WIND RIVER SYSTEMS, INC.

Patent Trials and Appeals Board

Dec 22, 2021

2020003055 (P.T.A.B. Dec. 22, 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.
13/784,177 03/04/2013 Aric SHIPLEY 40101/22301 (2012.003) 1076
30636 7590 12/22/2021
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
EXAMINER
FANG, PAKEE
ART UNIT PAPER NUMBER
2642
NOTIFICATION DATE DELIVERY MODE
12/22/2021 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):
mmarcin@fkmiplaw.com
okaplun@fkmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ARIC SHIPLEY
____________________

Appeal 2020-003055
Application 13/784,177
Technology Center 2600
____________________

Before DENISE M. POTHIER, LARRY J. HUME, and JUSTIN BUSCH,
Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 4–9, 11–16, and 18–21. We have jurisdiction over the
remaining pending claims under 35 U.S.C. § 6(b).
We rendered a prior Decision for this application in Ex parte Shipley,
Appeal No. 2017-008295, 2018 WL 2017684, at *3 (PTAB Apr. 23, 2018),
in which we affirmed the Examiner’s previous rejections.
We reverse and enter a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant identifies Wind
River Systems, Inc. as the real party in interest. Appeal Br. 2.
Appeal 2020-003055
Application 13/784,177
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CLAIMED SUBJECT MATTER
Appellant’s invention generally relates to using a smart card as a root
of trust for mobile platforms—i.e., “systems and methods for identifying and
authenticating a mobile platform” by “receiving . . . a digital certificate from
an integrated circuit card (‘ICC’) via close-proximity radio communication,
verifying the digital certificate with a digital signature stored on the mobile
platform, and booting the mobile platform upon verification of the digital
certificate of the ICC.” Spec. ¶ 3. Claims 1, 8, and 15 are independent.
Claim 1 is representative of the subject matter on appeal and is reproduced
below with a key disputed limitation emphasized in italics:
1. A method comprising:
storing, by a mobile platform, a plurality of digital
signatures, each digital signature including information
corresponding to a user, the information comprising operating
system information to be used when booting the mobile platform
for the user;
receiving, by the mobile platform, a digital certificate from
an integrated circuit card (“ICC”) via close-proximity radio
communication prior to booting the mobile platform;
verifying the digital certificate with one of the digital
signatures stored on the mobile platform prior to booting of the
mobile platform;
booting the mobile platform upon verification of the
digital certificate of the ICC, wherein the booting of the mobile
platform is based on the operating system information
corresponding to the one of the digital signatures; and
establishing a secure communication channel between the
mobile platform and a network based on the digital certificate.

Appeal 2020-003055
Application 13/784,177
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REJECTIONS
Claims 1, 2, 4, 5, 8, 9, 11, 12, 15, 16, 18, and 21 stand rejected under
35 U.S.C. § 103 as being obvious over Kanemura (US 2009/0204806 A1;
Aug. 13, 2009), Kudo (US 2006/0026429 A1; Feb. 2, 2006), and Buer (US
2007/0118745 A1; May 24, 2007). Final Act. 2–5.
Claims 6, 7, 13, 14, 19, and 20 stand rejected under 35 U.S.C. § 103
as being obvious over Kanemura, Kudo, Buer, and Kato (US 2006/0200681
A1; Sept. 7, 2006). Final Act. 5–6.
ANALYSIS
REJECTION OF CLAIMS 1, 2, 4, 5, 8, 9, 11, 12, 15, 16, 18, AND 21
The Examiner finds the combination of Kanemura, Kudo, and Buer
teaches or suggests every limitation recited in independent claim 1. Final
Act. 2–4. Of particular relevance to this Appeal, the Examiner finds Buer
teaches “storing, by a mobile platform, a plurality of digital signatures, each
digital signature including information corresponding to a user, the
information comprising operating system information to be used when
booting the mobile platform for the user” (emphasis added), as recited in
claim 1. Final Act. 4 (citing Buer ¶¶ 6, 18, 31, 52–55).
More specifically, the Examiner “treats the [claimed] booting of the
operating system as the booting of applications after the power on
function.” Ans. 3. The Examiner finds Buer discloses allowing access to an
application if a user’s credentials are verified against a database storing all
users’ credentials. Ans. 6 (citing Buer ¶¶ 6, 18, 30–34, 52–55, Figs. 2–4).
The Examiner also states that the rejection is based on a combination of
references and that attacking references individually, therefore, cannot
demonstrate that the claims are nonobviousness over the cited combination.
Ans. 3.
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Application 13/784,177
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Appellant argues, among other things, that Buer includes no
disclosures “related to a digital signature including operating system
information and using that operating system information when booting a
device.” Appeal Br. 4–5.
Appellant contends Buer cannot teach, and “is entirely irrelevant to,”
storing a signature including operating system information used to boot the
mobile platform because Buer’s cited portions relate to accessing an
application on a remote server and never reference booting a platform or
operating systems. Appeal Br. 5–6; Reply Br. 2. Appellant further argues
the Examiner’s findings are deficient because Buer’s cited portions do not
describe a signature or credential including information used to boot an
application, let alone a mobile platform. Reply Br. 3. Additionally,
Appellant asserts the Examiner’s finding that booting applications teaches
booting a mobile platform is inconsistent with the Board’s prior decision
explaining that “loading applications is not equivalent to booting the mobile
platform.” Reply Br. 3 (quoting Ex parte Shipley, Appeal No. 2017-008295,
2018 WL 2017684, at *3 (PTAB Apr. 23, 2018)). In particular, Appellant
argues the Examiner’s finding that Buer teaches booting or starting
applications is insufficient to demonstrate that Buer teaches storing
signatures that include operating system information used to boot a mobile
platform, as recited in claim 1. Reply Br. 3.
As noted above, the disputed portion of representative claim 1 for
which the Examiner relies on the above disclosures in Buer recites “storing,
by a mobile platform, a plurality of digital signatures, each digital signature
including information corresponding to a user, the information comprising
operating system information to be used when booting the mobile platform
for the user.” Appeal Br. 10 (emphases added). Claim 1 also recites
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Application 13/784,177
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“booting of the mobile platform . . . based on the operating system
information corresponding to the one of the digital signatures.” Appeal
Br. 10. Thus, the particular information included in the digital signature is
“used when booting the mobile platform” because “booting the mobile
platform” is “based on the operating system information” from a particular
digital signature. See Appeal Br. 10.
We agree with Appellant that the rejection does not clearly set forth a
finding that Buer teaches or suggests a signature including operating system
information used to boot the mobile platform. Although the Examiner is
correct that attacking references individually is insufficient to overcome an
obviousness rejection based on a combination of references, the Examiner
finds that Buer alone teaches this disputed limitation. See Final Act. 3–4.
We see no finding in the record that disclosures from Kanemura or Kudo are
combined with Buer’s cited disclosures to teach the disputed limitation, and
the rejection includes insufficient explanation to demonstrate how Buer
alone, or when combined with Kanemura and Kudo, teaches or suggests a
digital signature including operating system information used to boot the
mobile platform.
Therefore, constrained by the record, we do not sustain the rejection
of claim 1 as obvious over Kanemura, Kudo, and Buer. Independent claims
8 and 15 include a limitation of similar scope and claims 2, 4, 5, 9, 11, 12,
16, 18, and 21 ultimately depend from and incorporate the limitations of one
of claims 1, 8, and 15. Accordingly, for the same reasons as discussed
above, we also do not sustain the rejection of claims 2, 4, 5, 8, 9, 11, 12, 15,
16, 18, and 21 as obvious over Kanemura, Kudo, and Buer.
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REJECTION OF CLAIMS 6, 7, 13, 14, 19, AND 20
The Examiner rejects claims 6, 7, 13, 14, 19, and 20 as obvious over
Kanemura, Kudo, Buer, and Kato. Final Act. 5–6. The Examiner does not
find Kato cures the deficiency identified above. Accordingly, for the same
reasons, we do not sustain the rejection of claims 6, 7, 13, 14, 19, and 20 as
obvious over Kanemura, Kudo, Buer, and Kato.
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claims 1, 2, 4–9, 11–16, and 18–21 under 35 U.S.C.
§ 112(a) for lack of written description.
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellant possessed the claimed
invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Specifically, the
description must “clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed,” and “the test
requires an objective inquiry into the four corners of the specification from
the perspective of a person of ordinary skill in the art.” Id. at 1351 (internal
quotations marks and citations omitted) (alteration in original). “Based on
that inquiry, the specification must describe an invention understandable to
that [ordinarily] skilled artisan and [demonstrate] that the inventor actually
invented the invention claimed.” Id.
Further, it is not enough to satisfy the written description requirement
that the claimed subject matter would have been obvious to a person of
ordinary skill in view of the written description. See ICU Med., Inc. v.
Alaris Med. Sys., Inc., 558 F.3d 1368, 1377 (Fed. Cir. 2009); see also
Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566–67
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Application 13/784,177
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(Fed. Cir. 1997) (explaining that “an applicant complies with the written
description requirement by describing the invention, with all its claimed
limitations, not that which makes it obvious” (quotations omitted)).
Independent claim 1 recites, in part,
storing, by a mobile platform, a plurality of digital
signatures, each digital signature including information
corresponding to a user, the information comprising operating
system information to be used when booting the mobile platform
for the user;
. . .
booting the mobile platform upon verification of the
digital certificate of the ICC, wherein the booting of the mobile
platform is based on the operating system information
corresponding to the one of the digital signatures. . . .
Appeal Br. 10 (emphases added).
Although there is no requirement for the Specification to use the exact
language recited in the claims, we note that the Specification does not
describe “booting of the mobile platform is based on the operating system
information corresponding to the one of the digital signatures,” as recited in
the claims. See Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997) (“Although the exact terms need not be used in haec verba, . . .
the specification must contain an equivalent description of the claimed
subject matter.”). Specifically, we find nothing in the Specification
describing booting the mobile platform “based on the operating system
information” included in a digital signature.
The Summary of Claimed Subject Matter in the Appeal Brief points to
paragraphs 8, 13, 15, 16, 28, and 33 for the recited “storing” and “booting”
steps. Appeal Br. 2. Appellant identified paragraphs 26, 30, and 33 as
support for the amendment that added the “storing” step and the portion of
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Application 13/784,177
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the “booting” step reciting that booting is “based on the operating system
information corresponding to the” signature. See Amdt 2 (filed Apr. 8,
2019) (amending claim 1), 3 (amending claim 8), 4–5 (amending claim 15),
6 (identifying alleged support for amendments (citing Spec. ¶¶ 26, 30, 33)).
We find the most relevant portions of the Specification describe both
(1) using the information in the signature to verify a user or device and
(2) booting the mobile platform. Spec. ¶¶ 8 (describing using a smart card
as a “root of trust to facilitate secure and measured boot of the mobile
platform”), 13 (same), 16 (describing repurposing a common access card
(CAC) to serve as the root of trust), 21 (“the smartphone 120 may verify the
digital signature of the device software, and boot the smartphone if the
signature was correctly verified using the public key provided by the
certificate on the CAC 140”), 26 (describing securely booting the
smartphone if verified as correct or, if verification fails, bricking the
smartphone—i.e., rendering it unusable), 28–29 (same). The other
paragraphs Appellant cites describe problems with using SD cards as a root
of trust, describe establishing secure communication channels, and
generically state that modifications may be made “without departing from
the spirit or scope of the invention.” Spec. ¶¶ 15, 30, 33. However, there is
no discussion that booting occurs based on operating system information
that is part of the digital signature. See id.
For the reasons discussed above, we newly reject independent claim 1
under 35 U.S.C. § 112(a) for failing to comply with the written description
requirement. For similar reasons we also newly reject under 35 U.S.C.
§ 112(a) independent claims 8 and 15, which recite similar limitations. In
addition, we newly reject under 35 U.S.C. § 112(a) dependent claims 2, 4–7,
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Application 13/784,177
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9, 11–14, 16, and 18–21, which inherit the deficiencies of their respective
base claims.
CONCLUSIONS
We reverse the Examiner’s decision rejecting claims 1, 2, 4–9, 11–16,
and 18–21 under 35 U.S.C. § 103.
We enter a new ground of rejection rejecting claims 1, 2, 4–9, 11–16,
and 18–21 under 35 U.S.C. § 112(a).
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § References/
Basis
Affirmed Reversed New
Ground
1, 2, 4, 5,
8, 9, 11,
12, 15,
16, 18, 21
103 Kanemura,
Kudo, Buer
1, 2, 4, 5,
8, 9, 11,
12, 15,
16, 18, 21

6, 7, 13,
14, 19, 20
103 Kanemura,
Kudo,
Buer, Kato
6, 7, 13,
14, 19, 20

1, 2, 4–9,
11–16,
18–21
112(a) Written
Description
1, 2, 4–9,
11–16,
18–21
Overall
Outcome
1, 2, 4–9,
11–16,
18–21
1, 2, 4–9,
11–16,
18–21
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
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Application 13/784,177
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one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, Appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended. 37 C.F.R. § 1.136(a)(1)(iv); see 37 C.F.R.
§ 41.50(f).
REVERSED; 37 C.F.R. § 41.50(b)