In Re Mary E. Zurko, Thomas A. Casey, Jr., Morrie Gasser, Judith S. Hall, Clifford E. Kahn, Andrew H. Mason, Paul D. Sawyer, Leslie R. Kendall, and Steven B. Lipner
Docket: 666
Court: Court of Appeals for the Federal Circuit; August 2, 2001; Federal Appellate Court
The case centers on a remand from the Supreme Court regarding the rejection of U.S. Patent Application No. 07/479,666 under 35 U.S.C. § 103. Initially, the Federal Circuit had applied a "clear error" standard when reviewing the Board of Patent Appeals and Interferences' factual findings, which led to a reversal of the Board's decision. However, the Supreme Court determined that the appropriate standard of review should align with the Administrative Procedure Act (APA), specifically the "substantial evidence" standard, which was later confirmed in In re Gartside. Upon re-evaluation of the Board's decision using this standard, the Federal Circuit found that the Board's factual findings lacked substantial evidence, leading to a reversal of the rejection of the patent application.
The '666 application presents a method to enhance the efficiency of creating secure computer environments by minimizing the use of costly trusted software. It describes a process for executing trusted commands within both untrusted and trusted computing environments. Claim one outlines the steps: parsing a trusted command in the untrusted environment to create a parsed command, submitting that command to the trusted environment, displaying it to the user via a trusted path, and receiving user confirmation before execution. If the user indicates that the representation does not align with their intentions, execution is halted; otherwise, the command is executed in the trusted environment. The method aims to reduce the reliance on trusted software by leveraging untrusted software for the parsing step.
The Board upheld the Examiner's rejection of claims 1, 4, and 5 under 35 U.S.C. 103 based on prior art, specifically the UNIX operating system and Dunford's FILER Version 2.20. The Board noted that UNIX operates with both untrusted and trusted code, allowing for parsing commands in an untrusted environment before calling trusted services for execution. FILER2 similarly requires user confirmation for potentially dangerous commands. The Board concluded that the claimed invention would have been obvious to a skilled artisan, as they could derive the combination of using untrusted parsing and user confirmation from these references.
The Board addressed arguments from applicants regarding the lack of disclosure of a trusted path communication in prior art references and the absence of motivation to combine these references for the claimed invention. The Board asserted that communication along a trusted path is either inherent or implicit in the prior art and is considered basic knowledge that occurs in trusted environments. It concluded that combining the teachings of the references was a matter of common sense, citing FILER2's discussion of verifying commands within a trusted computing environment as indicative of verification occurring along a trusted path.
However, in the case of Zurko I, the court found the Board's conclusions erroneous, stating that the prior art did not explicitly or inherently teach user communication over a trusted pathway and that the findings conflicted with each other regarding trusted communications. On remand, applicants argued for the reversal of the Board's decision based on legal flaws and inadequate factual findings, while the Commissioner maintained that substantial evidence supported the Board's conclusions.
Obviousness of a claimed invention is determined under 35 U.S.C. 103(a) based on the differences between the invention and prior art, which includes understanding the scope of prior art, the skill level of a person in the field, and any objective evidence of nonobviousness. The review of obviousness determinations is conducted without deference, while factual findings are reviewed for substantial evidence, defined as relevant evidence that a reasonable mind could accept as adequate to support a conclusion. This review considers the entirety of the record and allows for the existence of conflicting conclusions without undermining the agency's findings.
The substantial evidence standard is more deferential than the clearly erroneous standard, as noted in Zurko III, although the Supreme Court described the distinction as subtle. It emphasized that while appellate courts should respect agency expertise, they must avoid merely rubber-stamping agency findings. Federal Circuit judges, due to their specialized experience, are expected to critically assess Board findings.
In this context, the applicants contest the Board's decision, alleging legal and factual errors centered on two issues. They argue that the prior art cited by the Board does not disclose a required feature of their invention—communication between a trusted environment and the user along a trusted path. The Commissioner concedes that the UNIX IDS and FILER2 references do not teach this feature but claims that four other references support the Board's findings and conclusion of obviousness.
The court disagrees with the Commissioner's position, stating that the Board's conclusion of obviousness cannot be supported by the alternative references, which do not establish the claimed communication capability. Specifically, a cited patent confirms that prior art multi-user operating systems, including UNIX, do not provide for a trusted path. Additionally, the Commissioner cannot substitute these new references to rectify the Board's conclusion, as this would introduce a new ground for rejection not previously considered by the Examiner or Board, which is impermissible according to established legal precedent.
Deficiencies in the cited references cannot be justified by the Board's assertions regarding "basic knowledge" or "common sense" in the relevant art. The Board claimed that even if the UNIX and FILER2 references did not explicitly disclose a trusted path, it was basic knowledge that communication in trusted environments occurs over trusted paths and that verifying a trusted command in UNIX is merely "good common sense." These findings are rejected as they lack substantial evidence in the record. While the Board possesses expertise in its jurisdiction, it cannot rely solely on its understanding or perceptions of common knowledge for core factual determinations regarding patentability. Concrete evidence must support such findings to maintain the efficacy of appellate review based on substantial evidence. The Board's conclusion of obviousness is thus determined to be based on a misinterpretation of the references and is unsupported by the evidence, leading to the reversal of the Board's judgment. The Commissioner’s request to identify supporting references not cited by the Board is also denied, as it would be inappropriate to consider them.
