponent authenticated by a [regular] digital
certificate. Ans. 12-13.
The Appellant replies that the “authenticate before storage” step and
“authenticate before accessing” step of Imai are completely unrelated and
are not part of the same procedure. Reply Br. 22. Appellant contends the
storage step relates to storing a “second digital certificate” on the first
communication apparatus, while the access step relates to accessing
“information other than the certificate update information” on the lower
level apparatus. Id. Appellant argues the cited storage and access steps are
about different information, while the claimed double-authentication method
protects a piece of data when it is stored on the local store and protects the
same data when it is accessed on the local store. Reply Br. 22-23.
We agree with the Appellant’s contentions that Imai’s method of
updating a digital certificate is not analogous to the claimed double-
authentication, because the “storage” and “access” steps cited in Imai are not
for the same data. The Examiner cited Imai, ¶¶[0129]- [0160], for teaching
the first authentication (storage) step: “a Web server in a specified domain
verifying that it has access rights to store a database portion in the controlled
access local store at the computer system, by a method of digital certification
Appeal 2011-012585
Application 12/890,008

6
. . . . ” Ans. 6. The Examiner further explains that the “authenticate on
store” step is updating the regular certificate. Ans. 12. It may be true that
Imai teaches this “authenticate on store” limitation, if one assumes that: the
Web server is upper apparatus 30, which verifies itself during a two-way
authentication process (see Imai, ¶[0182] and Figure 22); the database
portion is the new regular certificate, transmitted from apparatus 30 (Fig. 13,
S110) to apparatus 40 (Fig. 14, S215); and the local store is upper apparatus
40, which receives and stores the new regular certificate.
However, the Examiner’s rejection does not address how Imai teaches
the second authentication step: access the [same] database portion, “wherein
the web servers in the specified domain have authenticated that they are in
the specified domain by a method of digital certification . . . , as recited in
Claim 1.” Assuming, as described above, the “authenticate on storage” step
is the Web server (apparatus 30) storing the new regular certificate on local
store (apparatus 40), Imai does not teach the Web server (30) to “access the
database portion for use” at the computer with the local store (40). The
“authenticate on access” step cited by the Examiner is accessing information
other than the certificate update information. Imai discloses the local store
(40) to contain data, such as measurements, from various types of machines.
Imai, ¶¶[0118], [0136]. It is this data that is accessed upon authentication,
not the same data (i.e., updated digital certificate data) that was stored in the
“authenticate on storage” step.
Appeal 2011-012585
Application 12/890,008

7
Therefore, we find the Examiner erred in rejecting independent Claim
1 under 35 U.S.C. § 103(a) over Hawkins and Imai.

DECISION
The rejection of Claims 1 and 2 under 35 U.S.C. § 103(a) is
REVERSED.

REVERSED

ke