Ex Parte RawsonDownload PDFPatent Trial and Appeal BoardSep 15, 201411867071 (P.T.A.B. Sep. 15, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANDREW R. RAWSON ____________ Appeal 2012-006105 Application 11/867,0711 Technology Center 2400 ____________ Before CATHERINE Q. TIMM, GEORGE C. BEST, and ELIZABETH A. LaVIER, Administrative Patent Judges. LaVIER, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1–20. Appellant seeks reversal of these rejections, pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM. BACKGROUND The Specification generally relates to preventing unauthorized use of modules of an electronic system by “restrict[ing], or ‘bind[ing],’ the interoperability of modules of the electronic system to only those modules in 1 According to Appellant, the Real Party in Interest is Advanced Micro Devices, Inc. (Appeal Br. 1.) Appeal 2012-006105 Application 11/867,071 3 the same electronic system or alternately to only those modules of an identified class of components.” (Spec. ¶¶ 1–2.) While typical binding methods require time- and processing-intensive encryption/decryption for each communication (id. at ¶ 3), the Specification seeks to improve the efficiency of binding “[b]y configuring electronic components to utilize encryption for the authentication process while allowing unencrypted communications after successful authentication” (id. at ¶ 12). Claim 1 is representative: 1. A method comprising: authenticating, at a first electronic module, a second electronic module via encrypted communications between the first electronic module and the second electronic module; in response to determining the second electronic module is authenticated, configuring the first electronic module to conduct unencrypted communications with the second electronic module; and in response to determining the second electronic module is unauthenticated, configuring the first electronic module to disable at least a first functionality of the first electronic module so that the first electronic module is prevented from operating with the first functionality of the first electronic module while the first functionality of the first electronic module is disabled. (Appeal Br. 15 (Claims App.).) Appeal 2012-006105 Application 11/867,071 4 REJECTIONS On appeal, the Examiner maintains the following rejections:2 1. Claims 1–3, 5–8, 13–14, 16, 18, and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Davis3 in further view of Boebert.4 (Ans. 6–16.) 2. Claims 4 and 17 are rejected under 35 U.S.C. § 103(a) as unpatentable over Davis and Boebert in further view of Schneier.5 (Ans. 16.) 3. Claims 9–10, 15, and 19 are rejected as unpatentable under 35 U.S.C. § 103(a) over Davis and Boebert in further view of Zatloukal.6 (Ans. 18.) 4. Claims 11 and 12 are rejected as unpatentable under 35 U.S.C. § 103(a) over Davis and Boebert in further view of Appellant- admitted prior art. (Ans. 22.) 2 Under the “Grounds of Rejection” maintained on appeal, the Examiner also lists rejections of claims 11 and 12 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement, and under 35 U.S.C. § 112, second paragraph, as indefinite. (Ans. 5–6.) Subsequently, however, the Examiner expresses agreement with Appellant that these rejections are improper. (Id. at 26.) We interpret the Examiner’s agreement with Appellant to mean that the Examiner is withdrawing these rejections. We, therefore, do not review them. 3 U.S. Patent No. 5,473,692, issued Dec. 5, 1995. 4 U.S. Patent No. 5,864,683, issued Jan. 26, 1999. 5 Schneier, Applied Cryptography 518-19 (1996). 6 U.S. Patent Application Pub. No. US 2003/0105961 A1, published June 5, 2003. Appeal 2012-006105 Application 11/867,071 5 DISCUSSION The Examiner has rejected all of the claims as obvious based on Davis and Boebert, alone or combined with other references or admissions. The same issue is dispositive for all of the obviousness rejections. The Examiner relies on Davis as disclosing the “authenticating” and “in response to determining the second electronic module is unauthenticated” limitations of claim 1. (Ans. 7.) Davis teaches an integrated circuit component for enforcing license restrictions through remote transmissions of access privileges. (Davis Abstract.) Specifically, the Examiner states that Davis teaches two hardware devices that mutually authenticate each other using encrypted challenge-response, and that if authentication fails, communication is disabled. (Ans. 7 (citing Davis col. 8 ll. 45–65; Fig. 7C).) Davis does not teach the “in response to determining the second electronic module is authenticated” limitation of claim 1, for which the Examiner relies on Boebert. (Ans. 7–8.) Boebert describes transferring data between a workstation connected to a private network and a remote computer connected to an unsecure network. (Boebert Abstract.) The Examiner states Boebert teaches that after authentication, system communication between two devices is in clear text, which the Examiner interprets as unencrypted communication. (Ans. 7–8 (citing Boebert col. 13 ll. 35–68.).) Appellant acknowledges Davis teaches that communications between a first and second node can be “terminated” if the communication is not authenticated, but argues that “terminating communication between nodes is not the same as disabling functionality of a first module so that the first electronic module is prevented from operating with the first functionality of the first electronic module while the first functionality of the first electronic Appeal 2012-006105 Application 11/867,071 6 module is disabled, as provided by claim 1,” and that “Davis nowhere discloses that either of the first or second nodes is prevented from communicating with the other node in response to determining either node is not authenticated.” (Appeal Br. 9; see also Reply Br. 2.) The Examiner responds that “[t]he claims are not clear [as] to what a first function is,” and relates the first function of claim 1 to the token-exchange process in Davis. (Ans. 26.) The Examiner explains Davis describes a token-exchanging function present in both the first and second devices; without proper authentication, the token-exchange function “is disabled, as it is never allowed to occur.” (Ans. 7.) We agree with the Examiner that the “first functionality” of claim 1 encompasses the token-exchanging function of Davis, within the broadest reasonable construction of that term, and that this functionality is disabled in Davis if authentication fails. Appellant also argues that the Examiner inappropriately equates “disabled” with “‘not presently carrying out a particular function’” or “does not take place,” instead of the common meaning, which Appellant states is “‘deprive[d] of capability.’” (Appeal Br. 10–11; Reply Br. 3–4.) The Examiner responds: Even if [Appellant’s common-meaning definition] is true, the Examiner still points to the fact that it is not unreasonable to think of something being temporarily disabled. No where in claims does it specify duration of disablement. So the mere fact that a function is prevented even once is by definition a temporary deprivation of capability. In addition, it is also not specified whether the first function is already occurring prior to disablement. If this were the case[,] this further backs Examiner’s reasoning that at the very least, Davis temporarily disables the functionality of continuing the authentication protocol, if there is no authentication. Appeal 2012-006105 Application 11/867,071 7 (Ans. 27.) Appellant replies that “even assuming arguendo that this is correct, Davis does not disclose that the communications are prevented even once. Rather, Davis discloses that the communications do not take place.” (Reply Br. 3.) We are unpersuaded by the distinction drawn by Appellant. As the Examiner points out, in Davis the absence of authentication precludes further communication of the nodes within the scope of the authentication protocol. (Ans. 27 (citing Davis col. 8 ll. 1–65).) Thus the nodes are deprived of capability, at least temporarily, and do not “simply decline” to function as Appellant argues (Reply Br. 2), at least not in some way that is distinguishable from the “disabl[ing]” recited in claim 1, in which “the first electronic module is prevented from operating with the first functionality of the first electronic module while the first functionality of the first electronic module is disabled” (Claims App. (emphasis added)). Appellant offers no separate arguments for the other claims or the other obviousness rejections. Accordingly, because we affirm the Examiner’s rejection of claim 1 as obvious, we likewise affirm the Examiner’s rejections of claims 2–20 as obvious.7 CONCLUSION The Examiner’s rejections of claims 1–20 under 35 U.S.C. § 103(a) are affirmed. 7 Should there be further prosecution of this application (including any review for allowance), the Examiner may wish to review these claims for compliance under 35 U.S.C. § 101 in light of the recently issued preliminary examination instructions on patent eligible subject matter. See “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.,” Memorandum to the Examining Corps, June 25, 2014. Appeal 2012-006105 Application 11/867,071 8 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED cdc Copy with citationCopy as parenthetical citation