Ex Parte Soukup et al

Patent Trial and Appeal BoardApr 18, 2016

13680391 (P.T.A.B. Apr. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/680,391 11/19/2012 31292 7590 04/20/2016 CHRISTOPHER & WEISBERG, PA 200 EAST LAS OLAS BOULEVARD SUITE 2040 FORT LAUDERDALE, FL 33301 FIRST NAMED INVENTOR Martin SOUKUP 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. 22493-250CON (l 7769ROUS02 CONFIRMATION NO. 1874 EXAMINER HERZOG, MADHURI R ART UNIT PAPER NUMBER 2438 NOTIFICATION DATE DELIVERY MODE 04/20/2016 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): ptomail@cwiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte MARTIN SOUKUP, ALBERT REICHE, ARN HYNDMAN, and HONGBO LI Appeal2014-009644 Application 13/680,391 1 Technology Center 2400 Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) of the final rejection of claims 1-21. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Rockstar Consortium US LP. App. Br. 1. However, more recent publicly available assignment information found in the USPTO "Patent Assignment Abstract of Title" database indicates the current Assignee is RPX CLEARINGHOUSE LLC, subject to a security agreement with JPMorgan Chase Bank, N.A., as Collateral Agent. Appeal2014-009644 Application 13/680,391 STATEMENT OF THE CASE2 The Invention Appellants' claimed invention relates to a system and a method for single sign-on (SSO) authentication on computers in a networked environment. Spec. i-f 2. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on appeal (emphasis added to contested limitation): 1. A method of providing single sign-on service to a user of a user computing device, the method comprising: providing an operating system on the user computing device, the operating system configured between a plurality of applications on the user computing device and a single sign-on provider; receiving, in the operating system, respective authentication requests from the plurality of applications; and forwarding, from the operating system, authentication requests corresponding to the received authentication requests to the single sign-on provider. 2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed May 20, 2014); Reply Brief ("Reply Br.," filed Sept. 8, 2014); Examiner's Answer ("Ans.," mailed July 14, 2014); Final Office Action ("Final Act.," mailed Dec. 24, 2013); and the original Specification ("Spec.," filed Nov. 19, 2012). 2 Appeal2014-009644 Application 13/680,391 Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Silhavy et al. ("Silhavy") US 2005/0108521 Al May 19, 2005 Birk et al. ("Birk") US 2005/0154887 Al July 14, 2005 Tao US 2006/0075224 Al Apr. 6, 2006 McCarty et al. ("McCarty") US 7,093,020 Bl Aug. 15, 2006 Bhatia et al. ("Bhatia") US 7,111,323 Bl Sept. 19, 2006 Tom et al. ("Tom") US 7,305,470 B2 Dec. 4, 2007 Sanin et al. ("Sanin") US 7 ,500,262 B 1 Mar. 3, 2009 Modrall US 7,716,340 B2 May 11, 2010 Soukup et al. ("Soukup") US 8,327 ,427 B2 Dec. 4, 2012 Rejections on Appeal RI; Claims 1-21 are rejected as being unpatentable under the doctrine of obviousness-type double patenting (OTDP) over claims 1-21 of Soukup. Final Act. 4. R2. Claims 1-7, 9, 11-13 and 15 stand rejected under 35 U.S.C. Â§ 102( e) as being anticipated by Sanin. Final Act. 7. R3. Claim 8 stands rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Sanin and Bhatia. Final Act. 18. R4. Claim 10 stands rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Sanin and McCarty. Final Act. 19. R5. Claim 14 stands rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Sanin and Tao. Final Act. 21. 3 Appeal2014-009644 Application 13/680,391 R6. Claim 16 stands rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Sanin and Modrall. Final Act. 21. R7. Claims 17, 20 and 21 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Sanin and Silhavy. Final Act. 22. R8. Claim 18 stands rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Sanin, Silhavy and Birk. Final Act. 26. R9. Claim 19 stands rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combination of Sanin, Silhavy and Tom. Final Act. 27. CLAIM GROUPING Based on Appellants' arguments (App. Br. 2-9), we decide the appeal of rejection R2 of claims 1-7, 9, 11-13, and 15 on the basis of representative claim 1. We address remaining claims in rejections RI and R3 through R9, not argued separately, infra. ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments which Appellants could have made but chose not to make in the Briefs so that we deem any such arguments as waived. See 37 C.F.R. Â§ 41.37(c)(l)(iv). We disagree with Appellants' arguments with respect to claims 1-21, and we incorporate herein and adopt as our own: ( 1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments. We incorporate such findings, reasons, 4 Appeal2014-009644 Application 13/680,391 and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments regarding representative claim 1 for emphasis as follows. 1. OTDP Rejection RI of Claims 1-21 Issue 1 Did the Examiner err in non-provisionally rejecting claims 1-21 under the doctrine of obviousness-type double patenting rejection over claims 1-21 of Soukup? Analysis Appellants state they "will address the double-patenting rejection upon the indication that the claims are otherwise allowable." App. Br. 1. Thus, Appellants do not contest the rejection, but merely state that they intend to address this rejection if and \vhen the claims are otherwise allowable. \Ve note that arguments not rnade are considered waived. 3 See 37 C.F.R. Â§ 41.37(c)(l)(iv). Therefore, we proforma sustain the Examiner's non-provisional obviousness-type double patenting rejection of claims 1--21. 3 SeeHyattv. Dudas, 551F.3d1307, 1314 (Fed. Cir. 2008) ("When the [A]ppellant[s] fail[] to contest a ground of rejection to the Board, section L 192(c)(7) [(nmv section 41.37(c)(l)(vii))] imposes no burden on the Board to consider the merits of that ground of rejection .... [T]he Board may treat any argument with respect to that ground of rejection as waived."). 5 Appeal2014-009644 Application 13/680,391 2. Anticipation Rejection R2 of Claims 1-7, 9, 11-13 and 15 Issue 2 Appellants argue (App. Br. 2-7, Reply Br. 4--5) the Examiner's rejection of claim 1under35 U.S.C. Â§ 102(e) as being anticipated by Sanin is in error. These contentions present us with the following issue: Did the Examiner err in finding that Sanin discloses the contested limitation, i.e., "forwarding, from the operating system, authentication requests corresponding to the received authentication requests to the single sign-on provider," as recited in claim 1? Analysis Appellants contend "Applicant submits that Sanin does not disclose that the operating system forwards a received authorization request. Instead, Sanin's CLC, which operates as a separate agent (and not an operating system) through which secure requests are submitted; forwards the received authorization request." App. Br. 3. Appellants further contend "Sanin's CLC is distinct from the operating system and is not equivalent to the operating system at least because Sanin's CLC operates as a plugin for the access device's operating system." App Br. 4, see also App. Br. 5. We agree with the Examiner's finding Sanin's operating system 110 (Fig. 1) discloses the claim term "operating system." Final Act. 7; Ans. 2. We also agree with the Examiner's finding that Sanin's CLC 165 may be a standard component of the operating system 110. Id. 6 Appeal2014-009644 Application 13/680,391 "In the patentability context, claims are to be given their broadest reasonable interpretations ... limitations are not to be read into the claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted). Any special meaning assigned to a term "must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998). Absent an express intent to impaii a novel meaning to a claim term, the words take on the ordinary and customary meanings attributed to them by those of ordinary skill in the art. Brookhill- Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (citation omitted). ' - - - / Here, Appellants have not pointed to a definition of the claim term "operating system" in the Specification, nor pointed to any other evidence in the record that would preclude the Examiner's finding that Sanin's CLC 165 may be reasonably be considered as part of Sanin's operating system. Therefore, we agree with the Examiner that, under a broad but reasonable interpretation, the scope of claim term "operating system" reads on Sanin's operating system, including CLC 165. Appellants also contend: Further, Sanin does not disclose or suggest that authentication requests are sent to a single sign on provider. The Office Action equates Applicant's single sign on provider with Sanin's common authorization web server (CAW) 170. Office Action, page 2. However, Applicant's single sign on provider uses a single set of credentials to authenticate the user for a plurality of applications without regard to which application requires the authentication. In contrast, Sanin's CAW 170 requires 7 Appeal2014-009644 Application 13/680,391 potentially different sets of credentials to authenticate the user for different applications. App. Br. 6, emphasis added. The Examiner finds Sanin's CAW (common authorization web server), which receives authentication credentials from Sanin's CLC, discloses the disputed claim term "single sign-on provider. " Ans. 3; Final Act. 8. We note Appellants (App. Br. 6) do not point to a definition of the recited "single sign-on provider" in the Specification, nor do they proffer any rebuttal evidence in the record that would preclude the Examiner's reliance upon Sanin's CAW. As pointed out by the Examiner (Ans. 3--4), claim 1 is silent regarding the argued features of using "a single set of credentials to authenticate the user for a plurality of applications without regard to which application requires the authentication." (ii .. pp. Br. 6). We conclude the last recited step of claim 1 merely forwards the "authentication requests corresponding to the received authentication requests" from the operating system to "the single sign-on provider." Claim 1 is silent regarding any positive recitation that requires "the single sign-on provider" to take any authentication action in response to the step or act of forwarding. We decline Appellants' invitation to read argued (but unclaimed) limitations from the Specification into the claims. (App. Br. 6, iT 1 ). Therefore, on this record, and by a preponderance of the evidence, we are not persuaded the Examiner erred in finding Sanin's CAW 165 (Fig. 1) 8 Appeal2014-009644 Application 13/680,391 anticipates the contested "single sign-on provider" recited in method claim 1. Ans. 3; Final Act. 8. Although Appellants provide additional arguments in regards to the SSO provider issue in the Reply Brief ( 4), we find these arguments are untimely because they are new arguments presented in the Reply Brief. We note arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner's Answer will not be considered except for good cause, which Appellants have not shown. See 37 C.F.R. Â§ 41.41(b)(2). Even assuming, arguendo, such arguments were timely, we are not persuaded by Appellants' arguments because they are not commensurate with the scope of claim 1. Appellants contend "[s]ince the SSO provider is application independent, it cannot be equated with Sanin's CAW, which is application dependent." Reply Br. 4. However, claim 1 is silent as to whether the SSO is application dependent or independent. Similarly, Appellants argument regarding whether Sanin's CAW stores a single set of credentials or stores multiple sets (App. Br. 6) is also unpersuasive because claim 1 is silent as to whether the recited single sign- on provider performs any storing of credentials at all. For the aforementioned reasons, we are not persuaded the Examiner's claim interpretation is overly broad or unreasonable. Accordingly, on this record, and by a preponderance of the evidence, Appellants have not provided sufficient evidence or argument to persuade us of any reversible error in the Examiner's reading of the contested limitations on the cited prior art. Therefore, we sustain the Examiner's anticipation 9 Appeal2014-009644 Application 13/680,391 rejection of independent claim 1, and also the Â§ 102 rejection of grouped claims 2-7, 9, 11-13 and 15, which fall therewith. See Claim Grouping, supra. 3 Obviousness Rei ections R3----R9 of Claims 8, 10, 14 and 16---21 In view of the lack of any substantive arguments directed to the obviousness Rejections R3 through R9 of claims 8, 10, 14 and 16---21 under Â§ 103 (see App. Br. 7-9), we sustain the Examiner's rejections of these claims, as they fall with independent claim 1. Arguments not made are considered waived. When Appellants do not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991 (Fed. Cir. 1983). Accordingly, we sustain rejections R3 through R9 of claims 8, 10, 14 and 16---21. REPLY BRIEF To the extent Appellants may advance new arguments in the Reply Brief ( 4--5) not in response to a shift in the Examiner's position in the Answer, we note we note arguments raised in a reply brief that were not raised in the appeal brief or are not responsive to arguments raised in the Examiner's Answer will not be considered except for good cause, which Appellants have not shown. See 37 C.F.R. Â§ 41.41(b)(2). CONCLUSIONS (1) The Examiner did not err with respect to OTDP Rejection RI of claims 1-21 over the cited claims of the cited prior art of record, and we sustain the rejection. 10 Appeal2014-009644 Application 13/680,391 (2) The Examiner did not err with respect to anticipation Rejection R2 of claims 1-7, 9, 11-13 and 15 under 35 U.S.C. Â§ 102(e) over the cited prior art of record, and we sustain the rejection. (3) The Examiner did not err with respect to obviousness Rejections R3 through R9 of claims 8, 10, 14 and 16-21under35 U.S.C. Â§ 103(a) over the cited prior art combinations of record, and we sustain the rejections. DECISION We affirm the Examiner's decision rejecting claims 1-21. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 11