Ex Parte Chatte

Patent Trial and Appeal Board

Jan 8, 2015

11866007 (P.T.A.B. Jan. 8, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FABIEN CHATTE
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Appeal 2012-006104
Application 11/866,0071
Technology Center 3600
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Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 4–6. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED INVENTION
Appellant’s claimed invention relates to a postage meter for printing
postal imprints on mixed mail items. Spec. ¶ 6.

1 The real party in interest, identified by Appellant, is Neopost
Technologies. App. Br. 3.
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Claim 4, reproduced below, is illustrative of the subject matter on
appeal:
4. A postage meter for printing postal imprints on mixed mail
items, said postage meter comprising:
at least a feeder module,
a dynamic weigh module,
a print module incorporating a postal security device, and
a scanner device for scanning the three-dimensional
structure of the fibers of each mail item,
wherein said postal security device includes means for
generating a digital signature on the basis of constant data and
only one variable data, said only one variable data being a
fingerprint code extracted from said three-dimensional structure
of the fibers of the mail item by means of said scanner device.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Davies US 6,585,433 B2 July 1, 2003
Patton US 2002/0035148 A1 Feb. 20, 2003
Kummer US 2005/0080749 A1 Apr. 14, 2005

REJECTIONS
Claims 4–6 stand rejected under 35 U.S.C §112, second paragraph, as
indefinite.
Claims 4–6 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Kummer, Davies, and Patton.

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ANALYSIS
Status of the Claims
The claims before the Board are the ones presented by the Appellant in
the opening Appeal Brief.
On April 4, 2011, the Examiner mailed a first Advisory Action,
indicating that Appellant’s Amendment After Final, submitted on February
10, 2011, would not be entered. On April 12, 2011 Appellants filed a Notice
of Appeal. On June 30, 2011, the Examiner mailed a second Advisory
Action, indicating that the Amendment After Final would be entered for
purposes of appeal.
Nonetheless, on September 6, 2011 — over two months after the
Examiner’s mailing of the second Advisory Action — the Appellant filed an
Appeal Brief, characterizing the status of amendments as “not entered.”
App. Br. 6. In the Reply Brief, the Appellant argues for the first time —
without any explanation as to why such arguments could not have been
presented in the opening Appeal Brief — that “in view of the most recent
Advisory Action is [sic] appears that the Amendment was entered.” Reply
Br. 4. But Appellants’ Appeal Brief contradicts this statement, stating that
“This amendment was not entered.” (Appeal Br. 6).
Although the Examiner indicated in the June 30, 2011 Advisory Action
that the Amendment After Final would be entered for purposes of appeal, it
clearly appears from the Examiner’s Answer that the Amendment was not
actually entered into the record. See Ans. 6 and 9 (acknowledging the
Amendment After Final is not entered and explaining the basis refusing
entry).
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The Rules do not require the Board to take up a belated argument first
set forth in the Reply Brief, absent a showing of good cause. See, e.g.,
Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative).
Moreover, as described below, to the extent that Appellant argues that the
Examiner should have entered the amendment (see App. Br. 9), the refusal
to enter an Amendment after Final is a petitionable—not appealable—
matter, and, therefore, not properly before us.
Claim Construction
Claim 4 recites, in part, a “postal security device includes means for
generating a digital signature on the basis of constant data and only one
variable data.” We are persuaded by Appellant’s argument that interpreting
“only one variable data” to mean more than one variable data is inconsistent
with the plain meaning of the recited language and the description in
Appellant’s Specification.
The Examiner finds that if the limitation were given its plain meaning,
the interpretation would be (1) inconsistent with the specification, and
(2) unsupported by the understanding of one of ordinary skill in the art for
generating a digital signal. Ans. 10–11.
With respect to the Examiner’s first finding, the Examiner explains that
the Appellant’s Specification teaches at paragraph 7 that “variable data
comprises only a fingerprint code.” Ans. 10. Because the word “comprises”
is open-ended, the Examiner concludes that the Specification teaches that
variable data may include more than the fingerprint code. However, this
proposed interpretation improperly excludes “only” from the express claim
language at issue.
With respect to the second finding, the Examiner cites ICSA Guide to
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Cryptography by Randall K. Nichols at 330–331 (hereinafter “ICSA
Guide”), for the first time in the Answer, as showing the basic knowledge of
one of ordinary skill in the art of cryptography at the time of invention:
[I]t is basic knowledge that that a digital signature is defined as
being generated on the basis of more than two variables. A
digital signature is defined as being generated on the basis of at
least a security parameter k, a message m, and algorithms gen,
sign, and test.
Ans. 10–11. As we understand the Examiner’s rationale, an ordinary digital
signature scheme requires a plurality of variables and, therefore, the
limitation at issue requires more than one variable data. However, claim 4
does not recite variables for generating a digital signature. Rather, claim 4
recites generating a digital signature on the basis of particular data — i.e.,
constant data and only one variable data.
The excerpts from the ICSA Guide provide a high level overview of an
ordinary digital signature scheme using a public/private-key encryption
system. A private key, known only by the signer, is used to encrypt a
message m, thereby creating the digital signature s. ICSA Guide at 331. A
recipient of the encrypted message m uses a public key to decrypt the
signature. Id. Thus, the ICSA Guide teaches that a message m is the data
that is the basis of a digital signature. The cited excerpts from the ICSA
Guide do not teach or suggest that the message m contains more than one
variable data.
For the foregoing reasons, the limitation “only one variable data” is
interpreted to have its plain meaning.
Indefiniteness Rejection of Claims 4–6
The Appellant argues that the Amendment After Final would correct
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the indefinite issues noted by the Examiner, if only the Examiner would
have entered the Amendment. App. Br. 9. Appellant requests the Board to
enter the proposed amendments or return the case to the Examiner for entry
if the Board reverses the prior art rejection. The Appellant does not present
any arguments that the Examiner erred in rejecting claims 4–6 under
35 U.S.C. § 112, second paragraph.
Inasmuch as Appellant requests that the amendments to the claims be
entered, this is not an issue before us because the request relates to a
petitionable issue and not an appealable issue. See In re Schneider, 481 F.2d
1350, 1356–57 (CCPA 1973). See also Manual of Patent Examining
Procedure (MPEP) (9th Ed., March 2014) § 1002.02(c), item 3(g) and
§ 1201. Thus, the relief sought by Appellant would have been properly
presented by a petition to the Director under 37 C.F.R. § 1.181 instead of by
appeal to this Board.
Because the Appellant has not shown the Examiner erred in rejecting
the claims under 35 U.S.C. § 112, second paragraph, we sustain the
Examiner's rejection.
Obviousness Rejection of Claims 4–6
The Appellant argues that Davies does not teach the use of “only one
variable data,” as required by claim 4. App. Br. 11–12. We agree. The
Appellant’s Specification describes that prior art digital signatures for mixed
mail items required constant data (such as a serial number of a postal meter)
and variable data (such as a format of the mail item, a requested service, and
weight). Spec. ¶ 2.
The Examiner relies on Davies for teaching that the postal security
device includes means for generating a digital signature on the basis of
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constant data and only one variable data, i.e., weight. Ans. 7 (citing Davies,
col. 1, l. 60–col. 2, l. 52; col. 10, ll. 14–31).
However, this conclusion is not supported by the cited excerpts. The
first cited excerpt from Davies describes how the United States Postal
Services has enabled the decoupling of the postage meter and printer by
establishing an Information-Based Indicia Program (IBIP) and provides an
overview of IBIP. Davies, col. 1, l. 60 to col. 2, l. 52. There is no teaching
regarding a means for generating a digital signature on the basis of constant
data and only one variable data.
The second cited excerpt teaches that transaction data includes more
than one variable data:
As discussed above, the accounting module 340 generates
transaction data TD in response to [(a)] customer input (mail
class, etc.), [(b)] mail piece 20 parameters (weight, etc.) and/or
[(c)] previously defined parameters (date, serial number, etc.).
Id. at col. 10, ll. 21–25. As indicated in the excerpt, the transaction data
includes variable data in multiple categories (e.g., customer input and mail
piece parameters), and each category may include multiple types of data
(e.g., weight of mail piece and size of mail piece for the category of mail
piece parameters). Id. Davies further instructs that variable data generally
includes a date, postal value, and service class. Id. col. 8, ll. 17–24. Davies
does not teach a means for generating a digital signature on the basis of
constant data and only one variable data.
Therefore, we do not sustain the Examiner’s rejection of independent
claim 4 under 35 U.S.C. § 103(a). For the same reasons, we also do not
sustain the rejection of dependent claims 5and 6, each of which depends
from independent claim 4.
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DECISION
The Examiner’s rejection of claims 4–6 under 35 U.S.C. § 112,
second paragraph, is affirmed.
The Examiner’s rejection of claims 4–6 under 35 U.S.C. § 103(a) is
reversed.
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

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