Ex Parte Boemker et al

Patent Trial and Appeal Board

Mar 27, 2013

11623606 (P.T.A.B. Mar. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TIM BOEMKER, MARK KELLER, CHIP SCHOCK,
MARK E. KLEINGERS, PHILLIP E. HUFF, TERRANCE P. GIESKE,
JAMES D. GERSTEN, and JOHN E. DANNER
____________

Appeal 2010-007955
Application 11/623,606
Technology Center 2400
____________

Before JOHN A. JEFFERY, DENISE M. POTHIER, and JOHN A. EVANS,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-6. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.

STATEMENT OF THE CASE
Appellants’ invention manages executing documents requiring
electronic signatures. In one aspect, a signable document is presented to a
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signer in a manner that demonstrates the signer’s ability to access
information in the document. See generally Spec. 5-6. Claim 1 is
illustrative:
1. A method of presenting a signable document to a signer for
authentication, comprising
formatting the signable document as an electronic package, the
electronic package utilizing at least a first storage format,
responding to a request to sign documents from a signer by presenting
the signer with an access demonstration document formatted in the first
storage format;
requiring delivery from the signer of information presented in the
access demonstration document;
in response to correct delivery by the signer of information presented
in the access demonstration document, presenting the signable document to
the signer in an authentication session of the signer; and
acquiring authentication of the signable document from the signer in
the authentication session.

THE REJECTIONS
1. The Examiner rejected claims 3 and 4 under 35 U.S.C. § 102(b) as
anticipated by Rice (US 2002/0053021 A1; May 2, 2002). Ans. 3-4.1
2. The Examiner rejected claims 1 and 2 under 35 U.S.C. § 103(a) as
unpatentable over Rice. Ans. 4-5.
3. The Examiner rejected claims 5 and 6 under 35 U.S.C. § 103(a) as
unpatentable over Rice and Harrison (US 2002/0054334 A1; May 9, 2002).
Ans. 5-7.

1 Throughout this opinion, we refer to the Appeal Brief filed November 2,
2009 (“Br.”) and the Examiner’s Answer mailed February 2, 2010 (“Ans.”).
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THE ANTICIPATION REJECTION
The Examiner finds that Rice discloses every recited element of
independent claim 3 including providing authentication in the form of (1) an
electronic signature, and (2) electronic delivery of alphanumerically
expressed information (i.e., a date). Ans. 3.
Appellants argue that the Examiner’s characterizing a date as
“authentication” is unreasonable and, as such, Rice does not disclose two
different forms of authentication as claimed. Br. 5-6. Appellants also argue
limitations of independent claim 4 summarized below. Br. 6-7.2

ISSUES
Under § 102, has the Examiner erred by finding that:
(1) Rice’s date constitutes an authentication response that is an
electronic delivery of alphanumerically expressed information as recited in
claim 3?
(2) Rice receives authentication from a second signer in an
authentication session that is at least partially concurrent with the first
signer’s authentication session as recited in claim 4?

ANALYSIS
Claim 3
Independent claim 3 requires at least two authentication responses
selected from the group of four such responses. Appellants do not dispute

2 Although Appellants incorrectly state that the Examiner rejected claim 4
“for obviousness” (Br. 6), the Examiner rejected that claim as anticipated by
Rice. Ans. 3-4.
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the Examiner’s reliance on Rice’s electronic signature as meeting one of
these authentication alternatives, but rather disputes the Examiner’s mapping
Rice’s date to the electronic delivery of alphanumerically expressed
information option. Br. 5-6.
On this record, we see no error in the Examiner’s position. As the
Examiner indicates, Rice’s date information is associated with an electronic
image signature and, as shown in Figure 2A, is embedded in a secure
document. Ans. 7-8 (citing Rice ¶¶ 0050, 0053). Although Appellants
contend that a signature’s date is often not entered or entered by someone
other than the signer (Br. 5-6), Appellants do not persuasively rebut the
Examiner’s finding that Rice’s date associated with an image signature (1)
helps to authenticate the signature and the message, and (2) is used to
compute a message digest which also authenticates the message, at least
with respect to whether it has changed. Ans. 7-8.
We are therefore not persuaded that the Examiner erred in rejecting
claim 3.

Claim 4
We also sustain the Examiner’s rejection of claim 4 which recites, in
pertinent part, receiving authentication from a second signer in an
authentication session that is at least partially concurrent with the first
signer’s authentication session. Despite Appellants’ arguments to the
contrary (Br. 6-7), Appellants do not persuasively rebut the Examiner’s
reliance on Rice’s Paragraph 0038 which notes that a signing party
certification environment is used by one or more signers to view and sign
documents in the presence of a certification party, such as a notary.
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Ans. 3-4, 9. Although Rice’s document can specify the particular order that
signers sign the document as Appellants indicate (Br. 7 (citing Rice ¶
0054)), the claim does not require concurrent signing, but rather concurrent
authentication sessions. Appellants’ arguments in this regard are therefore
not commensurate with the scope of the claim. Even if signers do not
simultaneously sign the document in the presence of the certification party
(notary) in Rice, Appellants have still failed to show error in the Examiner’s
position that the respective signers’ associated authentication sessions would
at least be partially concurrent, for they both occur in the presence of the
same certification party.

THE OBVIOUSNESS REJECTION OVER RICE
The Examiner finds that Rice discloses every recited element of
independent claim 1 except responding to a request to sign documents from
a signer by presenting the “user” with an access demonstration document
formatted in a first storage format. Ans. 4-5, 8-9. Although the Examiner
acknowledges that Rice performs this step orally by telephone, the Examiner
nonetheless contends that replacing this oral communication with visually
presenting the information via the recited access demonstration document
would have been an obvious variation. Id.
Appellants argue that Rice’s verbal process is not analogous to
receiving an access demonstration document since this document
demonstrates that the signer has (1) the technical ability to receive a
document, and (2) the cognitive ability to read it. Br. 6. This demonstration
is said to prevent the signer from later repudiating signatures on documents
by claiming technological infirmities or illiteracy. Id.
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ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Rice would have taught or suggested responding to a request to sign
documents from a signer by presenting the signer with an access
demonstration document formatted in a first storage format? This issue
turns on whether presenting this document to the signer is an obvious variant
over oral communication by telephone.

ANALYSIS
We will not sustain the Examiner’s rejection of independent claim 1.
Rice’s signing party certification environment includes a telephone 123 that
a signing party can use to talk to the document’s creator to determine the
document’s ID and password. Rice ¶¶ 0026, 0040; Fig. 1A. This verbal
communication, however, falls short of reasonably teaching or suggesting
presenting an access demonstration document as claimed.
Notably, claim 1 requires that presenting the access demonstration
document, formatted in the same first storage format as the signable
document, occurs before presenting a signable document to the signer. As
Appellants indicate (Br. 6), presenting the access demonstration document is
a key initial step in the process since this preliminary document
demonstrates that the signer has (1) the technical ability to receive a
document, and (2) the cognitive ability to read it, thus providing a key anti-
repudiation feature should the signer later claim illiteracy or technical
shortcomings. Despite the Examiner’s stated advantages of oral
communication (Ans. 8-9), we fail to see how a signer’s merely talking on
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the phone with a document creator about a document ID and password
provides the anti-repudiation advantages that would be achieved with
initially presenting the signer with an access demonstration document as
claimed. We also fail to see how a skilled artisan would have recognized
this oral communication is akin to presenting an access demonstration
document in the same format as the signable document as claim 1 requires.
Although Rice’s signing party certification environment also includes
a fax machine 127, the Examiner does not rely on this device in connection
with the recited access demonstration document presentation. See Ans. 4-5,
8-9. In any event, the certification party uses the fax machine to fax signed
documents to the server 115 or document creator. Rice ¶¶ 0026, 0040; Fig.
1A. To the extent that it would have been obvious to use this fax machine
(or any other document transmission device) to send a preliminary access
demonstration document to the signer before presenting a signable document
has simply not be been shown on this record, nor will we speculate in that
regard here in the first instance on appeal.
We are therefore persuaded that the Examiner erred in rejecting
independent claim 1, and dependent claim 2 for similar reasons.

THE OBVIOUSNESS REJECTION OVER RICE AND HARRISON
We also sustain the Examiner’s rejection of representative claim 5
reciting, in pertinent part, authenticating documents for a processor
responsible for processing the documents through authentication by
generating an authentication of the processor or a representative of the
processor on each document by a batch authentication process. The
Examiner cites Harrison as teaching this feature in concluding that the claim
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would have been obvious. Ans. 5-7, 10 (citing Harrison ¶¶ 0037-39).
Appellants, however, argue that there is no basis for looking at a batching
process performed by a machine for printing purposes to improve an
authentication process performed by individuals. Br. 8.
We see no error in the Examiner’s position. Although Harrison’s
batch authentication occurs in connection with a printing process, this
validation is essential to determine whether the sender of an electronically-
received document and its contents can be relied upon. See Harrison,
Abstract; ¶¶ 0109-12; Fig. 6. We see no reason why this technique could not
be used to enhance Rice’s system as the Examiner proposes, for Rice’s
certification party (“processor”) receives electronic documents before
presenting them for signature. See Rice ¶¶ 0045, 0057; Fig. 3 (step 317).
Verifying the authenticity of those received documents before signing via a
batch authentication process such as that disclosed by Harrison predictably
uses prior art elements according to their established functions—an obvious
improvement. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 5, and claim 6 not separately argued with particularity.

CONCLUSION
The Examiner did not err in rejecting claims 3 and 4 under § 102.
Under § 103, the Examiner did not err in rejecting claims 5 and 6, but erred
in rejecting claims 1 and 2.

ORDER
The Examiner’s decision rejecting claims 1-6 is affirmed-in-part.
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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-IN-PART

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