Ex Parte ChenDownload PDFBoard of Patent Appeals and InterferencesFeb 25, 201110418982 (B.P.A.I. Feb. 25, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte STEVEN H. CHEN ____________ Appeal 2009-009316 Application 10/418,982 Technology Center 2400 ____________ Before HOWARD B. BLANKENSHIP, CAROLYN D. THOMAS, and DEBRA K. STEPHENS, Administrative Patent Judges. BLANKENSHIP, Administrative Patent Judge. DECISION ON APPEAL1 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 2009-009316 Application 10/418,982 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 5, 7-9, 11, 13-15, and 25-27, which are all the claims remaining in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Invention Appellant’s invention relates to secured facsimile transmission whereby a destination fax machine receives a private key and generates a public key. An originating fax machine encrypts fax data using the public key, with the destination fax machine decrypting the fax data using the private key. Abstract. Representative Claim 1. Apparatus for secured facsimile transmission, the apparatus comprising: a destination fax machine configured to, prior to receiving an encrypted fax transmission, receive a private key input by a user of the destination fax machine with a user interface of the destination fax machine and generate a public key associated with the private key, the destination fax machine further being configured to decrypt received encrypted fax transmissions with the private key using a decryption algorithm; and an originating fax machine configured to receive the public key when input by a user of the originating fax machine with a user interface of the originating fax machine, the originating fax machine further being configured to encrypt fax data to be transmitted to the destination fax machine with the public key using an encryption algorithm. Appeal 2009-009316 Application 10/418,982 3 Prior Art Mandelbaum US 5,552,897 Sep. 3, 1996 McGrew US 6,249,585 B1 Jun. 19, 2001 Atomichi JP 2000-019962 A Jan. 21, 2000 Bruce Schneier, Applied Cryptography: Protocols, Algorithms, and Source Code in C, pp. 461-65 (John Wiley & Sons, 2nd ed., 1996) (“Schneier”). Examiner’s Rejections Claims 1, 7-9, and 13-15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Atomichi, Mandelbaum, and Schneier. Claims 5, 11, and 25-27 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Atomichi, Mandelbaum, Schneier, and McGrew. FINDINGS OF FACT We rely on the Examiner’s findings set out in the Final Rejection and Answer. ANALYSIS Appellant seems to misapprehend or mischaracterize the rejection applied against claim 1. Contrary to the remarks at page 7 of the Appeal Brief, the rejection does not allege that Mandelbaum discloses a destination fax machine configured such that “prior to receiving an encrypted fax transmission, receive a private key input by a user of the destination fax machine with a user interface of the destination fax machine.” Nor does the Advisory Action (mailed Apr. 28, 2008) allege that Atomichi teaches, prior Appeal 2009-009316 Application 10/418,982 4 to receiving an encrypted fax transmission, receiving a private key “input by a user” of the destination fax machine with a user interface of the destination fax machine (App. Br. 8). Atomichi teaches a receiving fax machine that generates a secret key and a public key, and transmits the public key to an originating fax machine. The originating fax machine encrypts information using the public key and transmits the encrypted data to the receiving fax machine. The receiving machine decodes the encrypted data using the secret key. See Atomichi Abstract. The Atomichi Abstract does not say that the private key is input by a user to a destination fax machine user interface. Nor does the Abstract say that the public key is input by a user of the originating fax machine. Mandelbaum, however, teaches that a user can enter a public key to an originating fax machine (col. 4, ll. 8-52; Figs. 1, 2, 4). Mandelbaum also teaches that the user at the receiving fax machine can enter the required private key for decryption (col. 7, ll. 16-20). These combined teachings of Atomichi and Mandelbaum do not show, however, a destination fax machine configured to, “prior to receiving” an encrypted fax transmission, receive a private key by a user of the destination fax machine “and generate a public key associated with the private key.” As we have noted, the Atomichi Abstract describes machine generation of both the public key and the private key. The rejection against claim 1, however, turns to Schneier to demonstrate that one of ordinary skill in the art recognized that a public key may be generated from a private key, as expressly taught at page 464. As such, the user could enter a private key at the originating fax machine, “prior Appeal 2009-009316 Application 10/418,982 5 to receiving an encrypted fax transmission,” for generating the public key, rather than the receiving fax machine generating both the private key and the public key. We thus agree with the Examiner that the teachings of Atomichi, Mandelbaum, and Schneier demonstrate that the subject matter as a whole of claim 1 would have been obvious to the ordinarily skilled artisan. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). Nothing unpredictable follows from the user entering a private key into the destination fax machine, as opposed to the machine generating both the private key and the public key. Appellant also alleges (App. Br. 7-8) that Mandelbaum “does not state” in column 4, lines 48 through 49 that Table 401, which contains an address book including the public keys of fax recipients (Fig. 4), resides on the user’s smart card. The rejection refers, however, to more than lines 48 and 49 of Mandelbaum column 4. In our view, the reference is clear enough in describing that Table 401 is accessed from the user’s smart card (e.g., col. 4, ll. 18-23). Our understanding of the text is confirmed by claim 12 of Mandelbaum. Appellant goes on to allege (App. Br. 8) that the artisan would not consider a “smart card interface” to be a “user” interface, which “typically pertains to a display and/or input buttons or keys.” First, Appellant has not provided any evidence in support of the allegations. Second, Mandelbaum clearly teaches that the smart card interface is used in combination with a display, and sufficient “input buttons or keys” to enter a PIN code and to add or change data in Table 401 (col. 4, ll. 12-21, 27-33). Appeal 2009-009316 Application 10/418,982 6 We are thus not persuaded of error in the Examiner’s rejection of claim 1. Because Appellant has not separately argued the patentability of the remaining claims, claims 5, 7-9, 11, 13-15, and 25-27 fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). DECISION The rejection of claims 1, 7-9, and 13-15 under 35 U.S.C. § 103(a) as being unpatentable over Atomichi, Mandelbaum, and Schneier is affirmed. The rejection of claims 5, 11, and 25-27 under 35 U.S.C. § 103(a) as being unpatentable over Atomichi, Mandelbaum, Schneier, and McGrew is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). 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