Ex Parte Brokenshire et al

Board of Patent Appeals and Interferences

Feb 24, 2011

10763079 (B.P.A.I. Feb. 24, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL BROKENSHIRE HARM PETER HOFSTEE,
and MOHAMMAD PEYRAVIAN
____________

Appeal 2009-006207
Application 10/763,079
Technology Center 2400
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
THU A. DANG, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-006207
Application 10/763,079

2
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-15 and 18-23. Claims 16 and 17 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm-in-part.

Invention
Appellants’ invention relates generally to the field of secure electronic
communications. More particularly, the invention on appeal is directed to a
unidirectional protocol for message masking and validation using a hash
function. (Spec. 1).
Representative Claim
1. A system in a message source for secure communication,
comprising:

a random value generator configured to generate a
random value;

a message validation code generator coupled to the
random value generator and configured to generate a message
validation code based on a predetermined key, a message, and
the random value;

a one-time pad generator coupled to the random number
generator and configured to generate a one-time pad based on
the random value and the predetermined key;

a masked message generator coupled to the one-time pad
generator and configured to generate a masked message based
on the one-time pad and the message, and

a transmitter configured to transmit a secure message that
comprises the random value, the masked message, and the
message validation code to a message target,
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wherein the message target is configured to unmask the
masked message to form the message and validate the message
using the message validation code.

Examiner’s Rejections
1. Claims 22 and 23 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.

2. Claims 22 and 23 stand rejected under 35 U.S.C. § 101 as being
directed to nonstatutory subject matter.

3. Claims 1-15 and 18-23 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Shrader (U.S. Patent No. 6,914,985).

112 1st paragraph enablement rejection
Claims 22 and 23
The Examiner contends that Appellants’ Specification fails to
sufficiently point out computer readable media so as to enable one skilled in
the art to make and use the claimed invention. (Ans. 3).
The “enablement requirement is satisfied when one skilled in the art,
after reading the specification, could practice the claimed invention without
undue experimentation.” AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244
(Fed. Cir. 2003) (citation omitted). Whether undue experimentation is
required is a conclusion reached by weighing several underlying factual
inquiries. In re Wands, 858 F.2d 731, 736 (Fed. Cir. 1988). A
“specification need not disclose what is well known in the art.” Lindemann
Maschinenfabrik GmbH v. American Hoist & Derrick Co., 730 F.2d 1452,
1463 (Fed. Cir. 1984). However, this “is merely a rule of supplementation,
not a substitute for a basic enabling disclosure.” Genentech, Inc. v. Novo
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Nordisk, A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997). It means that the
omission of minor details does not cause a specification to fail to meet the
enablement requirement. Id. It is the specification, not the knowledge of
one skilled in the art, that must supply the novel aspects of an invention in
order to constitute adequate enablement. Id.
Here, we observe that Appellants’ Specification discloses at least one
embodiment of a medium as an integrated circuit coded to perform
functions. (Spec. 3, ll. 14-15; see also App. Br. 7). Therefore, we are
satisfied that one skilled in the art could practice the claimed invention after
reading the Specification without undue experimentation. Accordingly, we
reverse the Examiner’s rejection of claims 22 and 23 under § 112, first
paragraph.

§101 rejection
Claims 22 and 23
Regarding the Examiner’s §101 rejection of computer readable
medium claims 22 and 23, we note that “[t]he four categories [of § 101]
together describe the exclusive reach of patentable subject matter. If a claim
covers material not found in any of the four statutory categories, that claim
falls outside the plainly expressed scope of § 101 even if the subject matter
is otherwise new and useful.” In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir.
2007).
Here, we particularly observe that Appellants’ Specification expressly
guides the artisan that “[t]he particular embodiments disclosed above are
illustrative only . . . .” (Spec. 10, ll. 11-12). Therefore, consistent with
Appellants’ Specification, we broadly but reasonably construe the scope of
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the claimed “computer program product having a computer readable
medium” (claims 22 and 23) as encompassing both statutory (i.e., non-
transitory tangible media) and transitory non-statutory propagating signals.
Because the scope of claims 22 and 23 covers both statutory and non-
statutory embodiments,2 claims 22 and 23 fall outside the plainly expressed
scope of 35 U.S.C. § 101.
Additionally, see the Feb. 23, 2010 “Subject Matter Eligibility of
Computer Readable Media” policy statement by PTO Director David J.
Kappos:
The United States Patent and Trademark Office (USPTO)
is obliged to give claims their broadest reasonable
interpretation consistent with the specification during
proceedings before the USPTO. See In re Zletz, 893 F.2d
319(Fed. Cir. 1989) (during patent examination the
pending claims must be interpreted as broadly as their
terms reasonably allow). The broadest reasonable
interpretation of a claim drawn to a computer readable
medium (also called machine readable medium and other
such variations) typically covers forms of non-transitory
tangible media and transitory propagating signals per se
in view of the ordinary and customary meaning of
computer readable media, particularly when the
specification is silent. See MPEP 2111.01. When the
broadest reasonable interpretation of a claim covers a
signal per se, the claim must be rejected under 35 U.S.C.
§ 101 as covering non-statutory subject matter. See In re
Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007)
(transitory embodiments are not directed to statutory

2 e.g., We conclude that a wireless transmission (computer program
product) having a signal or carrier wave (computer readable medium) with
computer program data modulated thereon (embedded) is a non-statutory
embodiment within the broad scope of Appellants’ claims 22 and 23. .
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subject matter) and Interim Examination Instructions for
Evaluating Subject Matter Eligibility Under 35 U.S.C.
§ 101, Aug. 24, 2009; p. 2.

1351 OG 212, Feb. 23, 2010 (available at
http://www.uspto.gov/web/offices/com/sol/og/2010/week08/TOC.htm#null)
For the aforementioned reasons, we sustain the Examiner’s rejection
of claims 22 and 23 as being directed to non-statutory subject matter under
35 U.S.C. § 101.
§ 102 rejection
ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal regarding the
Examiner’s anticipation rejection of independent claims 1, 7, 12, 18, 22, and
23:
Under §102, did the Examiner err in finding that Shrader
discloses a message validation code that is: (1) generated based on a
predetermined key, a message, and a random value, and is transmitted
as part of the secure message, within the meaning of the
commensurate limitations recited in independent claims 1, 12, 22, and
23, and (2), where the message validation code is received as part of
the secure message, within the meaning of the commensurate
limitations recited in independent claims 7 and 18, and (3), where a
one-time pad is generated based on the random value and the
predetermined key, as recited in commensurate form within each
independent claim on appeal?
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FINDINGS OF FACT
1. Shrader describes generating at random a content-encryption
key for a particular content-encryption algorithm and also that
content is encrypted with the content-encryption key. (Col. 11,
ll. 46-47; 65-67).
2. Shrader describes validation of an “EnvelopedData” object
containing encrypted content when the “EnvelopedData” object
is imported to or exported from the “EnvelopedData Interface
Utility” shown in Fig. 3. (Col. 13, ll. 57-67).
3. Shrader describes that content is encrypted with the content-
encryption key where the content-encryption may require that
the content be padded to a multiple of some block size. (Col.
11, ll. 65-67).

ANALYSIS
After considering the evidence before us, and the respective
arguments on both sides, we agree with Appellants that Shrader is not an
anticipatory reference for essentially the same reasons argued in the Brief
(pp. 13-14 and 16).
At the outset, we observe that the Examiner has mapped portions of
the aforementioned disputed limitations3 of each independent claim on
appeal to a general discussion of digital signatures and public and private
keys found in the “Background of the Invention” section of the reference

3 See ISSUE statement supra.
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(Shrader, col. 1, ll. 27-43; Ans. 4). The Examiner has also mapped at least
part of the disputed message validation code generator to a general
discussion of authentication, also found in the Background section of
Shrader. (Col. 2, ll. 19-29).
The Examiner additionally relies on Shrader’s Figures 3, 4C and 7,
and column 13 (lines 57-67) which describes the validation of an
“EnvelopedData” object that contains encrypted content. (FF 2; Ans. 4). As
for the disputed random value, the Examiner relies on Shrader’s description
of generating at random a content-encryption key for a particular content-
encryption algorithm, and also Shrader’s description of content that is
encrypted using the content-encryption key. (FF 1; Ans. 5).
Because the Examiner paints with a broad brush in making the
anticipation rejection, we are left to speculate as to the precise details of how
each disputed claim limitation is expressly or inherently described within the
disparate portions of the Shrader reference relied on by the Examiner. We
note that the Board is a reviewing body and not a place of initial
examination.4 Moreover, the requirements of § 102 essentially require a
one-for-one mapping of each argued limitation to the corresponding portion
of the reference, in a manner corresponding to the claimed arrangement,
which the Examiner must identify with particularity.
Even if we assume arguendo (without deciding) that Shrader
describes the disputed message validation code (i.e., a digital signature as
proffered by the Examiner, Ans. 15, ¶ 2) that is generated based on a

4 See 35 U.S.C. §6(b) (“The Board of Patent Appeals and Interferences shall,
on written appeal of an applicant, review adverse decisions of examiners
upon applications for patents . . . .”).
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predetermined key, a message, and a random value (used to generate the
key, FF 1), we do not find, nor has the Examiner established, that Shrader
generates a one-time pad based on the random value and the predetermined
key, as required by the language of each independent claim before us on
appeal.
Although Shrader describes that content is encrypted with the content-
encryption key where the content-encryption may require the content be
padded to a multiple of some block size (FF 3), we conclude that the
Examiner’s reading of the claim term “one-time pad” is unreasonable, overly
broad, and inconsistent with Appellants’ Specification which describes a
one-time pad as a special type of “cipher in which both the sender and
recipient each have a copy of the same encryption code, which is used only
once and then discarded.” (Spec. 4).
While we cannot read these limitations from the Specification into the
claim, we note that the term “one-time pad” (OTP) is an established term of
art in the field of cryptography. See e.g., U.S. Pat. 6,868,495, “One-time
pad Encryption key Distribution,” filed July 21, 2000. Because Appellants’
usage in the claims is in accordance with the plain meaning of this term, we
conclude that the Examiner’s reading of “one-time pad” is unreasonably
broad under the broadest reasonable interpretation consistent with the
Specification as it would have been interpreted by one of ordinary skill in
the art.5

5 During ex parte prosecution, the Patent & Trademark Office (PTO)
determines the scope of the claims by giving the language “their broadest
reasonable construction ‘in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” Phillips, 415 F.3d 1303 1316
(Fed. Cir. 2005), quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
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Moreover, the Examiner has failed to respond to this point of
argument (as raised by Appellants, App. Br. 14-15) in the “Response to
Arguments” section of the Answer (pp. 14-16). Without a substantive,
persuasive response to Appellants’ argument from the Examiner, we find the
weight of the evidence before us supports Appellants’ position with respect
to the anticipation rejection of each independent claim. “[A]bsence from the
reference of any claimed element negates anticipation.” Kloster Speedsteel
AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986).
For essentially the same reasons argued by Appellants in the Brief, as
further discussed above, on this record we cannot affirm the Examiner’s
anticipation rejection of each independent claim on appeal. Because we
reverse the anticipation rejection for each independent claim, we also reverse
the Examiner’s anticipation rejection of each associated dependent claim.

DECISION
We reverse the rejection of claims 22 and 23 under 35 U.S.C. § 112,
first paragraph, for failing to comply with the enablement requirement.
We affirm the 35 U.S.C. § 101 rejection of claims 22 and 23.

We reverse the 35 U.S.C § 102 rejection of claims 1-15 and 18-23.

1364 (Fed. Cir. 2004); see also In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).
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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).

ORDER
AFFIRMED-IN-PART

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