Ex Parte Chen

Board of Patent Appeals and Interferences

Feb 25, 2011

10418982 (B.P.A.I. Feb. 25, 2011)

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

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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).

AFFIRMED

msc

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