Irdeto B.V.

Patent Trials and Appeals Board

Apr 1, 2021

2019006590 (P.T.A.B. Apr. 1, 2021)

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.
15/129,681 09/27/2016 Robert Krten 16-30082-US 4037
128144 7590 04/01/2021
Rimon PC
420 West Main Street
Suite 101B
Boise, ID 83702-7358
EXAMINER
SALEHI, HELAI
ART UNIT PAPER NUMBER
2433
NOTIFICATION DATE DELIVERY MODE
04/01/2021 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):
docketing.rimonlaw@clarivate.com
eofficeaction@appcoll.com
patentdocketing@rimonlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT KRTEN
Appeal 2019-006590
Application 15/129,681
Technology Center 2400
Before JOHN A. JEFFERY, THU A. DANG, and LARRY J. HUME,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–7 and 16–33, which are all claims
pending in the application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the term “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Irdeto B.V.
Appeal Br. 2.
2 See n.4, infra.
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STATEMENT OF THE CASE3
The claims are directed to a protecting an item of software. See Spec.
(Title). In particular, Appellant’s disclosed embodiments and claimed
invention “relate[] to a method for a computer to execute an item of
software, a method for enabling a computer to execute an item of software,
and apparatus and computer programs for carrying out such methods.
Spec. 1:5–7.
Exemplary Claims
Claims 1 and 6, reproduced below, are representative of the subject
matter on Appeal (emphases and labeling added to contested prior-art
limitations):
1. A method for a computer to execute an item of
software, the method comprising:
the computer executing one or more security modules;
the computer executing the item of software, said
executing the item of software comprising, at at least one point
during execution of the item of software at which a
predetermined function is to be performed, attempting to
perform the predetermined function by:
[(L1)] sending, to an address system, a request message
for an address of instructions for carrying out the
predetermined function, the request message comprising an
identifier of the predetermined function;

3 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Apr. 30, 2019); Reply Brief (“Reply Br.,” filed Sept. 4, 2019); Examiner’s
Answer (“Ans.,” mailed July 22, 2019); Final Office Action (“Final Act.,”
mailed Nov. 1, 2018); and the original Specification (“Spec.,” filed
Sept. 27, 2016) (claiming benefit under 35 U.S.C. § 371 of
PCT/EP2014/056335, filed Mar. 28, 2014).
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[(L2a)] receiving, from the address system in response to
the request message, an address generated by the address
system
[(L2b)] based, at least in part, on (a) the identifier and
(b) verification data provided to the address system from at
least one of the one or more security modules; and
continuing execution of the item of software at the
address received from the address system.
6. The method of claim 5, comprising identifying,
based on the identifier, the at least one of the one or more
security modules to which the request for the verification data
is to be sent.
REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Allan et al. (“Allan”) US 6,526,456 B1 Feb. 25, 2003
REJECTION4
Claims 1–7 and 16–33 stand rejected under 35 U.S.C. § 102(a)(1) as
being anticipated by Allan. Ans. 4.

4 Although not explicitly stated by the Examiner in the Answer, it appears
that the obviousness rejection in the Final Action (18) of claims 11–13 under
35 U.S.C. § 103 as being unpatentable over the combination of Allan in
view of Pike (US 2009/0038008 A1) has been withdrawn. See Ans. 19, 20.
The statement by the Examiner that claim 8 is objected to, but otherwise
allowable (Ans. 3) would seemingly indicate that claims 9–15, depending on
claim 8, are also objected to, but otherwise allowable. Thus, we proceed in
this Decision under the assumption that only the anticipation rejection of
claims 1–7 and 16–33 is before us on appeal.
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CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 6–15) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the anticipation
rejection of claims 1–7 and 16–33 in accordance with the claim grouping
summarized below.5
Claim
Group Claim Grouping
Representative
Claim
A 1, 4, 16, 18, 20–27, 29, 31–33 1
B 2, 5 2
C 3, 7 3
D 6 6
E 17, 28 17
F 19, 30 19
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).

5 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does 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).
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Based upon our review of the record, we find a preponderance of the
evidence supports particular arguments advanced by Appellant with respect
to claims 6, 19, 30 for the specific reasons discussed below.
However, we are unpersuaded by Appellant’s arguments with respect
to claims 1–5, 7, 16–18, 20–29, 31–33 and, unless otherwise noted, we
incorporate by reference 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 Appellant’s arguments.
We highlight and address specific findings and arguments regarding
claims 1, 2, 3, 6, 17, and 19 for emphasis as follows.
1. § 102(a)(1) Rejection of Claims 1, 4, 16, 18, 20–27, 29, 31–33
Issue 1
Appellant argues (Appeal Br. 7–12; Reply Br. 1–3) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 102(a)(1) as being anticipated by
Allan is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses “[a]
method for a computer to execute an item of software . . . [by] attempting to
perform the predetermined function by,” inter alia, performing the steps of
(L1) “sending, to an address system, a request message for an address of
instructions for carrying out the predetermined function, the request message
comprising an identifier of the predetermined function;” (L2a) “receiving,
from the address system in response to the request message, an address
generated by the address system;” wherein the generated address is (L2b)
“based, at least in part, on (a) the identifier and (b) verification data provided
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to the address system from at least one of the one or more security modules,”
as recited in claim 1?
Principles of Law
Anticipation of a claim under 35 U.S.C. § 102 occurs when each
claimed element and the claimed arrangement or combination of those
elements is disclosed, inherently or expressly, by a single prior art reference.
Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir.
2010). A reference inherently discloses an element of a claim “if that
missing characteristic is necessarily present, or inherent, in the single
anticipating reference.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373,
1377 (Fed. Cir. 2003) (citation omitted) (emphasis added). “Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.” Therasense, 593 F.3d at 1332 (citing Cont’l Can Co. USA, Inc.
v. Monsanto Co., 948 F.2d 1264,1269 (Fed. Cir. 1991)).
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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Analysis
L1: “sending . . . a request message for an address of instructions”
Appellant argues:
Claim 1 recites “sending, to an address system, a request
message for an address of instructions for carrying out the
predetermined function, the request message comprising an
identifier of the predetermined function”. The other
independent claims recite similar subject matter. Under the
Examiner’s mapping on which the rejection is based, this would
involve sending a request message to the RTRD module, with
the request message comprising the calling address CA.
However, this function is not taught by Allan.
Appeal Br. 10.
Appellant further argues, in Allan, “execution reaches the address
AD1, at which point a jump is made so that execution continues at the
address for the RTRD module. This is not the same as sending a request
message to the RTRD module.” Id. “The jump at addresses AD1, AD2 and
AD3, and the storage of the calling address CA on the call stack, are
certainly not request messages as recited in the claims.” Id. In addition,
Appellant alleges, “the calling address CA on the call stack is not an
identifier of the predetermined function that is to be called as is recited in the
claims. Instead, the calling address CA is the address of the instruction
AD1, AD2 or AD3 from which the jump to the RTRD module occurred.
Indeed, until the RTRD module has conducted its processing, the
identity/address of the function to be called is unknown in Allan.” Id.
The Examiner responds by finding, with reference to Figure 2, step 46
of Allan, the run-time redirect (RTRD) module determines a target address
(TA) for a respective subroutine for each subroutine call from a unique
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authorization subroutine reference table (ASRT) using a calling address
(CA) available from the memory stack from subscriber computer (SC) 14.
Ans. 4. “The RTRD module and the calling address CA are considered to be
the address system and the identifier.” Id.
Figure 2 of Allan is replicated below:

“FIG. 2 is a flow chart illustrating operations in an embodiment of the
invention.” Allan col. 3:62–63.
We reiterate claim 1 recites, in pertinent part, “sending, to an address
system, a request message for an address of instructions for carrying out the
predetermined function, the request message comprising an identifier of the
predetermined function.”
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Mindful of the Examiner’s claim construction above, we find steps 45
(“EXECUTE SOFTWARE WITH CALLS TO RTRD”) and 46
(“DETERMINE TA FROM ASRT USING CA, HA, LD”) in Figure 2 of
Allan represent iteratively sending a request message that identifies a
function or subroutine desired (step 46 determines a target address based on
the subroutine called) which is provided via a feedback loop (“request
message”) to the RTRD for execution (step 45 executes software with calls
to the RTRD using the target address). See Allan col. 8:46–54:
For each such subroutine call, in the step 46 in FIG. 2 the
RTRD determines the target address TA for the respective
subroutine from the ASRT at the SC 14, using the respective
calling address CA available from the memory stack of the SC
14, the hash HA which it determines in the same manner as this
is determined by the AA 12 in the step 61 as described above,
and the local data LD. A jump is made to the subroutine at the
determined target address TA, and execution of the software
continues at the step 45.
Allan col. 8:46–54.
Thus, under the broadest reasonable interpretation, we agree with the
Examiner’s finding that Allan discloses limitation L1, i.e., “sending, to an
address system, a request message for an address of instructions for carrying
out the predetermined function,” as recited in claim 1.
L2a: “receiving, from the address system . . . an address”
Limitation L2a recites “receiving, from the address system in response
to the request message, an address generated by the address system.”
Claim 1. Appellant argues, “there is no entity in Allan that receives the
target address TA from the RTRD module.” Appeal Br. 11.
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Appellant points to Allan step 69 of Figure 8, and column 8 line 65 to
column 9 line 3 in support of this contention, which appears to be based
upon the idea that Allan’s RTRD module calculates the target address and
makes a jump to the target address TA, allegedly supporting the proposition
that Allan’s RTRD module does not provide the target address TA to any
entity. Id. “[T]he RTRD module just uses the target address itself to carry
out a jump itself. Thus, the target address is not returned to the code that
called the RTRD module.” Id.
In the Answer, the Examiner finds Allan’s “RTRD determines target
address TA for the respective subroutine using calling address CA, the local
data LD, module auth is in charge of supplying this information that is
specific to the SC.” Ans. 5 (citing Allan, col. 7:23–37, col. 8:46 – col. 9:2.).
In response to Appellant’s argument, the Examiner explains (Ans. 16–
17), quoting Allan (col. 6:16–34), “[t]he AP 20 also modifies the original
software product by replacing the initial jump instruction by a jump
instruction to the authorizing module (JMP auth), which itself ends its
execution with a jump 51 to the original initial routine (JMP init).” Further,
“[a] jump is made to the subroutine at the determined target address TA.”
Allan col. 8:6–54. “A jump is made means target address is needed to be
known, the jump has to tell where to go, and that address information has to
be modified and replaced but [is nonetheless] needed to be known.”
Ans. 17.
Thus, we agree with the Examiner’s finding that Allan discloses the
RTRD (i.e., address system) providing an address to a selected subroutine,
thus meeting the contested limitation L2a, as recited in claim 1.
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L2b: “address generated by the address system [is] based . . . on. . . .”
Limitation L2b recites “[wherein the] address generated by the
address system [is] based, at least in part, on (a) the identifier and (b)
verification data provided to the address system from at least one of the one
or more security modules.” Claim 1.
Appellant argues, “[i]n order to be consistent with the Examiner’s
mapping . . . this would require that the RTRD module generates the target
address TA based on the calling address CA and local data LD provided to
the RTRD module from the auth module. However, there is no disclosure of
the auth module providing local data LD to the RTRD module.” Appeal
Br. 7–8 (emphasis added). Appellant argues the sections of Allan relied
upon by the Examiner for disclosing this limitation (i.e., Allan col. 7:23–37;
and col. 8:46–col. 9:2) “do[ ] not disclose the auth module providing data to
the RTRD module,” but instead discloses “that the auth module provides
data to the [authorization agent] AA 12.” Appeal Br. 8. “While, this section
of Allan discloses that the RTRD module uses local data LD, it does not
disclose where this local data LD derives from. It certainly makes no
mention of the RTRD module receiving local data LD from the auth
module.” Id. Further, “the auth module (which has been mapped to the
claimed security modules) does not provide local data LD to the RTRD
module and, therefore, Allan does not disclose that the address received
from the address system is generated by the address system ‘based, at least
in part, on (a) the identifier and (b) verification data provided to the address
system from at least one of the one or more security modules’ as recited in
the claims.” Appeal Br. 9.
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In the Final Action, the Examiner finds Allan’s “RTRD determines
target address TA for the respective subroutine using calling address CA, the
local data LD, [and] module auth is in charge of supplying this information
that is specific to the [subscriber computer] SC.” Final Act. 4 (citing Allan
col. 7:23–37, col. 8:46–col. 92)(emphasis omitted). We note the Examiner
also found that “software launch authorizing module auth,” discloses the
claimed “one or more security modules.” Final Act. 3 (emphasis omitted).
In the Answer, the Examiner addresses Appellant’s contention
regarding local data (LD) allegedly not being provided to the RTRD module
by the auth module, but instead, LD is allegedly only provided to AA 12.
“The RTRD has to access/receive local data LD to be able to use it. RTRD
has to access it remotely at least it’s downloaded to the RTRD tempora[rily]
to be used to determine the target address TA. Even if the data is remote, it
has to be sent tempora[rily], for example when on internet and on a
webpage, data has to be received/downloaded tempora[rily].” Ans. 15.
In support of the Examiner’s findings, Allan discloses:
FIG. 8 illustrates in more detail the operation of the
RTRD module rtrd for each replaced subroutine call,
comprising steps 66 to 69. In the step 66, the RTRD determines
the hash HA in the same manner as this is determined by the
AA 12 in the step 61 as described above, and determines the
hash number H from the respective calling address CA, the
local data LD, and the hash HA in exactly the same manner as
for the AA 12 in the step 62 as described above.
Allan, col. 8:55–62.
We agree with the Examiner that local data LD is provided not only to
AA 12, but also to the RTRD module so that, for example, the RTRD
module can compute a hash value using, inter alia, local data LD.
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Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art to disclose the
disputed limitations of claim 1, nor do we find error in the Examiner’s
resulting finding of anticipation. Therefore, we sustain the Examiner’s
anticipation rejection of independent claim 1, and grouped claims 4, 16, 18,
20–27, 29, 31–33, which fall therewith. See Claim Grouping, supra.
2. § 102(a)(1) Rejection of Claims 2, 5
Issue 2
Appellant argues (Appeal Br. 12; Reply Br. 3) the Examiner’s
rejection of claim 2 under 35 U.S.C. § 102(a)(1) as being anticipated by
Allan is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior discloses “[t]he method
of claim 1” including, inter alia, the limitation of “the at least one of the one
or more security modules providing the verification data to the address
system,” as recited in claim 2?
Analysis
Appellant contends “Allan does not teach that the auth module
(mapped to the security modules) provides local data LD to the RTRD
module (mapped to the address system).” Appeal Br. 12.
For the reasons discussed above, with respect to Issue 1, claim 1, we
disagree with Appellant’s contention because, as described in Allan,
column 8, lines 55–62, local data LD is provided not only to AA 12, but also
to the RTRD module so that, for example, the RTRD module can compute a
hash value using, inter alia, local data LD.
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Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art to disclose the
disputed limitations of claim 2, nor do we find error in the Examiner’s
resulting finding of anticipation. Therefore, we sustain the Examiner’s
anticipation rejection of dependent claim 2, and grouped claim 5, which falls
therewith. See Claim Grouping, supra.
3. § 102(a)(1) Rejection of Claims 3, 7
Issue 3
Appellant argues (Appeal Br. 12) the Examiner’s rejection of claim 3
under 35 U.S.C. § 102(a)(1) as being anticipated by Allan is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior discloses “[t]he method
of claim 1” including, inter alia, the limitation of “the at least one of the one
or more security modules providing the verification data to the address
system periodically,” as recited in claim 3?
Analysis
Appellant contends “as noted above, and admitted by the Examiner,6
Allan does not teach security modules providing verification data to the

6 Appellant appears to overstate the Examiner’s “admission” in the
Interview Summary in this regard. The “Substance of Interview” in the
Interview Summary dated January 30, 2019 is strikingly different than what
is asserted by Appellant: “Focus of interview was amendments to claim 1
filed in the After Final (12/28/2018) with regards to prior art, Allan et al.
Focus was on Figures 4 and 8 of Allan et al. and the difference with claim 1.
Examiner agrees Allan et al. does not disclose ‘request message’, to depict
message protocols. Examiner suggested amending independent claims with
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address system at all, let alone periodically,” and “the Examiner seems to
map ASRT of Allan to the claimed verification data for claims 3 and 7 while
mapping the local data LD of Allan to the claimed verification data for
claims 2 and 5.” Appeal Br. 12.
The Examiner makes findings with respect to claim 3 similar to those
for claim 2, supra. Ans. 17–18. We adopt these findings as our own, and
further add, with respect to the recitation of “providing the verification data
to the address system periodically,” we again note in Figure 2 of Allan,
iterative steps 45 and 46 disclose periodically providing a target address to
the RTRD, a different TA for each subroutine call, where the local data LD
is used each time a new subroutine is called to determine the TA. See Allan
col. 8:46–62.
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art to disclose the
disputed limitation of claim 3, nor do we find error in the Examiner’s
resulting finding of anticipation. Therefore, we sustain the Examiner’s
anticipation rejection of dependent claim 3, and grouped claim 7, which falls
therewith. See Claim Grouping, supra.

claims 8 and 11. Examiner will update search and focus on amendments
after being officially filed.”
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4. § 102(a)(1) Rejection of Claim 6
Issue 4
Appellant argues (Appeal Br. 12–13) the Examiner’s rejection of
claim 6 under 35 U.S.C. § 102(a)(1) as being anticipated by Allan is in error.
These contentions present us with the following issue:
Did the Examiner err in finding the cited prior discloses “[t]he method
of claim 5” including the step of “identifying, based on the identifier, the at
least one of the one or more security modules to which the request for the
verification data is to be sent,” as recited in claim 6?
Analysis
Appellant contends the “addresses of Allan do not identify or
determine auth module (which is mapped to the security modules for the
purposes of the rejection of other claims) [such that] Allan fails to teach or
suggest the elements of claim 6.” Appeal Br. 13.
The Examiner cites to Allan column 8, lines 46–49, finding Allan
determines the target address using respective calling address CA. Ans. 7.
In the Response to Argument section of the Answer, the Examiner states
“[i]n response to appellant’s arguments 2.6 with respect to claim 6,
Examiner respectfully disagrees. See Examiner’s response to appellant’s
argument 2.1 and 2.3 as stated above.” Ans. 18.
We have reviewed the prior art cited by the Examiner, and do not find
any portion of Allan relied on by the Examiner that discloses identifying the
security module to which the request for the verification data is to be sent, as
claimed in claim 6.
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Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner’s reliance on the cited prior
art to disclose the disputed limitation of claim 6, such that we find error in
the Examiner’s resulting finding of anticipation. Therefore, we do not
sustain the Examiner’s anticipation rejection of dependent claim 6.
5. § 102(a)(1) Rejection of Claims 17, 28
Issue 5
Appellant argues (Appeal Br. 15) the Examiner’s rejection of claim 17
under 35 U.S.C. § 102(a)(1) as being anticipated by Allan is in error. These
contentions present us with the following dispositive issue:
Did the Examiner err in finding the cited prior discloses “[t]he method
of claim 16, wherein the respective security-related operation comprises,”
inter alia, “one or more of . . . (e) authorizing use of the item of software,”
as recited in claim 17?
Analysis
Appellant argues:
With respect to claims 17 and 28, the examiner has
mapped the “one or more security modules” of the claims to the
module “auth” in Allan. The role of the module auth is set out
in Allan at column 7 lines 23–37. In particular, the module auth
simply supplies data to the remote authorization agent AA 12 -
this data includes IDs of the software and the user, and the local
data LD. Supplying this data does not involve performing any
of (a)–(g) recited in claims 17 and 28.
Appeal Br. 15.
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We note Allan discloses:
From the above outline, it can be seen that the invention
enables an arrangement to be provided in which any software
product can be freely distributed with its control thread
obscured, and execution of the software is permitted by any
authorized subscriber in a manner which is tied to that
subscriber without the software product being returned to its
original form. The software product is thereby protected by
ensuring that a copy of the software being executed on one
computer, even if captured with the aid of hacker’s tools such
as memory snapshots, is practically useless on any other
computer, and even at unauthorized times on the same
computer. As described above the arrangement is provided in a
network which expedites distribution of the software product
and authorization of its use.
Allan col. 5:34–47 (emphasis added).
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art to disclose the
disputed limitation of claim 17, nor do we find error in the Examiner’s
resulting finding of anticipation. Therefore, we sustain the Examiner’s
anticipation rejection of dependent claim 17, and grouped claim 28, which
falls therewith. See Claim Grouping, supra.
6. § 102(a)(1) Rejection of Claims 19, 30
Issue 6
Appellant argues (Appeal Br. 15–16) the Examiner’s rejection of
claim 19 under 35 U.S.C. § 102(a)(1) as being anticipated by Allan is in
error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior discloses “[t]he method
of claim 1” wherein, inter alia, “the verification data comprises a hash value
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based on a hash of one or more software portions, wherein each software
portion is a respective part of the item of software or a respective part of one
of the one or more security modules,” as recited in claim 19? (emphasis
added).
Analysis
Appellant contends “the examples of local data discussed in Allan are
set out in the arguments for claim 1, and none of these relate to ‘a hash value
based on a hash of one or more software portions, wherein each software
portion is a respective part of the item of software or a respective part of one
of the one or more security modules.’” Appeal Br. 15. In addition,
Appellant argues, “the Examiner has referenced the ‘ASRT dependent upon
the hash HA of authorizing software’ in Allan at column 9 lines 37-40.
However, the ASRT is not part of the local data LD which the Examiner has
mapped to the ‘verification data’ in the claims —hence, the reference to the
ASRT for claims 19 and 30 is inappropriate.”
We have reviewed the portion of Allan cited by the Examiner (see
Ans. 8, citing Allan col. 9: 37–40), and disagree with the Examiner that
Allan discloses “the verification data comprises a hash value based on a hash
of one or more software portions,” as recited in dependent claim 19.
Accordingly, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner’s reliance on the cited prior
art to disclose the disputed limitation of claim 19, such that we find error in
the Examiner’s resulting finding of anticipation. Therefore, we do not
sustain the Examiner’s anticipation rejection of dependent claim 19, and
Appeal 2019-006590
Application 15/129,681

20
grouped claim 30 which recites the dispositive limitation in commensurate
form, and stands therewith. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 1–3) not in response to a shift in the Examiner’s position in
the Answer, 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 (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSIONS
We affirm the Examiner’s anticipation rejection of claims 1–5, 7, 16–
18, 20–29, and 31–33. However, we reverse the Examiner’s anticipation
rejection of claims 6, 19, and 30.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis Affirmed Reversed
1–7, 16–33 102(a)(1) Allan 1–5, 7, 16–18, 20–29, 31–33 6, 19, 30
FINALITY AND RESPONSE
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). See 37
C.F.R. § 41.50(f).
AFFIRMED IN PART